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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “midsole flange”, “a support that extends upwardly… in a rear sole region of the midsole”, “a mortise-tenon jointing” as claimed in claims 1, 9, or 15 must be shown or the feature(s) canceled from the claim(s). Also, the thickness of the breathable cushioned sole as claimed in claims 8, 14 and 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-20 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.
In claims 1, 9, and 15 the phrases “a flange extends upwardly is formed on the midsole”, a support that extends upwardly is formed in a rear sole region of the midsole”, and “connecting the breathable body to the midsole in a mortise-tenon jointing manner” are confusing, vague, and indefinite because these structures have not been shown and/or clearly described in such a manner that the Examiner can determine what structures would be encompassed by such language.
In claims 8, 14, and 20 the phrase “an overall thickness…is gradually increased along a direction from a fore sole to a heel” is confusing, vague, and indefinite because it has not been shown and therefore it is not clear what structures applicant intends to encompass with such language. It is noted that figure 3 does not appear to show such a change in thickness and figure 1 appears to show a change in thickness medial to lateral and not in the direction claimed.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 9, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukuoka (4468869) in view of Hernandez (6564476).
In reference to claim 1 Fukuoka shows A method for preparing a breathable cushioned sole, comprising:
preparing an outsole (bottom of 2);
preparing a midsole (2 and 3) using a foaming method (Fukuoka teaches the use of vinyl chloride, synthetic rubber, or urethane, see column 2 lines 45-50 which are inherently manufactured using some type of foaming method inasmuch as applicant has claimed and defined such) , wherein a flange that extends upwardly is formed on the midsole (4), a region within the flange is defined as an accommodation region; and the accommodation region comprises a fore sole region and a heel region, and a support that extends upwardly is formed in a rear sole region of the midsole (see figure 1);
preparing a breathable body (9) using an additive manufacturing method (the method disclosed by Fukuoka is considered additive inasmuch as applicant has claimed such), wherein the breathable body (9) has a plurality of breathable channels (9a-d) that are connected with each other;
placing the breathable body (9) in the fore sole region (see figure 1), and connecting the breathable body (4) to the midsole (2) in a mortise-tenon jointing manner (the connection shown and described by Fukuoka is considered to be such inasmuch as applicant has shown and described such);
placing a lasting insole (6) on the breathable body (9) and the support, to enable the lasting
insole (6) to be glued to the breathable body (9) and the support substantially as claimed except for the step of separately applying glue on an upper surface of the support and an outer periphery of the
breathable body. Hernandez teaches the well known and conventional use of adhesives (48) for affixing sole elements to one another. It would have been obvious to use adhesives to affix elements as is well known and taught by Hernandez for affixing the elements in Fukuoka to provide a secure and durable attachment between the sole elements.
In reference to claim 9, Fukuoka shows A breathable cushioned sole, prepared using a method for preparing a breathable cushioned sole, comprising:
preparing an outsole (bottom of 2);
preparing a midsole (2 and 3) using a foaming method, wherein a flange that extends upwardly is formed on the midsole (2 and 3), a region within the flange (4) is defined as an accommodation region; and the accommodation region comprises a fore sole region and a heel region, and a support (see figure 1) that extends upwardly is formed in a rear sole region of the midsole (2 and 3);
preparing a breathable body (9) using an additive manufacturing method, wherein the breathable body (9) has a plurality of breathable channels (9a-d) that are connected with each other;
placing the breathable body (9) in the fore sole region (see figure 1), and connecting the breathable body (9) to the midsole (2 and 3) in a mortise-tenon jointing manner (the connection shown and described by Fukuoka is considered to be such inasmuch as applicant has shown and described such);
placing a lasting insole (6) on the breathable body (9) and the support, to enable the lasting
insole (6) to be glued to the breathable body (9) and the support substantially as claimed except for the use of adhesives. Hernandez teaches the well known and conventional use of adhesives (48) for affixing sole elements to one another. It would have been obvious to use adhesives to affix elements as is well known and taught by Hernandez for affixing the elements in Fukuoka to provide a secure and durable attachment between the sole elements. In reference to any specific method steps recited in claim 9, a comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 U.S.P.Q. 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 U.S.P.Q. 161 (CCPA 1964). In an ex parte case, product-by-process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 U.S.P.Q. 15, see footnote 3 (CCPA 1976).
In reference to claim 15, Fukuoka shows a shoe (see figure 1) with a breathable cushioned sole (see above in reference to claim 9.
Claim(s) 8, 14, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1, 9, and 15 above, and further in view of Guyan (10010133).
Fukuoka as modified above shows a method and shoe sole substantially as claimed except for the exact thickness of the forefoot breathable body. Guyan teaches and shows gradually increasing the thickness of forefoot elements in a sole from the forefoot to the heel direction (see figure 1). It would have been obvious to make the breathable body with a change in thickness as taught by Guyan in the method and sole of Fukuoka as modified above to provide a comfortable and natural orientation of a foot of a wearer.
Allowable Subject Matter
Claims 2-7, 10-13, and 16-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and the drawings objections, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Information Disclosure Statement
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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In order to avoid potential delays, Technology Center 3700 is encouraging FAXing of responses to Office Actions directly into the Center at (571)273-8300 (FORMAL FAXES ONLY). Please identify Examiner Marie Bays of Art Unit 3732 at the top of your cover sheet.
Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/ Primary Examiner, Art Unit 3732