SHOE SOLE HAVING RECESSED POCKETS

§101 §102 §DP

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 . Claim Objections Claims 4 and 9 are objected to because of the following informalities: “The sole according Claim 1” in Claim 4 should read “The sole according to Claim 1” “wherein the elastic plate (3)” in Claim 9 should read “wherein the elastic plate” as there does not appear to be reference characters used consistently throughout the claims Appropriate correction is required. Claim Rejections - 35 USC § 102 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. Claim(s) 1-4 and 13-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lucas et al. (US 7401419). Regarding Claim 1, Lucas et al. teaches a shoe sole (1450) for a sport shoe (1430) (fig. 20 shows the sole (1450) being for a sport shoe (1430)), the shoe sole comprising a midsole (see annotated Fig.), the midsole comprising: a. a forefoot area (1436), a heel area (1432) and a midfoot area (1437) arranged between the forefoot area and the heel area (annotated fig. 20 shows the forefoot and heel areas and the midfoot area arranged therebetween); b. a heel edge (see annotated Fig.) and a midsole tip (see annotated Fig.), wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip (Annotated fig. 20 shows the heel edge and the midsole tip, wherein the longitudinal direction is understood to run therebetween); c. a top layer (see annotated Fig.) and a base layer (see annotated Fig.) (annotated fig. 21 shows the top and base layers), wherein the midsole defines a plurality of recessed pockets (see annotated Fig.) which are open towards the top layer and wherein at least some of the recessed pockets are arranged one after another in the longitudinal direction (Annotated fig. 21 shows the recessed pockets being open towards the top layer); and d. a central notch (see annotated Fig.) which penetrates the midsole as a through hole in a vertical direction (annotated figs. 21 and 22 show the central notch penetrating the midsole as a through hole in the vertical direction). Regarding Claim 2, Lucas et al. teaches all of the limitations of the shoe sole of Claim 1, as discussed in the rejections above. Lucas et al. further teaches wherein the central notch (see annotated Fig.) extends from the forefoot area through the midfoot area to the heel area (annotated fig. 22 shows the central notch extending from the forefoot though the midfoot to the heel area). Regarding Claim 3, Lucas et al. teaches all of the limitations of the shoe sole of Claim 2, as discussed in the rejections above. Lucas et al. further teaches wherein the central notch (see annotated Fig.) divides the midsole into a lateral portion and a medial portion (annotated fig. 22 shows the central notch dividing the midsole into a lateral and a medial portion). Regarding Claim 4, Lucas et al. teaches all of the limitations of the shoe sole of Claim 1, as discussed in the rejections above. Lucas et al. further teaches wherein the recessed pockets (see annotated Fig.) are arranged in the forefoot area and in the midfoot area (Annotated fig. 21 shows the recessed pockets being arranged in the forefoot and midfoot areas). Regarding Claim 13, Lucas et al. teaches all of the limitations of the shoe sole of Claim 1, as discussed in the rejections above. Lucas et al. further teaches wherein the midsole comprises transverse grooves and/or transverse slits (see annotated Fig.) extending along a transverse direction of the midsole, wherein the transverse grooves or transverse slits are open towards the base layer (Annotated fig. 21 shows the transverse slits extending along a transverse direction of the midsole and being open toward the base layer). Regarding Claim 14, Lucas et al. teaches all of the limitations of the shoe sole of Claim 13, as discussed in the rejections above. Lucas et al. further teaches wherein at least some of the transverse grooves or transverse slits are arranged between two recessed pockets which are arranged one after another, thereby segmenting the midsole into multiple blocks (annotated fig. 21 shows a transverse slit being arranged between two recessed pockets, segmenting the midsole into multiple blocks). Regarding Claim 15, Lucas et al. teaches all of the limitations of the shoe sole of Claim 1, as discussed in the rejections above. Lucas et al. further teaches wherein the midsole comprises at its lateral side and/or its medial side a horizontal tilting slit (1421) which divides the midsole into a midsole top portion (see annotated Fig.) and a midsole base portion (see annotated Fig.) and which is configured to tilt the midsole top portion with respect to the midsole base portion (annotated fig. 21 shows the horizontal tilting slit (1421) dividing the midsole into a top and base portion and being capable of tilting the midsole top portion with respect to the midsole base portion; col. 16 ll. 67- col. 17 ll. 3 teaches “the first deformation elements 1420 further include