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 Group I (claims 1-9,19 and 20) in the reply filed on 2/11/2026 is acknowledged.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/11/2026.
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 1-8,19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8950086 (Andriacchi) in view of US 2020/0390188 (Cass).
Regarding claims 1-8, Andriacchi discloses, in the footwear field (see “Technical Field” and “Background”) providing a foot platform (10) comprising:
a forefoot area, a rear foot area and a midfoot area between the forefoot area and the rearfoot area (platform 10, as shown in the figures 1-5 and 8A-8B, extend under all regions of the foot), and comprising:
a lateral region (lateral segment 14) constructed of a first material (lateral material stiffness 24) positioned at least in the rearfoot area, the first material being configured to compress to a first maximum compression (e.g. body force of patient 100 applies a force to compress the material to a first maximum compression); and
a medial region (medial segment 16) constructed of a second material (medial material stiffness 26) positioned at least in the rearfoot area, the second material being configured to compress to a second maximum compression different than the first maximum compression (second maximum compression is higher than the first maximum compress; see col. 5, lines 17-29 of Andriacchi),
wherein at least one of the lateral regions or the medial region extends only part way along a mediolateral width of the midsole (at least see figure 2).
The foot platform is inherently a midsole inasmuch as it has all the structure of the midsole as claimed and it is a platform for the foot in the footwear industry.
Andriacchi lacks teaching the midsole (platform) in a shoe comprising an upper connected to a sole assembly, wherein the sole assembly includes an outsole.
Cass teaches the midsole (30,40) in a shoe (10) comprising an upper (17) connected to a sole assembly, wherein the sole assembly includes an outsole (50).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the midsole (platform), as taught by Andriacchi, to be in a shoe comprising an upper connecting to a sole assembly including an outsole, as taught by Cass, to facilitate altering the gait of a patient while walking in the shoe
The shoe as taught have has all the structure as claimed and therefore can inherently be used as a golf shoe.
With regard to claim 2, at least see col. 5, lines 17-29 of Andriacchi.
Regarding claims 3,5 and 6, at least see figure 2 of Andriacchi.
Regarding claim 4, see transition line 28 of Andriacchi defining a boundary between regions.
Regarding claims 7-8, see the materials stiffness of the lateral and medial regions as described at col. 4, line 64 to col. 5, line 29; figures 3A (Equilibrium position); figure 3B (Activation position); and see figures 4-5 with the corresponding description of Andriacchi, and therefore would naturally have the same physical characteristics including maximum compressions and be within the first and second time periods as claimed.
With regard to all the functional language, the shoe as taught by the combination above will inherently perform all of the functional language as claimed inasmuch as it has all the structure as claimed.
Regarding claims 19-20, Andriacchi discloses, in the footwear field (see “Technical Field” and “Background”) providing a foot platform (10) comprising:
a forefoot area, a rear foot area and a midfoot area between the forefoot area and the rearfoot area (platform 10, as shown in the figures 1-5 and 8A-8B, extend under all regions of the foot), and comprising:
a lateral region (lateral segment 14) constructed of a first material (lateral material stiffness 24) positioned the rearfoot area, the midfoot area, and the forefoot area; and
a medial region (medial segment 16) constructed of a second material (medial material stiffness 26) different from the first material (second maximum compression is higher than the first maximum compress; see col. 5, lines 17-29 of Andriacchi), and positioned in the rearfoot area, the midfoot area, and the forefoot area,
wherein at least one of the lateral regions or the medial region extends only part way along a mediolateral width of the midsole (at least see figure 2), and
wherein the first and second materials differ in at least one of maximum compression or in rate of compression (at least see figures 3A-3B and col. 4, line 64 to col.5, line 61).
The foot platform is inherently a midsole inasmuch as it has all the structure of the midsole as claimed and it is a platform for the foot in the footwear industry.
Andriacchi lacks teaching the midsole (platform) in a shoe comprising an upper connected to a sole assembly, wherein the sole assembly includes an outsole.
Cass teaches the midsole (30,40) in a shoe (10) comprising an upper (17) connected to a sole assembly, wherein the sole assembly includes an outsole (50).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the midsole (platform), as taught by Andriacchi, to be in a shoe comprising an upper connecting to a sole assembly including an outsole, as taught by Cass, to facilitate altering the gait of a patient while walking in the shoe.
The shoe as taught have has all the structure as claimed and therefore can inherently be used as a golf shoe.
Regarding claim 20, at least see figure 2 of Andriacchi.
Claims 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 1 above and further in view of US 2016/0360825 (Pedersen).
Both of the materials of the lateral and medial regions of the shoe as taught by the combination above are elastic inasmuch as the resume their normal shape after being compressed. Moreover, the examiner takes official notice that the sole assemblies in the footwear industry are well known and conventional to have elastic material to facilitate cushioning for the wearer. However, the shoe as taught by the combination above lacks specifically listing the types of materials of the first and second materials, other than they being compressible and the stiffness of each material. Therefore, the second material comprising a viscoelastic material is not taught.
Pedersen teaches a shoe sole assembly wherein the “memory foam” includes a viscoelastic material which is highly damped, or slow recovery in order to provide a high degree of cushioning; at least see 0071,0073,0074,0075 and 0082.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the shoe as taught by the combination above with the second materials made out of a viscoelastic material as taught by Pederson, to provide improved shock absorption and cushioning characteristics for the wearer.
With regard to claims 7-8, the shoe as taught by the combination above has all of the structure as claimed and therefore is inherently capable of performing all of the functional language as 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 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 1-9 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,245,662. 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. Example of Limitations: A golf shoe, an upper; a sole assembly connected to the upper, an outsole; a midsole having a forefoot area, a rearfoot area, and a midfoot area between the forefoot area and the rearfoot area, a lateral region constructed of a first material, the first material being configured to compress to a first maximum compression; a medial region constructed of a second material, the second material being configured to compress to a second maximum compression different than the first maximum compression. 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 on 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 a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, 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 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
Prosecution Insights