DETAILED ACTION
Claims 1-20 are pending.
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 .
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, 4, 5, 9, 11, 13, 14, 15, 16, 18, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over respective claims 1, 1, 5, 1, 1, 1, 5, 1, 1, 1, 1 of U.S. Patent No. 12310452. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘452 could be utilized to anticipate the present claims (see chart below detailing claim limitations of ‘975 to corresponding claims of ‘452).
Present Application ‘975
Reference Patent (US 12310452)
1. An article of footwear comprising: an upper coupled to a sole and having medial and lateral interior sidewalls, and a perimeter below the medial and lateral interior sidewalls defining where the upper and the sole meet,
wherein the upper and the sole collectively define an interior region; and
an elastic membrane configured to stretch toward the sole underlying the elastic membrane during wear, wherein the elastic membrane is coupled to at least a portion of the medial and lateral interior sidewalls of the upper and is suspended within the interior region, such that at least a portion of the elastic membrane is spaced above the sole and spans between the medial and lateral interior sidewalls;
wherein the elastic membrane comprises two or more zones with selected stretch behavior characteristics, wherein the two or more zones comprise a first zone having a first set of stretch behavior characteristics and a second zone having a second set of stretch behaviors different than the first set of stretch behaviors.
1. An article of footwear comprising: an upper coupled to a sole and having medial and lateral sidewalls, and a perimeter below the sidewalls defining where the upper and the sole meet,
wherein the upper and the sole collectively define an interior region; and
an elastic membrane coupled to at least a portion of the medial and lateral sidewalls of the upper and suspended within the interior region, such that the elastic membrane is spaced above the sole and spans between the medial and lateral sidewalls;
wherein the elastic membrane comprises an intermediate layer sandwiched between two layers of elastic material; wherein the intermediate layer causes the elastic membrane to comprise two or more zones,
wherein the two or more zones comprise a first zone configured to be stretchable in four directions and a second zone configured to be more stretchable in one or more selected directions than in other directions (first zone stretch behaviors are different than those of the second zone); and
wherein the intermediate layer is covered by the two layers of elastic material.
4. The article of footwear of claim 1, wherein the elastic membrane comprises one or more layers of a material, and each of the one or more layers of material has a constant elastic modulus or a variable elastic modulus.
(from claim 1) wherein the elastic membrane comprises an intermediate layer sandwiched between two layers of elastic material; (claim 4 requires constant or variable modulus which encompasses every type of modulus)
5. The article of footwear of claim 1, wherein a height of the elastic membrane above the sole tapers downward from rear to front as the elastic membrane approaches a toe box of the article of footwear.
5. The article of footwear of claim 1, wherein a height of the elastic membrane above the sole tapers downward from rear to front as the elastic membrane approaches a toe box of the article of footwear.
9. The article of footwear of claim 1, wherein the elastic membrane is attached to the article of footwear in a partially stretched condition, a tight condition, a taut condition, a slack condition, a drooping condition, or a combination thereof.
(from claim 1) an elastic membrane coupled to at least a portion of the medial and lateral sidewalls of the upper and suspended within the interior region (must be either stretched, taut, or slack as this includes every option of mounting)
11. An article of footwear comprising:
an upper coupled to a sole and having medial and lateral interior sidewalls, and a perimeter below the medial and lateral interior sidewalls defining where the upper and the sole meet,
wherein the upper and the sole collectively define an interior region; and
an elastic membrane coupled to the medial and lateral interior sidewalls of the upper along an entire forefoot region of the article of footwear or coupled to the sole along the entire forefoot region of the article of footwear, and suspended within the interior region, such that at least a portion of the elastic membrane is spaced above the sole and spans between the medial and lateral interior sidewalls;
wherein the elastic membrane comprises two or more zones with selected stretch behavior characteristics, wherein the two or more zones comprise a first zone having a first set of stretch behavior characteristics and a second zone having a second set of stretch behaviors different than the first set of stretch behaviors.
1. An article of footwear comprising: an upper coupled to a sole and having medial and lateral sidewalls, and a perimeter below the sidewalls defining where the upper and the sole meet,
wherein the upper and the sole collectively define an interior region; and
an elastic membrane coupled to at least a portion of the medial and lateral sidewalls of the upper and suspended within the interior region, such that the elastic membrane is spaced above the sole and spans between the medial and lateral sidewalls;
wherein the elastic membrane comprises an intermediate layer sandwiched between two layers of elastic material; wherein the intermediate layer causes the elastic membrane to comprise two or more zones,
wherein the two or more zones comprise a first zone configured to be stretchable in four directions and a second zone configured to be more stretchable in one or more selected directions than in other directions; (having different stretch in the second zone is a different stretch behavior)
and wherein the intermediate layer is covered by the two layers of elastic material.
