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 without traverse of species I (article of footwear (10) with incline adjuster (16) as shown in figures 4A-4C) in the reply filed on 5/14/2026 is acknowledged.
Claim Rejections - 35 USC § 112
Claims 1-14 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 pre-AIA the applicant regards as the invention.
Claims 2-4 and the last 6 lines of claim 1 are improper since it is a combination of two different statutory categories (a product claim (i.e. the claimed article; see line 1 of claim 1) and method steps (e.g. a memory comprising instructions…wherein the instructions are executable by the processor to cause the processor to perform the steps that comprise:...the transfer channel.” Claims 2-4 recite further steps (i.e. the processor to perform the steps…” Therefore, the scope is not clear and can’t be determined. For purposes of prosecution the method steps/limitations are being treated as a product-by-process limitation.
Claims 2-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2-4 fail to further define the article as defined in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim(s) 1-8 and 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by either US 2017/0150785 (Walker ‘785) and US 2016/0345663 (Walker ‘663). In the rejection below, in view of the similarities between Walker ‘785 and 663, Walker ‘785 will be recited only since the teaching being relied upon are the same.
Regarding claims 1-8 and 11-14, Walker ‘785 discloses an article (footwear 10 including sole) comprising:
an incline adjuster (16) comprising a main body, a variable-volume first chamber (lateral chamber 36) extending on a lateral side of the main body, and a variable-volume second chamber (medial chamber 35) extending on a medial side of the main body, and wherein the incline adjuster further comprises:
a transfer channel (51) extending between the lateral chamber and the medial chamber;
an electrorheological fluid filling the lateral chamber, the transfer channel, and the medial chamber (e.g. see para. 0048, lines 6-10);
a first electrode (bottom electrode 61) exposed to the electrorheological fluid along the transfer channel (at least see para. 0050,0058 and figure 5A);
and a second electrode (top electrode 69) and exposed to the electrorheological fluid along the transfer channel in a position opposite the first electrode,
a plate (41) located above the incline adjustor and arranged so that downward force on the plate toward the incline adjustor does not compress a region containing the first and second electrodes (see figures 7A-7D showing the plate elevated above the electrodes (61,69) and therefore are not compressed);
a processor (110); and
memory (111) comprising instructions stored on the memory, wherein the stored instructions are executable by the processor to cause the processor to perform the steps comprise: determining that a change of an incline angle of the plate is not required, and in response to the determining that the change of the incline angle of the plate is not required, maintaining a voltage across the first electrode and the second electrode at one or more flow-inhibiting levels preventing flow of the electrorheological fluid through the transfer channel (at least see ¶0089-0093 and 0099-0105). To the extent that the steps (i.e. steps as defined in claims 1-4) are not performed, such limitations are being treated as a product-by-process. A product-by-process claim is a product claim, in which a product is defined at least in part in terms of the method or process by which it is made. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. It is well settled that the patentability of a product ordinarily can not depend on its method of being made. See In re Thorpe, 777 F.2d 695, 227 USPQ 964 (1985). “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”, MPEP 2113. Nonetheless, Walker ‘785 teaches all of the structure as claimed (e.g. a controller (47), a processor (110) and memory (111)) and therefore are inherently capable of performing the functional language as claimed.
Regarding claim 5, Walker ‘785 teaches wherein the first chamber (36) comprises a first chamber wall central section (see #1 in annotated figure 7A below) and a first chamber wall central section (see # 2 or # 3 below which both show wall section in the central region) having an exterior shape that includes a depression (see # 1 below which shows the depression in the 1st chamber wall central section).
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Regarding claim 6, see figures 7A-7D.
Regarding claim 7, at least see figures 4A,5A,5B and 5C2 showing the transfer channels, transfer channel paths, and electrodes as claimed.
Regarding claim 8, first electrode (bottom electrode 61) is embedded in channel bottom (51) formed in bottom layer (53) and second electrode (69) is embedded in channel top (51) formed in top layer 55.
