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 .
Response to Amendment
Applicant’s amendment of 03/15/2026 is acknowledged.
Claims 1-20 are presented.
Claim 7 remains withdrawn.
Claim 1 is presented in independent form and is amended.
Dependent claims 12 and 15 are amended.
Dependent claims 16-20 are newly presented.
The present Office action treats claims 1-6 and 8-20 on the merits.
Response to Arguments
Applicant’s REMARKS/ARGUMENTS of 03/15/2026 (see p. 6-11 of the reply) are fully considered.
Regarding 35 U.S.C. §112 (p. 6): Applicant’s arguments are fully considered and are persuasive. Specifically, Applicant’s claim amendment has overcome the 35 USC 112 rejection of claim 12 applied in the Office action of 01/28/2026.
Regarding 35 U.S.C. §103 (p. 6-11): Applicant’s arguments are fully considered. Applicant’s arguments directed to claims 1, 3, 4, 6, 8, 9, 11-15; 2 and 5; and 10 (p. 6-10) are fully considered and are not persuasive.
Applicant argues:
Initially, it is critical to recognize that the present claimed invention is a "method for manufacturing an insole", not a shoe, and which insole is insertable onto a sole of or in a shoe after manufacture. This limitation is structural. An insole that is insertable onto a sole of or in a shoe is a discrete article, not a component of the upper part of the shoe. Manufacture of the insole entails, as set forth in claim 1, providing a base having a shape for insertion onto the sole of or in the shoe, attaching a mesh to an upper surface of the base and which forms an uppermost surface of the insole, and arranging a respective air cushion at least partly in each of at least one cavity extending from a lower surface of the base to be peripherally surrounded by the base.
Thus, in the claimed invention, the final manufactured product is a stand-alone insole, a defined object which has practical uses in the footwear industry. It has been held that the words of a claim, e.g., the word "insole", are given their ordinary and usual meaning, which is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). An ordinary and usual meaning of "insole" requires a stand-alone insert, not a structural part of the shoe upper. Indeed, an insole may be defined as "a piece of material inside a shoe on which your foot rests, or a piece of material that you put in a shoe to make it warmer or more comfortable" (Definition of insole from the Cambridge Advanced Learner's Dictionary & Thesaurus 0 Cambridge University Press), https://dictionary.cambridge.org/us/dictionary/english/insole.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are drawn to newly amended subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below. It is noted that the modified Hurd, as set forth in the rejections below, meets all claim limitations. Applicant’s specific argument that “An ordinary and usual meaning of "insole" requires a stand-alone insert, not a structural part of the shoe upper. Indeed, an insole may be defined as "a piece of material inside a shoe on which your foot rests...” is fully considered and is not persuasive if only because the argued structure of Hurd meets the definition provided by the Applicant; i.e. the insole 32, 36, 38 of Hurd is a piece of material inside a shoe on which your foot rests.
Moreover, as provided for in MPEP 2111.01, pending claims must be given their broadest reasonable interpretation (BRI) consistent with and in light of the specification and the BRI doesn't mean the broadest possible interpretation. The meaning given to a claim term must be consistent with the ordinary and customary meaning of the term and must be consistent with the use of the claim term in the specification and drawings. In the present case, Applicant states “insoles for shoes...can be placed onto, integrated into, or inserted into shoes” (para 2) and states (para 66) “advantages obtained by manufacturing insoles...not..in cavities...as in prior art...Hurd et al. (US 20200375307)” (i.e. the very Hurd that is argued by the Applicant); Figs. 1-20 show an insole capable of underlying a plantar surface of a foot and capable of integration into a shoe such that the structure of Hurd which was identified in the previous Office action as being an insole and is again presented in the present Office action as being an insole is an insole as claimed. It is noted the insole of Hurd is capable of being integrated into a shoe in the manner explained by the Applicant in para 2 and capable of underlying a plantar surface of a wearer’s foot, and is an insole having cavities according to the Applicant (para 66) such that it is an insole consistent with the use of the claim term in the specification and drawings and is a piece of material inside a shoe on which your foot rests—either directly or indirectly—such that it meets the definition provided by the Applicant in the remarks of 03/15/2026 (see p. 7 line 13 thereof) and is therefore consistent with the ordinary and customary meaning of the claim term.
Applicant further argues:
Claim 1 also recites the clause "whereby after the mesh is attached to the upper surface of the base and the respective air cushion is arranged at least partly in each of the least one cavity, the insole is then insertable onto the sole of or in the shoe." It is respectfully submitted that the "whereby" clause in claim 1 is tied to structural features, namely, a base shaped for insertion, a mesh forming the uppermost surface, and air cushions forming part of the lowermost surface. These features collectively define an article that is physically capable of insertion onto the sole of or in a shoe after manufacture.
The applied prior art does not disclose, teach or suggest a method for manufacturing an insole as set forth in claim 1, wherein the insole once manufactured is insertable onto a sole of or in a shoe.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are drawn to newly amended subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below. It is noted that the modified Hurd, as set forth in the rejections below, meets all claim limitations. It is further noted that the modified Hurd is physically capable of insertion onto the sole of or in a shoe after manufacture in at least the manner described in the rejections below in reference to extrinsic references [McMahon, US 2016/0073724], [Laird, US 2,319,239 and in particular Figs. 4-5 thereof], [McGarry, US 2,585,260], [Folk, US 3,009,269], [Schovee, US 3,283,423], [Whitaker, US 4,217,704], [Williams, US 4,489,510], and [Puskas, US 5,644,813], and [Burkholder, US 2014/0096410].
Applicant further argues:
Hurd et al., the primary reference, relates generally to the manufacture of an article of footwear, which includes an upper and a sole structure (see paragraph [0004]). The Examiner identifies as part of the insole manufacturing method (the sole structure) what is actually part of the upper. That is, the Examiner repeatedly refers to substrate 38 to correspond to the mesh of the insole of the presently claimed invention (Office Action, page 5). However, membrane 38 is formed as an inherent part of the upper 12 and not formed as part of the insole, i.e., the sole structure.
Hurd et al. states that the substrate 38 is "a lower substrate of the upper" and may be attached to the upper 12 via stitching 40 (Fig. 2) or, alternatively, may be integrally formed with a material of the upper 12 (see paragraphs [0102] and [0103], when the substrate 38 is formed separately formed from the upper 12, the substrate 38 is attached to the upper 12 via stitching 40). These portions of Hurd et al. unquestionably show that substrate 38 is not part of an insole, midsole, or any removable insert, but rather is a permanent structural component of the upper. As such, Hurd et al.'s substrate 38 is never inserted into a shoe after manufacture (and cannot be insertable into a shoe); rather, it is permanently stitched or molded into the upper 12. A component that is permanently stitched or molded into the upper cannot be manufactured as a stand-alone insole, inserted into a shoe after manufacture, or removed or replaced by a user.
