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 .
Information Disclosure Statement
Since this application is a continuation of US Applications 18/180940, 16/729909, and 16/037979, the Examiner has considered the information provided in the parent application (per MPEP 609.02). Should Applicant desire the information to be printed in any patent issuing from this application, a new listing of the information must be separately submitted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites the limitation “”a top surface in contact with the upper around the entire perimeter of the upper” in lines 7-8. However, the preamble previously recites ‘a sole structure for an article of footwear having an upper’ (emphasis added for clarity). It is not clear if the claim is directed to a sole structure for an article of footwear (as indicated by the preamble), or to an article of footwear including a sole structure and an upper (as indicated by the positive recitation of the upper in lines 7-8). The claim should be amended to either clearly positively recite the upper in the preamble, or to remove the positive recitation of the upper in the body of the claim.
Claims 12-20 depend from rejected claim 11.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,524,540. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,612,213. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,279,671. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
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.
Claim(s) 1-5, 7, 8, 11-15, 17, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cortez et al. (US 2016/0120263), herein Cortez.
Regarding claim 1, Cortez discloses a sole structure for an article of footwear, the sole structure comprising: a bladder (1216) having a chamber including an arcuate segment (24) extending around a heel region of the sole structure, a first segment (26A) extending from the arcuate segment and along a medial side of the sole structure, a second segment (26B) spaced apart from the first segment across a width of the sole structure, extending from the arcuate segment, and extending along a lateral side of the sole structure; and an outer cushion (1218) extending continuously around an outer perimeter of the sole structure to define a closed loop (around opening 1271), the outer cushion including a top surface and a bottom surface disposed on an opposite side of the outer cushion than the top surface and opposing and in contact with the first segment, the second segment, and the arcuate segment of the bladder (paragraphs 0085, 0144-0145; Fig. 29, 35-37).
Regarding claim 11, Cortez discloses a sole structure for an article of footwear having an upper, the sole structure comprising: a bladder (1216) having a chamber including an arcuate segment (2$) extending around a heel region of the sole structure, a first segment (26A) extending from the arcuate segment and along a medial side of the sole structure, a second segment (26B) spaced apart from the first segment across a width of the sole structure, extending from the arcuate segment, and extending along a lateral side of the sole structure; and an outer cushion (1218) extending around an outer perimeter of the sole structure and including a top surface in contact with the upper around the entire perimeter of the upper (Fig. 36) and a bottom surface disposed on an opposite side of the outer cushion than the top surface and opposing and in contact with the first segment, the second segment, and the arcuate segment of the bladder (paragraphs 0085, 0144-0145; Fig. 29, 35-37).
Regarding claims 2 and 12, Cortez discloses that the bladder includes a web area (1260) extending continuously from the first segment to the second segment (across the forefoot area; Fig. 29) and from the arcuate segment to a terminal edge (1261) disposed in a mid-foot region of the sole structure (wherein the flange portion 1264 extends continuously around the outer edges from the arcuate segment to edge 1261; Fig. 29).
Regarding claims 3 and 13, Cortez discloses an inner cushion (1266A-D) received within the outer cushion (paragraphs 0140-0141; Fig. 29, 36).
Regarding claims 4 and 14, Cortez discloses that the inner cushion is received within a pocket defined by the first segment, the second segment, and the arcuate segment of the bladder (Fig. 29, 35).
Regarding claims 5 and 15, Cortez discloses that the inner cushion is disposed between the first segment and the second segment of the bladder (Fig. 29, 35).
Regarding claims 7 and 17, Cortez discloses a lower cushion (1214) disposed on an opposite side of the bladder than the inner cushion (paragraph 0143; Fig. 36).
Regarding claims 8 and 18, Cortez discloses that the lower cushion is disposed between the first segment and the second segment of the bladder (Fig. 36).
Claim(s) 1, 3-11, and 13-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cortez et al. (US 2016/0120263), herein Cortez.
Regarding claim 1, Cortez discloses a sole structure for an article of footwear, the sole structure comprising: a bladder (16) having a chamber including an arcuate segment (24) extending around a heel region of the sole structure, a first segment (26A) extending from the arcuate segment and along a medial side of the sole structure, a second segment (26B) spaced apart from the first segment across a width of the sole structure, extending from the arcuate segment, and extending along a lateral side of the sole structure; and an outer cushion (upper and outer portions of 1018) extending continuously around an outer perimeter of the sole structure to define a closed loop (wherein the outer perimeter of midsole layer 1018 has an outer flange extending around protrusions 1021 and forming a closed loop’ Fig. 23, 25), the outer cushion including a top surface and a bottom surface disposed on an opposite side of the outer cushion than the top surface and opposing and in contact with the first segment, the second segment, and the arcuate segment of the bladder (paragraphs 0085, 0128-0135; Fig. 23-27).
Regarding claim 11, Cortez discloses a sole structure for an article of footwear having an upper, the sole structure comprising: a bladder (16) having a chamber including an arcuate segment (2$) extending around a heel region of the sole structure, a first segment (26A) extending from the arcuate segment and along a medial side of the sole structure, a second segment (26B) spaced apart from the first segment across a width of the sole structure, extending from the arcuate segment, and extending along a lateral side of the sole structure; and an outer cushion (upper and outer portions of 1018) extending around an outer perimeter of the sole structure and including a top surface in contact with the upper around the entire perimeter of the upper (Fig. 25) and a bottom surface disposed on an opposite side of the outer cushion than the top surface and opposing and in contact with the first segment, the second segment, and the arcuate segment of the bladder (paragraphs 0085, 0128-0135; Fig. 23-27).
Regarding claims 3 and 13, Cortez discloses an inner cushion (1021) received within the outer cushion (paragraphs 0129-0130; Fig. 23, 25).
Regarding claims 4 and 14, Cortez discloses that the inner cushion is received within a pocket defined by the first segment, the second segment, and the arcuate segment of the bladder (Fig. 24, 25).
Regarding claims 5 and 15, Cortez discloses that the inner cushion is disposed between the first segment and the second segment of the bladder (Fig. 25).
Regarding claims 6 and 16, Cortez discloses that the inner cushion is in contact with the outer cushion and the bladder (Fig. 26).
Regarding claims 7 and 17, Cortez discloses a lower cushion (1086) disposed on an opposite side of the bladder than the inner cushion (paragraphs 0128-0129; Fig. 25).
Regarding claims 8 and 18, Cortez discloses that the lower cushion is disposed between the first segment and the second segment of the bladder (Fig. 25).
Regarding claims 9 and 19, Cortez discloses that the bladder includes a web area (751) disposed between the first segment and the second segment of the bladder, the web area extending between the inner cushion and the lower cushion (paragraph 0124; Fig. 6, 26).
Regarding claims 10 and 20, Cortez discloses an outsole (1086) defining a ground-contacting surface, the outsole including a continuous ring that is attached to the first segment, the second segment, and the arcuate segment of the bladder on an opposite side of the bladder than the outer cushion (Fig. 23, 25, 27).
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/Primary Examiner, Art Unit 3732