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 .
The amendment and drawing received 7 January 2026 are acknowledged. In view of these, the previous objections and rejection have been overcome and are hereby withdrawn. Applicant’s amendment to the title is also acknowledged. As applicant’s claimed design is now understood, the following double patenting rejection is made. Additionally, there are drawing inconsistencies that are objected to as follows.
Drawing Objections
The drawing is objected to for the following reasons:
-The Figure 2, 3, and 6 views are inconsistent with the Figure 5 view in that they do not show the unclaimed region and its surrounding broken lines at the midsole heel areas that should be visible from the sides in Figures 2 and 3 and above in Figure 6 (see below):
PNG
media_image1.png
491
834
media_image1.png
Greyscale
PNG
media_image2.png
612
703
media_image2.png
Greyscale
Correction of the drawing is 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 required 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 required corrective action in the next Office action.
Specification/Claim Objection
The amendment to the specification changes the title in the Figure 1 and broken line description to be “midsole periphery”, but the claim has not been amended to reflect the new title. The claim should be amended as follows:
---I CLAIM:
The ornamental design for a Midsole Periphery as shown and described. ---
Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). 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. 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 filing date of the application will determine what form 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.
The claim is rejected on the ground of nonstatutory double patenting of the claim in United States Patent No. D1,087,563 (the patent resulting from the expedited child application, 29/975,415). Although the conflicting claims are not identical, they are not patentably distinct from each other because the obvious differences in hard edge lined forms versus softer contoured forms of the same shape is both obvious and de minimis (it is noted that in the child application, 29/975,415, this difference was explained and part of the reasoning for why the original claim to priority as a continuation was denied in the Ex parte Quayle action of 5 February 2025) See a comparison of the claimed design of the instant application and that of the earlier patent below:
PNG
media_image3.png
403
1309
media_image3.png
Greyscale
PNG
media_image4.png
571
2360
media_image4.png
Greyscale
PNG
media_image5.png
386
1616
media_image5.png
Greyscale
PNG
media_image6.png
383
701
media_image6.png
Greyscale
PNG
media_image7.png
384
630
media_image7.png
Greyscale
PNG
media_image8.png
328
1590
media_image8.png
Greyscale
PNG
media_image9.png
319
1571
media_image9.png
Greyscale
PNG
media_image10.png
483
1566
media_image10.png
Greyscale
It was noted in the previous office action of 7 October 2025 (page 7) that if the midsole periphery is claimed and the outsole bottom is unclaimed, a double patenting situation with application 29/975,415 (now US Patent D1,087,563) would be likely.
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
Summation
The claim stands objected to and 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 571-272-7609. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. 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.
/T Chase NELSON/Primary Examiner, Art Unit 2912