Regarding claim 11, see figure 7A in the 35 USC 102 rejection above showing the depression as claimed.
Regarding claim 12, at least see figure 5 showing the incline adjuster forms a part of a forefoot portion of the sole structure.
Regarding claims 13-14, see medial stop (122) and lateral stop (123) in figures 7A-7D formed as a rim on the medial side and lateral side, respectively, on the bottom plate (at least see ¶0098).
Claim(s) 15-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by either US 2017/0150785 (Walker ‘785) and US 2016/0345663 (Walker ‘663). In the rejection below, in view of the similarities between Walker ‘785 and 663, Walker ‘785 will be recited only since the teaching being relied upon are the same.
Regarding claims 15-20, Walker ‘785 discloses an article (footwear 10 including sole) comprising:
an incline adjuster (16) comprising
a main body (see figure 3 showing the chambers 35,36 extending from the main body);
a plurality of chambers (35,36) extending on a side of the main body (see figure 3);
a transfer channel (51) extending between the plurality of chambers;
an electrorheological fluid filling the plurality of chambers and the transfer channel (e.g. see para. 0048, lines 6-10);
a first electrode (bottom electrode 61) exposed to the electrorheological fluid along the transfer channel (at least see para. 0050,0058 and figure 5A);
and a second electrode (top electrode 69) and exposed to the electrorheological fluid along the transfer channel in a position opposite the first electrode,
a plate (41) located above the incline adjustor and arranged so that downward force on the plate toward the incline adjustor does not compress a region containing the first and second electrodes (see figures 7A-7D showing the plate elevated above the electrodes (61,69) and therefore are not compressed);
wherein maintaining a voltage across the first electrode and the second electrode (61,69) at one or more flow-inhibiting levels prevents flow of the electrorheological fluid through the transfer channel to maintain an incline angle of the plate (at least see ¶0099.
Regarding claim 16, Walker ‘785 teaches wherein the first chamber (36) comprises a first chamber wall central section (see #1 in annotated figure 7A below) and a first chamber wall central section (see # 2 or # 3 below which both show wall section in the central region) having an exterior shape that includes a depression (see # 1 below which shows the depression in the 1st chamber wall central section).
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Regarding claim 17, see figures 7A-7D.
Regarding claim 18, at least see figures 4A,5A,5B and 5C2 showing the transfer channels, transfer channel paths, and electrodes as claimed.
Regarding claim 19, first electrode (bottom electrode 61) is embedded in channel bottom (51) formed in bottom layer (53) and second electrode (69) is embedded in channel top (51) formed in top layer 55.
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.
Claims 9-10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over either [Walker ‘785 and Walker ‘663] in view of US 6519873 (Buttigieg).
Walker teaches an article of footwear as claimed except for the lateral chamber wall side section comprises at least one fold defining a bellows shape (claim 9) and the medial chamber wall side section comprises at least one fold defining a bellows shape (claim 10).
Buttigieg teaches an article of footwear wherein the chambers have sidewalls with folds defining a bellows shape (see bellows shaped chambers 1,2 in figure 3A for example and see the abstract) so as to expand and contract the volume of the fluid within the chambers, wherein the chambers communicate through channels between the chambers (see figure 8B).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lateral and medial chambers taught by Walker ‘785 or Walker ‘663, to have a bellows shaped walls, as taught by Buttigieg, to facilitate changing the shape and dimensions of the chambers.
Claim 20 is similar to claims 9-10 but is broader inasmuch as the chambers being lateral and medial is not claimed.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. 10,980,312, 10,980,314, 11,576,464 and 12,274,328. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely broader than the patent claim. In essence, once the applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if you have a broad claim to examine, and you find a reference, which discloses every element of the claim, you have a reference that anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571)272-4556. The examiner can normally be reached Monday-Thursday 8AM-6PM.
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 on 5712724888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/Primary Examiner, Art Unit 3732
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