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 .
Election/Restrictions
Applicant’s election without traverse of Species VI, Sub-species B in the reply filed on January 21, 2026 is acknowledged.
Accordingly, claims 1-15 are pending in this application, with an action on the merits to follow regarding claims 1-15.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11058169. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 11058169 includes all the limitations of claim 1 of the instant application including a dome shaped body, a plurality of resiliently deformable vertical walls extending downward from the dorsal surface of the body, and bottom surfaces (which would be part of the bottom edges) of the walls forming a plantar surface.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12102185. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 12102185 includes all the limitations of claim 1 of the instant application including a body having a dome shape, a plurality of resiliently deformable vertical walls extending downwardly from a convex dorsal surface, and bottom edges of the walls aligned to form a plantar surface. Further mapping is shown in the following chart.
Claims of 18/903804
relationship
Claims of US 12102185
1
broader than
1
2
same as
2
3
same as
3
4
same as
4
5
same as
5
6
same as
6
7
same as
7
8
same as
8
9
same as
9
10
same as
10
11
same as
11
12
same as
12
13
same as
13
14
same as
14
15
same as
15
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 membrane (claim 2) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "49” (paras. 0160-0061) and "47" (paras. 0148 and 0161-0162) have both been used to designate intersections and plantar surfaces.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “49” has been used to designate both intersections (para. 0160) and plantar surfaces (para. 0160); and reference character “47” has been used to designate both intersections (para. 0160) and plantar surfaces (para. 0148).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 41 (para. 0137) and 40 (para. 0142).
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 1 recites, “a bottom edge” and such terminology does not appear in the specification;
Claim 2 recites, “the top edges of the plurality of resiliently deformable vertical walls” and such terminology does not appear in the specification;
Claim 4 recites, “an outer wall surrounding the plurality of resiliently deformable vertical walls” which has not discussed in the specification and such terminology does not appear in the specification;
Claim 5 recites, “wherein the outer wall includes a base surface defining a plane”, which has not discussed in the specification and such terminology does not appear in the specification;
Claim 7 recites, “when the body is in the relaxed position, the bottom edges of the plurality of resiliently deformable vertical walls are spaced from the plane defined by the base surface of the outer wall of the body”, which has not discussed in the specification and such terminology does not appear in the specification;
Claim 8 recites, “when the body is in the compressed position, the bottom edges of the plurality of resiliently deformable vertical walls are positioned on or below the plane defined by the base surface of the outer wall of the body”, which has not discussed in the specification and such terminology does not appear in the specification;
Claim 10 recites, “wherein the outer wall includes a stepped surface”, which has not discussed in the specification and such terminology does not appear in the specification;
Claim 11 recites, “wherein the stepped surface of the outer wall is configured to engage with an insole”, which has not discussed in the specification and such terminology does not appear in the specification;
Claim 14 recites, “wherein the body includes an outer wall surrounding the plurality of resiliently deformable vertical walls”, which has not discussed in the specification and such terminology does not appear in the specification.
Claim Objections
Claims 1-2 and 9 are objected to because of the following informalities:
Claim 1 should recite, “where each vertical wall of the plurality of resiliently deformable vertical walls, wherein the bottom edge[[s]] of each vertical wall of the plurality of resiliently deformable vertical walls”;
Claim 2 recites the limitation "the top edges" in line 1. There is insufficient antecedent basis for this limitation in the claim;
Claim 9 recites the limitation "the top edges" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction is required.
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 1-2, 9, and 12-15 (and claims 3-8 and 10-11 at least for depending from a rejected claim) 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.
Claim 1 is indefinite as it recites, “wherein each vertical wall includes a bottom edge, wherein the bottom edges of the plurality of resiliently deformable vertical walls are aligned to form a plantar surface.” It is unclear how the bottom edge of each vertically wall forms a plantar surface as “plantar” generally means “of or relating to the sole of the foot” and yet, as shown in Figs. 15b, the bottom edge of the vertical walls appears to be at 49 which faces a support surface and not a sole of the foot.
Claim 2 is indefinite as it recites, “comprising a membrane spanning the top edges of the plurality of resiliently deformable vertical walls.” As a membrane is not pointed to in the drawings, and as a membrane generally refers to a thin pliable sheet of material, it is unclear as to what is meant by a membrane in terms of the disclosed invention. Instead, what is shown in Fig. 15b is an insole body 50 that comprises the previously claimed dorsal surface 48. Therefore, for purposes of examination, Examiner has interpreted the membrane to be the dorsal surface of the arch support from which the plurality of walls project downward.
Claim 9 is indefinite as it recites, “when the body is in the compressed position, the top edges of the plurality of resiliently deformable vertical walls are configured to produce a plurality of stimuli on the arch of the foot.” Such a limitation is a functional limitation but does not claim any structural limitation such as differences in materials and the hardness thereof that would result in such stimuli and therefore it is unclear how the top edges would produce stimuli given that there is a dorsal surface above the walls. Therefore it is unclear as to the meaning of the claim and when infringement would occur.
Claims 12-15 are indefinite as each recites, “the resiliently deformable vertical walls of the plurality of resiliently deformable vertical walls”. As this limitation is repetitive it is unclear what meaning Applicant has intended. Further, as claim 1 recites, “each vertical wall”, it is unclear if “the resiliently deformable vertical walls” is referring to each vertical wall or something different. Examiner respectfully suggests amending to recite, “each vertical wall[[s]] of the plurality of resiliently deformable vertical walls”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh (US 2019/0035849).
