DETAILED ACTION
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 5 in the reply filed on November 19, 2025 is acknowledged. Claims 1-20 are currently pending.
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 (i.e., changing from AIA to pre-AIA ) 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.
1. Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 6,434,859).
Regarding Claim 1, Kim discloses an insole for an article of footwear, comprising: a sheet forming a portion of the insole (1), the sheet comprising a plurality of domes (2,3) that are spaced apart from one another and interconnected by a connecting portion (1 between 2) of the sheet, wherein the connecting portion extends between adjacent domes and around each dome (as seen in Fig.1-2), and wherein each dome is deflectable from a first state (as seen in Fig.3) where at least a peak of the dome protrudes in a first direction (i.e. upward), away from the connecting portion and a first side of the sheet (i.e. top surface of 1), to a second state (as seen in Fig.4) where at least the peak protrudes in a second direction (i.e. downward), away from the connecting portion and a second side of the sheet, wherein the second direction is opposite the first direction and the second side is opposite the first side (i.e. 2 is capable of being pushed downward further than is seen in Fig.4, such that the bottom side of 2 is situated below 1).
Regarding Claim 2, Kim discloses an insole of claim 1, wherein in the first state each dome is convex relative to the first side of the sheet (as seen in Fig.3), and wherein in the second state each dome is concave relative to the first side of the sheet (as seen in Fig.4; i.e. 2 is capable of being pushed downward further than is seen in Fig.4, such that the bottom side of 2 is situated below 1).
Regarding Claim 4, Kim discloses an insole of claim 1, wherein the sheet comprises a material having an elasticity that is configured such that each dome is deflectable from the first state to the second state in response to a force applied to the dome in the second direction, and wherein each dome snaps back to the first state from the second state in response to removal of the force (as seen in Fig.3-5; Col.2, lines 54-56).
Regarding Claim 5, Kim discloses an insole of claim 1, wherein the plurality of domes is arranged across a length and width of at least a portion of the insole (as seen in Fig.1).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
2. Claim(s) 3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 6,434,859) in view of Hatfield (US 2007/0169376).
Regarding Claim 3, Kim discloses the invention substantially as claimed above. Kim does not disclose wherein the sheet comprises polycarbonate. However, Hatfield teaches an insole having a sheet (70) formed from polycarbonate (para.67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the material of Kim for the polycarbonate of Hatfield, as a simple substitution of one well known type of flexible insole material for another, in order to yield the predictable result of a flexible insole material layer.
Regarding Claim 10, Kim discloses the invention substantially as claimed above. Kim does not disclose an article of footwear comprising the insole of claim 1, and further comprising an upper including a strobel, and wherein the insole is arranged inside the upper and against the strobel. However, Hatfield teaches an upper (20) including a strobel (see annotated Figure below), and wherein an insole (31) is arranged inside the upper and against the strobel (as seen in Fig.4A-4B).
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have placed the insole of Kim within a shoe upper having a strobel, as taught by Hatfield, in order to provide a shoe the insole can be placed inside so that it is useable by a wearer.
3. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 6,434,859) in view of 신광준 (KR 101261375 B1).
Regarding Claim 6, Kim discloses an insole of claim 1, wherein the sheet (1) is a first layer of the insole, and the plurality of domes (2,3) are a plurality of first domes (as seen in Fig.1-2). Kim does not disclose further comprising a second layer comprising a textile that is disposed against the first side of the sheet, wherein the second layer comprises a plurality of spaced apart second domes that follow a contour of the plurality of first domes. However, 신광준 teaches an insole having a first sheet (21) with domes (43) and a second layer (22) comprising a textile that is disposed against the first side of the sheet, wherein the second layer comprises a plurality of spaced apart second domes (43 of 22) that follow a contour of the plurality of first domes (as seen in Fig.3 & 6).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the insole of Kim to include a second layer, as taught by 신광준, in order to provide the optimum level of support to a user’s foot.
Allowable Subject Matter
Claims 7-9 and 11-20 are allowed over the prior art as none of the prior art, along or in combination, teaches a second/third layer of material having second domes that are nested within the first domes and a plurality of apertures that are around a perimeter of each second dome. To modify Kim or any of the cited art to have such structure would be improper hindsight reasoning based on Applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732