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 .
Election/Restrictions
Applicant’s election without traverse of Species 1, subspecies A in the reply filed on 06/24/2026 is acknowledged.
Claims 3-8 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and/or subspecies, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/24/2026. Examiner notes that Claims 3 and 4 were not indicated as non-elected in the reply, however the limitations recited in Claims 2 and 4 are clearly drawn to Species 2, as outline in the restriction requirement mailed 04/24/2026.
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) 1, 2, 9, 10, and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 62200903 in view of Mathieu et al. (US 2004/0168350).
Regarding Claim 1, ‘903 teaches a sole (see annotated Fig.) that forms a part of a shoe, comprising: a plate (7) including a mid- and rear-foot support portion in a shape extending from a position configured to be superimposed on a rear end portion of a metatarsal bone of a wearer of the shoe in a thickness direction of the sole to a position configured to be superimposed on a heel bone of the wearer (annotated fig. 1c shows the plate having a rear and mid foot support portion, therein the plate clearly extends from a position configured to be superimposed on a rear end portion of a metatarsal bone to a position configured to be superimposed on a heel bone of the wearer. While fig. 1c shows an overhead view of a different plate (5), plate (7) clearly has the same extent as ‘903 teaches “in addition to the above-present invention, in addition to the above described structure, structures as shown in figs. 2-4 can be exemplified” (paragraph under “Examples 2-4” heading). Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the plate to the wearer's foot anatomy is functional and not patentably significant), the mid- and rear-foot support portion configured to support a midfoot portion and a rear foot portion of the wearer (fig. 1c shows the mid and rear foot support portions being configured to support the midfoot and rearfoot portions of the wearer); and a midsole including a lower midsole (see annotated Fig.) and an upper midsole (see annotated Fig.) connected to the lower midsole, the mid- and rear-foot support portion (7) positioned between the lower midsole and the upper midsole (annotated fig. 2 shows the upper and lower midsoles being connected with the mid and rear foot support portion disposed therebetween); wherein the mid- and rear-foot support portion is in a shape convex upward in a cross-section along an entire width of the plate in a foot width direction at the position configured to be superimposed on the heel bone of the wearer (fig. 2 shows the mid and rear foot support portion (7) being convex upwards in a cross section along the entire width of the plate, at the position configured to be superimposed on the heel bone of the wearer. Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the plate to the wearer's foot anatomy is functional and not patentably significant); and wherein the upper midsole has a greater width than the mid- and rear-foot support portion of the plate in the foot width direction (fig. 2 shows the upper midsole having a greater width than the mid and rear-foot support portion in the foot width direction).
‘903 does not teach wherein the plate further comprises a forefoot support portion that is in a shape extending forward from the mid- and rear-foot support portion and configured to support a forefoot portion of the wearer, wherein the forefoot support portion includes a flat shape in a cross-section in the foot width direction.
