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 .
1.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) 49-68 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayes et al 2019/0073709 (see paragraphs 0027-0034, 0051-0060 and 0070; see Figs. 1, 2 and 9) in view of Arayama 2019/0152149 (see paragraphs 0018, 0026 and 0106-0109).
Hayes et al discloses the basic claimed system for manufacturing equipment for direct injection production of footwear and a method for manufacturing the footwear by a direct injection process comprising a mold including a direct injection mold (116a, 116b) and direct injection mold inserts (118a, 118b), the mold inserts being made additively (see paragraph 0057), with the mold being combined with lasts (968a, 968b in Fig. 9) that are provided at a footwear manufacturing plant. Hayes et al (see paragraphs 0029-0031 and 0057) discloses that the mold elements are manufactured using either subtractive or additive manufacturing processes employing custom design information (paragraphs 0057-0058) and obviously the manufacturing for the mold elements would occur at a mold and last manufacturing facility and employ a design facility. At paragraph 0057, the primary reference discloses that scanned information for the mold design would “include a point cloud”, such clouds typically being transmitted to remote sites using a public data network. It is submitted that this is nothing but conventional in the art—Official Notice is hereby taken of this—and such would have been an obvious aspect in Hayes et al to allow the different manufacturing facilities to be remote from the design facility. At best, Hayes et al fails to explicitly teach that the lasts are manufactured according to a desired footwear design. Arayama discloses that lasts are conventionally manufactured according to a desired footwear design based on the actual foot of the wearer—see the above-noted passages. It would have been obvious to one of ordinary skill in the art to have modified Hayes et al to include last manufacturing corresponding to a desired footwear design as taught in Arayama to make a shoe with increased comfort to the wearer as would be well known in the art. As already noted, the employment of facilities for the design and manufacture of the mold, the lasts and the footwear made therefrom would have been obvious wherever the facilities are located—ie, at the same physical location or at locations remote therefrom. Obviously, if it is known to make the different components and designs therefor, it would have been obvious to have done so at whatever location deemed most desirable. As such, instant claim 50 is submitted to be clearly within the skill level of the art. Hayes et al (see paragraphs 0051-0054; Figs. 1 and 2) discloses the limitations of instant claims 51-56, 59, 60, 64 and 65. The limitations of instant claims 57 and 58 are conventional in the art for transmitting data to different locations—Official Notice is hereby taken of this—and such would have been obvious modifications to the system of Hayes et al to transmit the data as desired. Instant claim 61 would have obviously been within the skill level of the art dependent on the exact locations desired for the manufacturing. Hayes et al (see paragraphs 0033, 0055) discloses that the mold inserts would be made of Nylon—a polymer—and the use of photopolymers would have been an obvious aspect if desired as set forth in instant claims 62 and 63. The method claims 66-68 are submitted to be obvious over the combination as applied essentially for reasons of record. Ie, the instant method steps recite the use of the system to make footwear and such would have been an obvious method with which the instant system would be used.
2.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 66-68 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,226,972. Although the claims at issue are not identical, they are not patentably distinct from each other because the clams of the previously allowed US Patent set forth a method that is substantially similar to the instant with additional limitations. It is always within the skill level of the art to eliminate unnecessary steps in a method.
3.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A Johnson, can be reached at telephone number 571 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742
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