Clearly then Hurd et al. does not suggest manufacture of a stand-alone insole with a substrate independently usable and insertable onto a sole of or in a shoe, and not using part of an upper as such a substrate. Thus, the Examiner's interpretation of the term "insole" is inconsistent with the ordinary and customary meaning of this term as required for claim construction under Phillips v. AWH Corp, Ibid.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are drawn to newly amended subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below.
Applicant’s specific argument that element 38 of Hurd cannot be relied upon to be a portion of an insole as claimed is fully considered and is not persuasive if only because Applicant states that “insoles for shoes...can be placed onto, integrated into, or inserted into shoes” (para 2) and Figs. 1-20 show an insole capable of underlying a plantar surface of a foot and capable of integration into a shoe such that the argued structure of Hurd (i.e. element 38) which was identified in the previous Office action as being a component of the insole and is again presented in the present Office action as being a component of the insole is a component of an insole as claimed insofar as the insole of Hurd (i.e. the combined 32, 36, 38) is capable of integration into a shoe and is capable of underlying a plantar surface of a foot. In addition, the combined 32, 36, 38 is a piece of material inside a shoe on which your foot rests—either directly or indirectly—such that it meets the definition provided by the Applicant in the remarks of 03/15/2026 (see p. 7 line 13 thereof). That Hurd describes element 38 as being “a lower substrate of the upper” of Hurd (para 102 of Hurd) does not make it any less of an insole component as claimed by the Applicant insofar as a lower substrate of an upper is capable of integration into a shoe and is configured to underlie a plantar surface of a foot of a wearer (capable of moving “when loaded by a user’s foot during use...in response to a load received by a user’s foot...to depress the midsole 32”; para 103 of Hurd).
Applicant’s specific argument that element 38 of Hurd “cannot be insertable into a shoe... A component that is permanently stitched or molded into the upper cannot be manufactured as a stand-alone insole, inserted into a shoe after manufacture, or removed or replaced by a user.” is fully considered and is not persuasive if only because element 38 of Hurd can be inserted into a shoe in at least the manner described in the rejections below in reference to extrinsic references [McMahon, US 2016/0073724], [Laird, US 2,319,239 and in particular Figs. 4-5 thereof], [McGarry, US 2,585,260], [Folk, US 3,009,269], [Schovee, US 3,283,423], [Whitaker, US 4,217,704], [Williams, US 4,489,510], and [Puskas, US 5,644,813], and [Burkholder, US 2014/0096410]. Applicant’s further arguments directed to “a stand-alone insole...removed or replaced” are fully considered but are not persuasive if only because they are not commensurate with claim language or with the rejection as applied. No claim requires a “stand-alone” insole, structural removal, structural replacement, a capability to remove or be remove, and/or a capability to replace or be replaced.
Applicant’s specific argument that the Office’s interpretation of the claim term “insole” is inconsistent with the ordinary and customary meaning of the term is fully considered and is not persuasive.
As provided for in MPEP 2111.01, pending claims must be given their broadest reasonable interpretation (BRI) consistent with and in light of the specification and the BRI doesn't mean the broadest possible interpretation. The meaning given to a claim term must be consistent with the ordinary and customary meaning of the term and must be consistent with the use of the claim term in the specification and drawings. In the present case, Applicant states “insoles for shoes...can be placed onto, integrated into, or inserted into shoes” (para 2) and states (para 66) “advantages obtained by manufacturing insoles...not..in cavities...as in prior art...Hurd et al. (US 20200375307)” (i.e. the very Hurd that is argued by the Applicant); Figs. 1-20 show an insole capable of underlying a plantar surface of a foot and capable of integration into a shoe such that the structure of Hurd which was identified in the previous Office action as being an insole and is again presented in the present Office action as being an insole is an insole as claimed. It is noted the insole of Hurd is capable of being integrated into a shoe in the manner explained by the Applicant in para 2 and capable of underlying a plantar surface of a wearer’s foot, and is an insole having cavities according to the Applicant (para 66) such that it is an insole consistent with the use of the claim term in the specification and drawings and is a piece of material inside a shoe on which your foot rests—either directly or indirectly—such that it meets the definition provided by the Applicant in the remarks of 03/15/2026 (see p. 7 line 13 thereof) and is therefore consistent with the ordinary and customary meaning of the claim term.
Applicant further argues:
Falken was not applied to teach anything with respect to the mesh and its connection to the base.
Sato et al. suffers from the same problem as Hurd et al. in that the allegedly comparable mesh, substrate 2b, is actually part of the upper and not part of an insole manufactured to be able to be insertable onto a sole of or in a shoe. Sato et al. describes with reference to Fig. 6 that the shoe S has the upper 2 that may have an insole 2b in addition to the upper body 2a (paragraph [0051]). Importantly, Sato et al. explicitly states that the insole 2b is integral with the upper body 2a. This is achieved by fixed at least ends of the insole 2b in the width direction of the shoe S with an adhesive, or by sewing, to a lower end of the upper body 2a (paragraph [0053]). Thus, Sato et al.'s allegedly comparable insole is not an insole in the ordinary sense. It is a non-removable lining of the upper, permanently bonded to the shoe structure.
Since substrate 2b in Sato et al. is not a stand-alone insole, Sato et al. cannot teach or suggest, as part of an insole manufacturing method, attaching a mesh to a base of an insole, manufacturing an insole that is later inserted into a shoe, or any of the structural consequences of claim 1. As such, Sato et al. does not disclose a mesh manufactured as part of a stand-alone insole with a substrate independently usable and insertable onto a sole of or in a shoe, and not using part of an upper as such a substrate.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are drawn to newly amended subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below.
Applicant’s specific argument that element 2b of Sato is “not part of an insole” is fully considered and is not persuasive if only because Applicant states that “insoles for shoes...can be placed onto, integrated into, or inserted into shoes” (para 2) and Figs. 1-20 show an insole capable of underlying a plantar surface of a foot and capable of integration into a shoe such that the argued structure of Sato (i.e. element 2b) which was identified in the previous Office action as being a component of the insole of Sato (i.e. the combined 3 and 2b of Sato) and is again presented in the present Office action as being a component of the insole of Sato is a component of an insole as claimed insofar as the insole of Sato (i.e. the combined 3 and 2b) is capable of integration into a shoe and is capable of underlying a plantar surface of a foot. In addition, the combined 3 and 2b is a piece of material inside a shoe on which your foot rests—either directly or indirectly—such that it meets the definition provided by the Applicant in the remarks of 03/15/2026 (see p. 7 line 13 thereof). That Sato describes element 2b as being “integral with the upper body 2 a. Specifically, at least ends of the insole 2 b in the width direction of the shoe S are fixed, for example, with an adhesive, or by sewing, to a lower end of the upper body 2 a. Further, the ends of the insole 2 b and the lower end of the upper body 2 a are fixed, for example, with an adhesive, or by sewing” (53 of Sato) does not make it any less of an insole component as claimed by the Applicant insofar as the “insole 2 b” of Sato is capable of integration into a shoe and is configured to underlie a plantar surface of a foot of a wearer (“for transferring the reaction force to the wearer's planta”; para 52 of Sato).
