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
Drawings
The drawings filed 9/15/2020 are accepted.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 14-20 in the reply filed on 10/4/2022 is acknowledged.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
configured to conform to a user’s foot as pressure is applied;
configured to be operable for saturating the resin composition;
configured to enclose said foam material,
configured to be operable for accepting said chamber implement enclosing said foam material impregnated with said heat activated and remoldable resin composition;
operable for customizing or personalizing said insole implement;
configured to be operable for maintaining a molded shape as said heat activated and remoldable resin composition in said sealed chamber implement cools in temperature;
configured to be operable for being remolded to a different shape by reheating said heat activated and remoldable resin composition in said sealed chamber implement.
operable for accepting said chamber implement enclosing said foam material impregnated with said heat activated and remoldable resin composition
operable for saturating said heat activated and remoldable resin composition (claim 19).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14 and 17-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The following claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
configured to conform to a user’s foot as pressure is applied;
configured to be operable for saturating the resin composition;
configured to enclose said foam material,
configured to be operable for accepting said chamber implement enclosing said foam material impregnated with said heat activated and remoldable resin composition;
operable for customizing or personalizing said insole implement;
configured to be operable for maintaining a molded shape as said heat activated and remoldable resin composition in said sealed chamber implement cools in temperature;
configured to be operable for being remolded to a different shape by reheating said heat activated and remoldable resin composition in said sealed chamber implement.
operable for accepting said chamber implement enclosing said foam material impregnated with said heat activated and remoldable resin composition
operable for saturating said heat activated and remoldable resin composition (claim 19).
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no corresponding structure, material, or acts for performing the entire claimed function described in the specification. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 14, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Guadalajara (US 2016/0000184) in view of Moore et al (US 5,733,647).
Guadalajara teaches an apparatus comprising: an insole having: an arched area (0037) a top layer; and a bottom layer (claim 3). A resin composition is positioned near the arched area and on the bottom layer of the insole (claim 3). The resin may be impregnated into a foam material (0035-0036). Said foam material is understood to be “configured to be operable for saturating said heat activated and remoldable resin composition”. The invention further comprises a chamber implement, in which said chamber implement comprises a heat resistant material, wherein said chamber implement is configured to enclose said foam material impregnated with said heat activated and remoldable resin composition (0034-0036). Said chamber implement comprises a substantially sealed chamber implement to resist a leakage of said foam material saturated with said heat activated and remoldable resin composition (0034-0036). The chamber is disposed between the top layer and the bottom layer (claim 3). Said chamber implement enclosing said foam material impregnated with resin composition is taught to be operable for customizing or personalizing said insole implement (0006). With regards to the limitation “wherein said arched pad area is configured to be operable for accepting said chamber implement enclosing said foam material impregnated with said heat activated and remoldable resin composition,” Guadalajara teaches the chamber is placed in the arched pad area of the insole which is configured for receiving said chamber (claim 13).
Guadalajara does not teach the resin may comprise a heat activated resin composition that is configured to be remoldable with application of heat at a predetermined temperature. However, Moore teaches an insert for a shoe comprising a heel pad (38-herein understood to read on the claimed insole (see US 2021/00310105 @0041 wherein it is taught that a heel pad is a type of insole). Said insole has a top layer (see Figure 2). Moore further teaches inserting a sheet of hard (col 5, lines 25+) thermoplastic resin material (herein relied upon to read on the claimed “heat activated” and “remoldable resin composition”) into a chamber (Figure 3). Said resin is understood to be “configured to be remoldable with application of heat at a predetermined temperature” and “configured to conform to a user’s foot as pressure and heat is applied to the resin composition,” since said resin is a thermoplastic resin. After formation, a subsequent application of a subsequent heat source to at least said chamber and an application of said chamber to the user’s body part molds said material to the user’s body part (abstract). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the heat activated, remoldable resin disclosed in Moore in the chamber of Guadalajara. The motivation for doing so would have been Moore teaches such resins have sufficiently low softening points to allow for ease of use, are inexpensive and said resins are remoldable, durable, and long-lasting.
