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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 17, 2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
1. Claims 21, 23-27, 29-31, 33-37, and 39-40 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sunderland (US 5,623,772) in view of Wong (US 5,894,201), and in further view of Forbes (US 7,866,066).
Regarding Claim 21, Sunderland discloses an article of footwear, comprising: an upper (21,76,42) formed in part by a first layer (21) and a second layer (28); a sole structure secured with respect to the upper and forming a void with the upper configured to admit a foot of a wearer (as seen in Fig.1); a heating system (22,24,26), secured to the upper and as fixed to sole structure (as seen in Fig.1), configured to impart heat on the article of footwear to warm the article of footwear (Col.5, lines 29-45), the heating system including: a control device (electrical connections in 24); a power source (battery in 24); at least one heating element (22,26), fixedly positioned between the first layer and the second layer of the upper (as seen in Fig.1 & 4, 26 is fixedly positioned between 21 & 28, as it is securely positioned within the footwear; Col.6, lines 31-44), configured to impart heat energy on the article of footwear to warm the article of footwear (Col.5, lines 32-36); and a status condition indicator indicative of an operating state of the heating system (Col.7, lines 24-42), wherein the status condition indicator is a visual indicator arrangement comprising a plurality of lights (74) configured to indicate one of a plurality of status conditions (i.e. “low”, “off”, and “hi”) of the heating system through a material (i.e. pocket 42 of the upper) according to one illumination status, the illumination status corresponding to one of the plurality of status conditions (Col.7, lines 24-42); wherein the control device is configured to cause the power source to deliver power to the heating element to create the heat energy and cause the status condition indicator to display one of the plurality of status conditions corresponding to a current state of the heating system (Col.5, lines 29-45 & Col.7, lines 24-42).
Sunderland does not explicitly disclose cycling through a sequence of illumination of individual ones of the plurality of lights according to a one of a plurality of predetermined orders of illumination, each of the plurality of predetermined orders of illumination corresponding to one of the plurality of status conditions. However, Wong teaches an article of footwear (50) having a visual indicator (i.e. light flashing system; Abstract) configured to display one of a plurality of status conditions of a system by cycling through a sequence of illumination of individual ones of the plurality of lights (i.e. LEDs of 53-58/8-10) according to a one of a plurality of predetermined orders of illumination (Col.1, lines 51-66), each of the plurality of predetermined orders of illumination corresponding to one of a plurality of status conditions (Col.1, lines 51-66).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the visual indicator of Sunderland to cycle through a sequence of illumination of individual ones of the plurality of lights according to a one of a plurality of predetermined orders of illumination, as taught by Wong, in order to provide the desired aesthetic appearance to the shoe. Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide such a sequence of illumination according to a one of a plurality of predetermined orders of illumination since it would only depend on the intended use of the assembly and the desired information to be displayed. Further, it has been held that when the claimed printed matter (in this case, visual indicator of lights) is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter (in this case, visual indicator of lights) placed on the substrate may render the device more convenient by providing an individual with a specific type of decoration does not alter the functional relationship. Mere support by the substrate for the printed matter (in this case, visual indicator of lights) is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. visual indicator of lights and the substrate e.g. footwear which is required for patentability. Additionally, it is noted that Applicant has no criticality for the lights illuminating in a sequence over that of any other illumination status, as the sequential illumination is purely aesthetic.
Sunderland and Wong disclose the invention substantially as claimed above. Sunderland does not disclose the visual indicator arrangement being visible through a transparent or translucent. However, Forbes teaches an article of footwear having a transparent or translucent material (16,36; Col.4, lines 5-7) through which a visual indicator arrangement (22) is visible (as seen in Fig.1, 5-6; Col.2, lines 27-32 & Col.4, lines 13-17).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have formed the exterior material of Sunderland’s pocket with a transparent or translucent material that also fully covers the visual indicator arrangement, as taught by Forbes, in order to cover the visual indicator arrangement with a material that allows viewing the lights while also providing additional protection to the system from environmental factors like moisture.