Applicant further argues:
Furthermore, the Examiner's proposed modification of Hurd et al. in partial view of Sato et al. does not render obvious the presently claimed invention because the proposed modification requires re-purposing upper components as insole components and thus would require a substantial redesign, which is an indicator of non-obviousness. The Examiner's rationale underlying the obviousness rejections depends on treating substrate 38 in Hurd et al. (which is an upper component), and substrate 2b in Sato et al. (which is also an upper component) as if they were insole components acted upon in a method for manufacturing an insole. This modification therefore involves use of hindsight reconstruction, which is an impermissible.
Examiner’s reply:
This argument is fully considered and is not persuasive. As stated above in addressing Applicant’s specific arguments directed to Hurd and Sato (see above), elements 38 and 2b of Hurd and Sato, respectively, are components of respective insoles as claimed.
Applicant further argues:
Herein, both Hurd et al. and Sato et al. at best teach substrates that are structurally and functionally part of the upper. Converting them into removable insoles would require eliminating their fixed or integral attachment to the upper, redesigning them as stand-alone articles, and altering the shoe manufacturing sequence. This is not a simple substitution, but rather is a fundamental change in the references' operation and thus not obvious to a person skilled in the art.
Examiner’s reply:
This argument is fully considered and is not persuasive. In regards to certain argued elements being “part of the upper”: as stated above in addressing Applicant’s specific arguments directed to Hurd and Sato (see above), elements 38 and 2b of Hurd and Sato, respectively, are components of respective insoles as claimed. In regards to the argued “removable insole[]”, elimination of fixed or integral attachment to an upper, design/redesign as a “stand-alone” article: Applicant’s arguments are fully considered and are not persuasive if only because they are not commensurate with claim language in that no claim recites a step of removal or a capability of removal; the absence of fixed and/or integral attachment to an upper; or any article being a “stand-alone” article as argued. Applicant’s argument directed to “altering the shoe manufacturing sequence” is fully considered but is not persuasive in that Applicant does not specifically argue any claimed sequence that the prior art fails to address and instead relies on an argued “Conver[sion]...into removable insoles...eliminating...attachment to the upper...redesigning them” which is not commensurate with the rejection as applied; it is noted the modified Hurd meets the limitations as claimed, as set forth in the rejections below.
Applicant further argues:
Kirk et al. and Prouty similarly do not disclose a step in a method for manufacturing an insole in which a mesh is attached to a base, while the insole, once manufactured is insertable onto a sole of or in a shoe.
Examiner’s reply:
This argument is fully considered and is not persuasive if only because it is not commensurate with the rejection as applied in the Office action of 01/28/2026 or the present Office action, wherein it is noted that neither Kirk nor Prouty is relied upon to address the argued limitation “after the mesh is attached to the upper surface of the base and the respective air cushion is arranged at least partly in each of the least one cavity, the insole is then insertable onto the sole of or in the shoe”.
Applicant further argues:
For at least the reasons above, the cited references, taken in combination, fail to disclose or suggest manufacturing a stand-alone insole that is insertable into a shoe after manufacture, as expressly required by claim 1. The Examiner's reliance on components that are permanently integrated into the upper of a shoe is legally insufficient to establish prima facie obviousness.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are directed to newly amended subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below. Applicant’s specific argument directed to a “stand-alone” insole is not persuasive if only because the argument is not commensurate with claim language in that no insole and/or element thereof is described as being “stand-alone” in any claim(s). Applicant’s further argument about the Office’s “reliance on components that are permanently integrated into” an upper of a shoe are fully considered and are not persuasive. Applicant’s arguments are believed to be directed to Hurd and Sato, and, as stated above in addressing Applicant’s specific arguments directed to Hurd and Sato (see above), elements 38 and 2b of Hurd and Sato, respectively, are components of respective insoles as claimed. To the extent, if any, that Applicant’s arguments are directed to any other element(s) of the prior art of record that is/are argued to be components that are “permanently integrated” an upper: Applicant’s argument is unpersuasive if only because there are no specific arguments—other than the abovementioned arguments directed to elements 38 and 2b of Hurd and Sato, respectively, which have, as stated above, already been addressed hereinabove—pointing out disagreements with the examiner' s contentions or an explanation of how the claims avoid the references or distinguish from them.
Applicant further argues:
Additionally, with respect to claim 15, this claim now recites that the mesh has a peripheral shape that is the same as the peripheral shape of the base, and the mesh is attached to the upper surface of the base by gluing the mesh and the base together and then heat-pressing the mesh and base against one another, whereby the mesh is attached to the upper surface of the base over its entire periphery. As discussed above, Hurd et al. and Sato et al. do not disclose, teach or suggest, in a method for manufacturing an insole, attaching a mesh to a base and thus cannot disclose, teach or suggest performing this attachment using glue and heat-pressing. Kirk et al. does not disclose use of glue and heat-pressing for two substrates that have the same peripheral shape. Thus, the application of glue and heat-pressing to bond two substrates having the same shape in a method for manufacturing an insole is not derivable from the applied prior art.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are directed to newly amended subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below. Applicant’s specific arguments directed to Hurd and Sato are addressed hereinabove. Applicant’s specific argument directed to Kirk is fully considered and is not persuasive insofar as the argued prior art Kirk was not relied upon in the Office action of 01/28/2026 to address the limitation of two substrates having a same peripheral shape, nor is Kirk relied upon in the present Office action to address this limitation. Rather, Kirk is relied upon to teach gluing and then heat-pressing (see p. 14-15 of the Office action of 01/28/2026 and the rejections of claims 2 and 15 below). Applicant’s specific argument that Kirk fails to “disclose use of glue and heat-pressing for two substrates that have the same peripheral shape. Thus, the application of glue and heat-pressing to bond two substrates having the same shape in a method for manufacturing an insole is not derivable from the applied prior art” is fully considered and is not persuasive insofar as one of ordinary skill would expect the gluing and heat pressing taught by Kirk to be a valid means of direct connection between plural insole elements whether said insole elements had the same peripheral shape or not.
Applicant’s further arguments directed to new claims 16-20 are fully considered:
Applicant argues:
...claim 16 further differentiates the base of the presently claimed invention from that the insole in the shoe of Hurd et al. wherein there are both cavities extending from the lower surface and cavities extending from the upper surface.