Regarding claim 1, Hsieh discloses an arch support (14) for a shoe (1) that receives a foot (as understood from Fig. 1), the arch support comprising: a body (body of having a dome shape (as can be seen in Figs. 4-5, the area 141 is a dome shape) and configured to interface with an arch of the foot (see para. 0020), wherein the body includes a plurality of resiliently deformable vertical walls extending downwardly from a convex dorsal surface (see annotated Fig. 4-5 and para. 20 where 14 is elastically deformable and therefore the structures of 14 are as well); wherein each vertical wall includes a bottom edge, wherein the bottom edges of the plurality of resiliently deformable vertical walls are aligned to form a plantar surface (see annotated Fig. 5, and note the bottom edges can be connected by a line and form a surface that faces the insole 16).
Regarding claim 2, Hsieh discloses comprising a membrane spanning the top edges of the plurality of resiliently deformable vertical walls (as best as can be understood based on the 35 USC 112(b) rejections above, the upper portion of the body that includes the dorsal surface and connects teach of walls is considered the membrane).
Regarding claim 3, Hsieh discloses wherein the plurality of resiliently deformable vertical walls define a plurality of holes (see annotated Fig. 4).
Regarding claim 4, Hsieh discloses wherein the body includes an outer wall surrounding the plurality of resiliently deformable vertical walls (see annotated Figs. 4-5).
Regarding claim 5, Hsieh discloses wherein the outer wall includes a base surface defining a plane (see annotated Figs. 4-5).
Regarding claim 6, Hsieh discloses wherein the body is configured to move between a relaxed position and a compressed position during use (see para. 0020).
Regarding claim 7, Hsieh discloses when the body is in the relaxed position, the bottom edges of the plurality of resiliently deformable vertical walls are spaced from the plane defined by the base surface of the outer wall of the body (as can be seen in annotated Fig. 5, there is a space 4, the portion of which above the plane is between the bottom edges of the vertical walls and the outer wall).
Regarding claim 8, Hsieh discloses wherein, when the body is in the compressed position, the bottom edges of the plurality of resiliently deformable vertical walls are positioned on or below the plane defined by the base surface of the outer wall of the body (as when compressed by the weight of at least one wearer, the bottom edges would touch insole 16 and therefore be at or below the plane shown in annotated Fig. 5).
Regarding claim 9, Hsieh discloses when the body is in the compressed position, the top edges of the plurality of resiliently deformable vertical walls are configured to produce a plurality of stimuli on the arch of the foot (as when compressed with enough weight, the material creating the walls would produce at least a small amount of stimulation at each top edge for at least one wearer with high sensitivity).
Regarding claim 10, Hsieh discloses wherein the outer wall includes a stepped surface (as can be seen in Fig. 4, the outer wall has a stepped surface as it is formed by a surface that has 2 portions that are at different angles that greater that 90 degrees from each other).
Regarding claim 11, Hsieh discloses wherein the stepped surface of the outer wall is configured to engage with an insole (as at least a portion of the surface, when compressed would engage with insole 16, see Fig. 5).
Claim(s) 1 and 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gardiner (US 2013/0312280).
Regarding claim 1, Gardiner discloses an arch support (30, see Figs. 30-36) for a shoe that receives a foot (as understood from para. 0002), the arch support comprising: a body (40) and configured to interface with an arch of the foot (see para. 0073), wherein the body includes a plurality of resiliently deformable vertical walls (walls between each cavity 100 of 40, disclosed as resiliently deformable, see para. 0075-0076) extending downwardly from a convex dorsal surface (surface seen where 40 is pointing in Fig. 35); wherein each vertical wall includes a bottom edge, wherein the bottom edges of the plurality of resiliently deformable vertical walls are aligned to form a plantar surface (see annotated Fig. 35, and note the bottom edges can be connected by a line and form a surface that faces downward).
Regarding claim 12, Gardiner discloses wherein the resiliently deformable vertical walls of the plurality of resiliently deformable vertical walls (walls between each cavity 100 of 40) are interconnected (honeycomb pattern, best seen in Fig. 33).
Regarding claim 13, Gardiner discloses wherein the resiliently deformable vertical walls of the plurality of resiliently deformable vertical walls (walls between each cavity 100 of 40) form a honeycomb pattern (see para. 0092)
Regarding claim 14, Gardiner discloses wherein the body includes an outer wall surrounding the plurality of resiliently deformable vertical walls, and wherein the resiliently deformable vertical walls of the plurality of resiliently deformable vertical walls are connected to the outer wall (as can be seen in Fig. 33).
Regarding claim 15, Gardiner discloses wherein the resiliently deformable vertical walls of the plurality of resiliently deformable vertical walls are selected from the group consisting of a honeycomb pattern, a plurality of polygons, a plurality of circles, and a plurality of oblong rounded shapes (see para. 0092).
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Annotated Fig. 4 (Hsieh)
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Annotated Fig. 5 (Hsieh)
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Annotated Fig. 35 (Gardiner)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Kim (US 2009/0145003) and Conforti (US 2008/0313927) each teaches arch supports with honeycomb patterns projecting downwards, and Polifroni (US 6681501) and Alzner (US 3543765) each teaches arch supports with vertical walls,
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732
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