The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Opening Remarks
All the claims are directed to the species as shown in figure 20 (i.e. sole board (10,110,210).
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 8-12,14-17 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0079376 (Bunnell ‘376) in view of US 10182612 (Bunnell ‘612) or US 2017/0127755 (Bunnell ‘755). Bunnell ‘612 and Bunnell ‘755 are based upon the same patent application 15/341530 and therefore are equivalent.
Bunnell ‘376 teaches a first sole structure (12) comprising a first channel (30) on a top surface of the first sole structure. Bunnell teaches the sole structures can be a combination of an insole, a midsole and an outersole (three sole boards/plates); at least see last sentence of paragraph 0028, 0040,0064 and claims 18-19.
With regard to claims 8-17 and 21, Bunnell ‘376 discloses an article of footwear comprising:
a first sole board (insole board 12B) comprising a first channel (30) disposed in a top surface of the first sole board; and
a second sole board (middle sole 12C) comprising a second channel (30) disposed in a top surface of the second board; and
a third sole board (outsole 12) comprising a third channel (30) disposed in a top surface of the third sole board.
Bunnell ‘376 lacks showing the second channel is aligned with the first channel such that the second channel is underneath the first channel, and the third channel is aligned with the first and second channels and is disposed underneath the second channel.
Bunnell ‘612 and Bunnell ‘755 teach a sole structure wherein the channels in the top surface of overlapping sole layers are aligned to increase flexibility in the sole structure.
For example, Bunnell teaches the sole structure having
a first sole board (10E; see figure 20) comprising a first plate (12D) having a forefoot region, a midfoot region, and a heel region;
a first channel (30C) disposed in a top surface of the first plate in the forefoot region, the first channel extending from a lateral edge of the first plate to a medial edge of the first plate
a second sole board (82E; see figure 20) comprising a second plate having a forefoot region, a midfoot region, and a heel region, the second sole board disposed underneath the first sole board;
a second channel (30E) disposed in a top surface of the second plate in the forefoot region, the second channel extending from a lateral edge of the second plate to a medial edge of the second plate; and
wherein the second channel is aligned with the first channel such that the second channel is underneath the first channel (see figure 20).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by Bunnell ‘376, with the first, second and third channels aligned with each other, as taught by Bunnell ‘612 and/or Bunnell ‘755, so that the flex groove work in unisons to facilitate flexing of the shoe’s sole structure.
With regard to claims 9,10, at least see figures 1,9 and 14 of Bunnell ‘376, showing the channels extending from edge to edge of the perimeter.
With regard to claims 11-12, at least see figure 1,9 and 14 of Bunnell ‘376 showing the channels in the metatarsal region of the forefoot region.
Regarding claim 14, the “insole” and the “midsole” as taught by Bunnell is inherently a sock liner and insole, respectively, inasmuch as it has all the structure as claimed.
Regarding claim 15, see figure 3 of ‘376 which shows the wearer’s foot (52) disposed above the sole structure and therefore teaches the first sole board disposed between the second sole board and the wearer’s foot.
Regarding claim 16, see paragraph 0063 of Bunnell ‘376 which teaches the sole boards (plates) comprising of a variety of materials including foam and thermoplastic polyurethane.
Regarding claim 17, as shown in the figures the first sole board is fixedly attached to the article of footwear.
Regarding claim 21, at least see figure 5 showing the grooves (30) having a V-shaped cross-sections.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over the reference(s) as applied to claim 8 above, and further in view of US 2011/0258879 (Danaberg).
Danaberg teaches an insole or sockliner which can be integrally part of the footwear or removable inserted (see para. 0006). 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 first sole board as taught by above with the insole board being removably inserted after market, as taught by Danaberg, to provide support for the user and replace the insole when desired.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the reference(s) as applied to claim 8 above, and further in view of US 2003/0131501 (Erickson).
Erickson teaches a sole board (outsole 16; see figure 2) for an article of footwear comprising a linear, gradually tapering channel (50) disposed in a top surface of the plate, in the forefoot/metatarsal region, extending from the lateral edge to the medial edge wherein the width of the channel at the lateral side and the medial side are both greater than the width of the channel at the middle of the channel (see figures 2,4,5 and 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first channel of the article of footwear taught above which tapers from a medial edge of the sole board to a middle of the channel, as taught by Erickson, to facilitate flexing of the sole board.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the reference(s) as applied to claim 8 above, and further in view of US 4925724 (Ogden).
