DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
Since this application is a continuation of US Applications 16/989967, 13/892556, and 12/271396, the Examiner has considered the information provided in the parent application (per MPEP 609.02). Should Applicant desire the information to be printed in any patent issuing from this application, a new listing of the information must be separately submitted.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 8,458,927. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 21, 28-31, and 34-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10,772,375. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,329,239. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 35-40 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Famolare (US 5,52,198).
Regarding claim 35, Famolare discloses a footwear kit comprising: a shoe (10); and at least one forepart (16); wherein the at least one forepart is generally symmetric about a first center line running from a foremost edge to a hindmost edge of the at least one forepart (as seen in Fig. 3, wherein the forepart is generally symmetric with only slight differences between the edges on either side of the first center line) and generally asymmetric about a second center line generally perpendicular to the first center line and running from generally a left side towards generally a right side of the at least one forepart (wherein the rear edge of the forepart is wider and shallower than the front edge of the forepart; Fig. 3); wherein the shoe has a peripheral shape that is generally asymmetric about a line running from a frontmost edge to a backmost edge of shoe (Fig. 3); wherein the at least one forepart is attached to the shoe (column 3, lines 6-8); wherein the at least one forepart covers an entire area (column 3, lines 2-4) until at least three eighths of a distance from the frontmost edge to the backmost edge (Fig. 3). (column 2, line 45-column 3, line 22; Fig. 1-6)
Regarding claim 36, Famolare discloses that the shoe further comprises a toe region (Fig. 3).
Regarding claim 37, Famolare discloses that the forepart has a periphery which generally matches a periphery of the toe region of the shoe (column 3, lines 2-5; Fig. 3).
Regarding claim 38, Famolare discloses that the toe region has a rearmost edge which is different from the backmost edge (Fig. 3).
Regarding claim 39, Famolare discloses that the shoe further comprises a heel region (22) and wherein the heel region has an endmost edge which is the backmost edge of the shoe (Fig. 3).
Regarding claim 40, Famolare discloses that the kit further comprises at least one heel part (46) removably attachable to the heel region of the shoe (column 3, lines 42-53; Fig. 6).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 28-34 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Famolare (US 5,52,198) in view of Boatwalla (US 5,699,628).
Regarding claim 28, Famolare discloses a footwear kit comprising: a shoe (10) wherein the shoe has a toe region; wherein the shoe has a peripheral shape that is generally asymmetric about a line running from a frontmost edge to a backmost edge of the shoe (Fig. 3); wherein the toe region is generally symmetric about a line running from a forwardmost edge to a rearmost edge of the toe region (as seen in Fig. 3, wherein the forepart is generally symmetric with only slight differences between the edges on either side of the first center line); wherein the toe region covers an entire area until at least three eighths of a distance from the frontmost edge to the backmost edge (column 3, lines 2-5; Fig. 3).
Famolare does not explicitly disclose a left shoe and a right shoe. Boatwalla teaches providing a pair of shoes, a right shoe and a left shoe, which are mirror images of each other (column 3, lines 10-14; Fig. 1). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a right shoe and a left shoe which are mirror images of each other, as taught by Boatwalla, in order to provide the use with a pair of shoes which fit each of the left foot and the right foot.
Regarding claim 29, Famolare discloses that the rearmost edge is different from the backmost edge (Fig. 3).
Regarding claim 30, Famolare discloses that the kit further comprises at least one forepart (16) and wherein the at least one forepart has a periphery which generally matches a periphery of the toe region (column 3, lines 2-5; Fig. 3).
Regarding claim 31, Famolare discloses that the toe region is generally asymmetric about a line running from generally a left side towards generally a right side of the toe region (wherein the rear edge of the forepart is wider and shallower than the front edge of the forepart; Fig. 3).
Regarding claim 32, Famolare and Boatwalla disclose that the left shoe and the right shoe each further comprises a heel region.
Regarding claim 33, Famolare discloses that the kit further comprises at least one heel part (46) removably attachable to the heel region (22) (column 3, lines 42-53; Fig. 6).
Regarding claim 34, Boatwalla teaches that a periphery of the toe region of the left shoe and a periphery of the toe region of the right shoe are generally similar (Fig. 1).
Claim 21-27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lind (US 6,243,973).
Regarding claim 21, Lind discloses a method for providing a footwear kit comprising the steps of: providing a midsole (26) for a left shoe and a midsole (26) for a right shoe (column 5, lines 8-10), each midsole having a toe region being an area from a front of the midsole to a selected line in front of a back of the midsole (Fig. 3); shaping a periphery of each midsole to be asymmetric about a line running from the front of the midsole towards the back of the midsole (Fig. 3) (column 5, lines 8-54; column 6, lines 23-46; column 8, lines 1-55; Fig. 3).
Lind does not explicitly disclose shaping a periphery of the toe region of the midsole of the left shoe to be substantially identical to a periphery of the toe region of the midsole of the right shoe. However, Lind teaches toe regions which are substantially symmetrical (Fig. 3), and further teaches providing replaceable sole members (22) which fit each of the right shoe and the left shoe (column 5, lines 8-10; Fig. 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to shape a periphery of the toe region of the midsole of the left shoe to be substantially identical to a periphery of the toe region of the midsole of the right shoe, in order to allow the replaceable sole members to easily swap between shoes, allowing the shoe to be easily worn by either right or left handed bowlers.
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Regarding claim 22, Lind discloses providing a first forepart and a second forepart, each having a forepart periphery; shaping the forepart peripheries to be substantially identical to each other and to the peripheries of the toe regions of the midsoles (column 7, line 66-column 8, line 1; Fig. 3).
Regarding claim 23, Lind discloses removably attaching the first forepart to the midsole of left shoe; and removably attaching the second forepart to the midsole of the right shoe (column 6, lines 47-54).
Regarding claim 24, Lind discloses that providing a first forepart and a second forepart further comprises providing a first forepart having a first traction characteristic and a second forepart having a second traction characteristic, the first traction characteristic being different from the second traction characteristic (column 5, lines 8-22).
Regarding claim 25, Lind discloses providing a heel region on the midsole for the left shoe and a heel region on the midsole for the right shoe (Fig. 3).
Lind does not explicitly disclose shaping a periphery of the heel region of the midsole of the left shoe to be substantially identical to a periphery of the heel region of the midsole of the right shoe. However, Lind teaches heel regions which are substantially symmetrical (Fig. 3), and further teaches providing replaceable sole members (22) which fit each of the right shoe and the left shoe (column 5, lines 8-10; Fig. 3). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to shape a periphery of the heel region of the midsole of the left shoe to be substantially identical to a periphery of the heel region of the midsole of the right shoe, in order to allow the replaceable sole members to easily swap between shoes, allowing the shoe to be easily worn by either right or left handed bowlers.
Regarding claim 26, Lind discloses providing a first heel part and a second heel part, each having a periphery; and shaping the peripheries of both heel parts to be substantially identical to each other and to the peripheries of the heel region of the midsoles (column 7, line 66-column 8, line 1; Fig. 3).
Regarding claim 27, Lind discloses removably attaching the first heel part to the midsole of the left shoe and removably attaching the second heel part to the midsole of the right shoe (column 6, lines 47-54).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/Primary Examiner, Art Unit 3732