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
The information disclosure statement (IDS) submitted on 05/01/2026 is acknowledged. The submission is in compliance with the provision of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 9 and 17-20 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 9 recites “the sole” in line 1. It is unclear “the sole” is the same or different from “the sole structure”. For the purpose of applying art, “the sole” is interpreted to be the same as “the sole structure”.
Claim 17 recites “the first end” in line 4. It is unclear “the first end” is the same or different from “a first end portion” in line 4. For the purpose of applying art, “the first end” is interpreted to be the same as “a first end portion”.
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the examiner.
Claim Rejections - 35 USC § 102
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.
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 1-3, 6, 9-12, 14-15, 17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyata (JP2006254931).
Regarding claim 1, Miyata teaches a sole structure (fig. 1, outsole 2 and insole 4) for an article of footwear, the sole structure comprising:
a member defining a foot-supporting surface (fig. 1, insole 4) and a ground-facing surface (fig. 1, lower surface of the outsole 2), the ground-facing surface comprising:
ground contacting regions (fig. 1, ground contacting regions of outsole 2); and
non-ground contacting regions (fig. 1, grooves 8, 9),
wherein one or more of the non-ground contacting regions comprises an anti-infective agent (machine translation, para. [0005], the outer surface in contact with an external foreign object is formed of a material containing an antibacterial agent).
Regarding claim 2, Miyata teaches the anti-infective agent is effective to inactivate or kill pathogenic biological agents disposed on the sole structure and wherein the pathogenic biological agents are selected from the group consisting of bacteria, viruses, fungi, and yeast (machine translation, para. [0004], the footwear can prevent the spread of bacteria or the like by killing or suppressing the propagation even if bacteria or the like adhere to the outer surface).
Regarding claim 3, Miyata teaches the anti-infective agent is effective to inactivate or kill from about 50% to about 90% of the pathogenic biological agents (machine translation, para. [0018], even if the user moves to another place, the movement of bacteria and the like can be prevented, and the spread of bacteria and the like can be prevented).
Regarding claim 6, Miyata teaches the ground-facing surface comprises a plurality of projections, wherein the ground contacting regions are defined by a distal most predetermined height of the projections, and wherein the non-ground contacting regions are defined by surfaces of the projections at heights that are less than the distal most predetermined height (fig. 1, grooves 8,9 are at heights that are less than the distal most height of the outsole).
Regarding claim 9, Miyata teaches the sole is an outsole or a midsole (fig. 1, outsole 2).
Regarding claim 10, Miyata teaches the member comprises a flexible material, and wherein the flexible material comprises a polymer selected from the group consisting of natural rubber, a vulcanized rubber, polyurethane, and silicone (machine translation, para. [0011], the soft material may be natural rubber, synthetic rubber, or elastomer).
Regarding claim 11, Miyata teaches a sole structure (fig. 1, outsole 2 and insole 4) for an article of footwear, the sole structure comprising a member having a first end and a second end that is opposite the first end in a longitudinal direction (fig. 1), the member defining a foot-supporting surface (fig. 1, insole 4) and a ground-facing surface (fig. 1, lower surface of the outsole 2), wherein the member comprises a polymer and an anti-infective agent dispersed throughout the polymer (machine translation, para. [0010], the upper 1 and the outer bottom 2 are integrally formed of a soft material containing an antibacterial agent. That is, an antibacterial agent is mixed with vinyl chloride resin (PVC)).
Regarding claim 12, Miyata teaches the anti-infective agent is effective to inactivate or kill pathogenic biological agents disposed on the sole structure and wherein the pathogenic biological agents are selected from the group consisting of bacteria, viruses, fungi, and yeast (machine translation, para. [0004], the footwear can prevent the spread of bacteria or the like by killing or suppressing the propagation even if bacteria or the like adhere to the outer surface).
Regarding claim 14, Miyata teaches the member is an outsole or a midsole (fig. 1, outsole 2).
Regarding claim 15, Miyata teaches the polymer is selected from the group consisting of natural rubber, a vulcanized rubber, polyurethane, and silicone (machine translation, para. [0011], the soft material may be natural rubber, synthetic rubber, or elastomer).
