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 .
Claims 21-40 are being treated on the merits.
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 21-40 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,409,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are in regards to similar claim matter. Also, the current application is broader than the patented invention.
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.
Claims 21, 22, 27-31, 33 & 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuerst (USPN 7,234,251).
Regarding Claim 21, Fuerst discloses a method for making an outsole (Figures 16-19, Col. 10, line 52-Col. 12, line 23) comprising the steps of: providing a mold comprising a bottom lid (510), a middle lid (600), a toe cap lid (540), and a top lid (560); wherein said middle lid comprises a middle lid gap (gap, see annotated Figure 19 below); wherein said toe cap lid fits in said middle lid gap (Col. 10, lines 25-52, Figures 16-19); placing a first material on said bottom lid (Col. 10, line 59-Col. 11, line 4); pressing said first material between said middle lid and said bottom lid (Col. 10, line 59-Col. 11, line 4 & Col. 11, lines 35-61); placing said toe cap lid within said middle lid gap (Col. 11, lines 5-10 & Col. 11, lines 35-61); placing a second material on said toe cap lid (Col. 11, lines 5-12); pressing said second material between said toe cap and said top lid (Col. 11, lines 8-10).
Regarding Claim 22, Fuerst discloses wherein said bottom lid, middle lid and top lids are connected via a hinge (568).
Regarding Claim 27, Fuerst discloses a method for making an outsole (Figures 16-19, Col. 10, line 52-Col. 12, line 23) comprising the steps of: providing a mold comprising a bottom lid (510), a middle lid (600), a toe cap lid (540), and a top lid (560); wherein said bottom lid, middle lid and top lids are connected via a hinge (568); wherein said middle lid comprises a middle lid gap (gap, see annotated Figure 19 below); placing a first material on said bottom lid (Col. 10, line 59-Col. 11, line 4); pressing said first material between said middle lid and said bottom lid (Col. 10, line 59-Col. 11, line 4 & Col. 11, lines 35-61); placing a second material on said toe cap lid (Col. 11, lines 5-12); placing said toe cap lid and said second material into said middle lid gap (Col. 11, lines 5-10 & Col. 11, lines 35-61); placing said top lid on said middle lid (Figures 16-19, Col. 10, line 52-Col. 12, line 23).
Regarding Claim 28 , Fuerst discloses wherein said toe cap lid fits in said middle lid gap (Col. 10, lines 25-52, Figures 16-19).
Regarding Claim 29, Fuerst discloses said bottom lid comprises an inner and outer face (512 & 514), and wherein said inner face comprises a bottom lid cavity (516) where said first material is placed (Col. 10, line 59-Col. 11, line 4).
Regarding Claim 30, Fuerst discloses a steps of 2creating a patterns on said outsole (Figure 16-19, Col. 9, lines 48-59) and wherein said middle lid comprises a middle lid projection with a first pattern (Figures 16-19, smooth pattern) and said bottom lid cavity comprises a second pattern (518, Figures 16-19).
Regarding Claim 31, Fuerst disclose a step of encapsulating said second material within said first material (Col. 10, line 52-Col. 12, line 23).
Regarding Claim 33, Fuerst disclose a step of warming said mold (Col. 11, lines 20-29).
Regarding Claim 34, Fuerst discloses a step of heating said mold (Col. 11, lines 20-29).
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.
Claims 23 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Fuerst (USPN 7,234,251) in view of Nishi (US 2017/0318901).
Regarding Claim 23, Fuerst discloses warming a mold to a mold to approximately to 155 degrees (Col. 11, lines 20-29) for compression molding (Col. 12, line 20). Fuerst does not specifically disclose the steps of warming said mold to approximately 155 degrees Celsius before placing said first material on said bottom lid. However, Nishi discloses steps of warming a mold to approximately 155 degrees Celsius (Para. 108) before placing said first raw material on said mold (Para. 109 “hot-pressed). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the mold to be heated first, as taught by Nishi in order to allow pressing raw material into the mold and shaping the outsole.
Regarding Claim 24, Fuerst does not specifically disclose the step of heating said mold to between 250 to 300 degrees F after pressing said second raw material between said toe cap lid and said top lid (Col. 11, lines 20-34). However, Nishi discloses the step of heating a mold to between 165 to 200 degrees Celsius (Para. 108). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the temperature of the heating the mold, as taught by Nishi, in order to provide an adequate integration of material to form an outsole.
Claim 25, 26, 32, & 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over Fuerst (USPN 7,234,251) in view of Laska (US 2007/0107257).
