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 .
Claim Rejections - 35 USC § 102
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 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Litchfield et al. (US 5,771,606, herein after Litchfield).
With respect to claim 1, Litchfield discloses an article of footwear (see figures 6-7 & 13-15) comprising:
an upper (upper 1502 is attached to sole 602, see figure 15, for example);
a sole (see figures 1-7, as an example) having a triangular shaped sole insert (resilient insert 102 provides continuously modifying cushioning to an article of footwear, such that a wearer's stride forces air within resilient insert 102 to move in a complementary manner with respect to the stride), wherein the triangular shaped sole insert (102) includes:
a heel impact elastomeric element (peripheral heel chambers 104, see figure 1, resilient insert 102 may be formed from a thermoplastic elastomer);
a first metatarsal impact elastomeric element (peripheral forefoot chamber 118);
a fifth metatarsal impact elastomeric element (peripheral forefoot chambers 114);
a first bridge (central connecting passage 124 has a second branch 132, see figure 1) connecting the heel impact elastomeric element (104) to the first metatarsal impact elastomeric element (chamber 118);
a second bridge (central connecting passage 124 has a first branch 130) connecting the heel impact elastomeric element (chamber 104) to the fifth metatarsal impact elastomeric element (114); and
a third bridge (chambers 114 and 118 that are separated and interconnected by a web area) connecting the first metatarsal impact elastomeric element (114) to the fifth metatarsal impact elastomeric element (118); and
wherein the first bridge (central connecting passage 124 has a second branch 132, see figure 1), second bridge (central connecting passage 124 has a first branch 130), and third bridge (chambers 114 and 118 that are separated and interconnected by a web area) each have a concave dome shape (see re-produced figure 1 below).
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Henrichot et al. (USPN 11,234,485, herein after Henrichot) in view of Lo (Pub. No. US 2018/0020771).
With respect to claim 1, Henrichot discloses an article of footwear (500, see figures 5A-B) comprising:
an upper (502);
a sole (504) having a triangular shaped sole insert (FIGS. 5A and 5B illustrate the three bladder regions 102BH, 102BL, and 102BM interconnected
with one another), wherein the triangular shaped sole insert includes:
a heel impact elastomeric element (foot support thermoplastic bladder 102BH, see figures 5A-B);
a first metatarsal impact elastomeric element (foot support thermoplastic bladder 102BM, see figures 5A-B);
a fifth metatarsal impact elastomeric element (foot support thermoplastic bladder 102BL, see figures 5A-B);
a first bridge (fluid transfer line 506, see figure 5B) connecting the heel impact elastomeric element (102BH) to the first metatarsal impact elastomeric element (102BM);
a second bridge (fluid transfer line 506, see figure 5B) connecting the heel impact elastomeric element (102BH) to the
fifth metatarsal impact elastomeric element (102BL); and
a third bridge (fluid transfer line 506, see figure 5B) connecting the first metatarsal impact elastomeric element (102BM) to the fifth metatarsal impact elastomeric element (102BL).
Henrichot as described above discloses all the limitations of the claims except for wherein the first bridge, second bridge, and third bridge each have a concave dome shape. Lo discloses an article of footwear comprising a sole having a triangular shaped sole insert (see figures 1-7), wherein bridges connect impact elastomeric elements, and wherein the bridges have concave dome shape (see figures 5-7). Therefore, it would have been obvious to one of ordinary skill in the art to make the bridges of Henrichot with a concave dome shape as taught by Lo, since it has been held that such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,369,686. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim an article of footwear comprising: an upper; a sole having a triangular shaped sole insert, wherein the triangular shaped sole insert includes: a heel impact element; a first metatarsal impact element; a fifth metatarsal impact element; a first bridge connecting the heel impact element to the first metatarsal impact element; a second bridge connecting the heel impact element to the fifth metatarsal impact element; and a third bridge connecting the first metatarsal impact element to the fifth metatarsal impact element; and wherein the first bridge, second bridge, and third bridge each have a concave dome shape.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are article of footwears with sole insert analogous to applicant’s instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached M-Thurs. 7:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
01/30/2026