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 .
Election/Restrictions
Applicant’s election of Group I: Claims 1-7 in the reply filed on October 22, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 22, 2025.
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.
1. 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: “filler injecting unit” in claim 6.
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.
2. Claims 6 and 7 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.
Claim 6 recites “the finishing body”. The claim limitation is indefinite as it is unclear if Applicant meant to claim the finishing band or the body. Claim 6 is rejected as best understood by examiner.
Claim 7recites “the body is recessed as much as a space in the shoe occupied by the inflated arch support portion”. The claim limitation is indefinite as it is unclear what Applicant is indenting to claim. Does Applicant mean the insole is placed in the interior of a shoe? Claim 7 is rejected as best understood by examiner.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
3. Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore (US 5,733,647) in view of Davidson (US 2015/0013190).
Regarding Claim 1, Moore discloses a shoe insole (10), comprising: a body (20,22a,22b,24a,24b,26a,26b) which is formed by a space fabric (20,22a,22b,24a,24b) so as to be inserted into a shoe and support at least a portion of a sole (Col.2, lines 11-33); and a finishing band (13) which is joined along the edge to the circumference of the body so as to finish an open edge of the body (Col.2, lines 11-20; as seen in Fig.1 & 3). Moore does not disclose injecting a filler into an inner space of the body. However, Davidson discloses an insole (as seen in Fig.3) having a body (165,200,205) formed by a space fabric (165; para.64) and injecting a filler (385) into an inner space of the body (para.99).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the space fabric of Moore for the space fabric and injected filler of Davidson, as a simple substitution of one well known type of insole cushioning material for another, in order to yield the predictable result of providing a cushioning insole.
Regarding Claim 2, Moore discloses a shoe insole of claim 1, wherein the finishing band (13) is overlap-sealed to the edge to be joined (Col.2, lines 11-20; as seen in Fig.1 & 3).
Regarding Claim 3, Moore discloses a shoe insole of claim 2, wherein when the finishing band (13) is overlap-sealed to the edge, one end on a cross section is closely joined to an upper skin (26a) of the body and the other end on the cross section is closely joined to a lower skin (26b) of the body (Col.2, lines 11-20; as seen in Fig.1 & 3).
Regarding Claim 4, Moore discloses a shoe insole of claim 2, wherein when the finishing band (13) is overlap-sealed to the edge, the finishing band is bent to have a cross-sectional U shape to have an upper piece (i.e. top portion of 13) closely joined to an upper skin (26a) of the body (as seen in Fig.3); a lower piece (i.e. bottom portion of 13) closely joined to a lower skin (26b) of the body; and a middle piece (i.e. middle portion of 13) which connects the upper piece and the lower piece between the upper piece and the lower piece (Col.2, lines 11-20; as seen in Fig.1 & 3).
Regarding Claim 5, Moore discloses a shoe insole of any one of claims 1 to 4, wherein the body is formed by the space fabric (20,22a,22b,24a,24b) having an entirely open circumference (i.e. open edge at perimeters of 20,22a,22b,24a,24b) and the band is formed to have a ring shape to finish the open edge of the body (Col.2, lines 11-20; as seen in Fig.1 & 3).
Regarding Claim 7, Moore discloses a shoe insole of claim 5, wherein the finishing band includes an arch support unit (i.e. 13 in the arch region) and the body is recessed as much as a space in the shoe occupied by the arch support portion (Col.2, lines 11-20; as seen in Fig.1). Moore does not disclose the arch support unit which is inflated to support an arch of a sole when the filler is injected and the body is recessed as much as a space in the shoe occupied by the inflated arch support portion. However, Davidson discloses an insole (as seen in Fig.3) where a finishing band (155) includes an arch support unit (180; as seen in Fig.5) and the body is recessed as much as a space in the shoe occupied by the arch support portion (as seen in Fig.1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the finishing band of Moore to extend the band such that it forms an inflated arch support portion, as taught by Davidson, in order to provide an insole that supports a wearer’s arch for a more comfortable stride while in use.
4. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore (US 5,733,647) and Davidson (US 2015/0013190), in view of Westin (US 2003/0046831).
Regarding Claim 6, Moore and Davidson disclose the invention substantially as claimed above. Modified Moore does not disclose wherein the finishing band/body includes a filler injecting unit which is integrally formed before being joined to the edge. However, Westin teaches an insole (12) having a finishing band/body (14) including a filler injecting unit (18; para.31 & 34) which is integrally formed before being joined to an edge (as seen in Fig.1 & 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the finishing band of modified Moore to include a filler injecting unit, as taught by Westin, in order to provide a easy way to reinflate the insole when needed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732