13. The article of footwear of claim 11, wherein the elastic membrane comprises one or more layers of a material, and each of the one or more layers of material has a constant elastic modulus or a variable elastic modulus.
(from claim 1) wherein the elastic membrane comprises an intermediate layer sandwiched between two layers of elastic material; (claim 13 requires constant or variable modulus which encompasses every type of modulus)
14. The article of footwear of claim 11, wherein a height of the elastic membrane above the sole tapers downward from rear to front as the elastic membrane approaches a toe box of the article of footwear.
5. The article of footwear of claim 1, wherein a height of the elastic membrane above the sole tapers downward from rear to front as the elastic membrane approaches a toe box of the article of footwear.
15. The article of footwear of claim 11, wherein the elastic membrane is configured to extend under a wearer's foot during wear.
(from claim 1) the elastic membrane is spaced above the sole and spans between the medial and lateral sidewalls; (spans between the sidewalls and above the sole, and thus configured to extend under a wearer’s foot during wear inasmuch as claimed).
16. The article of footwear of claim 11, wherein the elastic membrane is attached to the article of footwear in a partially stretched condition, a tight condition, a taut condition, a slack condition, a drooping condition, or a combination thereof.
(from claim 1) an elastic membrane coupled to at least a portion of the medial and lateral sidewalls of the upper and suspended within the interior region (must be either stretched, taut, or slack as this includes every option of mounting)
18. An article of footwear comprising:
an upper coupled to a sole and having medial and lateral interior sidewalls, and a perimeter below the medial and lateral interior sidewalls defining where the upper and the sole meet,
wherein the upper and the sole collectively define an interior region; and
an elastic membrane coupled to at least a portion of the medial and lateral interior sidewalls of the upper and suspended within the interior region, such that at least a portion of the elastic membrane is spaced above the sole and spans between the medial and lateral interior sidewalls;
wherein the elastic membrane comprises two or more zones with selected stretch behavior characteristics,
wherein the two or more zones comprise a first zone having a first set of stretch behavior characteristics and a second zone having a second set of stretch behaviors different than the first set of stretch behaviors.
1. An article of footwear comprising: an upper coupled to a sole and having medial and lateral sidewalls, and a perimeter below the sidewalls defining where the upper and the sole meet,
wherein the upper and the sole collectively define an interior region; and
an elastic membrane coupled to at least a portion of the medial and lateral sidewalls of the upper and suspended within the interior region, such that the elastic membrane is spaced above the sole and spans between the medial and lateral sidewalls;
wherein the elastic membrane comprises an intermediate layer sandwiched between two layers of elastic material; wherein the intermediate layer causes the elastic membrane to comprise two or more zones,
wherein the two or more zones comprise a first zone configured to be stretchable in four directions and a second zone configured to be more stretchable in one or more selected directions than in other directions (has different stretch behaviors than the first zone);
and wherein the intermediate layer is covered by the two layers of elastic material.
20. The article of footwear of claim 18, wherein the elastic membrane comprises one or more layers of a material, and each of the one or more layers of material has a constant elastic modulus or a variable elastic modulus.
(from claim 1) wherein the elastic membrane comprises an intermediate layer sandwiched between two layers of elastic material; (claim 20 requires constant or variable modulus which encompasses every type of modulus)
Claims 6, 7, 8, 10, 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12310452 in view of Ringholz et al. (US 20170245591).
Regarding claim 6 ‘452 describes the article of footwear of claim 1, but does not explicitly describe wherein the elastic membrane is generally parallel to a midsole at least in a heel region of the article of footwear.
In related art, Ringholz describes wherein the elastic membrane is generally parallel to a midsole at least in a heel region of the article of footwear (see annotated Fig. 21 below).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the device of ‘452 to be generally parallel to the heel region of the footwear midsole in order to provide additional continuous (as opposed to varied) cushioning to the user.
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Regarding claim 7, ‘452 describes the article of footwear of claim 1, but does not explicitly describe wherein the elastic membrane is configured to extend under an arch and a portion of a heel of a wearer's foot during wear.
