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 .
This is in response to Applicant’s amendment in which claims 1, 5, 7, 11, 14, and 17 have been amended, claims 2, 10, 12, and 15 have been canceled, claims 21-22 have been added, and claims 1, 3-9, 11, 13-14, and 16-22 remain pending.
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, 3-9, 11, 13-14, and 16-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,925,347. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1, 3-9, 11, 13-14, and 16-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,193,538. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
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 (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 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, 3-9, 11, 13-14, and 16-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 2015/0313310), herein Okamoto, in view of Portzline et al. (US 2011/0283560), herein Portzline, and Bates (US 4,364,189).
Regarding claim 1, Okamoto discloses a sole for a shoe, comprising: a cushioning element (sole body 2 and mesh sheet 5); and a protection element (protrusions 3 and connections 30) arranged beneath the cushioning element and directly at the cushioning element, wherein the sole comprises a first partial region (heel region) and a second partial region (forefoot region), wherein the protection element comprises a plurality of openings (between elements 3, 30) in the second partial region, wherein the plurality of openings extend through the protection element so that the cushioning element is visible through the plurality of openings (Fig. 1, 3, 6, 8) and wherein when treading down with the sole on a ground, the protection element comprises a larger contact area with the ground in the first partial region than in the second partial region (wherein the protrusions 3 and connections 30 are larger in the first partial region; Fig. 1). (paragraphs 0072-0074, 0086, 0088, 0094; Fig. 1, 3-5, 9)
Okamoto appears to show that the cushioning element comprises a greater stiffness in the first partial region than in the second partial region (wherein the cushioning element is thinner in the second partial region; Fig. 5), but does not specifically discuss the stiffness. Bates teaches a sole having a cushioning element (midsole 12) and a protection element (outsole 16). The cushioning element has a greater firmness/stiffness at a first partial region (portion 34, located at the heel end) than at a second partial region (layers 36, 38), providing improved shock absorption and lateral stability to the sole (column 2, lines 42-67; column 3, lines 7-17; Fig. 2, 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a greater stiffness in the first partial region of Okamoto, as taught by Bates, in order to provide improved shock absorption and lateral stability to the sole, while allowing bending at the forefoot.
Okamoto does not disclose that the cushioning element comprises randomly arranged particles of expanded material. Portzline teaches a sole for shoe having a cushioning element (midsole) comprised of randomly arranged particles (pellets) of expanded material. The material may be thermoplastic polyurethane (paragraphs 0034, 0036, 0037). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to make the cushioning element of randomly arranged particles of an expanded material, such as thermoplastic polyurethane in order to easily form a sole having multiple densities. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 3, Okamoto discloses that the cushioning element is provided as a midsole or as a part of a midsole (Fig. 3).
Regarding claim 4, Okamoto discloses that the protection element is provided as an outsole or as a part of an outsole (Fig. 3).
Regarding claim 5, Bates teaches that the cushioning element comprises a greater density in the first partial region than in the second partial region (column 2, lines 42-67; column 3, lines 7-17).
Regarding claim 6, Okamoto discloses that the cushioning element further comprises a reinforcing element (mesh sheet 5).
Regarding claim 7, Okamoto discloses that the reinforcing element extends both into the first partial region of the sole as well as into the second partial region of the sole (Fig. 5).
Regarding claim 8, Okamoto discloses that the protection element is harder to deform in the first partial region than in the second partial region (wherein the second partial region includes region g which is more easily bendable: paragraph 0086; Fig. 1).
Regarding claim 9, Okamoto discloses that the protection element is stiffer with respect to bending in the first partial region than in the second partial region (wherein the second partial region includes region g which is more easily bendable: paragraph 0086; Fig. 1).
Regarding claim 11, Okamoto discloses that the protection element further comprises a plurality of regions of thinner material (30) in the second partial region (Fig. 1).
Regarding claim 13, Okamoto discloses that the protection element comprises a plurality of openings also in the first partial region and wherein on average the openings in the second partial region occupy a larger area than the openings in the first partial region (Fig. 1).
