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 .
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.
Election/Restrictions
Applicant’s election of Species I (shape memory polymer) and sub-species D (Figure 8A), and claims 1-8 in the reply filed on 02/03/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 102
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) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Compton et al. (Pub. No. US 2018/0008005, herein after Compton).
With respect to claim 1, Compton discloses a footwear system (see figures 1-12) comprising: one or more portions (elastomeric bodies 50) including an outsole (30, FIGS. 9a, 9b and 9c are partial cross-sectional views of the footwear shown in FIG. 9, showing the elastomeric body in the undeployed, partially deployed and fully deployed states) configured in a first profile (partially deployed state, see figure 9b), the one or more portions comprising an electroactive polymer (disposed at least partially within the outsole 30 is a plurality of elastomeric bodies 50); and
an actuator that can be stimulated with electricity (solenoid valve 62) configured to apply, responsive to determining that the value satisfies a profile configuration condition (microprocessor 60 is configured to evaluate communications from the sensor 56 or the transceiver 58 for predefined environmental criteria permitting the microprocessor 60 to actuate a solenoid valve 62), the electrical stimulation to the electroactive polymer of the one or more portions to change a configuration of the one or more portions from the first profile to a second profile (fully deployed state, see figure 9c) in accordance with the surface of the ground (on a rainy day a remote device 66 such as a cell phone could sense weather and GPS data and send an electrical signal 59, signaling that it is wet and you are walking outside, to the footwear 20; see paragraphs [0036] & [0038]),
wherein the one or more portions configured in the first profile includes one or more protrusions (disposed at least partially within each elastomeric bodies 50 is a member 52. FIGS. 5a and 5b show a partial sectional view of an elastomeric body 50 with a member 52 in both the deployed and retracted and state, see paragraph [0028]) extending from the outsole (30) at a first length (partially deployed, see figure 9b), and wherein the one or more portions configured in the second profile includes the one or more protrusions extending from the outsole at a second length (fully deployed, see figure 9c).
one or more sensors (the control system 49 can be switches, knobs 49b, as shown in FIGS. 10a and 10b, levers, and solenoids in cooperation with electrical signals by way of a plurality of sensors and remote devices 66, as shown in FIG. 11) coupled to the outsole (see figure 11) and configured to generate a value based on a surface of a ground with which the outsole comes into contact;
With respect to claim 2, Compton discloses wherein the electrical actuator is configured to apply a second varying electrical current to the electroactive polymer of the one or more portions to transform the electroactive polymer to change the configuration of the one or more portions from the second profile to a third profile (FIGS. 9a, 9b and 9c are partial cross sectional views of the footwear shown in FIG. 9, showing the elastomeric body in the undeployed, partially deployed and fully deployed states).
With respect to claim 3, Compton discloses wherein the electrical actuator is coupled with a memory (the microprocessor 60 is configured to evaluate communications from the sensor 56 or the transceiver 58 for predefined environmental criteria permitting the microprocessor 60 to actuate a solenoid valve 62) and configured to identify the second profile from a plurality of profiles stored in the memory (FIG. 11 shows one embodiment of the footwear 20 having a control system 49 where a sensor 56 or a transceiver 58 is in communication with a microprocessor 60).
With respect to claim 4, Compton discloses wherein the electrical actuator (62) is configured to cause expansion at least one portion of the one or more portions in at least a longitudinal or lateral direction to change the configuration of the one or more portions from the first profile to the second profile (The control system 49 allows for the selection of varying quantities of elastomeric bodies 50 to deploy. This embodiment allows the footwear 20 to selectively deploy a plurality of types of members 52. The footwear 20 may be configured to switch between a soft traction pad and sports cleat optimizing traction for multiple surfaces).
With respect to claim 5, Compton discloses wherein to change the configuration of the one or more portions from the first profile to the second profile, the electrical actuator (solenoid 62) is configured to apply the varying electrical current (the control system 49 can be switches, knobs 49b, as shown in FIGS. 10a and 10b, levers, and solenoids in cooperation with electrical signals by way of a plurality of sensors and remote devices 66, as shown in FIG. 11) to alter a state of the electroactive polymer (elastomeric bodies 50) of the one or more portions to cause the first profile to change to the second profile (see figures 9a-c).
With respect to claim 6, Compton discloses wherein the one or more portions configured in the first profile includes a sole (outsole 30, see figures 9a-c) configured in a first sole pattern (partially deployed state) and wherein the one or more portions configured in the second profile includes the sole configuration in a second sole pattern (fully deployed state).
With respect to claim 7, Compton discloses wherein the first sole pattern comprises at least one of a first number of protrusions, a first shape of protrusions, a first dimension of protrusions, first rigidity of protrusions, or a first set of locations of protrusions, and wherein the second sole pattern comprises at least a second number of protrusions, a second shape of protrusion, second dimension of protrusion or a second set of protrusions (Footwear 20 may be any style of footwear including, for example, footwear that typically includes cleats such as Baseball cleats, soccer cleats, football cleats, and golf shoes. However, footwear 20 is not to be restricted to types of footwear known to have cleats. Footwear 20 could also be any style of footwear that could accommodate a retractable body for additional traction and/or support in certain circumstances, such as a boot, a basketball shoe, a tennis shoe, a climbing shoe or a running shoe).
With respect to claim 8, Compton discloses a user record configured to store information related to the surface and the one or more protrusions in accordance with a schedule (on a rainy day a remote device 66 such as a cell phone could sense weather and GPS data and send an electrical signal 59, signaling that it is wet and you are walking outside, to the footwear 20) the processing unit (microprocessor 60 would then make a decision whether to deploy additional traction based on predefined criteria).
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,279,667. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain all of the key limitations from the above patent
“a footwear system comprising: one or more portions including an outsole configured in a first profile, the one or more portions comprising an electroactive polymer; and an electrical actuator configured to apply a varying electrical current to the electroactive polymer of the one or more portions to transform the electroactive polymer to change a configuration of the one or more portions from the first profile to a second profile, wherein the one or more portions configured in the first profile includes one or more protrusions extending from the outsole at a first length, and wherein the one or more portions configured in the second profile includes the one or more protrusions extending from the outsole at a second length”, but are broader in some aspects and adds features in other respects. With respect to the claims being broader, once the applicant receives 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. Shown are footwear systems comprising shape memory polymers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached M-Thurs. 7:00-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, 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, Alissa J Tompkins can be reached on 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
03/04/2026