Examiner’s reply:
This argument is fully considered but is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues:
Claim 17 recites structuring the base such that the insole, after the mesh is attached to the upper surface of the base and the respective air cushion is arranged at least partly in each of the least one cavity, consists of at least one first region that each includes a portion of the mesh, the respective air cushion, and a portion of the base directly above the respective cavity and that extends to the upper surface of the base, and a second region that includes a remaining portion of the mesh and a remaining portion of the base extending from the lower surface of the base to the upper surface of the base. This feature also relates to the absence of cavities in the base other than those that extend from the lower surface, to thereby differentiate over the insole in the shoe of Hurd et al.
Examiner’s reply:
This argument is fully considered and is not persuasive. Applicant’s arguments are drawn to newly claimed subject matter, which has necessitated a new interpretation of the prior art and is presented in the rejections below; it is noted the modified Hurd comprises regions portions as claimed. Applicant’s specific argument that “This feature also relates to the absence of cavities in the base other than those that extend from the lower surface, to thereby differentiate over the insole in the shoe of Hurd” is fully considered but is moot insofar as the argued feature of “the absence of cavities in the base other than those that extend from the lower surface” is not claimed in claim 17; rather, claim 17 requires the regions and portions as described in claim 17, and the modified Hurd meets the limitations set forth hereinbelow.
Applicant argues:
Claims 18-20 are directed to the anti-slip structure, e.g., material dots, on an upper surface of the mesh to reduce relative movement between the foot and the mesh. These features are disclosed in the specification in for example, paragraph [00052]. Since the applied prior art does not disclose, as part of a method for manufacturing an insole insertable onto a sole of or in a shoe, a mesh attached to an upper surface of a base of the insole, it cannot disclose the presence of anti-slip structure on an upper surface of the mesh.
Examiner’s reply:
This argument is fully considered but is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18 line 1: “forming anti-slip structure” should be --forming an anti-slip structure--
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-4, 6, 8-9, 11-14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307, previously cited] in view of [Falken, US 2019/0351592, previously cited] and [Sato, US 2019/0090583, previously cited].
Regarding claim 1:
Hurd discloses (Figs. 1-6):
A method (steps thereof identified hereinbelow) for manufacturing an insole (the combined “midsole 32”, “cushioning member 36”, and “substrate 38”; para 102) insertable onto the sole of or in a shoe (the insole 32, 36, 38 of Hurd is capable of being inserted onto the sole of a shoe and also in a shoe in the same manner that the insole 210 of extrinsic reference [McMahon, US 2016/0073724] is capable of being inserted onto sole 115 of shoe 105 and also in shoe 105; it is noted that the insole 210 of McMahon—and its associated outer sole 215 and upper 205—is capable of being inserted into shoe 105 and onto the sole 115 thereof (para 28); the insole of Hurd is capable of being provided onto a sole of a shoe and within a shoe in the same manner, for example by simply inserting the insole of Hurd—and its associated structure including the upper 12 of Hurd and outsole 34 of Hurd attached thereto—into another shoe and onto a sole of said another shoe such that the insole of Hurd (and, in addition, the outsole 34 of Hurd) is provided onto the sole of said another shoe and said another shoe; in like manner, extrinsic references [Laird, US 2,319,239 and in particular Figs. 4-5 thereof], [McGarry, US 2,585,260], [Folk, US 3,009,269], [Schovee, US 3,283,423], [Whitaker, US 4,217,704], [Williams, US 4,489,510], and [Puskas, US 5,644,813], and [Burkholder, US 2014/0096410 and in particular Figs. 6-8 thereof] each demonstrate that a shoe comprising a sole structure and an upper—such as that of Hurd—is capable of being inserted into another shoe and onto a sole thereof such that the sole structure thereof is provided onto the sole of said another shoe and in said another shoe)
comprising:
providing a base 32 having a shape for insertion onto the sole of or in the shoe (base 32 has a shape and is capable of insertion onto the sole and in the shoe in the manner explained above in reference to the extrinsic references [McMahon, US 2016/0073724], [Laird, US 2,319,239 and in particular Figs. 4-5 thereof], [McGarry, US 2,585,260], [Folk, US 3,009,269], [Schovee, US 3,283,423], [Whitaker, US 4,217,704], [Williams, US 4,489,510], and [Puskas, US 5,644,813], and [Burkholder, US 2014/0096410]), the base 32 including a lower surface 60, an upper surface 58 opposite the lower surface, and at least one cavity 56 extending inward from the lower surface over only a part of the lower surface (Figs. 3-5) such that over a remaining part of the lower surface, the lower surface is a lowermost surface of the insole (Figs. 3 and 6), the at least one cavity being defined in part by a downward-facing surface recessed inward of the lower surface 60 of the base (Figs. 3 and 6);
arranging (“received within...cavit[y]”; para 109) a respective air (“air”; para 110; para 111) cushion 36 at least partly in each of the at least one cavity 56 to be peripherally surrounded by the base (Figs. 3-6), each respective air cushion including a sealing structure (the combined 68 and 70) and foam (“foam”; para 113) pieces 66 held in the at least one cavity (Figs. 3-5) by the sealing structure (para 109; Fig. 6) such that when in each of the at least one cavity, the respective air cushion 36 defines part of the lowermost surface of the insole (Figs. 2 and 6; para 112),
whereby after the respective air cushion is arranged at least partly in each of the at least one cavity, the insole is then insertable onto the sole of or in the shoe (in the manner explained above in reference to the extrinsic references [McMahon, US 2016/0073724], [Laird, US 2,319,239 and in particular Figs. 4-5 thereof], [McGarry, US 2,585,260], [Folk, US 3,009,269], [Schovee, US 3,283,423], [Whitaker, US 4,217,704], [Williams, US 4,489,510], and [Puskas, US 5,644,813], and [Burkholder, US 2014/0096410]).
Although Hurd discloses foam pieces 66 held in the at least one cavity by the sealing structure, Hurd does not expressly disclose the foam pieces 66 are lightweight foam pieces held in the at least one cavity by the sealing structure.
However, in further view of Hurd: Hurd as embodied in para 6 teaches shoe sole foams “may vary in density” and that selection of an appropriate shoe sole foam will influence the physical properties of the sole. Therefore Hurd at least suggests shoe sole foam density can be optimized so as to achieve desired shoe sole properties.
Nevertheless, Falken teaches, in relation to shoe sole cushioning (para 14; Fig. 1), a material of construction that is a lightweight foam: “a lightweighted foam can be achieved. This is good for product applications that require a lightweight foam, such as in cushioning, footwear foams” (para 123).
