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 with traverse of species IX shown in figures 18A-C in the reply filed on 11/21/25 is acknowledged. The traversal is on the ground(s) that species VI, IX, and X all show inner soles with protuberances. This is not found persuasive because the different species show different patterns and locations of protuberances and therefore are different species. In reference to the elected species of the inner sole IX shown in figures 18A-C being capable of being used in combination with a midsole as taught by the species VI, shown in figures 12-15, the specification provides vague, general basis for such in paragraph [0184], however there is no figure showing such a combination or clear disclosure of such. For Examination purposes the Examiner has considered the claims directed towards the insole of species IX with a midsole, however claims directed towards the different species, i.e. patterns of protuberances has not been considered as those claims are directed towards unelected species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16, and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/21/25.
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 1-9 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 claim 1 the phrases “a wearer’s foot is configured to contact…” attempts to positively recite a wearer’s foot which is an unclaimed and non statutory element rendering the claims vague, confusing, and indefinite.
Claim Rejections - 35 USC § 102
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) 1-7 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horvath (2020/0170335).
Horvath shows An article of footwear, comprising:
an inner sole (18) comprising a first surface opposite a second surface, wherein the first surface comprises an untextured area (top of 18), and wherein a plurality of protuberances are arranged on the second surface (30); and
a midsole (16 is considered a “midsole” inasmuch as applicant has defined such and it is noted that Horvath shows an “outsole” at 40) comprising a top surface having a plurality of mating elements (32), wherein the inner sole is removably securable to the midsole such that the first surface is arranged facing the top surface (the inner sole (18) is clearly capable of being arranged in this orientation) and a wearer’s foot is configured to contact the plurality of protuberances arranged on the second surface (the second surface is clearly capable of being contacted by a foot), or such that the second surface is arranged facing the top surface of the midsole (as shown in the figures) and the wearer’s foot is configured to contact the first surface (the second surface is clearly capable of being contacted by a foot), and
wherein when the second surface of the inner sole is arranged facing the top surface of the midsole, the plurality of protuberances are engaged by the plurality of mating elements and the second surface of the inner sole is in facing engagement with the top surface of the midsole (see figure 4) as claimed.
In reference to claim 2, Horvath shows recesses (32).
In reference to claim 3, Horvath see figure 4.
In reference to claim 4, see top surface of inner sole (18).
In reference to claims 5 and 6, Horvath shows a first region with protuberances (30) arranged as claimed in claim 6 and a second region without (see figure 5).
In reference to claim 7, see paragraph [0051].
In reference to claim 9, the protuberances are shown and described as integral.
Claim(s) 1-7 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rini (2020/0178648).
Rini shows An article of footwear (see figure 25), comprising:
an inner sole (2501) comprising a first surface opposite a second surface, wherein the first surface comprises an untextured area (area shown at the front of 2501 in figure 25), and wherein a plurality of protuberances are arranged on the second surface (2504 and 2502); and
a midsole (bottom element 2508 shown in figure 25) comprising a top surface having a plurality of mating elements (2509, 2510), wherein the inner sole is removably securable to the midsole such that the first surface is arranged facing the top surface (the inner sole of 2501 is removably attached and it is considered to be capable of arrangement with elements 2502 and 2504 oriented upward which would result in the foot of a wearer being capable of contacting these elements) and a wearer’s foot is configured to contact the plurality of protuberances arranged on the second surface (the second surface is clearly capable of being contacted by a foot), or such that the second surface is arranged facing the top surface of the midsole (as shown in figure 25) and the wearer’s foot is configured to contact the first surface (the second surface is clearly capable of being contacted by a foot), and
wherein when the second surface of the inner sole is arranged facing the top surface of the midsole, the plurality of protuberances are engaged by the plurality of mating elements and the second surface of the inner sole is in facing engagement with the top surface of the midsole (see figure 25) as claimed.
In reference to claim 2, Rini shows recesses (2509 and 2510).
In reference to claim 3, Rini see figure 25.
In reference to claim 4, the first surface of Rini does not have any “protuberances” as Rini only shows elements 2502 and 2504 which are only shown on the bottom surface.
In reference to claims 5 and 6, Rini shows a first region with protuberances (2502 and 2504) arranged as claimed in claim 6 and a second region without (see figure 25 and the remainder of the surface does not have any protuberances).
In reference to claim 7, see paragraph [0053].
In reference to claim 9, the protuberances are shown and described as integral.
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) 15 and 18-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wynn (2015/0237959) in view of Suginaka (5063692).
Wynn shows A sole for an article of footwear, comprising:
an inner sole (see figure 1) having a top surface, a toe region, a midfoot region, and a heel region and configured to support a foot of a wearer;
first protuberances (8) arranged at a toe region of the inner sole;
second protuberances (12) arranged along a lateral side of a midfoot region of the inner sole;
third protuberances (14 and 16) arranged on a heel region of the inner sole; and
a first untextured area with no protuberances (see figure 1) arranged at a medial side of the midfoot region substantially as claimed except for an enlarged toe protuberance. Suginaka teaches providing an enlarged slope toe protuberance (15). It would have been obvious to provide an enlarged protuberance as taught by Suginaka in the footwear of Wynn to provide support and to prevent slipping under the toes of the foot.
In reference to claim 18, the center of the heel (between 14 and 16) does not have any texture.
In reference to claim 19, the lateral portion of the toe is shown in figure 1 with no texture/protuberances.
In reference to claims 20-25, see shape shown by Suginaka for element 15.
Claim(s) 15 and 18-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferniani (2019/0142107) in view of Suginaka (5063692).
Ferniani shows A sole for an article of footwear, comprising:
an inner sole (see figure 1) having a top surface, a toe region, a midfoot region, and a heel region and configured to support a foot of a wearer;
first protuberances (24) arranged at a toe region of the inner sole;
second protuberances (20) arranged along a lateral side of a midfoot region of the inner sole;
third protuberances (20 and 22) arranged on a heel region of the inner sole; and
a first untextured area with no protuberances (see figure 1 where number 50 points to) arranged at a medial side of the midfoot region substantially as claimed except for an enlarged toe protuberance. Suginaka teaches providing an enlarged slope toe protuberance (15). It would have been obvious to provide an enlarged protuberance as taught by Suginaka in the footwear of Ferniani to provide support and to prevent slipping under the toes of the foot.
In reference to claim 18, the center of the heel (at 40) does not have any texture.
In reference to claim 19, the lateral portion of the toe is shown in figure 1 with no texture/protuberances (area forward of 32).
In reference to claim 20, element 32 is considered to be generally triangular shaped.
In reference to claims 20-25, see shape shown by Suginaka for element 15.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horvath.
Horvath shows a shoe substantially as claimed except for the exact process of forming the protuberances. 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). It would have been obvious to use any known method including liquid polymer application process.
Response to Arguments
Applicant's arguments filed 3/27/26 have been fully considered but they are not persuasive.
In response to applicants’ arguments directed towards Horvath, it is noted that the added phrase by applicant is vague and indefinite as noted above and any limitations directed towards “a wearer’s foot” have been treated very broadly as intended use recitations. Also, it is noted that the newly added phrase is an alternative recitation and therefor only one of the orientations is required to meet the claim language and Horvath does clearly show the inner sole (18) with protrusions contacting and engaging the plurality of mating elements/recesses. It is noted that cited reference to Cordobes (WO2008/003799) and/or Chambers (5551173) teaches an intended use of reversibly orienting an insole.
In reference to applicants’ arguments directed towards Wynn or Ferniani, see above rejection with newly added reference to Suginaka.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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/MARIE D BAYS/Primary Examiner, Art Unit 3732
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