Regarding Claims 25 & 32, Fuerst does not disclose placing a third material between said toe cap lid and said second material. However, Laska disclose the use of multiple different molding material including at least three different sections (Para. 28). It would have been obvious to one of ordinary skill in the art before the filing date to include a third material, as taught by Laska, in order to provide various sections having different materials for the purpose of providing various characteristics. Therefore, the combination of Fuerst and Laska discloses a third material between said toe cap lid and said second material.
Regarding Claim 26, the combination of Fuerst and Laska disclose said third material selected from the group consisting of metal, wood, hard plastics, and combinations thereof (Fuerst, Col. 10, line 60-63 & Col. 13, lines 3-16 & Laska, Para. 22-24).
Regarding Claim 35, Fuerst discloses a method for making an outsole (Figures 16-19, Col. 10, line 52-Col. 12, line 23) comprising the steps of: providing a mold comprising a bottom lid (510), a middle lid (600), a toe cap lid (540), and a top lid (560); wherein said bottom lid, middle lid and top lids are connected via a hinge (568); wherein said middle lid comprises a middle lid gap (gap, see annotated Figure 19 below); wherein said toe cap lid fits in said middle lid gap (Col. 10, lines 25-52, Figures 16-19); placing a first material on said bottom lid (Col. 10, line 59-Col. 11, line 4); pressing said first material between said middle lid and said bottom lid (Col. 10, line 59-Col. 11, line 4 & Col. 11, lines 35-61) by rotating said middle lid about said hinge (Col. 9, line 60-Col. 10, line 3 & Col. 10, line 52-Col. 12, line 23); placing a second material on said toe cap lid (Col. 11, lines 5-12); placing said toe cap lid and said second material into said middle lid gap (Col. 11, lines 5-10 & Col. 11, lines 35-61); opening said mold and removing said outsole (Figures 16-19, Col. 10, line 52-Col. 12, line 23). Fuerst does not disclose placing a third material on said second material and said third material between said toe cap lid and said top lid by rotating said top lid about said hinge; pressing said first and third materials by securing said mold in a closed position. However, Laska disclose the use of multiple different molding material including at least three different sections (Para. 28). It would have been obvious to one of ordinary skill in the art before the filing date to include a third material, as taught by Laska, in order to provide various sections having different materials for the purpose of providing various characteristics. Therefore, the combination of Fuerst and Laska disclose a third material on said second material and said third material between said toe cap lid and said top lid by rotating said top lid about said hinge; pressing said first and third materials by securing said mold in a closed position (Fuerst, Figures 16-19, Col. 10, line 52-Col. 12, line 23 & Laska, Para. 28).
Regarding Claim 36, the combination of Fuerst and Laska disclose said top lid further comprises a top lid cavity (566) which mates with said toe cap lid (Figure 16-19).
Regarding Claim 37, the combination of Fuerst and Laska disclose the steps of molding said first and third materials into a monolithic unit and encapsulating said second material within said monolithic unit (Fuerst, Col. 10, line 52-Col. 11, line 14 & Laska, Para. 28).
Regarding Claim 38, the combination of Fuerst and Laska disclose said step of opening said mold and removing said outsole (Fuerst, Figures 16-19, Col. 10, line 52-Col. 12, line 23) further comprises the steps of: opening said top lid (Fuerst, Figures 16-19, Col. 10, line 52-Col. 12, line 23; removing said toe cap lid (Fuerst, Figures 16-19, Col. 10, line 52-Col. 12, line 23;opening said middle lid (Fuerst, Figures 16-19, Col. 10, line 52-Col. 12, line 23; and removing said outsole (Fuerst, Figures 16-19, Col. 10, line 52-Col. 12, line 23.
Claims 39 & 40 are rejected under 35 U.S.C. 103 as being unpatentable over Fuerst (USPN 7,234,251) in view of Laska (US 2007/0107257) in further view of Nishi (US 2017/0318901).
Regarding Claims 39 & 40, Fuerst does not specifically disclose the step of heating said mold is completed by heating said mold to between 165 to 200 degrees Celsius for approximately 800 seconds. However, Nishi discloses the step of heating a mold to between 165 to 200 degrees Celsius (Para. 108) for approximately 5 minutes to 30 minutes (Examples 1-15). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the temperature and duration of the heating the mold, as taught by Nishi, in order to provide an adequate integration of material to form an outsole.
PNG
media_image1.png
565
568
media_image1.png
Greyscale
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 KATHARINE KANE whose telephone number is (571)272-3398. The examiner can normally be reached Mon-Fri 9am-6pm 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHARINE G KANE/Primary Examiner, Art Unit 3732