It 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 to have modified the method of Hurd such that its foam pieces are lightweight foam pieces, as is the foam of Falken, in order to yield a method that provides good cushioning to the cushion and insole, as suggested by Falken (para 123).
Hurd does not expressly disclose attaching a mesh to the upper surface of the base and which forms an uppermost surface of the insole,
whereby after the mesh is attached to the upper surface of the base and the respective air cushion is arranged at least partly in each of the at least one cavity, the insole is then insertable onto the sole of or in the shoe
However, in further view of Hurd:
Hurd does teach attaching (“attached to”; para 114) a substrate 38 to the upper surface of the base (para 114; Fig. 2) and wherein said substrate 38 “opposes” the base and cushioning member (para 102; Fig. 2) and is “a lower substrate…of the upper” (para 102) such that it forms an uppermost surface of the insole. The layer is flexible such that the load provided by a wearer’s foot permits deformation of base and cushioning member (para 103). Hurd however does not describe the layer as mesh.
However, Sato teaches (Fig. 6) a substrate 2b that opposes a base 3 such that it forms an uppermost surface of an insole (the insole being the combined 3 and 2b; Fig. 6). In Sato, the layer is contacting and therefore attached to the upper surface of base 3 (Fig. 6). Sato teaches the layer is “a flexible mesh fabric” and is suitable for “transferring the reaction force” between the wearer’s foot and the base structure underlying the layer (para 52).
It 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 to have modified the modified Hurd such that its attaching a substrate 38 to the upper surface of the base and which forms an uppermost surface of the insole is attaching a mesh substrate to the upper surface of the base and which forms an uppermost surface of the insole, in the same manner that Sato’s substrate is mesh attached to the upper surface of its base, in order to yield a method for manufacturing an insole wherein the substrate is configured to transfer forces between foot and the cushion and also between the foot and the base, as suggested by Sato (para 52). It is noted that the capability of such force transference is a motivation found within Hurd (para 103 of Hurd).
In adopting the modification, the limitation “whereby after the mesh is attached to the upper surface of the base and the respective air cushion is arranged at least partly in each of the at least one cavity, the insole is then insertable onto the sole of or in the shoe” would be met insofar as the insole with the mesh attached thereto remains insertable onto the sole of or in the shoe (in the manner explained above in reference to the extrinsic references [McMahon, US 2016/0073724], [Laird, US 2,319,239 and in particular Figs. 4-5 thereof], [McGarry, US 2,585,260], [Folk, US 3,009,269], [Schovee, US 3,283,423], [Whitaker, US 4,217,704], [Williams, US 4,489,510], and [Puskas, US 5,644,813], and [Burkholder, US 2014/0096410]).
Regarding claim 3:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd Figs. 1-6 does not expressly disclose wherein the step of arranging a respective air cushion in each of the at least one cavity comprises placing foam pieces into the respective cavity and then sealing a membrane to the base around the respective cavity to form the sealing structure.
Rather, Hurd Figs. 1-6 discloses placing foam pieces 66 into the respective cavity (para 112) and sealing components 68 and 70 of the sealing structure together (“70...attached to...68 to define...void”; para 109, para 112) to form the sealing structure.
However and in further view of Hurd:
Hurd as embodied in Figs. 14-15 teaches a step of arranging a respective air cushion in a respective cavity comprises placing foam pieces 66 into the respective cavity 56b (“66 is inserted directly into...cavity 56 b”; para 129) and then sealing a membrane 78 to a base 32b around the respective cavity to form a sealing structure (“Once...66 is received within...cavity 56 b,” sealing membrane “78...attached to...surface 60 b...to retain” foam pieces “66 within the respective cavit[y]...56 b”; para 131).
It 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 to have modified the modified Hurd such that its step of arranging a respective air cushion in each of the at least one cavity comprises placing foam pieces into the respective cavity and then sealing a membrane to the base around the respective cavity to form the sealing structure in order to yield a method that yields an insole whose foam pieces are securely held within the respective cavity. One of ordinary skill would expect the modified method to yield an insole having securely held foam pieces based on the teachings of Hurd in relation to Hurd Figs. 14-15.
Regarding claim 4:
Hurd in view of Falken and Sato teach The method of claim 3, as set forth above.
The modified Hurd as applied to claim 3 above does not meet the limitation wherein the membrane is sealed to surfaces of the base around the respective cavity by glue.
However and in further view of Hurd:
Hurd teaches “Once...66 is received within...cavity 56 b,” sealing membrane “78...attached to...surface 60 b via an adhesive...to retain” foam pieces “66 within the respective cavit[y]...56 b” (para 131) such that Hurd teaches the membrane sealed to a surface of the base by glue. Hurd is silent as to whether or not membrane is sealed to plural surfaces of the base; however, one of ordinary skill would have recognized that the objective of retaining foam pieces within the cavity would be achieved if the membrane were secured to plural surfaces of the base as opposed to only one surface of the base.
It 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 to have modified the modified Hurd such that wherein the membrane is sealed to surfaces of the base around the respective cavity by glue in order to yield a method that yields an insole whose foam pieces are securely held within the respective cavity.
Regarding claim 6:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd further discloses wherein the step of arranging a respective air cushion in each of the at least one cavity comprises forming the respective air cushion with the foam pieces enclosed within the sealing structure and then inserting the sealing structure into the cavity (“Once...66 is received within the...void...of...64,...64...installed in the midsole 32”; para 114).
Regarding claim 8:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd Figs. 1-6 does not expressly disclose wherein each of at least one cavity is formed to extend inward from the lower surface of the base and be defined in part by the downward-facing surface recessed inward of the lower surface of the base and a side surface at an angle to and extending around a periphery of the respective one of the downward-facing surfaces.
However and in further view of Hurd:
Hurd Figs. 13-18 teaches a cavity 56b formed to extend inward from a lower surface 60b of a base 32b and be defined in part by a downward-facing surface (see annotated Fig. 15 – a below) recessed inward of a lower surface of the base and a side surface (see annotated Fig. 15 – a below) at an angle to and extending around a periphery of the downward facing surface (Figs. 14-18).
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It 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 to have modified the modified Hurd such that each of at least one cavity is formed to extend inward from the lower surface of the base and be defined in part by the downward-facing surface recessed inward of the lower surface of the base and a side surface at an angle to and extending around a periphery of the respective one of the downward-facing surfaces in order to yield a method that yields an insole wherein the degree of cushioning afforded by foam particles within cavities having such surfaces is desirable by a user of the insole. One of ordinary skill would expect the modified method to yield an insole having a desired degree of cushioning for at least some users thereof based on the teachings of Hurd in relation to Figs. 13-18.
Regarding claim 9:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd does not expressly disclose wherein the at least one cavity consists of first, second and third separate cavities.
