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 of US Application 17/719861, 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.
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.
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Claims 1-3, 5-7, and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,433,370 in view of Christensen et al. (US 2022/0104582), herein Christensen.
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, except for the first plurality of reliefs being operable to contract in a heel region. Christensen teaches an adjustment element (150) forming an upper of an article of footwear; comprising a bladder (200) including a barrier layer defining an interior void, wherein the bladder operates between an expanded state when the interior void includes a first pressure and a contracted state when the interior void includes a second pressure less than ambient pressure (paragraphs 0051-0056; Fig. 1). The bladder is located in a heel region and a midfoot region of the upper and reduces heel slip (paragraph 0055; Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the first plurality of reliefs in a heel region, as taught by Christensen, in order to better secure the upper to the heel of the wearer, helping to reduce heel slip.
Allowable Subject Matter
Claims 1-3, 5-7, and 11-16 are free from art rejections but are subject to a double patenting rejection.
Claims 4, 8-10, and 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or suggest an adjustment element/article of footwear having the combination of features claimed that includes a compressible component disposed within the interior void and including a foam lattice structure defining a plurality of reliefs formed in the lattice structure, a first plurality of the reliefs operable to contract in a first direction in a heel region of the upper and a second plurality of the reliefs operable to contract in a second direction in a mid-foot region of the upper.
Christensen et al. (US 2022/0104582) discloses an adjustment element (150) forming an upper of an article of footwear; comprising a bladder (200) including a barrier layer defining an interior void, wherein the bladder operates between an expanded state when the interior void includes a first pressure and a contracted state when the interior void includes a second pressure less than ambient pressure (paragraphs 0051-0056; Fig. 1), but fails to teach a compressible component including a foam lattice structure defining a plurality of reliefs.
Marvin discloses an adjustment element (530) for an article of footwear, the adjustment element comprising: a bladder (508) including a barrier layer defining an interior void; and a compressible component (510) disposed within the interior void and including a foam structure, wherein the compressible component operates between an expanded state (heel rises above bladder) when the interior void includes a first pressure and a contracted state (heel steps down on bladder and forces air out) when the interior void includes a second pressure less than ambient pressure (paragraphs 0074-0075; Fig. 1, 5), but fails to teach a foam lattice structure defining a plurality of reliefs.
Schindler teaches a foam structure (60) within a bladder (40) having a lattice defining a plurality of reliefs (61b, 62b) (column 3, lines 5-8; column 5, line 21-column 6, line 31; column 10, lines 14-31; Fig. 13-19), but fails to teach a first plurality of the reliefs operable to contract in a first direction in a heel region of an upper and a second plurality of the reliefs operable to contract in a second direction in a mid-foot region of the upper.
To modify any of the prior art references to have the combination of features recited in claims 1 or 11 would be impermissible hindsight reconstruction of the Applicant’s invention without any disclosure, teaching, or suggestion from the prior art of record, as is presently the case.
Conclusion
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