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 1-3, and 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12245656. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a sole structure having an upper and lower midsole with a fluid filled chamber and openings.
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) 1-7, and 10-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ho (2021/0368922).
Ho shows A sole structure for an article of footwear, the sole structure comprising:
an upper midsole portion (136a);
a lower midsole portion (136b) attached to the upper midsole portion and cooperating with the
upper midsole portion to form a first opening (see figure 1) at one of a medial side of the sole structure and a lateral side of the sole structure; and
a fluid-filled chamber (108) disposed between the upper midsole portion and the lower midsole
portion, the fluid-filled chamber being exposed at the one of the medial side of the sole structure
and the lateral side of the sole structure by the first opening (see figure 1) as claimed.
In reference to claims 2, 13, see pocket at 146.
In reference to claims 3, 12, 16-18, see figure 1.
In reference to claims 4-6, 11, 17, and 18, Ho shows legs (138a-d).
In reference to claims 7, 10, 14, and 15, see figure 16A.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lesecq (2020/0245718).
Lesecq shows A sole structure for an article of footwear, the sole structure comprising:
an upper midsole portion (12);
a lower midsole portion (14 and 74) attached to the upper midsole portion and cooperating with the upper midsole portion to form a first opening (see figures 1, 11, 18, and 21) at one of a medial side of the sole structure and a lateral side of the sole structure; and
a fluid-filled chamber (16/60) disposed between the upper midsole portion and the lower midsole portion, the fluid-filled chamber being exposed at the one of the medial side of the sole structure and the lateral side of the sole structure by the first opening (sees figure 1, 11, 18, and 21) as claimed.
In reference to claims 2, 13, see pocket in figures 1, 11, 18, and 21.
In reference to claims 3, 12, 16-18, see figures 1, 11, 18, and 21.
In reference to claims 4-6, 11, 17, and 18, Lesecq shows legs as shown below in marked up figure.
PNG
media_image1.png
802
688
media_image1.png
Greyscale
In reference to claims 7, 10, 14, and 15, see marked up figure below and note paragraph [0063].
PNG
media_image2.png
601
560
media_image2.png
Greyscale
In reference to claims 8 and 19, see figure 11 which shows the lower midsole (14 and 74) attached to the upper midsole 12 in the midfoot and forefoot portions of the shoe.
In reference to claims 9 and 20, see paragraphs [0051] and [0052].
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