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 .
Response to Arguments
Applicant's arguments filed 1/31/2025 have been fully considered but they are not persuasive. The arguments focus on the intended purpose of the foot care devices, and that the claimed invention is intended for maintaining the placement of moisturizer or medication to the skin of the foot whereas the prior art relied upon, Logan (US 20070283597 A1), discloses a footwear device lending arch support. Applicant argues that since the devices vary in their intended uses, the structure of the prior art would be incompatible with the intended use like wearing the device overnight. However, the claims do not capture the specific intended use of maintaining placement of lotion or medication, and the claims only focus on the structure of the device itself. Claim 1 is directed towards the shape and material of the device, and the amendments incorporate cancelled claim 8 that focuses on the material characteristics of the device. Applicant’s arguments are narrower than what the claim language calls for, and the non-final rejection mailed 7/31/2024 argues that when the structure or composition recited in the prior art is substantially identical to the claims of the instant invention, the claimed properties or functions are presumed to be inherent. The burden of proof shifted to the Applicant, but the Applicant does not demonstrate how the material characteristics of the prior art are incapable of having the same flexibility or resistance as the claimed invention.
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.
Claim(s) 1-3, 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Logan (US 20070283597 A1).
Regarding claim 1, Logan discloses a heel care device (fig. 3), comprising a cup section shaped to fit over and cover a portion of a subject's foot (1, figs. 2, 3, para. [0020]) and a strap section (2, 5) configured to retain the cup section in place on the subject's foot (fig. 3, para. [0019, 0020]), wherein the strap section is made of a flexible, elastic material (para. [0006, 0015]).
However, Logan fails to expressly disclose wherein the cup section is more rigid than the strap section, wherein the cup section has about the same flexibility in response to bending forces as the strap section and has more resistance to transverse tension and compression forces than the strap section.
Paragraph [0006] states that the support body could be made from various materials, one being plastic or fabric. It also states that the stretchable straps can also be made from a variety of materials, one being elastic or rubber. It would have been obvious for the body of the device to be more rigid than the straps to maintain structural integrity during use to properly support the foot, and additionally, it is inherent that straps made of elastic would be less rigid than a form made of plastic. Further, paragraphs [0032, 0033] of the applicant’s specification states that the cup may be made from a rigid material like harder grade silicone, rubber, TPEs, or plastic and the straps can be made from the same list. Paragraph [0006] of Logan similarly discloses that the body of the device can be made of rubber or plastic and that the straps can also be made from rubber. Although Logan does not expressly disclose wherein the cup section has about the same flexibility in response to bending forces as the strap section and has more resistance to transverse tension and compression forces than the strap section, when the structure or composition recited in the reference is substantially identical to that of the claims of the instant invention, claimed properties or functions are presumed to be inherent (MPEP 2112.01). A prima facie case of either anticipation or obviousness has been established when the reference discloses all the limitations of a claim except for a property or function. The burden of proof is now shifted to the Applicant.
Regarding claim 2, Logan discloses the heel care device of claim 1, and Logan further discloses wherein the cup section (1) and the strap section (2, 5) are integrally formed (fig. 2, 2a).
Regarding claim 3, Logan discloses the heel care device of claim 2, and Logan further discloses wherein the strap section (2, 5) comprises a length of elastic material (figs. 2, 3, para. [0013-0015]).
Regarding claim 6, Logan discloses the heel care device of claim 2, and Logan further discloses wherein the portion of the subject's foot is the heel of the subject's foot (para. [0015]).
Regarding claim 7, Logan discloses the heel care device of claim 2, and Logan further discloses wherein the cup section (1) has a perimeter edge (A, annotated fig. 3a) and a groove (B, annotated fig. 3a) adjacent the perimeter edge of the cup section (1).
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Regarding claim 9, Logan discloses the heel care device of claim 2, and Logan further discloses wherein the cup section (1) extends from the heel of the subject to the ball of the foot of the subject (fig. 3, para. [0015, 0020]).
Regarding claim 10, Logan discloses the heel care device of claim 9, and Logan further discloses comprising a second strap section (6) positioned over the ball of the foot of the subject (fig. 3, para. [0020]).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Logan (US 20070283597 A1) in view of Gardner et al. (US 20040015113 A1, hereafter “Gardner”).
Regarding claim 4, Logan discloses the heel care device of claim 2. However, Logan fails to disclose wherein the strap section comprises a buckle having a strap portion with a plurality of apertures and a buckle portion with a pin sized to engage one of the plurality of apertures.
Gardner teaches a similar device in the same field of endeavor wherein the strap section (16a) comprises a buckle (20) having a strap portion with a plurality of apertures (18) and a buckle portion with a pin (19) sized to engage one of the plurality of apertures (figs. 1, 3, para. [0028, 0047]).
Paragraphs [0006, 0015, 0016] states that the fastening means could be a variety of types, including a buckle arrangement. The substitution of one known element (generic fastening means as shown in Logan) for another known element (buckle and pin means as shown in Gardner) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the buckle and pin would have yielded predictable results, namely, a fastened strap to secure the device to the foot. MPEP 2143 A-C.
Regarding claim 5, the combination of Logan and Gardner discloses the heel care device of claim 4. However, the combination fails to disclose wherein the strap portion comprises a plurality of removable segments.
The combination of Logan and Gardner discloses the claimed invention except for a strap portion that has a plurality of removable segments. It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to make portions of the strap separable to remove excess length of the strap, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Conclusion
THIS ACTION IS MADE FINAL. 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References US 20170165094 A1, US D521645 S, US 20050274045 A1, US 6308713 B1, US 5472411 A disclose wearable devices on the feet.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN A KIM whose telephone number is (703)756-4738. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on 5712701775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN A KIM/Examiner, Art Unit 3781
/SUSAN S SU/Primary Examiner, Art Unit 3781 14 April 2025
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