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 Applications 16/576854, 17/875833, and 18/772772, 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites the limitations “a fiber-reinforced composite plate disposed between the upper and lower regions” and “the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole” in lines 8-14. It is not clear how the plate can be both between the upper and lower regions, and also substantially adjacent the lower surface (which is the lower surface of the lower region). If the plate is at the lower surface of the lower region, it cannot also be between the upper and lower regions (and therefore above the lower surface).
The term “substantially adjacent” in claim 1 is a relative term which renders the claim indefinite. The term “substantially adjacent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear to what extent the plate must be adjacent to the lower surface in order to be ‘substantially adjacent.’
Claims 2-17 depend from rejected claim 1.
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.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,425,959 in view of Schmid (US 4,858,338).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application, except for the composite plate is positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole.
Schmid teaches a shoe having an outsole (18), a midsole having an upper region (16) and a lower region (19), and a composite plate (20) positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole (column 3, lines 29-56; Fig. 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the plate such that the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole, in order to provide improved cushioning and energy return along the length of the foot.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,963,582 in view of Schmid (US 4,858,338).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application, except for the composite plate is positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole.
Schmid teaches a shoe having an outsole (18), a midsole having an upper region (16) and a lower region (19), and a composite plate (20) positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole (column 3, lines 29-56; Fig. 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the plate such that the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole, in order to provide improved cushioning and energy return along the length of the foot.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,035,783 in view of Schmid (US 4,858,338).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application, except for the composite plate is positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole.
Schmid teaches a shoe having an outsole (18), a midsole having an upper region (16) and a lower region (19), and a composite plate (20) positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole (column 3, lines 29-56; Fig. 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the plate such that the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole, in order to provide improved cushioning and energy return along the length of the foot.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,501,962 in view of Schmid (US 4,858,338).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application, except for the composite plate is positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole.
Schmid teaches a shoe having an outsole (18), a midsole having an upper region (16) and a lower region (19), and a composite plate (20) positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole (column 3, lines 29-56; Fig. 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the plate such that the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole, in order to provide improved cushioning and energy return along the length of the foot.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,501,963 in view of Schmid (US 4,858,338).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application, except for the composite plate is positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole.
Schmid teaches a shoe having an outsole (18), a midsole having an upper region (16) and a lower region (19), and a composite plate (20) positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole (column 3, lines 29-56; Fig. 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the plate such that the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole, in order to provide improved cushioning and energy return along the length of the foot.
Claims 1-2 and 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 19/398204 in view of Schmid (US 4,858,338).
The claimed structure of the present invention may be wholly derived from the claimed subject matter of the co-pending application, except for the composite plate is positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole.
Schmid teaches a shoe having an outsole (18), a midsole having an upper region (16) and a lower region (19), and a composite plate (20) positioned so that it has a first end in the forefoot region of the midsole and a second end in the rear-foot region of the midsole, wherein the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole (column 3, lines 29-56; Fig. 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the plate such that the first end of the composite plate is substantially adjacent to the lower surface of the forefoot region of the midsole and the second end of the composite plate is substantially adjacent to the lower surface of the rear-foot region of midsole, in order to provide improved cushioning and energy return along the length of the foot.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-17 are free of art rejections but are subject to double patenting rejections and 35 USC 112(b) rejections.
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 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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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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/SHARON M PRANGE/Primary Examiner, Art Unit 3732
Prosecution Insights