Regarding Claim 23, Sunderland discloses an article of footwear of claim 21, wherein the plurality of status conditions include that the heating system is operating in a first mode (i.e. “off”), that the heating system is operating in a second mode different than the first mode (i.e. “high”), and that the power source (battery in 24) has low power (i.e. “low”)(Col.7, lines 24-42).
Regarding Claim 24, Modified Sunderland discloses an article of footwear of claim 23, wherein the plurality of predetermined orders of illumination include a plurality of predetermined sequences (i.e. each of “off”, “high”, and “low”) in which individual ones of the plurality of lights are illuminated (Col.7, lines 24-42 & Wong: Col.1, lines 51-66).
Regarding Claims 25 and 35, Sunderland discloses the invention substantially as claimed above. Sunderland does not disclose wherein the plurality of predetermined orders of illumination include different colors in which the plurality of lights are illuminated. However, Wong teaches a footwear that has a plurality of predetermined orders of illumination include different colors in which a plurality of lights are illuminated (Col.3, lines 15-16).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the lights of Sunderland to have different colors, as taught by Wong, in order to more readily distinguish between the different status conditions. Further, it is noted that a change in color is generally recognized as being within the level of ordinary skill in the art. Additionally, “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." A change in the color of the lights of Sunderland would have been obvious due to design incentives or market forces providing a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.
Regarding Claim 26, Sunderland discloses an article of footwear of claim 21, further comprising a user input control mechanism (72), operatively coupled to the heating system, wherein the status condition is based, at least in part, an in input received via the user input control mechanism (as seen in Fig.1-2; Col.7, lines 24-42).
Regarding Claim 27, Sunderland discloses an article of footwear of claim 26, wherein the user input control mechanism (72) is configured to allow a user to vary the heating of the article of footwear (Col.7, lines 24-42).
Regarding Claim 29, Sunderland discloses an article of footwear of claim 21, wherein the heating system (22,24,26) is configured to impart energy (i.e. heat) to the upper (Col.5, lines 29-45).
Regarding Claim 30, Sunderland discloses an article of footwear of claim 21, wherein the visual indictor (74) arrangement is a linear array of light emitting diodes (LEDs)(as seen in Fig.1; Col.7, lines 24-35).
Regarding Claim 31, Sunderland discloses a method of making an article of footwear, comprising: securing a sole structure (as seen in Fig.1) with respect to an upper (21,76,42), forming a void with the upper configured to admit a foot of a wearer (as seen in Fig.1 & 7), the upper formed in part from a first layer (21) and a second layer (28); securing a heating system (22,24,26) to the upper, the heating system configured to impart heat energy (i.e. heat) on the article of footwear to warm the article of footwear (Col.5, lines 29-45), the heating system including: a control device (electrical connections in 24); a power source (battery in 24); at least one heating element (22,26) fixedly positioned between the first layer and the second layer of the upper (as seen in Fig.1 & 4, 26 is fixedly positioned between 21 & 28, as it is securely positioned within the footwear; Col.6, lines 31-44), configured to impart heat energy on the article of footwear to warm the article of footwear (Col.5, lines 32-36), and a status condition indicator indicative of an operating state of the heating system (Col.7, lines 24-42), wherein the status condition indicator is a visual indicator arrangement comprising a plurality of lights (74) configured to indicate one of a plurality of status conditions (i.e. “low”, “off”, and “hi”) of the heating system through a material (i.e. pocket 42 of the upper) according to a one illumination status, the illumination status corresponding to one of the plurality of status conditions (Col.7, lines 24-42); wherein the control device is configured to cause the power source to deliver power to the heating element to create the heat energy and cause the status condition indicator to display one of the plurality of status conditions corresponding to a current state of the heating system (Col.5, lines 29-45 & Col.7, lines 24-42).