Regarding claim 14, Okamoto discloses that the protection element further comprises a plurality of regions of thinner material in the first partial region and in the second partial region, and wherein on average the regions of thinner material in the second partial region occupy a larger area than the regions of thinner material in the first partial region (Fig. 1).
Regarding claim 16, Okamoto discloses that the protection element comprises a plurality of first protrusions (3) in the first partial region which comprise a flattened surface (Fig. 9).
Regarding claim 17, Okamoto discloses that the protection element comprises a plurality of second protrusions (3) in the second partial region which, when treading down with the sole on the ground, at least partially penetrate into the cushioning element (paragraph 0088, 0094).
Regarding claims 18-20, Okamoto discloses that the first partial region extends on the medial side of the sole and/or the lateral side of the sole, and wherein the second partial region extends on the lateral side of the sole (wherein each partial region extends within the medial and lateral side of the sole).
Regarding claim 21, Okamoto discloses a sole for a shoe, comprising: a cushioning element (sole body 2 and mesh sheet 5); and a protection element (protrusions 3 and connections 30) arranged beneath the cushioning element and directly at the cushioning element, wherein the sole comprises a first partial region (heel region) and a second partial region (forefoot region), wherein the protection element comprises a plurality of openings (between elements 3, 30) and regions of thinner material (30) in the second partial region, wherein the plurality of openings extend through the protection element so that the cushioning element is visible through the plurality of openings (Fig. 1, 3, 6, 8), and wherein when treading down with the sole on a ground, the protection element comprises a larger contact area with the ground in the first partial region than in the second partial region (wherein the protrusions 3 and connections 30 are larger in the first partial region; Fig. 1). (paragraphs 0072-0074, 0086, 0088, 0094; Fig. 1, 3-5, 9)
Okamoto appears to show that the cushioning element comprises a greater stiffness in the first partial region than in the second partial region (wherein the cushioning element is thinner in the second partial region; Fig. 5), but does not specifically discuss the stiffness. Bates teaches a sole having a cushioning element (midsole 12) and a protection element (outsole 16). The cushioning element has a greater firmness/stiffness at a first partial region (portion 34, located at the heel end) than at a second partial region (layers 36, 38), providing improved shock absorption and lateral stability to the sole (column 2, lines 42-67; column 3, lines 7-17; Fig. 2, 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a greater stiffness in the first partial region of Okamoto, as taught by Bates, in order to provide improved shock absorption and lateral stability to the sole, while allowing bending at the forefoot.
Okamoto does not disclose that the cushioning element comprises randomly arranged particles of expanded material. Portzline teaches a sole for shoe having a cushioning element (midsole) comprised of randomly arranged particles (pellets) of expanded material. The material may be thermoplastic polyurethane (paragraphs 0034, 0036, 0037). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to make the cushioning element of randomly arranged particles of an expanded material, such as thermoplastic polyurethane in order to easily form a sole having multiple densities. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 22, Okamoto discloses that the protection element comprises a plurality of openings and regions of thinner material in the first partial region and wherein on average the openings and regions of thinner material in the second partial region occupy a larger area than the openings and regions of thinner material in the first partial region (Fig. 1).
Response to Arguments
Applicant's arguments filed 01/09/2026 have been fully considered but they are not persuasive.
Regarding the double patenting rejections, Applicant argues that a terminal disclaimer has been filed. However, no terminal disclaimer has been received.
Applicant argues that Okamoto does not teach actual openings that extend through a sole, and that the interstitial regions 20 is the sole bottom surface, not a plurality of openings. However, element 20 is the sole bottom surface of sole body 2, which is the cushioning element, not the sole bottom surface of the protection element. The protection element is made up of the combination of protrusions 3 and connection elements 30. These elements do not cover the full bottom surface of the cushioning element, but rather have openings between the elements which expose the bottom surface of the cushioning element. This is clearly shown in Fig. 1 and 6 (which show sole bottom surface 20 of sole body 2 exposed within the spaces between elements 3/30), and Fig. 3 and 8 (which show portions of sole bottom surface 20 are not covered by elements 3/30, and are visible through the openings).
Regarding Applicant’s argument that Okamoto does not teach openings that extend through a sole, it is noted that claims recite openings which extend through the protection element, not specifically a sole.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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