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 .
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 12,127,627. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain all of the key limitations from the above US Patent ’627, but are broader in some aspects and adds features in other respects. With respect to the claims being broader, once the applicant receives a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if you have a broad claim to examine, and you find a reference, which discloses every element of the claim, you have a reference that anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-20 and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kozo et al. (USPN 7,096,605, herein after Kozo).
With respect to claim 1, Kozo discloses a shoe sole (20, see figures 1, 4-5 and 8-9) comprising a stability support plate (130) and a soft-elastic midsole (midsole 25 may be primarily composed of resilient foam material, such as polyurethane (PU) open cell, PU closed cell, or a similar material or combination of material), wherein the stability support plate (130) is peripherally surrounded by the midsole (sole 20 includes midsole plate 130 embedded within the midsole 25) and wherein the midsole comprises a clear space being open towards a bottom side of the midsole (with reference to FIGS. 1, 4 5, and 8 9, in one aspect, sole 20 enables air to enter from the outsole 40 to the interior of the upper 15 or air to escape therefrom so as to regulate the microclimate enveloping the foot of a wearer. In one construction, outsole 40 and midsole 25 include a voided portion 42, e.g., without material, so as to expose a portion of the midsole plate 130 to the exterior), which is peripherally surrounded substantially completely by the midsole (25) and which is delimited by the stability support plate (130).
Kozo as described above does not appear to disclose the midsole also having a plurality of channels configured as blind holes that extend towards an outer side of the midsole.
However, Kozo discloses a plurality of channels configured as blind holes which are open towards the clear space and extend towards an outer side of the outsole. FIG. 4 is a schematic bottom plan view of the article of footwear of the present invention illustrating an outsole with the plurality of channels that are delimited by the stability support plate and the soft elastic midsole. Therefore, it would have been obvious to one of ordinary skill in the art to also provide a plurality of channels to the midsole of Kozo that extends towards an outer side of the midsole, as taught by the plurality of channels configured as blind holes of the outsole, since it has been held that mere duplication and rearranging of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8 and In re Einstein, 8 USPQ 167.
With respect to claim 2, Kozo discloses wherein the soft elastic midsole (25) comprises a circumferential step (see figure 9, and the step where the support plate 130 is nestled in the midsole 25), wherein the stability support plate is arranged on and/or attached to the step.
With respect to claim 3, Kozo discloses wherein the top side of the stability support plate is uncovered by the midsole (see figures 8-9).
With respect to claim 4, Kozo wherein the stability support plate (130) is aligned with the midsole peripherally surrounding the stability support plate (see figures 8-11).
With respect to claim 5, Kozo wherein the width of the stability support plate (130) in the transverse direction is at least 50% of the width of the midsole (25) in the transverse direction (see figures 8-9).
With respect to claim 6, Kozo wherein the midsole (25) comprises in the heel area a cavity (FIGS. 12 and 13 illustrate at least one configuration of the sole 20 in the rearfoot portion with a rear cushioning element, e.g., sealed gas-containing resilient bladder 200, which can be added into the midsole material to provide additional cushioning) that is delimited by the midsole and the stability support plate.
With respect to claim 7, Kozo wherein the cavity is completely closed by the stability support plate and the soft elastic midsole (FIGS. 12 and 13 illustrate at least one configuration of the sole 20 in the rearfoot portion with a rear cushioning element, e.g., sealed gas-containing resilient bladder 200, which can be added into the midsole material to provide additional cushioning).
With respect to claim 8, Kozo discloses wherein the cavity is arranged between the heel edge of the midsole and the clear space.
With respect to claim 9, Kozo discloses wherein the midsole is at least partially provided with an outsole on the bottom side and wherein the lateral area of the midsole is completely provided with the outsole (the outsole 40 forms the ground-contacting element of the article of footwear 10 and may be fashioned from a durable, wear resistant material that includes texturing to improve traction).
With respect to claim 10, Kozo discloses wherein the channels are arranged in a heel area and in a midfoot area of the midsole (see figure 4).
With respect to claim 11, Kozo discloses the channels are spaced apart, therefore a forefoot area of the midsole will inherently be free of channels.
With respect to claim 12, Kozo discloses wherein the channels are formed within the resilient foam midsole layer and will inherently deform in vertical and/or horizontal direction by forces occurring during walking (explicit to resilient foam). Depending on the force exerted on the channels the channels will open and close. With respect to the openings of the channels closing at least up to 1/3, discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
With respect to claim 13, Kozo discloses wherein the channels are delimited by the stability support plate (130, see figures 4 and 8-11) and the soft elastic midsole (25).
With respect to claim 14, Kozo discloses wherein the outsole (40) comprises one or more grooves that are open towards the bottom side of the outsole and extending in the transverse direction, which are in the longitudinal direction. It would have been obvious to one of ordinary skill in the art to provide one or more grooves extending in the transverse direction of the midsole of Kozo, to increase the flexibility effect of the midsole during walking. The grooves can be arranged in front of and/or behind a channel and can be open towards the bottom side of the midsole.