Hurd Figs. 1-6 discloses the at least one cavity consists of first and second separate cavities (i.e. a first cavity being one of the two elements 56 and a second cavity being the other of the two elements 56; Figs. 2-3 and 6).
However and in further view of Hurd:
Hurd as embodied in Figs. 13-18 teaches “the midsole 32 b could include any number of first cavities 54 b and any number of second cavities 56 b” (para 126), and Hurd Figs. 1-6 further teaches a given surface—i.e. the top surface—can be provided with exactly three separate cavities 54.
It 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 to have modified the modified Hurd such that the at least one cavity consists of first, second and third separate cavities in order to yield a method that yields an insole wherein the degree of cushioning afforded by foam particles within three such cavities is desirable by a user of the insole. One of ordinary skill would expect the modified method to yield an insole having a desired degree of cushioning for at least some users thereof based on the teachings of Hurd in relation to Figs. 13-18 that any number of cavities could be provided and also the teaching of Hurd that a given surface can be provided with exactly three separate cavities in a surface thereof in Figs. 1-6.
Regarding claim 11:
Hurd in view of Falken and Sato teach The method of claim 9, as set forth above.
Hurd as applied to claim 9 above does not meet the limitation wherein each of the first, second and third cavities is formed to extend inward from the lower surface of the base and be defined in part by the downward-facing surface recessed inward of the lower surface of the base and a side surface at an angle to and extending around a periphery of the respective one of the downward-facing surfaces, the respective air cushion comprises first, second and third air cushions each situated at least partly in a respective one of the first, second and third cavities, each of the first, second and third air cushions being peripherally surrounded by the side surface of the respective one of the first, second and third cavities.
However and in further view of Hurd:
Hurd Figs. 13-18 teaches a cavity 56b formed to extend inward from a lower surface 60b of a base 32b and be defined in part by a downward-facing surface (see annotated Fig. 15 – a presented in above addressing of claim 8) recessed inward of a lower surface of the base and a side surface (see annotated Fig. 15 – a presented in above addressing of claim 8) at an angle to and extending around a periphery of the downward facing surface (Figs. 14-18) an air cushion (comprising foam pieces 66) a first air cushions each situated at least partly in the cavity, the first air cushion being peripherally surrounded by the side surface of the respective cavity (Figs. 15-18).
It 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 to have modified the modified Hurd such that each of the first, second and third cavities is formed to extend inward from the lower surface of the base and be defined in part by the downward-facing surface recessed inward of the lower surface of the base and a side surface at an angle to and extending around a periphery of the respective one of the downward-facing surfaces, the respective air cushion comprises first, second and third air cushions each situated at least partly in a respective one of the first, second and third cavities, each of the first, second and third air cushions being peripherally surrounded by the side surface of the respective one of the first, second and third cavities in order to yield a method that yields an insole wherein the degree of cushioning afforded by foam particles within cavities having such surfaces is desirable by a user of the insole. One of ordinary skill would expect the modified method to yield an insole having a desired degree of cushioning for at least some users thereof based on the teachings of Hurd in relation to Figs. 13-18.
Regarding claim 12:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd further discloses wherein the sealing structure comprises a membrane 68, 70 (i.e. the combined 68 and 70) under the foam pieces (as in Fig. 6 wherein 70 is below foam pieces 66 as oriented in Fig. 6), the method further comprising attaching (via locating it within the cavity; para 112; Fig. 6) the membrane to the base around a periphery of the respective one of at least one cavity (Fig. 6) such that the lowermost surface of the insole is provided by a combination of a lower surface of the membrane and the lower surface of the base (Figs. 2 and 6; para 112).
Regarding claim 13:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd further discloses wherein each of the respective air cushions comprises a membrane 68, 70 (i.e. the combined 68 and 70) surrounding the foam pieces (Fig. 6) to thereby provide the sealing structure.
Hurd Figs. 1-6 does not expressly disclose, the membrane being glued into the respective one of at least one cavity and thus attached to the base.
However and in further view of Hurd:
In Hurd Figs. 1-6, the membrane is within the cavity (Fig. 6). In further view of Hurd: Hurd Figs. 31-36 teaches a membrane 76 being glued to a surface of a base 32e and thus attached to the base (“76...attached to...surface 58 via...adhesive”; para 155).
It 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 to have modified the modified Hurd such that its membrane being glued into the respective one of at least one cavity and thus attached to the base in order to yield a method that yields an insole whose foam pieces are securely held within the respective cavity. One of ordinary skill would expect the modified method to yield an insole having securely held foam pieces based on the teachings of Hurd in relation to Hurd Figs. 31-36.
Regarding claim 14:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd further discloses wherein the foam pieces are placed in the respective air cushion to enable them to be freely movable in or within the sealing structure (“66 is free to move relative to and within each barrier member 64, the particulate matter 66 provides a degree of responsive and adaptive cushioning. For example, if during use of the article of footwear 10, forces are applied at the forefoot portion 66 during a running movement, downward forces imparted on the midsole 32 and, thus, the particulate matter 66 may cause the particulate matter 66 to move and shift around a user's foot, thereby providing adaptive and responsive cushioning during use of the article of footwear 10”; para 115).
Regarding claim 17:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
The modified Hurd further meets the limitation wherein the step of providing the base comprising structuring the base such that the insole, after the mesh is attached to the upper surface of the base and the respective air cushion is arranged at least partly in each of the least one cavity, consists of at least one first region (see annotated Fig. 6 – b below) that each includes a portion of the mesh (the modified Hurd comprises mesh attached to the upper surface of the base as set forth in above addressing of claim 1), the respective air cushion, and a portion of the base directly above the respective cavity and that extends to the upper surface of the base (as in annotated Fig. 6 – b below), and a second region (see annotated Fig. 6 – b below) that includes a remaining portion of the mesh (the modified Hurd comprises mesh attached to the upper surface of the base as set forth in above addressing of claim 1) and a remaining portion of the base extending from the lower surface of the base to the upper surface of the base (as in annotated Fig. 6 – b below), whereby in each one of the at least one first region of the insole, the insole provides support and/or cushioning to a foot of a user of the insole by a combination of the base, the mesh and the respective air cushion in the respective cavity (due to base, mesh, air cushion, and cavity being present in said first region), and in the second region of the insole, the insole provides support and/or cushioning to the foot of the user of the insole only by a combination of the base and the mesh (due to mesh and base being present in said second region and no air cushion or cavity being in said second region; see annotated Fig. 6 – b below).
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Claim(s) 2 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307], [Falken, US 2019/0351592] and [Sato, US 2019/0090583] as applied to claim 1 above, and further in view of [Kirk, US 2017/0164685].
