Shoe sole

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 . DETAILED ACTION The applicant’s remarks, arguments, and specification received on 31 August 2026 are acknowledged. Applicant’s remarks and arguments overcome the previous rejection under 35 USC § 103 and is hereby withdrawn. However, since a terminal disclaimer was not received to respond to the double patenting rejection, the non-statutory double patenting rejection is repeated and made final. Double Patenting – Final Rejection The claim is finally rejected under the judicially created doctrine of the obviousness-type double patenting of applicant’s copending application No. 35/525,982. Although the designs are not identical, they are not patentably distinct from each other because the change of color is an obvious and common variation for a shoe sole design. The difference created by the change of the claimed red to having no color present is obvious and does not alter the overall appearance and general scope of the invention. The addition or subtraction of color does not create a patentable distinction. See In re Iknayan et. Al. 124 USPQ 507 (1960); In re Cohn 464 O.G. 481, 27 USPQ 412 (1935); In re Mains 461 O.G. 254, 77 F(2d) 533, 25 USPQ 407 (1935). Specifically, the designs are identical in shape and configuration, and the only difference is the surface color treatment. This is an obviousness-type double patenting rejection because the claim is not identical but is also not patentably distinct from the copending application: Instant Application 35526002 Copending Application 35525982 PNG media_image1.png 518 800 media_image1.png Greyscale PNG media_image2.png 540 830 media_image2.png Greyscale PNG media_image3.png 283 608 media_image3.png Greyscale PNG media_image4.png 277 591 media_image4.png Greyscale PNG media_image5.png 343 609 media_image5.png Greyscale PNG media_image6.png 348 614 media_image6.png Greyscale PNG media_image7.png 169 808 media_image7.png Greyscale PNG media_image8.png 176 818 media_image8.png Greyscale PNG media_image9.png 172 800 media_image9.png Greyscale PNG media_image10.png 167 828 media_image10.png Greyscale PNG media_image11.png 348 805 media_image11.png Greyscale PNG media_image12.png 353 844 media_image12.png Greyscale PNG media_image13.png 344 787 media_image13.png Greyscale PNG media_image14.png 364 823 media_image14.png Greyscale 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 non-statutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b). Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). Hague - Reply Reminder Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b). Discussion of the Merits of the Application All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant's representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below. Telephonic or in person interviews A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO ("registered practitioner'') or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner). The registered practitioner may either be of record or not of record. To become "of record", a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 "Power of Attorney to Prosecute Applications Before the USPTO", available at https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an "Applicant Initiated Interview Request Form" (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below. Email Communications The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communications is filed in the application. Form PTO/SB/439 "Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications" may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see "When Responding to Official US PTO Correspondence" below. See MPEP 502.03 II for further information. Responding to Official USPTO Correspondence The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by: Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only) https://www.uspto.gov/patents/apply Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450 Facsimile to the USPTO's Official Fax Number (571-273-8300) Hand-carry to USPTO's Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents/maintain/responding-office-actions Summation Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFF LENARD D TORRES whose telephone number is (571)272-7380. The examiner can normally be reached Monday-Friday 8:30AM to 3:30PM ET. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle E Wilson can be reached on 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. /J.D.T./Examiner, Art Unit 2912 /T Chase NELSON/Primary Examiner, Art Unit 2912