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 .
Information Disclosure Statement
Since this application is a continuation or continuation-in-part of US Applications 17/985145, 16/745525, and 16/226861, 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.
Claim Objections
Claims 1, 2, 12, and 13 are objected to because of the following informalities:
Claim 1 recites the limitation “the outsole comprising a plurality of tile pieces comprise a first protruding traction member” in lines 6-7. It appears that this limitation should read --the outsole comprising a plurality of tile pieces comprising a first protruding traction member--.
Claim 2 recites the limitation “a greater hardness than and the second traction members” in lines 1-2. It appears that this limitation should read --a greater hardness than the second traction members--.
Claim 12 recites the limitation “the triangular-shaped, non-recessed top surface … have form a ground contacting surface” in lines 1-2. It appears that this limitation should read -- the triangular-shaped, non-recessed top surface … form a ground contacting surface--.
Claim 13 recites the limitation “the four-sided tile pieces” in line 11, which lacks antecedent basis. While the tile pieces have been previously recited, they are not previously recited as four-sided tile pieces.
Appropriate correction is required.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,490,677. 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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,497,272. 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 1 and 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,490,689. 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 1 and 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,974,632. 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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,302,990. 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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,957,204. 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 1-2, 4-5, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 12-14, 18, 21-28, 31, and 33-38 of copending Application No. 18/407895 (reference application). 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 co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/636064 (reference application). 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 co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,495,863. 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 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inomata et al. (US 2018/0035754), herein Inomata.
Regarding claim 1, Inomata discloses a golf shoe comprising: an upper, an outsole (5), and a midsole (4) connected to the upper and outsole, the upper, midsole, and outsole each having forefoot, mid-foot, and rear-foot regions and lateral and medial sides (Fig. 1); and the outsole comprising a plurality of tile pieces (11, 14, 31, 34) comprising a first protruding traction member (H), an opposing second protruding traction member (S); and a non-protruding, level base segment (G) disposed between the first and second traction members (paragraphs 0174-0180, 0196, 0217-0220; Fig. 1-7).
Regarding claim 2, Inomata discloses that the first traction members have a greater hardness than and the second traction members, the level base segments provide a flex point in between the two traction members (paragraphs 0217-0220).
Regarding claim 3, Inomata discloses that the flex points are oriented in various directions across the outsole (Fig. 1).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lawless (US 2017/0042288).
Regarding claim 1, Lawless discloses a golf shoe comprising: an upper (102), an outsole (132, 903, lower surface of 900), and a midsole (upper portion of 900) connected to the upper and outsole, the upper, midsole, and outsole each having forefoot, mid-foot, and rear-foot regions and lateral and medial sides (Fig. 1-2); and the outsole comprising a plurality of tile pieces (adjacent sole elements 902) comprising a first protruding traction member (903 or 132), an opposing second protruding traction member (903 or 132); and a non-protruding, level base segment (surface of 902, 920) disposed between the first and second traction members (paragraphs 0029, 0034, 0055, 0097-0102; Fig. 1-3, 15-17).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole 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. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4-12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lawless, as applied to claim 1, in view of Kobayashi et al. (US 6,792,698), herein Kobayashi.
Regarding claim 4, Lawless discloses that the first traction members have sidewalls and a triangular-shaped, non-recessed top surface that forms a ground contacting surface (Fig. 17).
Lawless appears to show that the sidewalls have sloping surfaces (Fig. 17), but does not explicitly disclose the pitch of the sidewalls. Kobayashi teaches a shoe having an outsole comprising a plurality of tile pieces comprising a first protruding traction member (5), an opposing second protruding traction member (5); and a non-protruding, level base segment (7) disposed between the first and second traction members. The traction members have sidewalls with sloping surfaces and a triangular-shaped, non-recessed top surface that forms a ground contacting surface (Fig. 1, 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the sidewalls of Lawless with sloping surfaces, as taught by Kobayashi, in order to provide a narrowed ground contacting surface that can better penetrate the ground, improving traction of the sole.
Regarding claim 5, Lawless discloses that the second traction members have sidewalls and a larger triangular-shaped, non-recessed top surface than the first traction members (paragraph 0100). Kobayashi teaches that the sidewalls have sloping surfaces.
Regarding claim 6, Lawless discloses that the first and second traction members have substantially the same heights (Fig. 16, 17).
Regarding claim 7, Lawless discloses that the shoe comprises a first zone of tiles containing protruding traction members extending along the anterior portion of the forefoot region; a second zone of tiles containing protruding traction members extending along the periphery of the forefoot region; and a third zone of tiles containing protruding traction members extending along the opposing periphery of the forefoot region, the second and third zones being adjacent to the first zone and the traction members in the first, second, and third zones having different dimensions (paragraph 0100; Fig. 7, 15).
Regarding claim 8, Lawless discloses that the triangular-shaped, non-recessed top surface of the traction members in each of the zones form a ground contacting surface (Fig. 17). Lawless does not disclose the specific total ground contact surface area, but appears to show that the total ground contact surface area is in the range of about 10 to about 70% based on total surface area of the tile. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the total ground contact surface area in the range of about 10 to about 70% based on total surface area of the tile in order to provide specific traction patterns, depending on the needs of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9, Lawless discloses that the shoe comprises a zone of tiles containing protruding traction members extending along the mid-foot region (Fig. 7, 15).
Regarding claim 10, Lawless discloses that the triangular-shaped, non-recessed top surface of the traction members in the zone of the mid-foot region form a ground contacting surface (Fig. 15). Lawless does not disclose the specific total ground contact surface area, but appears to show that the total ground contact surface area is in the range of about 5 to about 50% based on total surface area of the tile. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the total ground contact surface area in the range of about 5 to about 50% based on total surface area of the tile in order to provide specific traction patterns, depending on the needs of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 11, Lawless discloses that the shoe comprises a first zone of tiles containing protruding traction members extending along the posterior portion of the rear-foot region; a second zone of tiles containing protruding traction members extending along the periphery of the rear-foot region; and a third zone of tiles containing protruding traction members extending along the opposing periphery of the rear-foot region, the second and third zones being adjacent to the first zone and the traction members in the first, second, and third zones having different dimensions (Fig. 7, 15).
Regarding claim 12, Lawless discloses that the triangular-shaped, non-recessed top surface of the traction members in each of the zones form a ground contacting surface (Fig. 17). Lawless does not disclose the specific total ground contact surface area, but appears to show that the total ground contact surface area is in the range of about 10 to about 70% based on total surface area of the tile. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the total ground contact surface area in the range of about 10 to about 70% based on total surface area of the tile in order to provide specific traction patterns, depending on the needs of the user. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 14, Lawless discloses that the first and second traction members each comprise a thermoplastic polyurethane composition (paragraph 0045).
Regarding claim 15, Lawless discloses that the level base segment disposed between the first and second traction members comprises an ethylene vinyl acetate composition (paragraph 0045).
Allowable Subject Matter
Claim 13 is free of art rejections but is subject to a double patenting rejection.
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.
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/SHARON M PRANGE/Primary Examiner, Art Unit 3732