Regarding claim 2:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd does not expressly disclose wherein the step of attaching the mesh to the upper surface of the base comprises gluing the mesh and the base together and then heat-pressing the mesh and base against one another.
However and in further view of Hurd: Hurd as embodied in Figs. 13-18 teaches attaching a substrate 38 to an underlying insole element 76 comprises gluing (“attached...via...adhesive”; para 132) the substrate 38 together with the underlying insole element 76. Thus Hurd at least suggests gluing insole components against one another.
However, Kirk teaches an insole for a shoe (Abstract) wherein “direct connection” between “first...element 260 and...second...element[] 270...by gluing and/or heat-pressing” (para 113).
It 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 to have modified the modified Hurd such that its step of attaching the mesh to the upper surface of the base comprises gluing the mesh and the base together and then heat-pressing the mesh and base against one another in order to yield a method that results in an insole whose mesh and base are durably secured to each other.
Regarding claim 15:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd as applied to claim 1 above does not meet the limitation wherein the mesh has a peripheral shape that is the same as the peripheral shape of the base, whereby the mesh is attached to the upper surface of the base over its entire periphery.
In further view of Hurd:
The substrate 38 of Hurd, which is modified to be mesh (see above treatment of claim 1), has a peripheral shape that, as presented in Fig. 2, appears to substantially match a peripheral shape of base 32. Attention is drawn to stitching 40 which is attached to substrate 38 and appears to substantially match a peripheral shape of base 32. Hurd is not expressly to scale, and Hurd does not show the substrate 38 in every view thereof such that it cannot be determined from the drawings alone that the substrate 38 of Hurd has a peripheral shape that is the same as the peripheral shape of the base such that the mesh is attached to the upper surface of the base over its entire periphery.
However, it 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 to have modified the modified Hurd such that its mesh has a peripheral shape that is the same as the peripheral shape of the base, whereby the mesh is attached to the upper surface of the base over its entire periphery in order to yield a method yielding an insole whose mesh is capable of permitting the base 32 and/or the cushions 36 to be depressed by a wearer’s foot throughout the entirety of the upper surface of the base. One of ordinary skill would have been motivated to adopt the modification insofar as Hurd teaches a purpose of substrate 38 is permitting “the user's foot to depress the midsole 32 and/or the cushioning member 36, thereby providing the user with a degree of comfort and cushioning during use of the article of footwear” (para 103).
The modified Hurd as applied above does not expressly disclose and wherein the step of attaching the mesh to the upper surface of the base comprises gluing the mesh and the base together and then heat-pressing the mesh and base against one another
However and in further view of Hurd: Hurd as embodied in Figs. 13-18 teaches attaching a substrate 38 to an underlying insole element 76 comprises gluing (“attached...via...adhesive”; para 132) the substrate 38 together with the underlying insole element 76. Thus Hurd at least suggests gluing insole components against one another.
However, Kirk teaches an insole for a shoe (Abstract) wherein “direct connection” between “first...element 260 and...second...element[] 270...by gluing and/or heat-pressing” (para 113).
It 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 to have modified the modified Hurd such that its step of attaching the mesh to the upper surface of the base comprises gluing the mesh and the base together and then heat-pressing the mesh and base against one another in order to yield a method that results in an insole whose mesh and base are durably secured to each other.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307], [Falken, US 2019/0351592] and [Sato, US 2019/0090583] as applied to claim 3 above, and further in view of [Kirk, US 2017/0164685].
Regarding claim 5:
Hurd in view of Falken and Sato teach The method of claim 3, as set forth above.
Hurd does not expressly disclose wherein the membrane is sealed to surfaces of the base around the respective cavity by heat or pressure.
However, Kirk teaches an insole for a shoe (Abstract) wherein “direct connection” between “first...element 260 and...second...element[] 270...by gluing and/or heat-pressing” (para 113).
It 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 to have modified the modified Hurd such that the membrane is sealed to surfaces of the base around the respective cavity by heat or pressure in order to yield a method that results in an insole whose membrane and base are durably secured to each other.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307], [Falken, US 2019/0351592] and [Sato, US 2019/0090583] as applied to claim 9 above, and further in view of [Prouty, US 1,822,981].
Regarding claim 10:
Hurd in view of Falken and Sato teach The method of claim 9, as set forth above.
Hurd does not expressly disclose wherein the first cavity is formed in a heel area of the insole and has an oblong shape, the second cavity is formed forward of the first cavity and has an oblong shape with a flared area that tapers outward toward a front of the insole, and the third cavity is in an area configured to accommodate a sole or ball of the foot of the user closer to the front of the insole than the second cavity.
However, Hurd as embodied in para 241 teaches “The foregoing description has been provided for purposes of illustration and description. It is not intended to be exhaustive or to limit the disclosure. Individual elements or features of a particular configuration are generally not limited to that particular configuration, but, where applicable, are interchangeable and can be used in a selected configuration, even if not specifically shown or described. The same may also be varied in many ways. Such variations are not to be regarded as a departure from the disclosure, and all such modifications are intended to be included within the scope of the disclosure.” Thus Hurd at least teaches the insole is open to modification.
However, Prouty teaches (Fig. 5) an insole 10 wherein locations for three cushioning pads (A, B, and C) are disposed such that a first one of the three pads (B) is in a heel area of the insole and has an oblong shape (Fig. 5), a second one of said three pads (A) forward of said first pad has an oblong shape with a flared area that tapers outward toward a front of the insole (Fig. 5), and a third one of said three pads (C) is in an area configured to accommodate a sole or ball of the wearer’s foot (Fig. 5).
Prouty further teaches the three pads are configured for underlying heel, arch, and ball portions of the foot (p. 1 lines 84-87) wherein a “cushion or pad may be applied to any portion of an insole and for any purpose” (p. 1 lines 79-81).
It 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 to have modified the modified Hurd such that the first cavity is formed in a heel area of the insole and has an oblong shape, the second cavity is formed forward of the first cavity and has an oblong shape with a flared area that tapers outward toward a front of the insole, and the third cavity is in an area configured to accommodate a sole or ball of the foot of the user closer to the front of the insole than the second cavity, in the same manner that the pads of Prouty Fig. 5 are arranged, in order to yield a method that yields an insole that is configured to provide cushioning to the wearer’s heel, arch, and ball of foot, as suggested by Prouty (p. 1 lines 79-81; 84-87).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307], [Falken, US 2019/0351592] and [Sato, US 2019/0090583] as applied to claim 1 above, and further in view of [Vindriis, US 2008/0047164, newly cited].
Regarding claim 16:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd Figs. 1-6 does not expressly disclose wherein the step of providing the base comprises forming each of the at least one cavity extending inward from the lower surface of the base while maintaining the upper surface of the base without cavities such that there are no cavities extending inward from the upper surface of the base.
