Detailed action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The response, election, amendment, and drawing received 24 July and 4 August 2026 are acknowledged. Applicant elected Group I, Embodiment 1, Figures 1 through 7. No indication of whether the election was made with, or without, traverse, but as no arguments were made as to why the restriction was not proper, the election is being treated as being made without traverse. Applicant provided an amended specification and drawing reflecting the election of Group I, Embodiment 1.
Rejection under 35 U.S.C. 112, (a) and (b)
The claim is rejected under 35 U.S.C. 112 (a) and (b) or 35 U.S.C. 112, first and second paragraphs, (pre-AIA ), as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to pre-AIA U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling because the scope of the claimed design is unclear, and possibly in conflict with the title. Specifically, the following is noted:
-Excepting a few small areas, whited out and outlined in broken lines, the description must be relied upon to determine what is claimed or not claimed. As the description notes that the areas noted in darker gray shading are not claimed, it casts uncertainty on areas that are shown in a lighter (but not the lightest) gray surface (found on the outsole and in the interior footbed), as well as areas that are the lightest gray found on both the interior and exterior of the sole structure. Some of these areas would also be in conflict with the scope of the amended title. In the views below, arrows note areas that may, or may not, be claimed along with the midsole. See below:
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379
645
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395
404
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317
797
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375
781
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It is suggested that applicant clarify the scope and boundaries of the claimed design, and amend the title if need be to reflect that clarification. Broken line boundaries, consistent lightening or darkening of unclaimed portions, and an amended description may be used to indicate what applicant is claiming. It is noted that, depending upon the outcome of these clarifications, double patenting with copending application 29/964,429 (now U.S. Patent 1,080,161), which claims the midsole periphery only, might be required.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Corrected drawing sheets are suggested in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any suggested corrective action in the next Office action.
Summation
The claim stands rejected for the reasons set forth above.
The references cited but not applied, are considered cumulative art related to the claimed design.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. Chase Nelson whose telephone number is 571-272-2641. The examiner can normally be reached Monday through Friday from approximately 11:00 AM to 7:00 PM and at various times throughout the week and weekend.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michelle Wilson, can be reached at 571-272-7639. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T Chase NELSON/Primary Examiner, Art Unit 2912
