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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the applicant claims “a density difference…is in a range of 1%-3%”. The specification teaches that the foamed shoe material (20) has a density difference in a range of 1%-3% or in other words, the density difference of the foamed material (20) is even, which contradicts itself (see ¶0026; reproduced below). From the disclosure it is not clear if applicant is teaching the claimed foamed shoe material (20) has an even density or if the density difference is different in the different sections of the foamed shoe material and has a density difference in the range of 1%-3%. Therefore, the description of the claimed invention is not sufficiently detailed so that one or ordinary skill in the art can reasonably conclude the inventor has possession of the claimed invention. Was applicant trying to claim the density is the same/even but could have small deviation (e.g. a density difference that ranges from even (0%) or as much as (3%)? If this is the case, then is their support for this? There could be other interpretations of this language.
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Claims 1-5 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.
In claim 1, the phrase “a density difference…is in a range of 1%-3%” is unclear and indefinite. The specification teaches that the foamed shoe material (20) has a density difference in a range of 1%-3% or in other words, the density difference of the foamed material (20) is even, which contradicts itself (see ¶0026). From the disclosure it is not clear if applicant is teaching the claimed foamed shoe material (20) has an even density in the sections or if the density difference is different in the different sections of the foamed shoe material and the difference is in the range of 1%-3%. Therefore, the scope of the claim is not understood.
In claim 2, the phrase “the foamed body is formed by foaming a semi-finished product that is unfoamed” is unclear and indefinite. It is not clear how this language further defines the claimed “foamed shoe material”. This language contradicts the final product (i.e. foamed shoe material) which is what is being claimed. The language appears to be a step in a method claim and therefore the scope of the claim is not understood.
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 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) 1-5, as understood, is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2021/0277199 (Archer).
Regarding claims 1-5, Archer discloses a foamed shoe material (e.g. sole structure 120 (122,124); see figures 1-2) is a foamed body (136), wherein the foamed body is divided into a plurality of sections, comprising a fore section (148), a heel section (150), and an arch section (152), and the arch section is located between the fore section and the heel section (see figure 2); a density difference between any two of the fore section, the heel section, and the arch section is in a range of 1% to 3% (see density ranges given in at least ¶0088,0180,0181).
To the extent that the “density difference” falls outside of the “1% to 3%” range as taught by Archer, it would appear to be an obvious design choice to construct the density difference of the foamed shoe material as taught by Archer above, to have a density difference between any two of the fore section, heel section and the arch section is in a range of 1% to 3% inasmuch as the density being the same throughout the foamed sole material and/or slightly different (i.e. range of 1% to 3%”) would appear to be suitable depending on the individual wearer and the activity for be used for. That is, these parameters are recognized in the art to be a variable that is result effective. Generally, it is considered to have been obvious to develop workable or even optimum ranges for such variables. For example, see In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Since the applicant has not demonstrated or even alleged that these specifically claimed parameters for the foamed body produces any unexpected results, it is our conclusion that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum parameters for the foam body and thereby arrive with the foam body having a density difference within the range as claimed.
Regarding claim 2, see the 35 USC 112 rejection above. Moreover, see ¶0013 which teaches foam material is reused and therefore foam material “unfoamed” before during early stages of forming the final product. Therefore teaches the method step as claimed.
Regarding claims 3-4, see the marked up figure below showing the first-fourth imagery lines (A1-A4) as claimed.
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Regarding claim 5; at least see figures 1,2 and 15.
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.
With regard to the densities being different in each section at least see ¶0065 of US 2020/0221812 (Isse) and it would be an obvious design choice to have a density difference in the section with a density difference in 1-3% range.
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 on Monday-Thursday 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. 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 Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
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