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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed January 21, 2026 has been received, Claims 1-18 and 32-36 are currently pending.
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.
1. Claim(s) 1, 6-7, 10-11, 14-15, 32-34, and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Porte (GB 2,193,427 A).
Regarding Claim 1, Porte discloses a shoe insole (1) comprising: an insole padding (2) having a bottom surface (4) and a top surface (3) and comprised of a plurality of fibers (8; Pg.2, lines 28-29) that are not woven with one another (i.e. 8 are not woven with one another), the plurality of fibers being generally vertically oriented relative to the bottom surface and the top surface of the insole padding (Pg.2, lines 28-32), wherein the top surface of the insole padding is a top outermost surface of the shoe insole and the bottom surface of the insole padding is a bottom outermost surface of the shoe insole (as seen in Fig.1 & 2), and wherein the plurality of fibers directly contact the top and bottom outermost surfaces of the shoe insole (as seen in Fig.1 & 2).
Regarding Claim 6, Porte discloses a shoe insole of claim 1, wherein the insole is solely held together through mechanical forces and thermal bonding (Pg.2, lines 49-55).
Regarding Claim 7, Porte discloses a shoe insole of claim 1, wherein the shoe insole does not include any chemical-derived foams or adhesives (as seen in Fig.1 & 2; 1 does not include foams or adhesives).
Regarding Claim 10, Porte discloses a shoe insole of claim 1, wherein the plurality of fibers are comprised of one or more of cotton, polyester, and nylon (Pg.2, lines 28-29).
Regarding Claim 11, Porte discloses a shoe insole of claim 1, wherein the plurality of fibers are comprised of elastomeric polyester fibers (Pg.2, lines 28-29).
Regarding Claim 14, Porte discloses a shoe insole of claim 1, wherein the insole padding has a thickness in a range of about 4 millimeters to about 6 millimeters (Pg.1, lines 106-108).
Regarding Claim 15, Porte discloses a shoe insole of claim 1, wherein the insole padding has a thickness of at least 4 millimeters (Pg.1, lines 106-108).
Regarding Claim 32, Porte discloses a shoe insole of claim 1, wherein the plurality of fibers provide rebound and compression properties to the shoe insole (Pg.1; lines 111-116 & Pg.2, lines 28-29).
Regarding Claim 33, Porte discloses a shoe insole of claim 32, wherein the plurality of fibers are configured to resist a repeating load from a user standing on the top surface of the insole padding (Pg.1; lines 111-123 & Pg.2, lines 28-29).
Regarding Claim 34, Porte discloses a shoe insole of claim 33, wherein the plurality of fibers are oriented parallel to one another and extend between the top and bottom surfaces of the insole padding such that each of the plurality of fibers are generally perpendicular to the top and bottom surfaces of the insole padding (Pg.2, lines 28-32; as seen in Fig.2).
Regarding Claim 36, Porte discloses a shoe insole (1) consisting of: a bottom surface (4) and a top surface (3) and a plurality of fibers (8; Pg.2, lines 28-29) that are not woven with one another (i.e. 8 are not woven with one another), the plurality of fibers being generally vertically oriented relative to the bottom surface and the top surface (Pg.2, lines 28-32; as seen in Fig.1 & 2).
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
2. Claim(s) 2-4 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porte (GB 2,193,427 A) in view of Rohde (US 6,484,419).
Regarding Claims 2 and 4, Porte discloses the invention substantially as claimed above. Porte does not disclose a knitted cover at least partially encapsulating the insole padding; and wherein the knitted cover completely encapsulates the insole padding. However, Rohde teaches an insole padding (12) with a knitted cover (10) at least partially encapsulating the insole padding (as seen in Fig.13); and wherein the knitted cover completely encapsulates the insole padding (as seen in Fig.13; Col.4, lines 43-48).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the insole padding of Porte with a knitted cover, as taught by Rohde, in order to provide a cover that is removable so it can be easily washed to remove odor causing agents, protecting the padding from absorbing odors.
Regarding Claim 3, Porte discloses the plurality of fibers comprised of elastomeric polyester fibers (Pg.2, lines 28-29) and Rohde teaches the cover being elastic (Col.3, line 66-67). Rohde does not explicitly teach the knitted cover is comprised of the same type of fiber as the insole padding. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the elastic fibers of Rohde for the elastomeric polyester fibers of Porte, as a simple substitution of one well known type of elastic fiber for another, in order to yield the predictable result of providing a durable and stretchable fiber that recovers once stretched.
Regarding Claim 17, Porte discloses a shoe insole (1) comprising: an insole padding (2) having a bottom outermost surface (4) and a top outermost surface (3) and a plurality of fibers (8; Pg.2, lines 28-29) that are not woven with one another (i.e. 8 are not woven with one another), the plurality of fibers being generally vertically oriented relative to the bottom outermost surface and the top outermost surface (Pg.2, lines 28-32), the plurality of fibers comprised of elastomeric polymer fibers (Pg.2, lines 28-29) and extending from the top outermost surface of the insole padding to the bottom outermost surface thereof (as seen in Fig.2); wherein the shoe insole does not include any foam material or adhesives (as seen in Fig.1 & 2; 1 does not include foams or adhesives), and a thickness in a range of at least 4 millimeters (Pg.1, lines 106-108). Porte does not explicitly disclose an air permeance in a range of about 92 pL/Pa-s to about 98 L/Pa-s. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the insole padding of modified Porte to have an air permeance in a range of about 92 pL/Pa-s to about 98 L/Pa-s, in order to deliver the optimum air flow to eliminates unwanted moisture from the material. Further, since the claimed values are merely an optimum or workable range. 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. See MPEP 2144.05.
