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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/16/26 has been entered.
Response to Amendment
The amendments made to claims 1-3 and the cancellation of claims 4-20 in the response filed 2/16/26 are acknowledged.
Claims 1-3 are now pending in the application and are examined below.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 3 is objected to because of the following informalities: “encloser corresponding to” in line 5 should be amended to recite --encloser configured to correspond to-- to most clearly avoid claiming a human organism. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-3 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 1, the claim positively recites an instep of a wearer in line 10 and a blister candidate region in lines 12-13.
Regarding claims 2-3, the claims are rejected under 35 U.S.C. 101 by virtue of their dependence on claim 1.
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 1-3 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the term “substantially” in lines 15 and 16 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claims 2-3, the claims are rejected under 35 U.S.C. 112(b) by virtue of their dependence on claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Day US 1,785,185.
Regarding claim 1, Day discloses a toe protecting apparatus (p. 1, lines 1-6; fig. 1, band 25 is shown wrapping around the big toe, making it capable of providing protection) comprising:
a base having an opening to receive a toe and to correspond to a concave branched part of the toe (please see annotated fig. A below, where the base is the side of the band 25 that faces the concave branched part of the toe and has an opening that receives that part of the toe);
an end placed on an opposite side of the base (annotated fig. A, where the end is the side of the band 25 that faces toward the tip of the toe, which is opposite the base);
an encloser 25/27, between the base and the end, that has a hollow configured to surround the toe (annotated fig. A and p. 1, lines 77-80 and 93-97, band 25 being adapted to receive the great toe, and further comprising pocket 27; fig. 4 further shows the hollow nature of the band 25) and includes a support part 28 which is a thicker portion formed on one side of the encloser 25/27 (figs. 1 and 4 and p. 1, lines 93-97, pad 28 is carried in pocket 28 of band 25 on the side of the great toe adjacent the next toe); and
a wing part 26 extending from an upper side of the encloser 25/27 at a region adjacent to the base toward an instep of a wearer (p. 1, lines 77-88, edge portion 26 of extension 24; annotated fig. A shows the edge portion 26 at least partially extending over the top of the foot such that it at least partially extends from the upper side of the band 25 at the base, in the direction of the instep), the wing part 26 being configured to prevent rotation of the encloser 25/27 (annotated fig. A, the edge portion 26 extends along the side of the foot and attaches band 25 to the instep band 10, thus holding band 25 in place so as to be capable of preventing rotation);
wherein the support part 28 gradually increases in thickness toward a blister candidate region and is thickest at the blister candidate region (fig. 4, pad 28 forms a crescent shape and thus gradually increases toward its center, where a blister is capable of forming depending on the user’s toe) and protrudes inward only from an inner surface of the encloser 25/27 while an outer surface of the encloser 25/27 at a longitudinal location corresponding to the support part 28 is substantially circular or oval and substantially symmetric in a left-right direction (fig. 4, since the pocket 27 is considered part of the encloser 25/27, the pad 28 protrudes inwardly from the inner surface of pocket layer 27, such that the outermost surface of encloser 25/27 is substantially circular and symmetric in the left-right direction of the figure),
wherein the support part 28 is positioned to correspond to the blister candidate region located between a tip of the toe and the concave branched part of the toe and configured to absorb a torsional force applied to the blister candidate region (fig. 1 shows the padded pocket 27 extending along the entire length of the band 25 such that it is capable of being positioned adjacent a blister candidate region somewhere between the tip and branched part of the toe; the pad 28 is further capable of absorbing a torsional force applied to the blister candidate region, as the band 25 is held in place by extension 24 and band 10).
Regarding claim 3, Day discloses the support part 28 being formed only at a lower portion of the encloser 25 corresponding to a distal joint region of the toe (please see annotated fig. A below, which shows the pad 28 being positioned only in a lower portion relative to an upper portion, and thus capable of corresponding to the distal/lower side of the joint of the toe).
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Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Day US 1,785,185 in view of Um KR 20080003082 U.
Regarding claim 2, Day discloses the claimed invention as discussed above.
Day is silent on the encloser being provided with at least two holes perforated through a wall of the encloser between the base and the end to allow sweat to be discharged.
However, Um teaches a toe cap (fig. 1 and p. 2-3 of translation, toe cap for creating a gap between the toes to allow for good ventilation) comprising an encloser provided with at least two holes 30 perforated through a wall of the encloser between the base and the end to allow sweat to be discharged (fig. 1, the body of the toe cap between the bottom (i.e. base) and closed tip (i.e. end) being interpreted as the encloser of the toe; p. 3, ventilation holes 30 prevent sweat or moisture and would allow the sweat to be discharged).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided the encloser of Day with at least two holes perforated through a wall of the encloser between the base and the end to allow sweat to be discharged, as taught by Um, to prevent accumulation of uncomfortable sweat or moisture (p. 3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE J LEE whose telephone number is (571)270-7303. The examiner can normally be reached 9 AM - 5 PM.
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/MICHELLE J LEE/ Primary Examiner, Art Unit 3786