Rather, as evidenced in Hurd Figs. 2-3 and 6, there are cavities extending inward from the upper surface of the base.
However, Vindriis teaches an insole 101, 104, 105 (i.e. the combined “upper layer 101”, “insert 104”, and “insert 105” (para 37)) wherein a step of providing a base 101 comprises forming each of at least one cavity 102, 103 extending inward from a lower surface of the base while maintaining an upper surface of the base without cavities such that there are no cavities extending inward from the upper surface of the base (“pockets 102 and 103 are provided as recesses in the upper layer 101”; para 37; “recess extending into the underside of the upper layer”; para 16; Fig. 1a).
Vindriis further teaches “The cushioning upper layer and the inserts with adoptable cushioning...provide a...surface against the foot sole, when the foot is standing on the insole, which results in a larger supporting surface” resulting in a “relief of the load against the foot sole, which is...larger by this combination than the sum of the...relief provided by the...upper layer” or “the inserts...alone” (para 11).
It 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 to have modified the modified Hurd such that its step of providing the base comprises forming each of the at least one cavity extending inward from the lower surface of the base while maintaining the upper surface of the base without cavities such that there are no cavities extending inward from the upper surface of the base in order to yield a method that yields an insole whose upper surface of the base presents a continuous surface against the structure provided above the upper surface of the base in order to promote load relief, as suggested by Vindriss (para 11).
And/or
It 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 to have modified the modified Hurd such that its step of providing the base comprises forming each of the at least one cavity extending inward from the lower surface of the base while maintaining the upper surface of the base without cavities such that there are no cavities extending inward from the upper surface of the base in order to yield a method that yields an insole whose at least one air cushion and foam pieces is/are configured to cushion the foot of a wearer; one of ordinary skill would expect the capability to be afforded if there are cavities extending inward from the upper surface of the base as in Figs. 1-6 of Hurd or if there are no cavities extending inward from the upper surface as modified based on the teaching of Vindriss that providing cavities such that none of them extend inward from an upper surface is an acceptable configuration for cushioning via inserts provided therein.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307], [Falken, US 2019/0351592] and [Sato, US 2019/0090583] as applied to claim 1 above, and further in view of [Sanders, US 2015/0040427, newly cited].
Regarding claim 18:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd does not expressly disclose further comprising forming anti-slip structure on an upper surface of the mesh, whereby when a user's foot is on the upper surface of the mesh, relative movement between the user's foot and the mesh is reduced by the anti-slip structure.
However, Sanders teaches forming (i.e. screen printing) an anti-slip structure 22 on an upper surface of an insole, whereby when a user’s foot is on the upper surface, relative movement between the user’s foot and the mesh is reduced by the anti-slip structure: “shoe insole covering 10 further includes a plurality of raised dots 22 at the inner portion 16 to provide additional grip to the footwear”; para 28; “insole...10 comprises a plurality of raised rubberized or silicon dots 22...The plurality of raised dots 22 are rubberized screen printed. The plurality of raised dots...enhance the grip...the plurality of raised dots 22 located at the inner portion 24 of the top portion 16 directly contact the bottom of the foot of the wearer which while walking/running provides continuous stimulation and a massaging effect to the wearer's feet”; para 32.
It 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 to have modified the modified Hurd such that it is further comprising forming anti-slip structure on an upper surface of the mesh, whereby when a user's foot is on the upper surface of the mesh, relative movement between the user's foot and the mesh is reduced by the anti-slip structure in order to yield a method that yields an insole that is capable of providing grip and/or stimulation and/or massaging, as taught by Sanders (paras 28 and 32).
Regarding claim 19:
Hurd in view of Falken and Sato teach The method of claim 1, as set forth above.
Hurd does not expressly disclose further comprising forming material dots on an upper surface of the mesh, whereby when a user's foot is on the upper surface of the mesh, relative movement between the user's foot and the mesh is reduced by the material dots.
However, Sanders teaches forming (i.e. screen printing) an material dots 22 on an upper surface of an insole, whereby when a user’s foot is on the upper surface, relative movement between the user’s foot and the mesh is reduced by the material dots: “shoe insole covering 10 further includes a plurality of raised dots 22 at the inner portion 16 to provide additional grip to the footwear”; para 28; “insole...10 comprises a plurality of raised rubberized or silicon dots 22...The plurality of raised dots 22 are...screen printed. The plurality of raised dots...enhance the grip...the plurality of raised dots 22 located at the inner portion 24 of the top portion 16 directly contact the bottom of the foot of the wearer which while walking/running provides continuous stimulation and a massaging effect to the wearer's feet”; para 32.
It 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 to have modified the modified Hurd such that it is further comprising forming material dots on an upper surface of the mesh, whereby when a user's foot is on the upper surface of the mesh, relative movement between the user's foot and the mesh is reduced by the material dots in order to yield a method that yields an insole that is capable of providing grip and/or stimulation and/or massaging, as taught by Sanders (paras 28 and 32).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Hurd, US 2020/0375307], [Falken, US 2019/0351592], [Sato, US 2019/0090583], and [Sanders, US 2015/0040427] as applied to claim 19 above, and further in view of [Dojan, US 2015/0113834, newly cited].
Regarding claim 20:
Hurd in view of Falken, Sato, and Sanders teach The method of claim 19, as set forth above.
Hurd does not expressly disclose wherein the material dots are formed from adhesive applied to the upper surface of the mesh and then dried.
In further view of Sanders:
Sanders teaches the material dots “screen printed” (para 32). Sanders is silent as to whether the screen printing is such that the material dots are formed from adhesive applied to the upper surface and then dried as claimed.
However, Dojan teaches and with the context of “footwear” a screen printing method wherein a screen printed material is formed from adhesive (i.e. “ink...suitable for screen printing” (para 44) wherein said ink is adhesive to the substrate applied thereto insofar as upon drying thereof, the material is “bonded” thereto (para 44)) applied to a surface of a substrate and then dried (“material” is “spread...over screen...coating” the surface of substrate and then dried (“Upon...drying, the material...forming the deposition layer...is...bonded...to” the surface of the substrate (para 44).
It 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 to have modified the modified Hurd such that its material dots are formed from adhesive applied to the upper surface of the mesh and then dried in order to yield the predictable result of a method that yields an insole whose material dots are secured to the upper surface of the mesh. One of ordinary skill would have been confronted with a decision as to which method step(s) to practice in order to apply the material dots by screen printing, and one of ordinary skill would have expected the “material dots are formed from adhesive applied to the upper surface of the mesh and then dried” as claimed to perform adequately well for this purpose based on the combined teachings of Sanders, which teaches screen printing is an acceptable way to form the dots, and Dojan, which provides detail regarding how, specifically, to perform screen printing to bond to a surface.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732
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