Porte discloses the invention substantially as claimed above. Porte does not disclose a cover directly contacting the top outermost surface of the insole padding and at least partially encapsulating the insole padding. However, Rohde teaches an insole padding (12) with a knitted cover (10); the cover directly contacting the top outermost surface of the insole padding and at least partially encapsulating the insole padding (as seen in Fig.4 & 13; Col.4, lines 43-48); the cover comprised of knitted elastomeric fibers (Col.3, line 66-67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the insole padding of Porte with a knitted cover, as taught by Rohde, in order to provide a cover that is removable so it can be easily washed to remove odor causing agents, protecting the padding from absorbing odors.
Porte discloses the plurality of fibers comprised of elastomeric polymer fibers (Pg.2, lines 28-29) and Rohde teaches the cover being elastic (Col.3, line 66-67). Rohde does not explicitly teach the knitted cover comprised of knitted elastomeric polymer fibers, the elastomeric polymer fibers of the cover being the same material as the elastomeric polymer fibers of the insole padding. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the elastic fibers of Rohde for the elastomeric polymer fibers of Porte, as a simple substitution of one well known type of elastic fiber for another, in order to yield the predictable result of providing a durable and stretchable fiber that recovers once stretched.
Regarding Claim 18, Porte discloses a shoe insole of claim 17, wherein the plurality of fibers of the insole padding are oriented generally perpendicular relative to the bottom outermost surface of the insole padding (Pg.2, lines 28-32).
Regarding Claim 35, When in combination, Porte and Rohde disclose a shoe insole of claim 18, wherein the plurality of fibers directly contact the top and bottom outermost surfaces of the insole padding (Porte: as seen in Fig.2), and wherein the bottom outermost surface of the insole padding directly contacts the cover (Rohde: as seen in Fig.4 & 13)
3. Claim(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porte (GB 2,193,427 A) in view of Tsai (US 2010/0275467).
Regarding Claim 5, Porte discloses the invention substantially as claimed above. Porte does not disclose wherein the plurality of fibers are comprised of a recycled material. However, Tsai teaches an insole formed of a plurality of fibers which are made of recycled material (para.8 & 15).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the plurality of fibers of Porte from a recycled material, as taught by Tsai, in order to provide an insole formed from an environmentally advantageous material.
Regarding Claim 16, Porte discloses the invention substantially as claimed above, including Porte disclosing the insole padding having a toe section that is generally flat (as seen in Fig.1). Porte does not disclose the insole padding includes a heel section having a generally concave shape and an arch section being generally convex in shape and extending from the heel section to the toe section. However, Tsai teaches an insole padding (2) includes a heel section having a generally concave shape, a toe section which is generally flat and an arch section being generally convex in shape and extending from the heel section to the toe section (see annotated Figure below).
PNG
media_image1.png
413
564
media_image1.png
Greyscale
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the insole padding of Porte to have a heel section having a generally concave shape, a toe section which is generally flat and an arch section being generally convex in shape and extending from the heel section to the toe section, as taught by Tsai, in order to provide an insole that follows the anatomical curvatures of a user’s foot, enhancing the comfort and support delivered to the wearer.
4. Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porte (GB 2,193,427 A) in view of Waldrop (US 7,552,604).
Regarding Claim 8, Porte discloses the invention substantially as claimed above Porte does not disclose wherein the entire shoe insole is biodegradable. However, Waldrop teaches a spacer material (10) formed of polyester, cotton, or wool fibers.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polyester material of Porte for the cotton or wool material of Waldrop, as a simple substitution of one well known type of spacer fiber for another, in order to yield the predictable result of providing a cushioning textile. When in combination, Porte and Waldrop teach the entire shoe insole is biodegradable, as it is well known in the textile art that cotton and wool are biodegradable materials.
5. Claim(s) 9 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porte (GB 2,193,427 A).
Regarding Claim 9, Porte discloses the invention substantially as disclosed above, including the entire shoe insole being formed from cotton-polyester blend fibers and polyester filaments (Pg.2, lines 24-29). Porte does not disclose wherein the entire shoe insole is comprised of a single type of material. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the cotton-polyester blend fibers of Porte for the polyester filaments of Porte, as a simple substitution of one well known type of insole material for another, in order to yield the predictable result of providing a comfortable insole material for a user’s foot. 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. See MPEP 2144.07.
Regarding Claim 12, Porte discloses the invention substantially as disclosed above. Porte does not disclose wherein the insole padding has a specific gravity in a range of about 0.13 g/cm3 to about 0.16 g/cm3. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the insole padding of modified Porte to have a specific gravity in a range of about 0.13 g/cm3 to about 0.16 g/cm3, in order to provide an insole padding that is lightweight and comfortable for the user to wear. Further, since the claimed values are merely an optimum or workable range. 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. See MPEP 2144.05.
Regarding Claim 13, Porte discloses the invention substantially as claimed above. Porte does not explicitly disclose an air permeance in a range of about 92 pL/Pa-s to about 98 L/Pa-s. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the insole padding of modified Porte to have an air permeance in a range of about 92 pL/Pa-s to about 98 L/Pa-s, in order to deliver the optimum air flow to eliminates unwanted moisture from the material. Further, since the claimed values are merely an optimum or workable range. 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. See MPEP 2144.05.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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, 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.
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.
/MEGAN E LYNCH/Primary Examiner, Art Unit 3732