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 .
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 2-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12201189, 10111490, or 11234482. Although the claims at issue are not identical, they are not patentably distinct from each other because all claim footwear having a foot region, toe region with a forefoot bending spring modulus (as is inherent in all forefoot areas in footwear having propulsion structures), a yok, and a rotatable connection as claimed.
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 4 and 11 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 4 is confusing, vague, and indefinite because it is not clear how a “surface” comprises such a modulus. It is noted that the phrase in claim 2 “the contact surface includes a forefoot bending spring modulus…” has been interpreted broadly as the forefoot elements forming the forefoot contact surface including all elements in the forefoot. It is not clear what structural limitations applicant intends to encompass with such language, i.e. materials, connections, additional elements, etc.
Claim 11 merely recites an intended use and does not provide any further structural limitations because it is not clear what structural limitations are intended to be encompassed by “configured to resist….”.
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) 2, 3, 7-14, 16, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Borden (5090138).
Borden shows Footwear comprising:
a foot region configured to receive a user’s foot, the foot region comprising:
a footwear body (10);
sidewalls (24) operatively coupled to the footwear body, and
a contact surface (elements forming the forefoot area of the footwear) operatively coupled to the sidewalls and configured to extend under a toe region (18 and 32) of the user’s foot when the user’s foot is received in the foot region, and
wherein the contact surface includes a forefoot bending spring modulus configured to
augment propulsion of the user (see column 5 lines 11-44 inasmuch as applicant has defined such);
a yoke (14) configured to receive a portion of the user's leg above the user's ankle;
a rotatable connection (16) between the yoke and sidewalls, wherein an axis of rotation of the
rotatable connection is configured to be positioned along or adjacent to an axis of rotation of the
user's ankle in a sagittal plane when the footwear is worn by the user, and wherein the yoke is
configured to transfer compressive forces through the rotatable connection and through the
sidewalls as claimed.
In reference to claim 3, the surface is considered contiguous as claimed as shown in figure 2.
In reference to claims 7-10, Borden shows a spring (38), an anterior leg interface (28), lateral yoke sides (as shown in the figures, the side portions) as claimed.
In reference to claim 11, the sides of the yoke of Borden are considered to inherently resist buckling to some degree inasmuch as the claim is understood.
In reference to claim 12, see figures which shows the yoke sides (sides of 14) towards a fulcrum connecting to the sidewalls (12) of the footwear body.
In reference to claim 13, the rubber sole (48) and inner padding (see column 7 lines 7-15) are considered to be an arch support inasmuch as applicant has claimed and defined such.
In reference to claims 14 and 16, all elements are considered to be “integral” as shown in figure 5.
In reference to claim 17, the shoe body (10) is considered to inherently be “semi-rigid” inasmuch as applicant has defined such in that any and all materials listed in Borden are considered to be semi-rigid.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borden.
Borden discloses the claimed invention except for explicitly stating the forefoot bending spring modulus. It would have been obvious to one having ordinary skill in the art at the time the invention was made to form the elements of Borden to be configured to allow the claimed deflection as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claims 5, 6, and 15 are 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.
Response to Arguments
Applicant's arguments filed 1/7/26 have been fully considered but they are not persuasive.
In response to applicants’ arguments directed towards the “forefoot bending spring modulus”, it is noted that the claim language is very broad in that it refers to “a contact surface” and not a material or element or elements and that the collective elements which form the “contact surface of Borden are considered to inherently be “configured to augment propulsion of the user” as claimed in that the collective elements of Borden are shown and taught to perform as claimed (see column 5 lines 11-44).
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
In order to avoid potential delays, Technology Center 3700 is encouraging FAXing of responses to Office Actions directly into the Center at (571)273-8300 (FORMAL FAXES ONLY). Please identify Examiner Marie Bays of Art Unit 3732 at the top of your cover sheet.
Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/Primary Examiner, Art Unit 3732