Ogden teaches providing the insole (58) with a plurality of indents (apertures 26) disposed on the top surface of the insole to provide slip resistance to the foot of the wearer, e.g. see col. 10, lines 8-30 of Ogden. It would have been obvious to provide the insole/sole board as taught above with a plurality of indents disposed on the top surface, as taught by Ogden, to provide slip resistance to the foot of the wearer. Regarding the indents having a honeycomb pattern, it would have been an obvious matter of design choice to make the plurality of indents of the insole/sole board as taught above to be any desired shape including a honeycomb pattern inasmuch as a variety of different shapes could be used as desired. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claim(s) 22-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0079376 (Bunnell ‘376) in view of [US 10182612 (Bunnell ‘612) or US 2017/0127755 (Bunnell ‘755)] and 2003/0131501 (Erickson). Bunnell ‘612 and Bunnell ‘755 are based upon the same patent application 15/341530 and therefore are equivalent.
Bunnell ‘376 teaches a first sole structure (12) comprising a first channel (30) on a top surface of the first sole structure. Bunnell teaches the sole structures can be a combination of an insole, a midsole and an outersole (three sole boards/plates); at least see last sentence of paragraph 0028, 0040,0064 and claims 18-19.
With regard to claims 22-27, Bunnell ‘376 discloses an article of footwear comprising:
a plurality of sole boards (a first sole board (insole board 12B) comprising a first channel (30) disposed in a top surface of the first sole board; and a second sole board (midsole 12C) comprising a second channel (30) disposed in a top surface of the second board, and
wherein one of the first sole board and the second sole board comprises a sock liner (i.e. insole board (12B) is inherently a sock liner) and the other of the first sole board and the second sole board comprises an insole (i.e. midsole 12C is inherently an insole).
Bunnell ‘376 lacks teaching
the second channel is aligned with the first channel (claim 22)
the first and second channels taper from a medial edge to a middle of each of the first and second sole boards (claim 22).
Regarding the first bullet, Bunnell ‘612 and Bunnell ‘755 teach a sole structure wherein the channels in the top surface of overlapping sole layers are aligned to increase flexibility in the sole structure.
For example, Bunnell teaches the sole structure having
a first sole board (10E; see figure 20) comprising a first plate (12D) having a forefoot region, a midfoot region, and a heel region;
a first channel (30C) disposed in a top surface of the first plate in the forefoot region, the first channel extending from a lateral edge of the first plate to a medial edge of the first plate
a second sole board (82E; see figure 20) comprising a second plate having a forefoot region, a midfoot region, and a heel region, the second sole board disposed underneath the first sole board;
a second channel (30E) disposed in a top surface of the second plate in the forefoot region, the second channel extending from a lateral edge of the second plate to a medial edge of the second plate; and
wherein the second channel is aligned with the first channel such that the second channel is underneath the first channel (see figure 20).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by Bunnell ‘376, with the first and second channels aligned with each other, as taught by Bunnell ‘612 and/or Bunnell ‘755, so that the flex groove work in unisons to facilitate flexing of the shoe’s sole structure.
Regarding the second bullet, Erickson teaches a sole board (outsole 16; see figure 2) for an article of footwear comprising a linear, gradually tapering channel (50) disposed in a top surface of the plate, in the forefoot/metatarsal region, extending from the lateral edge to the medial edge wherein the width of the channel at the lateral side and the medial side are both greater than the width of the channel at the middle of the channel (see figures 2,4,5 and 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first channel of the article of footwear taught above which tapers from a medial edge of the sole board to a middle of the channel, as taught by Erickson, to facilitate flexing of the sole board.
Regarding claim 23, Bunnell ‘376 teaches the sole structures can be a combination of an insole, a midsole and an outersole (three sole boards/plates); at least see last sentence of paragraph 0028, 0040,0064 and claims 18-19. Therefore, teaches a third sole board (i.e. outsole 12), disposed under a second sole board (12C), which is disposed under a first sole board (12B) and in view of the teachings of Bunnell ‘612 or ‘755 the first, second and third channels are aligned with each other.
Regarding claim 24, see figure 2 of Bunnell ‘376 showing the cleated frame structure (12) and with regard to the first and second sole boards, these boards can inherently be a sock liner and insole as claimed inasmuch as they have all the structure of a sock liner and insole as claimed.
Regarding claim 25, the first, second and third channels extend from the medial edge to the lateral edge as claimed; at least see figure 1 of Bunnell ‘612.
With regard to claims 26-27, at least see figure 1 of ‘376 showing the grooves in the metatarsal region of the forefoot region and the channels (grooves 30) extending from the medial edge to a lateral edge 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 8-12 and 14-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,844,399. 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. Especially, see claim 10 which recites the third sole board and channel on the top surface. 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).