Attention is drawn to Mathieu et al. which teaches an analogous article of footwear. Mathieu et al. teaches a sole that forms a part of a shoe comprising: a plate (figs. 7 and 9 show the plate (see annotated Fig.) being used in a sole that forms a part of a shoe) including: a mid- and rear-foot support portion (130) in a shape extending from a position configured to be superimposed on a rear end portion of a metatarsal bone of a wearer of the shoe in a thickness direction of the sole to a position configured to be superimposed on a heel bone of the wearer (annotated fig. 10 shows the plate having a rear, mid, (130) and fore (180) foot support portion, therein the plate clearly extends from a position configured to be superimposed on a rear end portion of a metatarsal bone to a position configured to be superimposed on a heel bone of the wearer. Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the plate to the wearer's foot anatomy is functional and not patentably significant), the mid- and rear-foot support portion supporting a midfoot portion and a rear foot portion of the wearer (figs. 8 and 10 show the mid and rear foot support portions being configured to support the midfoot and rearfoot portions of the wearer), a midsole including a lower midsole (140), and an upper midsole (160) connected to the lower midsole (fig. 7 shows the upper midsole (160) connected to the lower midsole (140)), the mid- and rear-foot support portion (130) positioned between the lower midsole and the upper midsole (figs. 7-9 show the mid and rear foot support portion (130) positioned between the lower (140) and upper (160) midsoles),wherein the mid- and rear-foot support portion is in a shape convex upward in a cross-section along an entire width of the plate in a foot width direction at the position configured to be superimposed on the heel bone of the wearer (paragraph [0042], “an elastically deformable element 130 that is substantially arch-shaped or vault-shaped in transverse cross-section,” wherein element 130 includes the mid and rear foot support portion; fig. 9 shows the mid and rear foot support portion taken at a cross section in the heel region configured to be aligned with the heel bone of the wearer and where the mid and rear foot support portion is convex upward along an entire width of the plate in a foot width direction. Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the plate to the wearer's foot anatomy is functional and not patentably significant). Mathieu et al. further teaches a forefoot support portion (181) that is in a shape extending forward from the mid- (see annotated Fig.) and rear- (see annotated Fig.) foot support portion and configured to support a forefoot portion of the wearer (fig. 10 shows the forefoot support portion (181) extending forward of the mid and rear foot support portion, and configured to support a forefoot portion of the wearer’s foot), wherein the forefoot support portion includes a flat shape in a cross-section in the foot width direction (paragraph [0075], “the front portion 181 of the reinforcement 180 is planar,” wherein as the front portion is planar it clearly includes a flat shape in the foot-width cross section).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘903 to include the teachings of Mathieu et al. such that the plate further comprises a forefoot support portion that is in a shape extending forward from the mid- and rear-foot support portion and configured to support a forefoot portion of the wearer, wherein the forefoot support portion includes a flat shape in a cross-section in the foot width direction so as to allow the front portion of the sole to better absorb forces during the toe-off portion of the gait cycle.
Regarding Claim 2, ‘903 teaches all of the limitations of the sole according to Claim 1, as discussed in the rejections above. ‘903 further teaches wherein the mid- and rear-foot support portion includes a top portion (see annotated Fig.) located at a position highest in the thickness direction, and the top portion is located at a position configured to overlap with a heel center of the wearer in the thickness direction (annotated fig. 2 shows the top portion in a position configured to overlap with a wearer’s heel center. Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the top portion of the plate to the wearer's foot anatomy is functional and not patentably significant).
Regarding Claim 9, ‘903 teaches all of the limitations of the sole according to Claim 1, as discussed in the rejections above. ‘903 further teaches wherein the lower midsole includes a lower heel region (see annotated Fig.) configured to be superimposed on a heel portion of the wearer in the thickness direction; the upper midsole includes an upper heel region (see annotated Fig.) configured to be superimposed on the heel portion of the wearer in the thickness direction (annotated fig. 2 shows the upper and lower midsole including upper and lower heel regions, each configured to be superimposed on the heel portion of the wearer. Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the plate to the wearer's foot anatomy is functional and not patentably significant); a thickness of the lower heel region is larger than a thickness of the upper heel region (annotated fig. 2 shows the thickness of the lower heel region being larger than a thickness of the upper heel region); and when viewed in cross section in a foot width direction, the mid- and rear-foot support portion has a width that is less than that of the lower midsole (annotated fig. 2 shows the mid and rear foot support portion having a width less than the width of the lower midsole).
Regarding Claim 10, ‘903 teaches all of the limitations of the sole according to Claim 1, as discussed in the rejections above. ‘903 further teaches the midsole including an accommodation portion that defines a space where the plate is accommodated (annotated fig. 2 shows the plate (7) disposed within the midsole, therein there is clearly a space within the midsole that accommodates the plate).
