DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in response to the Application filed September 5, 2024, in which Claims 1-18 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
1. Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “softer” in claims 1-3, 11-13, and 18 is a relative term which renders the claim indefinite. The term “softer” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how the term softer is to be applied to the metes and bounds of the recited layers.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
2. Claim(s) 1 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heathcote (US 2013/0104420).
Regarding Claim 1, Heathcote discloses a dance shoe assembly (Fig.4F; para.26), comprising: an flexible shoe body (401,403) including a forefoot portion, a heel portion opposite the forefoot portion, and a midfoot portion between the heel portion and the forefoot portion (as seen in Fig.4F); and an integrated heel member (420) positioned at the heel portion of the flexible shoe body, the heel member including— a support member (420 is a support portion) having— a bottom region (i.e. horizontal extension of 420); a top region (i.e. vertical extension of 420) extending upwardly from the bottom region, wherein the top region has— a rear wall (see annotated Figure below) defining a rear portion of the support member; and lateral sidewalls (see annotated Figure below) extending forwardly the rear wall; and a shock-absorbing member (413; para.128) positioned on the bottom region of the support member (as seen in Fig.4F).
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Heathcote does not disclose wherein a top portion of the shock-absorbing member is softer than a bottom portion of the shock-absorbing member. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the shock absorbing member of Heathcote to have a top portion softer than a bottom portion of the shock-absorbing member, in order to provide a comfortable surface for a user to place their foot upon.
Regarding Claim 8, Heathcote discloses a dance shoe assembly of claim 1, further including a front traction pad (472) positioned at the forefoot portion of the flexible shoe body (as seen in Fig.4D).
Regarding Claim 9, Heathcote discloses a dance shoe assembly of claim 1, further comprising a front traction pad (472) positioned at the forefoot portion of the flexible shoe body, wherein the front traction pad has a front section (i.e. front half of 472) and a rear section (i.e. rear half of 472)(as seen in Fig.4D).
Regarding Claim 10, Heathcote discloses a dance shoe assembly of claim 1, further including a rear traction pad (412) positioned at the heel portion of the flexible shoe body (as seen in Fig.4D).
Regarding Claim 11, Heathcote discloses a heel member for use with a dance shoe, comprising: a support member (420) having—a bottom region (i.e. horizontal extension of 420); a top region (i.e. vertical extension of 420) extending upwardly from the bottom region, wherein the top region has— a rear wall (see annotated Figure above) defining a rear portion of the support member; and lateral sidewalls (see annotated Figure above) extending forwardly the rear wall; and a shock-absorbing member (413; para.128) positioned on the bottom region of the support member (as seen in Fig.4F). Heathcote does not disclose wherein a top portion of the shock-absorbing member is softer than a bottom portion of the shock-absorbing member. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the shock absorbing member of Heathcote to have a top portion softer than a bottom portion of the shock-absorbing member, in order to provide a comfortable surface for a user to place their foot upon.
3. Claim(s) 2-7 and 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heathcote (US 2013/0104420) in view of Jesinsky (US 4,530,173).
Regarding Claims 2-3 and 12-13, Heathcote discloses the invention substantially as claimed above. Heathcote does not disclose wherein the shock-absorbing member includes— a first shock-absorbing layer; and a second shock-absorbing layer on the first shock-absorbing layer, wherein the second shock absorbing layer is softer than the first shock-absorbing layer; wherein the shock-absorbing member further includes a third shock-absorbing layer on the second shock-absorbing layer. However, Jesinsky teaches a shock absorbing member (B) including— a first shock-absorbing layer (8); a second shock-absorbing layer (6) on the first shock-absorbing layer; and wherein the shock-absorbing member further includes a third shock-absorbing layer (4) on the second shock-absorbing layer (as seen in Fig.1-3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the shock absorbing portion of Heathcote for the shock absorbing portion of Jesinsky, as a simple substitution of one well known type of heel shock absorbing portion for another, in order to yield the predictable result of providing a comfortable shock absorbing portion under a user’s heel.
Heathcote and Jesinsky disclose the invention substantially as claimed above. Jesinsky does not disclose wherein the second shock absorbing layer is softer than the first shock-absorbing layer, and wherein the third shock absorbing layer is softer than the second shock-absorbing layer. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second layer of Jesinsky to be softer than the first layer, and the third layer of Jesinsky to be softer than the second layer, in order to provide the optimum level of cushioning and support to a user’s heel region. Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. Further, "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." The claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.
Regarding Claims 4-5 and 14-15, Heathcote discloses the invention substantially as claimed above. Heathcote does not disclose wherein the shock-absorbing member includes— a first shock-absorbing layer having a first thickness; and a second shock-absorbing layer having a second thickness different than the first thickness, wherein the second shock-absorbing layer is positioned on the first shock-absorbing layer; and a third shock-absorbing layer having a third thickness different than at least one of the first thickness and the second thickness, wherein the third shock-absorbing layer is positioned on the second shock-absorbing layer. However, Jesinsky teaches wherein the shock-absorbing member includes— a first shock-absorbing layer (8) having a first thickness; and a second shock-absorbing layer (6) having a second thickness different than the first thickness (as seen in Fig.2-3), wherein the second shock-absorbing layer is positioned on the first shock-absorbing layer (as seen in Fig.1-3); and a third shock-absorbing layer (4) having a third thickness different than at least one of the first thickness and the second thickness (as seen in Fig.2-3), wherein the third shock-absorbing layer is positioned on the second shock-absorbing layer (as seen in Fig.1-3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the shock absorbing portion of Heathcote for the shock absorbing portion of Jesinsky, as a simple substitution of one well known type of heel shock absorbing portion for another, in order to yield the predictable result of providing a comfortable shock absorbing portion under a user’s heel.