Claims 8-12 and 14-27 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,197,515 in view of Bunnell ‘376 and/or Bunnell ‘755. Patent ‘515 claims a sole board for an article of footwear as claimed except for a second sole board (claims 15-19) and a third sole board (claim 20). Bunnell ‘376 teaches a sole plate (12) comprising a channel (30) on a top surface having a forefoot region, a midfoot region and heel region (see sole plates (10,10A,10B,10C). Bunnell ‘376 teaches the sole plates can be a combination of an insole, a midsole and an outersole (three sole boards/plates), and the sole structure can further comprise traction elements (see cleats 69); see last sentence of paragraph 0028, 0040. Bunnell ‘755 Bunnell discloses an article of footwear comprising: a first sole board (10E; see figure 20) comprising a first plate (12D) having a forefoot region, a midfoot region, and a heel region; a first channel (30C) disposed in a top surface of the first plate in the forefoot region, the first channel extending from a lateral edge of the first plate to a medial edge of the first plate a second sole board (82E; see figure 20) comprising a second plate having a forefoot region, a midfoot region, and a heel region, the second sole board disposed underneath the first sole board; a second channel (30E) disposed in a top surface of the second plate in the forefoot region, the second channel extending from a lateral edge of the second plate to a medial edge of the second plate; and wherein the second channel is aligned with the first channel such that the second channel is underneath the first channel (see figure 20). 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 claimed sole board for an article of footwear as taught by patent ‘515 with a second sole board (plate) and a third sole board (plate) wherein the channels are aligned, as taught by Bunnell ‘376 and/or Bunnell ‘755, to provide increased flexibility for the entire sole of the article of footwear.
Claims 8-12 and 14-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,231,514 in view of Bunnell ‘376. Patent ‘514 claims a sole board for an article of footwear as claimed except for a third sole board (claim 20). Bunnell teaches a sole plate (12) comprising a channel (30) on a top surface having a forefoot region, a midfoot region and heel region (see sole plates (10,10A,10B,10C). Bunnell teaches the sole plates a combination of an insole, a midsole and an outersole (three sole boards/plates), and the sole structure can further comprise traction elements (see cleats 69); see last sentence of paragraph 0028, 0040. 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 claimed sole board for an article of footwear as taught by patent ‘515 with a third sole board (plate), as taught by Bunnell, to provide increased flexibility for the entire sole of the article of footwear.
Claims 8-12 and 14-27 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,256,800 in view of Bunnell ‘376. Patent ‘800 claims a sole board for an article of footwear as claimed except for a third sole board (claim 20). Bunnell teaches a sole plate (12) comprising a channel (30) on a top surface having a forefoot region, a midfoot region and heel region (see sole plates (10,10A,10B,10C). Bunnell teaches the sole plates a combination of an insole, a midsole and an outersole (three sole boards/plates), and the sole structure can further comprise traction elements (see cleats 69); see last sentence of paragraph 0028, 0040. 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 claimed sole board for an article of footwear as taught by patent ‘515 with a third sole board (plate), as taught by Bunnell, to provide increased flexibility for the entire sole of the article of footwear.
Response to Arguments
Applicant's arguments filed 4/30/2026 have been fully considered but they are not persuasive.
With regard to claims 14,24 and applicant’s new amendment to claim 22, applicant argues that the insole and midsole taught by ‘376 are not inherently a sockliner and insole, respectively, as claimed. Applicant further argues “the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flow from the teaching of the applied art” Ex party Levy 17 USPQ2d 1461, 1464 (Bd Pat App. & Inter. 1990).
In response, the examiner did provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flow from the teaching of the applied art, such as the insole and midsole as taught by Bunnell ‘376 have all of the structure of the sockliner and insole, respectively, and therefore are inherently a sockliner and insole as claimed. Moreover, applicant can be their own lexicographer and therefore it would not be out of the realm for applicant to label the sockliner an insole; and the midsole an insole. In the examiners 30 plus years of experience, he has seen this often. If there is a structural difference between a sock liner and an insole then applicant should recited this structure in the claims for proper consideration.
The 102 rejection of Bunnell ‘612 or ‘755 has been withdrawn in view of applicant’s amendment.
The 103 rejection of Bunnell ‘612 or ‘755 in view of Erickson has been withdrawn in view of applicant’s amendment.
With regard to the obvious type double patenting rejections, applicant didn’t contest them and the examiner has adjusted them according to the newly amendment claims.
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.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 5712724888. 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