Regarding Claim 15, ‘903 teaches a shoe (fig. 2) comprising: the sole according to claim 9; and an upper (6) connected to the sole and located above the sole (fig. 2 shows a shoe comprising the sole of Claim 1 and including an upper (6) connected to and located above the sole).
Regarding Claim 16, ‘903 teaches a shoe (fig. 2) comprising: the sole according to claim 10; and an upper (6) connected to the sole and located above the sole (fig. 2 shows a shoe comprising the sole of Claim 1 and including an upper (6) connected to and located above the sole).
Regarding Claim 17, ‘903 teaches all of the limitations of the sole according to Claim 1, as discussed in the rejections above. ‘903 further teaches wherein the mid- and rear-foot support portion is in a shape convex upward in a cross-section in a foot width direction throughout an entire area from a position configured to be superimposed on a rear end portion of the metatarsal bone of the wearer in the thickness direction to a position configured to be superimposed on a rear end portion of a heel bone of the wearer (fig. 1c shows the mid and rear foot support portion extending through an entire area from a position configured to be superimposed on the rear end of a wearer’s metatarsals to a position superimposed on a rear end of a wearer’s heel bone and paragraph 2 under “Examples 2-4” teaches “plate shaped member 7 to be embedded in the cushion is curved, and the convex side 7a thereof is directed upward,” therein the mid and rearfoot support portion is clearly convex upwards along the extent claimed. Examiner notes that the plate will fit differently sized feet in different manners and an intended relative position of the plate to the wearer's foot anatomy is functional and not patentably significant.).
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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 and 17 of U.S. Patent No. 12490799. Although the claims at issue are not identical, they are not patentably distinct from each other because as discussed, the differences are minor. See table below:
Instant App '130
US PN 12490799
1
A sole that forms a part of a shoe comprising:
1
A sole that forms a part of a shoe, comprising:
a plate including a mid- and rear-foot support portion in a shape extending from a position configured to be superimposed on a rear end portion of a metatarsal bone of a wearer of the shoe in a thickness direction of the sole to a position configured to be superimposed on a heel bone of the wearer, the mid- and rear-foot support portion configured to support a midfoot portion and a rear foot portion of the wearer
a plate including a mid- and rear-foot support portion in a shape extending from a position configured to be superimposed on a rear end portion of a metatarsal bone of a wearer of the shoe in a thickness direction of the sole to a position configured to be superimposed on a heel bone of the wearer, the mid- and rear-foot support portion configured to support a midfoot portion and a rear foot portion of the wearer;
the plate further including a forefoot support portion extending forward from the mid- and rear-foot support portion and configured to support a forefoot portion of the wearer, wherein the forefoot support portion is formed flat in a cross-section in a foot width direction;
the plate further including a forefoot support portion extending forward from the mid- and rear-foot support portion and configured to support a forefoot portion of the wearer…
17
The sole according to claim 1, wherein the forefoot support portion includes a flat shape in a cross-section in the foot width direction.
and a midsole including a lower midsole and an upper midsole connected to the lower midsole, the entire forefoot support portion and the mid- and rear-foot support portion positioned between the lower midsole and the upper midsole;
1
... and a midsole including a lower midsole and an upper midsole connected to the lower midsole, the entire forefoot support portion and the mid- and rear-foot support portion positioned between the lower midsole and the upper midsole;
wherein the mid- and rear-foot support portion is in a shape convex upward in a cross- section along an entire width of the plate in a foot width
wherein the mid- and rear-foot support portion is in a shape convex upward in a cross-section along an entire width of the plate in a foot width direction at the position configured to be superimposed on the heel bone of the wearer;
and wherein the upper midsole has a greater width than the mid- and rear-foot support portion of the plate in the foot width direction.
and wherein the upper midsole has a greater width than the mid- and rear-foot support portion of the plate in the foot width direction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEY A SMITH whose telephone number is (571)272-6597. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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.
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/HALEY A SMITH/Primary Examiner, Art Unit 3732
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