Sunderland does not explicitly disclose Sunderland does not explicitly disclose cycling through a sequence of illumination of individual ones of the plurality of lights according to a one of a plurality of predetermined orders of illumination, each of the plurality of predetermined orders of illumination corresponding to one of the plurality of status conditions. However, Wong teaches an article of footwear (50) having a visual indicator (i.e. light flashing system; Abstract) configured to display one of a plurality of status conditions of an output system by cycling through a sequence of illumination of individual ones of the plurality of lights (i.e. LEDs of 53-58/8-10) according to a one of a plurality of predetermined orders of illumination (Col.1, lines 51-66), each of the plurality of predetermined orders of illumination corresponding to one of a plurality of status conditions (Col.1, lines 51-66).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the visual indicator of Sunderland to cycle through a sequence of illumination of individual ones of the plurality of lights according to a one of a plurality of predetermined orders of illumination, as taught by Wong, in order to provide the desired aesthetic appearance to the shoe. Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide such a sequence of illumination according to a one of a plurality of predetermined orders of illumination since it would only depend on the intended use of the assembly and the desired information to be displayed. Further, it has been held that when the claimed printed matter (in this case, visual indicator of lights) is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter (in this case, visual indicator of lights) placed on the substrate may render the device more convenient by providing an individual with a specific type of decoration does not alter the functional relationship. Mere support by the substrate for the printed matter (in this case, visual indicator of lights) is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. visual indicator of lights and the substrate e.g. footwear which is required for patentability. Additionally, it is noted that Applicant has no criticality for the lights illuminating in a sequence over that of any other illumination status, as the sequential illumination is purely aesthetic.
Sunderland and Wong disclose the invention substantially as claimed above. Sunderland does not disclose the visual indicator arrangement being visible through a transparent or translucent material of the upper. However, Forbes teaches an article of footwear having a transparent or translucent material (16,36; Col.4, lines 5-7) through which a visual indicator arrangement (22) is visible (as seen in Fig.1, 5-6; Col.2, lines 27-32 & Col.4, lines 13-17).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have formed the exterior material of Sunderland’s pocket with a transparent or translucent material that also fully covers the visual indicator arrangement, as taught by Forbes, in order to cover the visual indicator arrangement with a material that allows viewing the lights while also providing additional protection to the system from environmental factors like moisture.
Regarding Claim 33, Sunderland discloses a method of claim 31, wherein the plurality of status conditions include that the heating system is operating in a first mode (i.e. “off”), that the heating system is operating in a second mode different than the first mode (i.e. “high”), and that the power source (battery in 24) has low power (i.e. “low”)(Col.7, lines 24-42).
Regarding Claim 34, Modified Sunderland discloses a method of claim 33, wherein the plurality of predetermined orders of illumination include a plurality of predetermined sequences (i.e. each of “off”, “high”, and “low”) in which individual ones of the plurality of lights are illuminated (Col.7, lines 42-42 & Wong: Col.1, lines 51-66).
Regarding Claim 36, Sunderland discloses a method of claim 31, further comprising operatively coupling a user input control mechanism (72) to the heating system, wherein the status condition is based, at least in part, an in input received via the user input control mechanism (as seen in Fig.1-2; Col.7, lines 24-42).
Regarding Claim 37, Sunderland discloses a method of claim 36, wherein the user input control mechanism (72) is configured to allow a user to vary the heat energy of the article of footwear (Col.7, lines 24-42).
Regarding Claim 39, Sunderland discloses a method of claim 31, wherein the heating system (22,24,26) is configured to impart heat energy (i.e. heat) to the upper (Col.5, lines 29-45).
Regarding Claim 40, Sunderland discloses a method of claim 31, wherein the visual indictor (74) arrangement is a linear array of light emitting diodes (LEDs)(as seen in Fig.1; Col.7, lines 24-35).
2. Claims 28 and 38 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sunderland (US 5,623,772), Wong (US 5,894,201), and Forbes (US 7,866,066), in view of Macher (US 2012/0193342).
Regarding Claims 28 and 38, Sunderland and Wong disclose the invention substantially as claimed above. Sunderland does not disclose wherein the user input control mechanism is remote from the heating system. However, Macher teaches a heated footwear having an input control mechanism is remote from an output system (14)(para.25).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the input control mechanism of Sunderland to be a remote control separate from the heating system, as taught by Macher, in order to provide an easy way to adjust the heating system without the user having to uncomfortably bend down each time they want to adjust the temperature.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments have been considered but, as they are drawn solely to the newly amended limitations, are moot in view of the newly modified ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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