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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/13/2026 has been entered.
Claims 1 and 3-11 are pending in this application. Claim 10 has been previously withdrawn from further consideration. Claims 1, 3-9 and 11 are being treated on the merits. Any rejection(s) and/or objection(s) made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 05/13/2026.
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 claimed feature "the open/close hole thereof is a through-hole extending through the base member in a thickness direction of the insole, and in a direction perpendicular to a thickness direction of the insole" in claim 1 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.
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:
In claim 1, there is no antecedent basis in the specification for "the open/close hole thereof is a through-hole extending through the base member in a thickness direction of the insole, and in a direction perpendicular to a thickness direction of the insole"
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation "the open/close hole thereof is a through-hole extending through the base member in a thickness direction of the insole, and in a direction perpendicular to a thickness direction of the insole". However, the disclosure fails to set forth the feature of the through-hole extending through the base member BOTH in a thickness direction of the insole AND in a direction perpendicular to a thickness direction of the insole. Therefore, claiming the limitation must be cancelled from the claim, since the claim appears to be new matter.
The remaining claims each depend from the rejected base claim and are likewise rejected.
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 and 3-10 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the open/close hole thereof is a through-hole extending through the base member in a thickness direction of the insole, and in a direction perpendicular to a thickness direction of the insole", which renders the claim indefinite. How does the through-hole extend both in a thickness direction of the insole, AND in a direction perpendicular to a thickness direction of the insole? What is the shape of the through-hole? It is noted that in the embodiment of Figs. 15-18, the open/close hole 493 is configured to penetrate in a direction perpendicular to the thickness direction of the insole (paragraphs 0060, 0063; figs. 16, 18a-18b). For examination purposes, based on paragraphs 0060, 0063 and Figs. 16, 18a-18b of the original disclosure, the limitation has been construed to be "the open/close hole thereof is a through-hole extending through the base member in a direction perpendicular to a thickness direction of the insole".
The remaining claims each depend from the rejected base claim and are likewise rejected.
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 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.
Claims 1, 3-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Makoto (JP S5618703 U) in view of Chou (US 2013/0067766 A1).
Regarding claim 1, Makoto discloses an insole with ventilatory function (for attaching to a shoe sole; fig. 1; see English translation; page 1), comprising:
an air intake path (between air intake valve 2 and intake hole 4; figs. 1-2; page 1);
an air release path (between air release valve 3 and release hole 5; figs. 1-2; page 1) configured to release air inside of a shoe (figs. 1-2; page 1);
an air intake check valve (air intake valve 2; figs. 1-2; page 1) placed to communicate with the air intake path (figs. 1-2; page 1) and configured to include at least a valve element (for closing or opening; figs. 1-2; page 1);
an air release check valve (air release valve 3; figs. 1-2; page 1) placed to communicate with the air release path (figs. 1-2; page 1) and configured to include at least a valve element (for closing or opening; figs. 1-2; page 1); and
a pump chamber (air chamber 6; figs. 1-2; page 1) configured to communicate with the air intake check valve and with the air release check valve (figs. 1-2; page 1) and formed in a flat shape (see figs. 1-2) to include at least a partial area in front of a position of an arch of a foot, or a pump groove portion (see figs. 1-2) configured to form the pump chamber (see figs. 1-2),
wherein at least one of the air intake check valve or the air release check valve is placed in the insole (figs. 1-2; page 1).
Makoto does not disclose wherein the air intake check valve includes a base member provided with an open/close hole formed therein and a valve element controlled to open and close the open/close hole, at least one of the air intake check valve and the air release check valve is placed in the insole such that the open/close hole penetrates the base member in a direction perpendicular to a thickness direction of the insole, wherein the open/close hole is an elongated hole extending in a lateral direction in a front view of such one of the air intake check valve or the air release check valve, wherein the valve element of at least one of the air intake check valve or the air release check valve is a plate body that is extending in the lateral direction in the front view of such one of the air intake check valve or the air release check valve, and wherein the valve element of at least one of the air intake check valve or the air release check valve comprises either one end of a left end or a right end joined with the base member, and is configured to open and close the open/close hole in the lateral direction.
