DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is in response to Applicant’s amendment in which claims 21 and 35 have been amended, and claims 21-40 remain pending.
Terminal Disclaimer
The terminal disclaimer filed on 05/01/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent Numbers 8,458,927; 10,772,375; and 12,329,239 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 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) 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 the 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 21-34 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 21, Famolare discloses a method for providing a footwear kit comprising the steps of: providing a midsole (14) for a left shoe the, midsole having a toe region (26) being an entire area from a front of the midsole to a selected line at at least three eights of a distance from a front of the midsole to 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 2, line 45-column 3, line 22; Fig. 1-6).
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.
Famolare 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, Famolare teaches toe regions which are substantially symmetrical (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 of the combination of Famolare and Boatwalla, as the toe regions are substantially symmetrical and mirror images of each other, therefore resulting in substantially identical peripheries.
Regarding claim 22, Famolare discloses providing a first forepart and a second forepart (16), 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 3, lines 22; Fig. 3).
Regarding claim 23, Famolare 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 3, lines 17-22).
Regarding claim 24, Famolare 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 3, lines 17-22).
Regarding claim 25, Famolare and Boatwalla teach providing a heel region on the midsole for the left shoe and a heel region on the midsole for the right shoe.
Famolare 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, Famolare teaches heel regions which are substantially symmetrical (Fig. 3), and further teaches providing replaceable sole members (46). 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, as the heel regions are substantially symmetrical and mirror images of each other, therefore resulting in substantially identical peripheries.
Regarding claim 26, Famolare and Boatwalla teach a first heel part and a second heel part (right and left 46), 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 (wherein the peripheries of the heel parts match the periphery of the heel regions, and therefore are substantially identical to each other and the peripheries of the heel regions).
Regarding claim 27, Famolare and Boatwalla teach 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 (Famolare: column 3, lines 42-52; Fig. 6).
Regarding claim 28, Famolare discloses a footwear kit comprising: a shoe (10) wherein the shoe has a toe region (26); 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).
Response to Arguments
Applicant's arguments filed 05/01/2026 have been fully considered but they are not persuasive.
Applicant argues that Fig. 3 of Famolare depicts a toe region, not a forepart. However, Famolare explicitly teaches that the forepart (16) has a substantially identical peripheral margin as the slide area 26 depicted in Fig. 3 (column 3, lines 2-4). Therefore Fig. 3 does act to show the peripheral shape of the forepart.
Applicant argues that the toe region or forepart of Famolare’s shoe is not generally symmetric about a center line running from a front to a back of the toe region or forepart. However, inasmuch as Applicant has defined “generally symmetric” within the claims, the toe region and forepart of Famolare do meet this claim limitation. Although the toe region of Famolare is not perfectly symmetric, it is generally symmetric, with only minimal deviations along the edges from perfect symmetry, as seen in Fig. 3. Therefore Famolare meets all claim limitations of claims 35 and 28 as recited.
Applicant argues that Famolare does not disclose that the toe region covers an entire area until at least three eighths of a distance from the frontmost edge to the back most edge. However, Fig. 3 of Famolare clearly shows that toe region 26 extends at least three eighths of a distance from the frontmost edge to the back most edge (see line 28, the rear edge of toe region 26).
Applicant’s arguments with respect to claim(s) 21 have been considered but are 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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