Regarding Claims 6-7 and 16-17, Heathcote discloses the invention substantially as claimed above. Heathcote does not disclose wherein the shock-absorbing member includes— a first shock-absorbing layer having a first indentation force deflection (IFD) value; a second shock-absorbing layer having a second IFD value different than the first IFD value, wherein the second shock-absorbing layer is positioned on the first shock-absorbing layer; and a third shock-absorbing layer having a third IFD value different than at least one of the first IFD value and the second IFD value, wherein the third shock-absorbing layer is positioned on the second shock-absorbing layer. However, Jesinsky teaches a shock-absorbing portion (Fig.1) comprising: a first shock-absorbing layer (8) having a first indentation force deflection (IFD) value (Col.2, lines 11-13), a second shock-absorbing layer (6) having a second IFD value (Col.2, lines 11-13), wherein the second shock-absorbing layer is positioned on the first shock-absorbing layer (as seen in Fig.1-3), and a third shock-absorbing layer (4) having a third IFD value (Col.2, lines 11-13), wherein the third shock-absorbing layer is positioned on the second shock-absorbing layer (as seen in Fig.1-3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the shock absorbing portion of Heathcote for the shock absorbing portion of Jesinsky, as a simple
substitution of one well known type of heel shock absorbing portion for another, in order to yield the predictable result of providing a comfortable shock absorbing portion under a user’s heel.
Heathcote and Jesinsky disclose the invention substantially as claimed above. Jesinsky does not disclose a second shock-absorbing layer having a second IFD value different than the first IFD value, and a third shock-absorbing layer having a third IFD value different than at least one of the first IFD value and/or the second IFD value; and the second IFD value is less than the first IFD value, and wherein the third IFD value is less than the second IFD value. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second shock-absorbing layer of Jesinsky to have a second IFD value less than the first IFD value, and the third shock-absorbing layer of Jesinsky to have a third IFD value less than the second IFD value, in order to provide the optimum level of cushioning and support to a user’s heel region. Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. Further, "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." The claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.
Regarding Claim 18, Heathcote discloses a dance shoe assembly (Fig.4F; para.26), comprising: an flexible shoe body (401,403) including a forefoot portion, a heel portion opposite the forefoot portion, and a midfoot portion between the heel portion and the forefoot portion (as seen in Fig.4F); and a front traction pad (472) positioned at the forefoot portion of the flexible shoe body, wherein the front traction pad has a front section (i.e. front half of 472) and a rear section (i.e. rear half of 472); a rear traction pad (412) positioned at the heel portion of the flexible shoe body (as seen in Fig.4D); and a metatarsal pad (407; para.128) positioned at an interior portion of the forefoot portion of the flexible shoe body and aligned with at least one of the front section and/or rear section (as seen in Fig.4E & 4F); an integrated heel member (420) positioned at the heel portion of the flexible shoe body, the heel member including— a support member (420 is a support portion) having— a bottom region (i.e. horizontal extension of 420); a top region (i.e. vertical extension of 420) extending upwardly from the bottom region, wherein the top region has— a rear wall (see annotated Figure above) defining a rear portion of the support member; and lateral sidewalls (see annotated Figure below) extending forwardly the rear wall; and a shock-absorbing member (413; para.128) positioned on the bottom region of the support member (as seen in Fig.4F). Heathcote does not disclose the shock-absorbing member includes— a first shock-absorbing layer; a second shock-absorbing layer on the first shock-absorbing layer, wherein the second shock absorbing layer is softer than the first shock-absorbing layer; and a third shock-absorbing layer on the second shock-absorbing layer, wherein the third shock absorbing layer is softer than the second shock-absorbing layer. However, Jensinsky teaches a shock-absorbing member (B) including— a first shock-absorbing layer (8); a second shock-absorbing layer (6) on the first shock-absorbing layer (as seen in Fig.1-3); and a third shock-absorbing layer (4) on the second shock-absorbing layer (as seen in Fig.1-3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the shock absorbing portion of Heathcote for the shock absorbing portion of Jesinsky, as a simple substitution of one well known type of heel shock absorbing portion for another, in order to yield the predictable result of providing a comfortable shock absorbing portion under a user’s heel.
Heathcote and Jesinsky disclose the invention substantially as claimed above. Jesinsky does not disclose wherein the second shock absorbing layer is softer than the first shock-absorbing layer, and wherein the third shock absorbing layer is softer than the second shock-absorbing layer. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the second layer of Jesinsky to be softer than the first layer, and the third layer of Jesinsky to be softer than the second layer, in order to provide the optimum level of cushioning and support to a user’s heel region. Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. Further, "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." The claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732