Regarding claim 17, Miyata teaches an article of footwear (fig. 1), comprising:
an upper (fig. 1, upper 1); and
a sole structure (fig. 1, outsole 2 and insole 4) engaged with the upper, the sole structure including:
a member having a first end portion and a second end portion that is opposite the first end in a longitudinal direction (fig. 1), the member defining a foot-supporting surface (fig. 1, insole 4) and a ground-facing surface (fig. 1, lower surface of the outsole 2), the ground-facing surface comprising:
ground contacting regions (fig. 1, ground contacting regions of outsole 2); and
non-ground contacting regions (fig. 1, grooves 8, 9),
wherein one or more of the non-ground contacting regions comprises an anti-infective agent (machine translation, para. [0005], the outer surface in contact with an external foreign object is formed of a material containing an antibacterial agent).
Regarding claim 19, Miyata teaches the member is an outsole or is fixedly attached to the outsole (fig. 1, outsole 2).
Regarding claim 20, Miyata teaches wherein the non-ground contacting region is located at the first end portion (fig. 1, grooves 8 in the toe portion), the second end portion (fig. 1, groove 9 in heel portion), a mid-portion (fig. 2) located between the first end portion and the second portion, or combination thereof, wherein the first end portion is a toe location of the article of footwear, and wherein the second end portion is a heel location of the article of the footwear (figs. 1-2).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Miyata (JP2006254931), as applied to claim 1 above, and further in view of Foss (US 2003/0170453).
Regarding claim 4, Miyata does not teach the anti-infective agents is effective to inactivate or kill the pathogenic biological agents within about 5 minutes to about 24 hours.
However, in the same field of endeavor, Foss teaches the anti-infective agents is effective to inactivate or kill the pathogenic biological agents within about 5 minutes to about 24 hours (para. [0210], the anti-microbial herein can be said to "kill bacteria" in that it kills 99.99% (log 4) of bacteria in 24 hours).
It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to combine Miyata with the teaching of Foss that the anti-infective agents is effective to inactivate or kill the pathogenic biological agents within about 5 minutes to about 24 hours for the benefit of meeting the United States in compliance with FDA regulations (Foss, para. [0210]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Miyata (JP2006254931).
Regarding claim 5, Miyata teaches two or more of the non-ground contacting regions comprise a discrete area (fig. 1, grooves 8, 9) incorporating the anti-infective agent, wherein each discrete area is generally spaced apart from a nearest neighboring discrete area by no more than a predetermined distance (fig. 1).
Miyata does not explicitly teach the predetermined distance is from 0.1 mm to 50mm.
However, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to modify the distance between grooves of the outsole surface from 0.1mm to 50mm by changing shape or size of the grooves for the benefit of providing traction profile for the outsole which suits different activities. Such modification is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claims 7-8, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Miyata (JP2006254931), as applied to claim 1 above, and further in view of CN107440213(hereinafter CN’213).
Regarding claim 7, Miyata does not teach the anti-infective agent comprises a metallic material.
However, in the same field of endeavor, CN’213 teaches the anti-infective agent comprises a metallic material (machine translation, para. [0106], rubber-antibacterial composite material is composed of 93% to 98% rubber and 2% to 7% of antibacterial material; wherein the antibacterial material is any one or a mixture of any of nano oxide, nano silver, nano copper oxide, and nano titanium dioxide particles).
It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to combine Miyata with the teaching the anti-infective agent comprises a metallic material as taught by CN’213 for the benefit of avoiding chlorinated polymers and thereby using materials that are more environmentally friendly.
Regarding claim 8, the modified structure Miyata-CN’213 teaches the metallic material comprises copper, a copper alloy, a coordinated copper complex, a copper-containing compound, or a copper chelate (CN’213, machine translation, para. [0106]).
Regarding claim 13, Miyata does not teach the anti-infective agent comprises a metallic material, and wherein the metallic material comprises copper, a copper alloy, a coordinated copper complex, a copper-containing compound, or a copper chelate.
However, CN’213 teaches the anti-infective agent comprises a metallic material, and wherein the metallic material comprises copper, a copper alloy, a coordinated copper complex, a copper-containing compound, or a copper chelate (machine translation, para. [0106]).