horizontally extending indentations/grooves 1421 to facilitate deformation in a predetermined manner.”). Regarding Claim 16, Lucas et al. teaches all of the limitations of the shoe sole of Claim 15, as discussed in the rejections above. Lucas et al. further teaches wherein the horizontal tilting slit is arranged in the midfoot area of the midsole (Annotated figs. 20 and 21 show the horizontal tilting slit being arranged in the midfoot area). Regarding Claim 17, Lucas et al. teaches a shoe sole (1450) for a sport shoe (1430) (fig. 20 shows the sole (1450) being for a sport shoe (1430)), the shoe sole comprising a midsole (see annotated Fig.), the midsole comprising: a. a forefoot area (see annotated Fig.), a heel area (see annotated Fig.) and a midfoot area (see annotated Fig.) arranged between the forefoot area and the heel area (annotated fig. 20 shows the forefoot and heel areas and the midfoot area arranged therebetween); b. a heel edge (see annotated Fig.) and a midsole tip (see annotated Fig.), wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip (Annotated fig. 20 shows the heel edge and the midsole tip, wherein the longitudinal direction is understood to run therebetween); c. a top layer (see annotated Fig.) and a base layer (see annotated Fig.) (annotated fig. 21 shows the top and base layers), wherein the midsole defines a plurality of recessed pockets (see annotated Fig.) which are open towards the top layer and wherein at least some of the recessed pockets are arranged one after another in the longitudinal direction (Annotated fig. 21 shows the recessed pockets being open towards the top layer); and d. an elastic plate (1452) arranged on the top layer of the midsole (annotated fig. 21 shows an elastic plate (1452) being arranged on the top layer of the midsole), wherein the elastic plate comprises one or more protrusions (see annotated Fig.) (annotated fig. 21 shows the elastic plate (1452) comprising a plurality of protrusions). PNG media_image1.png 678 1002 media_image1.png Greyscale PNG media_image2.png 549 1002 media_image2.png Greyscale Claim(s) 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walsh et al. (US 2019/0261737). Regarding Claim 17, Walsh et al. teaches a shoe sole (see annotated Fig.) for a sport shoe (fig. 1 shows the shoe sole being used in a sport shoe), the shoe sole comprising a midsole (40), the midsole comprising: a. a forefoot area (see annotated Fig.), a heel area (see annotated Fig.) and a midfoot area (see annotated Fig.) arranged between the forefoot area and the heel area (annotated fig. 7 shows the forefoot and heel areas with the midfoot area disposed therebetween); b. a heel edge (see annotated Fig.) and a midsole tip (see annotated Fig.), wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip (Annotated fig. 7 shows the heel edge and the midsole tip, wherein the longitudinal direction is understood to run therebetween); c. a top layer (42) and a base layer (46), wherein the midsole defines a plurality of recessed pockets (44) which are open towards the top layer (fig. 6 shows the recessed pockets (44) being open towards the top layer (42)) and wherein at least some of the recessed pockets are in the longitudinal direction arranged one after another (fig. 6 shows the pockets (44) being in arranged one after another in the longitudinal direction); and d. an elastic plate (20) arranged on the top layer of the midsole (fig. 7 shows the elastic plate (20) being arranged on the top layer of the midsole), wherein the elastic plate comprises one or more protrusions (30) (fig. 3 shows the elastic plate (20) comprising a plurality of protrusions (30)). Regarding Claim 18, Walsh et al. teaches all of the limitations of the shoe sole of Claim 17, as discussed in the rejections above. Lucas et al. further teaches wherein at some of the protrusions (30) are inserted into the recessed pockets (44) of the midsole (40) (fig. 7 shows the protrusions (30) being inserted into the recessed pockets (44) of the midsole (40); paragraph [0022] teaches “The footbed 20 has a plurality of semi-tubular elements 30 that protrude downward and nest in matching cavities 44 in the midsole 40”). Regarding Claim 19, Walsh et al. teaches all of the limitations of the shoe sole of Claim 18, as discussed in the rejections above. Lucas et al. further teaches wherein each protrusion (30) forms a bulge forming a convexity towards the midsole (40) (figs. 3 and 7 show each protrusion (30) forming a bulge in the shape of a convexity towards the midsole (40)). PNG media_image3.png 450 786 media_image3.png Greyscale PNG media_image4.png 305 720 media_image4.png Greyscale Double Patenting A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. Claims 5-7, 9, 11, 12, and 20 is/are each rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 5, 7-9, and 15 of prior U.S. Patent No. 12593890. This is a statutory double patenting rejection. See comparison table below: Instant App '646 USPN 