In related art, Ringholz describes wherein the elastic membrane is configured to extend under an arch and a portion of a heel of a wearer's foot during wear (see Fig. 19, extends full length of the footwear).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify ‘452 to include the membrane extending the length of the footwear in order to provide a customized fit that will warp to the contour of the user’s foot thereby yielding to pressure point and giving support to the user (para. 0034).
Regarding claim 8, ‘452 describes the article of footwear of claim 1, but does not explicitly describe wherein the elastic membrane is affixed to the medial and lateral interior sidewalls along an entire forefoot region of the article of footwear or is affixed to the sole along the entire forefoot region of the article of footwear.
In related art, Ringholz describes wherein the elastic membrane is affixed to the medial and lateral interior sidewalls along an entire forefoot region of the article of footwear or is affixed to the sole along the entire forefoot region of the article of footwear (see Fig. 19, depicting membrane 24 attached to interior sidewalls of the upper).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify ‘452 to include the membrane extending the length of the footwear in order to provide a customized fit that will warp to the contour of the user’s foot thereby yielding to pressure point and giving support to the user (para. 0034).
Regarding claim 10, ‘452 describes the article of footwear of claim 1, but does not explicitly describe wherein the elastic membrane is supported on all sides by a structure of the article of footwear.
In related art, Ringholz describes wherein the elastic membrane (24) is supported on all sides by a structure of the article of footwear (see Fig. 19, depicting support around the membrane).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify ‘452 to include the membrane extending the length of the footwear in order to provide a customized fit that will warp to the contour of the user’s foot thereby yielding to pressure point and giving support to the user (para. 0034).
Regarding claim 17, ‘452 describes the article of footwear of claim 1, but does not explicitly describe wherein the elastic membrane is supported on all sides by a structure of the article of footwear.
In related art, Ringholz describes wherein the elastic membrane (24) is supported on all sides by a structure of the article of footwear (see Fig. 19, depicting support around the membrane).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify ‘452 to include the membrane extending the length of the footwear in order to provide a customized fit that will warp to the contour of the user’s foot thereby yielding to pressure point and giving support to the user (para. 0034).
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.
Claim 9, 10, 16, and 17 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 pre-AIA the applicant regards as the invention.
Claim 9 recites “tight” and “taut” conditions. It is unclear what the difference between these two conditions supposedly is.
Claim 9 recites “slack” and “drooping” conditions. It is unclear what the difference between these two conditions supposedly is.
Claim 9 recites “partially stretched” condition. It is unclear what is considered “partially” stretched as opposed to simply “stretched”. The examiner interprets them to mean the same thing.
Claim 10 recites that the elastic membrane is supported on “all sides” by a structure of the article of footwear. Initially, it is unclear what separate structure is being referred to as the specification appears to merely refer to the footwear itself as “the structure”. Next, it is unclear what is meant by “all sides”. Does this include the upper and lower surfaces of the membrane, or simply the boundary edges? The examiner interprets this to mean the boundary edges.
Claim 16 recites “tight” and “taut” conditions. It is unclear what the difference between these two conditions supposedly is.
Claim 16 recites “slack” and “drooping” conditions. It is unclear what the difference between these two conditions supposedly is.
Claim 16 recites “partially stretched” condition. It is unclear what is considered “partially” stretched as opposed to simply “stretched”. The examiner interprets them to mean the same thing.
Claim 17 recites that the elastic membrane is supported on “all sides” by a structure of the article of footwear. Initially, it is unclear what separate structure is being referred to as the specification appears to merely refer to the footwear itself as “the structure”. Next, it is unclear what is meant by “all sides”. Does this include the upper and lower surfaces of the membrane, or simply the boundary edges? The examiner interprets this to mean the boundary edges.
The dependent claims inherit(s) the deficiency by nature of dependency.
Allowable Subject Matter
Claims 2, 3, 12, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Ringholz et al. (US 20170245591) describes a substantially similar device, but lacks the specific arrangement of the elastic membrane with respect to the perimeter and sidewalls.
Smith et al. (US 20120260526) describes an article of footwear with a last 41 that can be attached either above, below, or adjacent to the upper (see Figs. 13A-13C). The last 40, however, does not extend to the lateral and medial side walls, but rather is located above the perimeter portion and thus if Ringholz was modified with Smith to include the configuration so that the perimeter of the upper was below the elastic membrane, the modification would move the membrane away from the sidewalls and thus does not fairly teach the claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references cited include various articles of footwear that include suspension components, lasts, strobels, or other lower attachments of the footwear as well as different cushioning materials.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint Ostrup can be reached on 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732