With respect to claim 15, it would have been obvious to one of ordinary skill in the art to make a wall thickness of Kozo between an end of the channel and the outer side of the midsole to be at least 3 mm, since such a modification would have involved a mere change in the size of a component. A change in size and shape is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
With respect to claim 16, Kozo discloses wherein a top side of the stability support plate is uncovered by the midsole (see figures 8-9).
With respect to claim 17, Kozo discloses wherein the clear space has in the transverse direction of the midsole a width of at least 25% of the total width in the transverse direction of the midsole (see figure 9).
With respect to claim 18, Kozo discloses wherein the clear space appears to have a length in the longitudinal direction of the midsole of at least 70% of a length of the midsole in the longitudinal direction. Furthermore, it would have been obvious to one of ordinary skill in the art to modify the length as claimed, since such a modification would have involved a mere change in the size of a component. A change in size and shape is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
With respect to claim 19, it would have been obvious to one of ordinary skill in the art to make the clear space of Kozo with a variable width to match the variable width of the supporting plate in the transverse direction along its length in a longitudinal direction of the midsole. Since such a modification would have involved a mere change in the size of a component. A change in size and shape is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459,105 USPQ 237 (CCPA 1955).
With respect to claim 20, Kozo discloses a shoe comprising a shoe sole according to claim 1 (See figure 1).
With respect to claim 23, Kozo discloses the use of a shoe sole according to claim 1 in the manufacture of a shoe.
With respect to claim 24, Kozo discloses a shoe sole (sole 20, see figures 1, 4-5 and 8-9) comprising a stability support plate (midsole plate 130) and a soft-elastic midsole (midsole 25 may be primarily composed of resilient foam material, such as polyurethane (PU) open cell, PU closed cell, or a similar material or combination of material), wherein the stability support plate (130) is peripherally surrounded by the midsole (sole 20 includes midsole plate 130 embedded within the midsole 25) and wherein the midsole comprises a clear space being open towards a bottom side of the midsole (with reference to FIGS. 1, 4 5, and 8 9, in one aspect, sole 20 enables air to enter from the outsole 40 to the interior of the upper 15 or air to escape therefrom so as to regulate the microclimate enveloping the foot of a wearer. In one construction, outsole 40 and midsole 25 include a voided portion 42, e.g., without material, so as to expose a portion of the midsole plate 130 to the exterior), which is peripherally surrounded substantially completely by the midsole and which is delimited by the stability support plate (see figure 9).
Kozo as described above does not appear to disclose the midsole also having a plurality of channels that extend towards an outer side of the midsole.
However, Kozo discloses a plurality of channels that extend towards an outer side of the outsole. FIG. 4 is a schematic bottom plan view of the article of footwear of the present invention illustrating an outsole with the plurality of channels that are delimited by the stability support plate and the soft elastic midsole. Therefore, it would have been obvious to one of ordinary skill in the art to also provide a plurality of channels to the midsole of Kozo that extends towards an outer side of the midsole, as taught by the plurality of channels of the outsole, since it has been held that mere duplication and rearranging of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8 and In re Einstein, 8 USPQ 167.
Claim(s) 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kozo as applied to claims 1-20 and 23-24 above, and further in view of Meschter et al. (Pub. No. US 2007/0107264, herein after Meschter).
Kozo as modified above discloses all the limitations of the claims except for wherein the shoe comprises an outer upper and an inner textile upper, and wherein the inner upper defines an interior space completely segregated from said outer upper by said inner upper.
Kozo discloses that an upper may be formed from multiple material layers that include an exterior layer, a middle layer, and an interior layer. The materials forming the exterior layer may be selected based upon the properties of wear-resistance, flexibility, and air-permeability. For instance, the toe area and the heel area of upper 110 may be formed of a tough leather, a synthetic leather, or a rubber material that imparts a relatively high degree of wear-resistance, whereas the mid-portion may be formed of a textile material that provides greater flexibility or air-permeability. If the upper includes a middle layer, it may be formed from a lightweight polymer foam material that attenuates ground reaction forces and/or that protects the foot from objects that may contact the upper. Similarly, an interior layer of the upper may be formed of a moisture-wicking textile that removes perspiration from the area immediately surrounding the foot. The layers may be translatable with respect to each other at various locations for flexibility purposes. Therefore, it would have been obvious to one of ordinary skill in the art to make the upper of Kozo from an outer upper and an inner textile upper, and wherein the inner upper defines an interior space completely segregated from said outer upper by said inner upper as taught by Meschter to provide greater flexibility and air permeability.
Response to Arguments
Applicant's arguments filed 01/23/2025 have been fully considered but they are not persuasive.
It would have been obvious to one of ordinary skill in the art to also provide a plurality of channels to the midsole of Kozo that extends towards an outer side of the midsole, as taught by the plurality of channels of the outsole, since it has been held that mere duplication and rearranging of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8 and In re Einstein, 8 USPQ 167.
As per Applicant’s request the Examiner contacted the undersigned several times to schedule a telephone interview, to discuss the merits of this Patent Application, but was unable to reach Mr. Kevin Erickson.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached M-Thurs. 7:00-5:00 EST.
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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
02/25/2026