However, Chou, in an analogous art, teaches an insole with ventilatory function (ventilated insole 10; figs. 5-9C; paras. 0062, 0074) comprising an air intake check valve (a first one-way valve 70 adjoining entry conduit 50; figs. 5-6; paras. 0063, 0074) placed to communicate with an air intake path (entry conduit 50; figs. 5-6; paras. 0063, 0074) and configured to include a base member (sleeves 74, 76; fig. 9; para. 0074) provided with an open/close hole (through hole 75; fig. 9; para. 0074) formed therein and a valve element (flap 77; figs. 9-9C; paras. 0074-0075) controlled to open and close the open/close hole (figs. 9-9C; paras. 0074-0075), an air release check valve (a second one-way valve 70 adjoining exit conduit 60; figs. 5-6; paras. 0062, 0074) placed to communicate with an air release path (exit conduit 60; figs. 5-6, 9; paras. 0062, 0074) and configured to include a base member (sleeves 74, 76; fig. 9; para. 0074) provided with an open/close hole (through hole 75; fig. 9; para. 0074) formed therein and a valve element (flap 77; figs. 9-9C; paras. 0074-0075) controlled to open and close the open/close hole (figs. 9-9C; paras. 0074-0075), wherein at least one of the air intake check valve and the air release check valve is placed in the insole (figs. 5, 5A; paras. 0074-0075) such that the open/close hole thereof penetrates the base member in a direction perpendicular to a thickness direction of the insole (see fig. 6 and annotated figs. 5, 5A), and the open/close hole is an elongated hole (see fig. 5-6, 9-9C) extending in a lateral direction in a front view of such one of the air intake check valve and the air release check valve (see figs. 6, 9, 9C and annotated figs. 5, 5A), wherein the valve element (flap 77; figs. 9-9C) of at least one of the air intake check valve or the air release check valve is a plate body (as being a flap; figs. 9, 9C) that is extending in the lateral direction in the front view of such one of the air intake check valve or the air release check valve (see figs. 9-9C and annotated figs. 5, 5A), and wherein the valve element of at least one of the air intake check valve or the air release check valve comprises either one end of a left end or a right end joined with the base member (at a left or right end of inner sleeve 76; figs. 8-8A, 9-9C; para. 0074), and is configured to open and close the open/close hole in the lateral direction (figs. 9-9C, and annotated figs. 5, 5A; paras. 0074-0075).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the insole as disclosed by Makoto, with wherein the air intake check valve includes a base member provided with an open/close hole formed therein and a valve element controlled to open and close the open/close hole, at least one of the air intake check valve and the air release check valve is placed in the insole such that the open/close hole penetrates the base member in a direction perpendicular to a thickness direction of the insole, wherein the open/close hole is an elongated hole extending in a lateral direction in a front view of such one of the air intake check valve or the air release check valve, wherein the valve element of at least one of the air intake check valve or the air release check valve is a plate body that is extending in the lateral direction in the front view of such one of the air intake check valve or the air release check valve, and wherein the valve element of at least one of the air intake check valve or the air release check valve comprises either one end of a left end or a right end joined with the base member, and is configured to open and close the open/close hole in the lateral direction, as taught by Chou, in order to use alternative suitable check valves for easy control of air intake and air release when the insole is in use.
Regarding claim 3, Makoto and Chou, in combination, disclose the insole according to claim 2. Chou further teaches wherein the left and right ends of the air intake check valve and the air release check valve are respectively fixed in an air intake valve mounting groove (first tunnel 24 adjoining entry conduit 50; figs. 5A, 9; para. 0074) and an air release valve mounting groove (second tunnel 24 adjoining exit conduit 60; figs. 5A, 9; para. 0074) formed in the insole, and wherein at least part of a joint region (see fig. 5A) of the valve element that is extending in the lateral direction and the base member is fit in the air intake valve mounting groove or the air release valve mounting groove (see fig. 5A). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the insole as disclosed by Makoto, with wherein the left and right ends of the air intake check valve and the air release check valve are respectively fixed in an air intake valve mounting groove and an air release valve mounting groove formed in the insole, and at least part of a joint region of the valve element that is extending in the lateral direction and the base member is fit in the air intake valve mounting groove or the air release valve mounting groove as taught by Chou, in order to use a suitable configuration to secure the air intake check valve and the air release check valve inside the insole.
