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 .
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.
Election/Restrictions
Applicant’s election of species I, figures 1 and 2A, and claims 1-6 in the reply filed on 12/04/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,622,598. Although the claims at issue are not identical, they are not patentably distinct from each other and if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. The claims are directed to a shoe comprising a sole, the shoe comprising: a shoe upper comprising an opening for entering the shoe, the shoe opening defined by a rear part, a medial part, a lateral part, and a front part; the rear part comprising a top portion reinforced with a firm material; a compression spring element comprising: a top part and a bottom part configured to be compressed towards each other by the application of a force on the top part of the compression spring element, and a side profile that lays flush against a contour of the rear part of the shoe; wherein the compression spring element is mounted inside a sleeve associated with the rear part of the shoe or embedded within the rear part of the shoe, and wherein the compression spring element is substantially centered between a left side and a right side of the rear part of the shoe, and wherein the top part of the compression spring element is attached proximate to the top portion of the rear part, and the bottom part of the compression spring element is attached to the sole.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of copending Application No. 18/120,954. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present application may be wholly derived from the claimed subject matter of the copending application. The claims are directed to a shoe comprising a sole, the shoe comprising: a shoe upper comprising an opening for entering the shoe, the shoe opening defined by a rear part, a medial part, a lateral part, and a front part; the rear part comprising a top portion reinforced with a firm material; a compression spring element comprising: a top part and a bottom part configured to be compressed towards each other by the application of a force on the top part of the compression spring element, and a side profile that lays flush against a contour of the rear part of the shoe; wherein the compression spring element is mounted inside a sleeve associated with the rear part of the shoe or embedded within the rear part of the shoe, and wherein the compression spring element is substantially centered between a left side and a right side of the rear part of the shoe, and wherein the top part of the compression spring element is attached proximate to the top portion of the rear part, and the bottom part of the compression spring element is attached to the sole.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are uppers with liners 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.
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, Alissa J Tompkins can be reached on 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
12/17/2025