It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to combine Miyata with the teaching the anti-infective agent comprises a metallic material, wherein the metallic material comprises copper, a copper alloy, a coordinated copper complex, a copper-containing compound, or a copper chelate as suggested by CN’213 for the benefit of avoiding chlorinated polymers and thereby using materials that are more environmentally friendly.
Regarding claim 16, Miyata does not teach the anti-infective agent comprises a plurality of irregularly-shaped particles.
However, CN’213 teaches a medical protective shoe which comprises an upper and a sole; the upper, the movable shoelace and the sole are made from rubber anti-bacterial components (abstract) and teaches wherein the anti-infective agent comprises a metallic particles (machine translation, para. [0106], rubber-antibacterial composite material is composed of 93% to 98% rubber and 2% to 7% of antibacterial material; wherein the antibacterial material is any one or a mixture of any of nano oxide, nano silver, nano copper oxide, and nano titanium dioxide particles).
It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to combine Miyata with the teaching that the anti-infective agent comprises a plurality of particles as taught by CN’213 for the benefit of avoiding chlorinated polymers and thereby using materials that are more environmentally friendly.
With regards to the particles being irregularly-shaped, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to modify the shape of the antimicrobial particles, since a change in shape of an element involves only routine skill in the art. The motivation for doing so would be to provide a micro texture to the outer surface of the outsole to enhance traction.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Miyata (JP2006254931), as applied to claim 17 above, and further in view of KR20120128489 (hereinafter KR’489).
Regarding claim 18, Miyata does not teach the member is a coupleable member that attaches to an outsole fixedly attached to the upper.
However, in the same field of endeavor, KR’489 teaches a sanity footwear (abstract) and wherein a member is a coupleable member that attaches to an outsole fixedly attached to the upper (fig. 1, machine translation, para. [0025], blocking member 1 engages front of the shoe; para. [0025], shoe comprises a sole; para. [0030], the shoe comprises a top portion).
It would have been obvious to one of the ordinary skilled in the art before the effective filing date of the invention to modify Miyata with the coupleable member of KR’489 for the benefit of providing an antimicrobial overshoe that may be separated from the shoe upper and outsole so that the antimicrobial member can be replaced when it is damaged.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,617,411. Although the claims at issue are not identical, they are not patentably distinct from each other because, for instance, the difference between the patented claim 1 and the instant claim 1 are minor and obvious from each other. The instant claim 1 is a broader version of the patented claim (i.e. the instant claim 1 does not include the limitations “wherein the anti-infective agent comprises a metallic material” as in the patented claim 1). Therefore, the patented claim 1 would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the patented claim 1. Any infringement over the patented claim 1 would also infringe over the instant claim 1. Hence, the instant claim does not differ from the scope of the patented claim 1.
The claims more specifically correlate as below:
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,617,411.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,617,411.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,617,411.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,617,411.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,617,411.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,617,411.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,617,411.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,617,411.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,617,411.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,617,411.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,617,411.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,617,411.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,617,411.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,617,411.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,617,411.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,617,411.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,617,411.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,617,411.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,617,411.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,617,411.
Claims 1-6, 9-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 12-16 and 20-23 of U.S. Patent No. 12,575,637. Although the claims at issue are not identical, they are not patentably distinct from each other because for instance, the difference between the patented claim 1 and the instant claim 1 are minor and obvious from each other. The instant claim 1 is a broader version of the patented claim (i.e. the instant claim 1 does not include the limitations “wherein the anti-infective agent consists of copper” as in the patented claim 1). Therefore, the patented claim 1 would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the patented claim 1. Any infringement over the patented claim 1 would also infringe over the instant claim 1. Hence, the instant claim does not differ from the scope of the patented claim 1.
The claims more specifically correlate as below:
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,575,637.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,575,637.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,575,637.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,575,637.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,575,637.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,575,637.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,575,637.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,575,637.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,575,637.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,575,637.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,575,637.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,575,637.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,575,637.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,575,637.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of U.S. Patent No. 12,575,637.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of U.S. Patent No. 12,575,637.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 of U.S. Patent No. 12,575,637.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN THI THAO NGUYEN whose telephone number is (571)272-8370. The examiner can normally be reached Monday-Friday 9 AM-6 PM EST.
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/UYEN T NGUYEN/Primary Examiner, Art Unit 3732
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