Regarding claim 4, Makoto and Chou, in combination, disclose the insole according to claim 1. Chou further teaches wherein the base member (sleeves 74, 76; figs. 9-9C) of at least one of the air intake check valve or the air release check valve is a plate body (see figs. 6, 9) that is long in the lateral direction (see figs. 6, 9), and comprises a plate surface placed in the thickness direction of the insole (see figs. 5A, 6). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the insole as disclosed by Makoto, with wherein the base member of at least one of the air intake check valve or the air release check valve is a plate body that is long in the lateral direction, and comprises a plate surface placed in the thickness direction of the insole as taught by Chou, in order to use a suitable configuration of the base member of the air intake check valve and the air release check valve.
Regarding claim 5, Makoto and Chou, in combination, disclose claim 1, and Makoto further discloses wherein the pump chamber or the pump groove portion is formed as an area from a heel location to a location of base of toes (see figs. 1-2), wherein the air intake check valve is placed behind the pump chamber or the pump groove portion (see figs. 1-2), and wherein the air release check valve is placed in front of the pump chamber or the pump groove portion (see figs. 1-2).
Makoto does not disclose wherein the base member of the air intake check valve and of the air release check valve is a plate body and is placed, such that the open/close hole of the air intake check valve and of the air release check valve penetrates the base member in a front-rear direction of the insole. However, Chou teaches wherein the base member (sleeves 74, 76; figs. 9-9C) of the air intake check valve and of the air release check valve is a plate-like body (see figs. 6, 9) and is placed, such that the open/close hole of the air intake check valve and of the air release check valve penetrates the base member in a front-rear direction of the insole (see figs. 6, 9). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the insole as disclosed by Makoto, with wherein the base member of the air intake check valve and of the air release check valve is a plate body and is placed, such that the open/close hole of the air intake check valve and of the air release check valve penetrates the base member in a front-rear direction of the insole as taught by Chou, in order to use a suitable configuration of the air intake check valve and the air release check valve for easy control of air intake and air release when the insole is in use.
Regarding claim 9, Makoto and Chou, in combination, disclose the insole according to claim 5, and Makoto further discloses wherein the air release check valve (air release valve 3; figs. 1-2) located laterally outward from a center in a width direction of the insole (see fig. 1).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Makoto (JP S5618703 U) and Chou (US 2013/0067766 A1) and further in view of Rosenberg (US 4,590,689 A).
Regarding claim 6, Makoto and Chou, in combination, disclose the insole according to claim 1, and Makoto further discloses wherein when the insole includes the pump groove portion (see figs. 1-2), the insole further comprises a main body plate (main body 1; page 1; figs. 1-2); wherein
the main body plate is provided with an air intake valve mounting groove (see figs. 1-2) and an air release valve mounting groove (see figs. 1-2) formed to mount the air intake check valve and the air release check valve thereto (see figs. 1-2), as well as the pump groove portion (see figs. 1-2), and
wherein at least part of the air release path (between air release valve 3 and release hole 5; figs. 1-2; page 1) is formed as an area surrounded by an air release path groove portion (release hole 5; figs. 1-2) formed in the upper face of the main body plate (figs. 1-2).