The product rendered obvious by Guadalajara in view of Moore is understood to be “ operable for maintaining a molded shaped as said heat activated and remoldable resin composition in said sealed chamber implement cools in temperature” and “configured to be operable for being remolded to a different shape by reheating said heat activated and remoldable resin composition in said sealed chamber implement” and “configured to conform to a user’s foot as pressure and heat is applied to eth resin composition” since Moore teaches the resin taught therein operates as such (example 1). Furthermore, Moore teaches the resin is remoldable to a different shape by reheating said heat activated and remoldable resin composition in said sealed chamber implement (col 7, lines 1+).;
With regards to claim 17, Guadalajara teaches said chamber implement comprises a temperature resistant bag.
With regards to claim 18, Guadalajara teaches the temperature resistant bag comprises an aluminum vacuum sealed bag (0035).
With regards to claim 19, Guadalajara teaches the foam material comprises an open cell structure that is operable for absorbing said resin composition (0035).
Response to Arguments
Applicant's arguments filed 10/25/2024 have been fully considered but are not persuasive.
Rejections Under 35 U.S.C. § 112:
With regards to the rejection of claims 14 and 17-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre- AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AlA the applicant regards as the invention, applicant argues correction has been made. Said argument is noted but is not persuasive for the reasons noted above. Applicant point to paragraphs (0033)-(0037) of the application and argues said paragraphs describe in detail the process of manufacturing the shoe insole. Said section of the specification has bene reviewed but the examiner cannot find the requisite implicit or explicit support for the claimed limitations. Applicant is requested to provide further detail on where the original disclosure provides the requisite disclosure to overcome the claim rejections.
Rejections Under 35 U.S.C. § 103:
Applicant submits the cited references fail to disclose or teach features hereby amended in the base claim. Specifically, applicant argues the insoles of the present invention start flat with impregnated foam vacuum sealed in a chamber. Then, heat activates resin which unlocks foam to expand and gas is released inside chamber which also helps expansion. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; the claims do not require a vacuum sealed chamber or for the material to initially be flat. The claims also do not require the chamber to expand.
Applicant further argues that all prior art cited is related to hard plastic shanks that bend or uncured polyurethane in foam which was just to help control their reaction with water and the curing process. Applicant submits that the features of the present invention are different from the art. Said argument is noted but is not persuasive as it is unclear what “feature” of the present invention applicant believes are different and whether said features are explicitly claimed, inherent to the claimed invention, or should be added to the claimed invention to distinguish from the prior art.
Applicant argues the difference between the present invention and Moore is: (1) Moore’s patent is literally a flat piece of EVA with a top and bottom layer; (2) Moore will not mold 3-dimensionally or make custom arch support at all or actually provide any support to the foot; (3) Moore is not sealed in any chamber, it just has film on top or bottom, the sides are open; and (4) Moore also has stitching around the toe to prevent his thermoplastic material from “Bunching up”. Applicant argues actual resin would leak straight out the sides and stitching punctures as soon as it was heated up, even before any pressure is applied by the foot. Said argument is noted but is not persuasive as the arguments do not seem germane to the teachings for which Moore are not relied. Moore is relied upon to render obvious the choice of resin to be utilized in the invention of the primary reference, Guadalajara. It is unclear how the four “differences” noted by applicant are relevant to the obviousness position taken by the Office as none of the “differences” are directed to the feature for which Moore is relied upon.
With regards to Guadalajara, applicant argues “in comparison to the cited references as a whole, it is believed that the art fails to disclose or teach the features hereby amended in the present claims.” Said argument is noted but is not persuasive as applicant fails to provide any details with regards to what features they believe are not disclosed or taught in the prior art.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for reasons of record.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached on M-F 8am-5pm.
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, Callie Shosho can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787