12593890 5 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: 1 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least some of the recessed pockets are in the longitudinal direction arranged one after another; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least a some of the recessed pockets are in the longitudinal direction arranged one after another; and d. a central notch which penetrates the midsole as a through hole in a vertical direction. d. a central notch which penetrates the midsole as a through hole in a vertical direction and further comprising an elastic plate arranged on the top layer of the midsole, wherein the elastic plate comprises one or more protrusions wherein at least one of the protrusions is inserted into and through the central notch. e. an elastic plate arranged on the top layer of the midsole, wherein the elastic plate comprises one or more protrusions wherein at least one of the protrusions is inserted into and through the central notch. 6 The shoe sole according to claim 5, wherein at least some of the protrusions are inserted into the recessed pockets of the midsole. 5 The shoe sole according to claim 1, wherein at least some of the protrusions are inserted into the recessed pockets of the midsole. 7 The shoe sole according to claim 5 wherein one or more protrusions extending through the central notch are aligned with the base layer in the vertical direction. 15 The shoe sole according to claim 1 wherein one or more protrusions extending through the central notch are aligned with the base layer in the vertical direction. 9 The shoe sole according to claim 5, wherein the elastic plate (3) has a hardness between 70 Shore A to 100 Shore D. 7 The shoe sole according to claim 1, wherein the elastic plate (3) has a hardness between 70 Shore A to 100 Shore D. 11 The shoe sole according to claim 5, wherein the midsole comprises a peripherally arranged support rim configured for supporting the elastic plate. 8 The shoe sole according to claim 1 wherein the midsole comprises a peripherally arranged support rim configured for supporting the elastic plate. 12 The shoe sole according to claim 5, wherein the shoe sole further comprises an insole, wherein the elastic plate is arranged between the midsole and the insole. 9 The shoe sole according to claim 1 wherein the shoe sole further comprises an insole, wherein the elastic plate is arranged between the midsole and the insole. Instant App '646 USPN 12593890 20 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: 1 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least some of the recessed pockets are in the longitudinal direction arranged one after another; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least a some of the recessed pockets are in the longitudinal direction arranged one after another; and d. an elastic plate arranged on the top layer of the midsole, wherein the elastic plate comprises one or more protrusions, e. an elastic plate arranged on the top layer of the midsole, wherein the elastic plate comprises one or more protrusions further comprising a central notch which penetrates the midsole as a through hole in a vertical direction, wherein at least one of the protrusions is inserted into and through the central notch. d. a central notch which penetrates the midsole as a through hole in a vertical direction…wherein at least one of the protrusions is inserted into and through the central notch. 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 1-4, 8, 10, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 7, and 10-13 of U.S. Patent No. 12593890. Although the claims at issue are not identical, they are not patentably distinct from each other because as disclosed the differences are minor and obvious. See comparison table below: Instant App '646 USPN 12593890 Rationale 1 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: 1 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least some of the recessed pockets are in the longitudinal direction arranged one after another; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least a some of the recessed pockets are in the longitudinal direction arranged one after another; and d. a central notch which penetrates the midsole as a through hole in a vertical direction. d. a central notch which penetrates the midsole as a through hole in a vertical direction and… 2 The shoe sole according to claim 1, wherein the central notch extends from the forefoot area through the midfoot area to the heel area. 2 The shoe sole according to claim 1, wherein the central notch extends from the forefoot area through the midfoot area to the heel area. 3 The shoe sole according to claim 2, wherein the central notch divides the midsole into a lateral portion and a medial portion. 3 The shoe sole according to claim 2, wherein the central notch divides the midsole into a lateral portion and a medial portion. 