Makoto does not disclose the insole comprising a cover plate that is laid on at least part of an upper face of the main body plate, wherein the area forming the at least part of the air release path comprises a lower surface of the cover plate. However, Rosenberg, in an analogous art, teaches an insole with ventilatory function (insole 20; fig. 1; col. 1, ll. 64-68) comprising a main body plate (resilient foam member 33; fig. 3; col. 2, ll. 16-19), the insole further comprising a cover plate (top sheet 21; figs. 1, 3; col. 1, ll. 64-68; col. 2, ll. 1-6) that is laid on at least part of an upper face of the main body plate (figs. 1, 3), wherein an area forming the at least part of the an air release path comprises a lower surface of the cover plate (the top sheet 21 and a bottom sheet 23 forming a compartment enclosing the resilient foam member 33, the top sheet comprising holes 26 to release air from the compartment; fig. 3; col. 2, ll. 6-21; col. 3, ll. 9-13). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the insole as disclosed by Makoto, with the insole comprising a cover plate that is laid on at least part of an upper face of the main body plate, wherein the area forming the at least part of the air release path comprises a lower surface of the cover plate as taught by Rosenberg, in order to provide an insole with a cover layer capable of absorbing perspiration (Rosenberg; col. 2, ll. 3-6).
Regarding claim 7, Makoto, Chou and Rosenberg, in combination, disclose the insole according to claim 6. Makoto does not disclose the insole further comprising a base plate that is laid under the main body plate. However, Rosenberg teaches the insole further comprising a base plate (bottom sheet 23; figs. 2-3; col. 2, ll. 64-68) that is laid under the main body plate (figs. 2-3; col. 2, ll. 64-68). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the insole as disclosed by Makoto, with the insole further comprising a base plate that is laid under the main body plate as taught by Rosenberg, in order to cooperate with the cover plate to form a ventilatory compartment; therefore, the insole is capable of independently performing ventilatory functional without cooperating with another suitable shoe sole (Makoto; page 1).
Status of Claims
Claim 8 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 11 is allowed due to a similar reason as discussed in the previous office action mailed 11/04/2025.
Response to Arguments
In view of Applicant's amendment, newly modified grounds of rejection have been identified and applied. Applicant's arguments filed 05/13/2026 have been fully considered. Some of Applicant's arguments with respect to the amended claim 1 are moot in view of the new grounds of rejection. In addition, Applicant stated that Claim 1 was amended as suggested by the Examiner during the interview dated April 22, 2026, which does not appear to be the case. Applicant's other arguments are addressed as follows.
Applicant's remarks: with respect to the secondary reference Chou, Applicant asserts that the longitudinal direction of the alleged hole shown in Fig. 5A of Chou corresponds to "the width direction (left-right direction)" of the insole.
Examiner's response: Examiner respectfully disagrees. Chou discloses "FIG. 5 is a fragmentary perspective view of a ventilated insole" (para. 0041), and "FIG. 5A is a detailed view of a circle of FIG. 5" (para. 0042). Fig. 5 shows the circle including the through hole 75 in a longitudinal direction (front-rear direction) of the insole, and the circle including the through hole 75 in Fig. 5A has the same orientation as the circle in Fig. 5; therefore, the through hole 75 in Fig. 5A is also shown in the longitudinal direction (front-rear direction) of the insole, not the "width direction (left-right direction)" of the insole. Applicant's argument is not found persuasive.
Applicant's remarks: with respect to Chou, Applicant asserts that the through hole 75 cannot be considered as an open/close hole as claimed, because the through hole 75 is not an elongated hole extending in a lateral direction.
Examiner's response: Examiner respectfully disagrees. First, Applicant has defined "lateral direction" as a direction perpendicular to the thickness direction of the insole (para. 0060 of the instant specification); therefore, any direction perpendicular to the thickness direction of the insole can be considered as a "lateral direction", including a longitudinal (front-rear direction). In Chou, "FIGS. 9A, 9B and 9C are views showing the construction of the one-way valve 70 in FIG. 5A" (para. 0049 of Chou). The annotated Figs. 5-5A of Chou clearly show the thickness direction of the insole, and the lateral direction of the insole which meets Applicant's definition of being "perpendicular to the thickness direction of the insole". The annotated Figs. 5, 5A clearly show the elongated shape of the open-close hole 75 extending in the lateral direction of the insole. Applicant's argument is not found persuasive.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional relevant references cited on attached PTO-892 form(s) can be used to formulate a rejection if necessary.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIYING ZHAO whose telephone number is (571)272-3326. The examiner can normally be reached on 8:30 am - 4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA HUYNH can be reached on (571)272-4888. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732
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