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 Group I (claims 31-37) and Species 2 (Fig. 13-25, 28-29) in the reply filed on 06/29/2026 is acknowledged.
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 31-33, 36-37, and 46-48 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.
Claims 31 and 32 recite the limitations “the hardness … being 10 durometers or greater and 50 durometers or less” and “an absolute value obtained by subtracting the hardness of the material forming the main portion from the hardness of the material forming the medial arch portion being 10 durometers or greater and 40 durometers or less.” These limitations are vague and indefinite because they do not include the scale (Asker, Shore, etc.) used to measure the durometers. Therefore, the value of the hardnesses cannot be determined from the limitations as claimed.
Claims 33, 36-37, and 46-48 depend from rejected claims 31 and 32.
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.
Claim(s) 31-33 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 2008/0040948) in view of Hardt (US 2002/0092203) and Rich (US 2016/0095737).
Regarding claim 31 and 32, Park discloses an insole for a shoe, the insole comprising: a main portion (120) that is a flat portion having a cushioning property and arranged in a manner that the main portion is to face a heel, a medial longitudinal arch portion, and a lateral longitudinal arch portion of a foot sole (Fig. 1); a covered portion (128) formed in an area on a surface of the main portion, the surface being configured to be adjacent to the foot sole, the area being configured to face the medial longitudinal arch portion (Fig. 1); and a medial arch portion (168) that is a portion having a cushioning property and arranged so as to cover the covered portion, in the medial arch portion, a surface to be adjacent to the foot sole being an upper surface, and a surface opposite the upper surface being a lower surface, the lower surface of the medial arch portion having a shape that matches the covered portion (Fig. 2), the covered portion being formed as an indented area on the surface of the main portion that is to be adjacent to the foot sole (Fig. 2), and an outer edge of the medial arch portion overlapping an outer edge of the covered portion (Fig. 2), the insole further comprising a surface layer material (180) that is a sheet-shaped member covering the upper surface of the medial arch portion arranged in the covered portion and an upper surface of the main portion, the upper surface of the medial arch portion and the upper surface of the main portion being each a surface to be adjacent to the foot sole, to facilitate contact of the insole with the medial longitudinal arch portion, shapes and thicknesses of the medial arch portion and of the covered portion in the main portion being adjusted so that a thickness of a portion of the insole relatively increases/a slope rising toward its medial side is formed in a portion of the insole, the portion being configured to face the medial longitudinal arch portion (Fig. 2), and the medial arch portion including a portion that gradually becomes thinner toward the outer edge of the medial arch portion (Fig. 2). (paragraphs 0016, 0024, 0040-0041, 0045; Fig. 1, 2)
Park discloses that the main portion and the medial arch portion may each be formed of a different material (paragraph 0045), but does not specifically disclose a material having a different hardness. Hardt teaches an insole having a main portion (22) and a medial arch portion (26) formed of different materials having different hardnesses. The different materials/hardnesses provide cushioning to the arch area while providing rebound characteristics to other portions of the foot, enhancing comfort during long periods of activity (paragraphs 0002, 0021, 0024, 0027-0029; Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide different hardnesses to the main portion and the medial arch portion of Park, as taught by Hardt, in order to provide cushioning to the arch area while providing rebound characteristics to other portions of the foot, enhancing comfort during long periods of activity
As best understood, Hardt further teaches that the hardness of the material forming the main portion and the hardness of the material forming the medial arch portion being 10 durometers or greater and 50 durometers or less, and an absolute value obtained by subtracting the hardness of the material forming the main portion from the hardness of the material forming the medial arch portion being 10 durometers or greater and 40 durometers or less (paragraphs 0024, 0028).
Park discloses that the medial arch portion may have various shapes (paragraph 0041), but does not disclose at least a portion of the outer edge of the medial arch portion being formed by a linear portion that forms outer edges of the upper surface and of the lower surface. Hardt further teaches that at least a portion of the outer edge of the medial arch portion may be formed by a linear portion that forms outer edges of the upper surface and of the lower surface (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the outer edge of the medial arch portion of Park a linear portion, as taught by Hardt, in order to provide specific cushioning characteristics to the insole, depending on the needs of the individual user.
Park does not disclose how the surface layer and upper surfaces area attached to each other. Rich teaches that layers of an insole may be attached with a hot-melt adhesive (paragraph 0015). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the surface layer material and the upper surfaces of the medial arch portion and of the main portion to be joined to each other using a hot-melt, as taught by Rich, in order to use a well-known technique for attaching layers of an insole, which provides a strong bond between the layers.
Regarding claims 33 and 46, Park discloses that in the main portion, a portion in contact with the portion of the medial arch portion that gradually becomes thinner gradually becomes thicker toward an outer edge of the main portion (Fig. 2).
Claim(s) 36 and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park, Hardt, and Rich, as applied to claims 31 and 32, further in view of Anthony et al. (US 2017/0027277), herein Anthony.
Regarding claims 36 and 47, the combination of Park, Hardt, and Rich does not disclose that the hardness of the material forming the medial arch portion is higher than the hardness of the material forming the main portion. Anthony teaches an insole having a main portion (105) and a medial arch portion (118). The hardness of the material forming the medial arch portion is higher than the hardness of the material forming the main portion (paragraphs 0057, 0081-0082). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the hardness of the material forming the medial arch portion higher than the hardness of the material forming the main portion in order to provide improved support at the medial arch of the foot, depending on the needs of the user.
Claim(s) 37 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park, Hardt, and Rich, as applied to claims 31 and 32, further in view of Lundy et al. (US 2007/0022630), herein Lundy.
Regarding claims 37 and 48, the combination of Park, Hardt, and Rich does not disclose that the medial arch portion is formed of a styrene-based gel material. Lundy teaches an insole having a main portion (18) and an inserted cushioning portion (20). The inserter cushioning portion may be formed of a styrene-based gel material which provides a high energy absorption (paragraphs 0026-0027). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the medial arch portion of a styrene-based gel material, as taught by Lundy, in order to use a material which provides a high energy absorption, improving cushioning at the medial arch. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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