4 The shoe sole according claim 1, wherein the recessed pockets are arranged in the forefoot area and in the midfoot area. 4 The shoe sole according claim 1, wherein the recessed pockets are arranged in the forefoot area and in the midfoot area. 8 The shoe sole according to claim 5, wherein each protrusion forms a bulge forming a convexity towards the midsole, towards the base layer of the midsole, wherein the bulge is configured such that during running it is elastically compressed in a vertical direction of the shoe sole upon landing and that it returns to its original shape upon push off. 6 The shoe sole according to claim 5, wherein each protrusion forms a bulge forming a convexity towards the midsole, towards the base layer of the midsole, wherein the bulge is configured such that during running it is elastically compressed in a vertical direction of the shoe sole upon landing and that it returns to its original shape upon push off. 10 The shoe sole according to claim 9, wherein the elastic plate has a greater hardness than the midsole and/or wherein the hardness is between 60 Shore A and 100 Shore D. 7 The shoe sole according to claim 1, wherein the elastic plate (3) has a hardness between 70 Shore A to 100 Shore D. Examiner notes that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists, see MPEP 2144.05. 13 The shoe sole according to claim 1, wherein the midsole comprises transverse grooves and/or transverse slits extending along a transverse direction of the midsole, wherein the transverse grooves or transverse slits are open towards the base layer. 10 The shoe sole according to claim 1, wherein the midsole comprises transverse grooves and/or transverse slits extending along a transverse direction of the midsole, wherein the transverse grooves or transverse slits are open towards the base layer. 14 The shoe sole according to claim 13, wherein at least some of the transverse grooves or transverse slits are arranged between two recessed pockets which are arranged one after another, thereby segmenting the midsole into multiple blocks. 11 The shoe sole according to claim 10, wherein at least some of the transverse grooves or transverse slits are arranged between two recessed pockets which are arranged one after another, thereby segmenting the midsole into multiple blocks. 15 The shoe sole according to claim 1, wherein the midsole comprises at its lateral side and/or its medial side a horizontal tilting slit which divides the midsole into a midsole top portion and a midsole base portion and which is configured to tilt the midsole top portion with respect to the midsole base portion. 12 The shoe sole according to claim 1, wherein the midsole comprises at its lateral side and/or its medial side a horizontal tilting slit which divides the midsole into a midsole top portion and a midsole base portion and which is configured to tilt the midsole top portion with respect to the midsole base portion. 16 The shoe sole according to claim 15, wherein the horizontal tilting slit is arranged in the midfoot area of the midsole. 13 The shoe sole according to claim 13, wherein the horizontal tilting slit is arranged in the midfoot area of the midsole. 17 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: 1 A shoe sole for a sport shoe, the shoe sole comprising a midsole, the midsole comprising: a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; a. a forefoot area, a heel area and a midfoot area arranged between the forefoot area and the heel area; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; b. a heel edge and a midsole tip, wherein a longitudinal direction of the midsole extends from the heel edge to the midsole tip; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least some of the recessed pockets are in the longitudinal direction arranged one after another; c. a top layer and a base layer, wherein the midsole defines a plurality of recessed pockets which are open towards the top layer and wherein at least a some of the recessed pockets are in the longitudinal direction arranged one after another… and d. an elastic plate arranged on the top layer of the midsole, wherein the elastic plate comprises one or more protrusions, ...e. an elastic plate arranged on the top layer of the midsole, wherein the elastic plate comprises one or more protrusions 18 The shoe sole according to claim 17 wherein at some of the protrusions are inserted into the recessed pockets of the midsole. 5 The shoe sole according to claim 1, wherein at least some of the protrusions are inserted into the recessed pockets of the midsole. 19 The shoe sole according to claim 18 wherein each protrusion forms a bulge forming a convexity towards the midsole. 6 The shoe sole according to claim 5, wherein each protrusion forms a bulge forming a convexity towards the midsole… 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. 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Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /HALEY A SMITH/Primary Examiner, Art Unit 3732