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, response, terminal disclaimer and drawing received 15 May 2026 are acknowledged. In view of these, the previous objections have been overcome and are hereby withdrawn. Applicant’s terminal disclaimer however has been disapproved with the following notation from the reviewing office:
“The prior patent is incorrect. Please complete and resubmit the TD. (No new fee required).”
It is noted that the patent number used on the Terminal Disclaimer form submitted by applicant references Patent No. 1,087,563 (a 1914 utility patent for a drying apparatus). The patent used in the rejection was prefaced by a “D” to indicate a Design Patent, and should be U.S. Patent D1,087,563. As such the previous double patenting rejection has been repeated and made final.
Final 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). See instructions above from the reviewing office regarding resubmission of the terminal disclaimer.
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 again and FINALLY 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:
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403
1309
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571
2360
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386
1616
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383
701
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384
630
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328
1590
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319
1571
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483
1566
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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 rejected for the reasons set forth above.
The references cited, but not applied, are considered cumulative art related to the claimed design.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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
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