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 .
Status of Claims
This is a FINAL Rejection to Amendments and Arguments filed by Applicant on 01/01//2026. Claims 1, 7, and 8 have been amended. Claims 2 & 3 are cancelled. Claims 11-19 are withdrawn. Currently pending for review are Claims 1 and 4-10.
Response to Amendment
Regarding the Claim Objections made in the Office Action filed on 01/01/2025. Amendments/Remarks & Arguments filed by Applicant on 01/01/2026 correct the objection and/or are persuasive. Therefore, the Claim Objections made in the Office Action filed on 10/01/2025 has been withdrawn unless otherwise indicated below.
Regarding the 35 U.S.C. 112(b) Rejections made in the Office Action filed on 01/01/2025. Amendments/Remarks & Arguments filed by Applicant on 01/01/2026 correct the rejection and/or are persuasive. Therefore, the 35 U.S.C. 112(b) Rejections made in the Office Action filed on 10/01/2025 has been withdrawn unless otherwise indicated below.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 4-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Elbaz et al (US 20130196829 A1).
Regarding Claim 1, Elbaz et al teaches a footwear 10 comprising: a vamp 18,20; an insole 12 (inside) defining, in combination with an inner surface of the vamp 18,20, a foot accommodating Volume of Treatment (VOTf) (Refer to Fig. 1,2 Paragraph [0095]:” In another embodiment, the methods are directed to treating a lower limb pathology that is treatable according to the invention by differential muscle tuning. In another embodiment, the methods are directed to treating a lower limb pathology that is at least partially treatable (may involve additional treatments that are known to one of skill in the art (surgery, medication, etc.)) according to the invention by differential muscle tuning. “… [0152]:” In another embodiment, footwear 10 is attached to a foot of a user by means of a boot 18 and/or fasteners 20, such as but not limited to, VELCRO straps, buckles, shoe laces, and the like. In another embodiment, footwear 10 is attached to a foot of a user by means of a shoe. In another embodiment, a shoe comprises a platform of a sneaker. In another embodiment, the term sneaker comprises a boot. In another embodiment, the term sneaker comprises a walking boot. In another embodiment, a shoe comprises a platform of a running shoe. In another embodiment, a shoe comprises a platform of an elegant shoe. In another embodiment, a shoe comprises a platform of a walking shoe or boot. Each possibility represents a separate embodiment of the present invention.”); and an outsole 12,24 coupled to at least one protuberance 22, so that when the footwear is in use, the at least one protuberance 22 provides a Point of Contact (POC) 26 (Refer to Fig. 2 Paragraph [0155] In another embodiment, each protuberance 22 has a curved outer contour 26. In another embodiment, each protuberance has a different curved outer contour. In another embodiment, each protuberance 22 has a convexity.”..The Office takes the position that the contour 26 contains the POC) with a floor surface, said POC being orthogonally distanced from a surface of the outsole (Refer to Fig. 2 Paragraph [0159]:” [0159] In another embodiment, at least two bulbous protuberances 22 protrude from a lower surface 24 of support member 12. In another embodiment, only two bulbous protuberances 22 protrude from a lower surface 24 of support member 12. In another embodiment, a lower surface of support member is an outsole.”), said at least one protuberance 22 being movable relative to the surface of the outsole within a predefined protuberance translation zone (Refer to annotated Fig. 9 below Paragraph [0192]) to provide different levels of disturbance, when the footwear is in use (Refer to Figs. 11,12 Paragraph [00161]:” a protuberance as described herein is movable along the outer surface of the outsole. In another embodiment, a protuberance as described herein can be positioned within the outer surface of the support member.”.. [0162] In another embodiment, a protuberance as described herein is movable or translatable such as in a track (e.g., forwards, backwards, sideways or diagonally) and/or rotatable about its own or other axis, or a combination of such motions. Each possibility represents a separate embodiment of the present invention); wherein said vamp 18,20 and insole 12 are configured to provide, when the footwear is in use, dimensions of said VOTf such as to ensure that, within a maximal range of movement 406,407 of said at least one protuberance 22, said POC is positioned in a predefined position directly below a predefined treatment zone of the VOTf (Refer to Fig. 9-12 Paragraph [0192]:” Front rail 404 and rear rail 405 are used for anchoring the protuberance. The area bordered by dotted line 406 marks the maximal area within which the peak surface of the anterior protuberance, i.e. the ground engaging surface of the anterior protuberance, may be located, according to some embodiments of the present invention. The area bordered by dotted line 407 marks the maximal area within which the peak surface of the posterior protuberance. Each possibility represents a separate embodiment of the present invention.”), said predefined treatment zone being selected from a group consisting of:(i) a toe spring zone; (ii) a zone between a ball girth and a waist girth; and (iii) a zone between the waist girth and a short heel girth (Refer to annotated Fig. 9 below).
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Regarding Claim 4, Elbaz et al continues to teach wherein said POC 26 at the maximal range of movement 406,407 of said at least one protuberance 22 on a plane generally parallel to a surface of said outsole delineate a zone of a maximal range of movement of said POC (Refer to Fig. 9 Paragraph [0192]:” The area bordered by dotted line 406 marks the maximal area within which the peak surface of the anterior protuberance, i.e. the ground engaging surface of the anterior protuberance, may be located, according to some embodiments of the present invention. The area bordered by dotted line 407 marks the maximal area within which the peak surface of the posterior protuberance. Each possibility represents a separate embodiment of the present invention.”).
Regarding Claim 5, Elbaz et al continues to teach wherein said zone of the maximal range of movement 406,407 in combination with a maximal range of a plurality of distances of said POC 26 from a surface of said outsole 12 define a maximal Volume of Treatment of said at least one movable protuberance (VOTp) 22 (Refer to Paragraph [0192]-[0195]..The Office takes the position that the maximal range of movement and maximal range of distances of the POC from the surface 24 of the outsole 12 are inherent at the maximal range of movement of the POC 26 are indicated by Elbaz et al and therefore inherently define a maximal VOT).
Regarding Claim 6, Elbaz et al continues to teach wherein said zone of the maximal range of movement 406,407 of said POC 26 comprises one or more zones of treatment 610,620,710,720 efficacy within which said POC generates an effective gait/posture proprioceptive and kinesthetic exercise (Refer to Figs. 11&12 Paragraph [0194]-[0195]).
Regarding Claim 7, Elbaz et al continues to teach wherein said one or more zones of treatment efficacy vary in a level of treatment efficacy (Refer to Figs. 11&12 Paragraph [0194]-[0195] to disclose the different zones provide different treatments).
Regarding Claim 8, Elbaz et al continues to teach wherein said one or more zones of treatment efficacy 610,620,710,720 in combination with a maximal range of a plurality of distances of said POC from said surface of said outsole 12,24 define an effective Volume of Treatment of said protuberance 22 (effective VOTp) (Refer to Paragraph [0192]-[0195]..The Office takes the position that the zones of treatment efficacy 610,620,710,720 and maximal range of distances of the POC 26 from the surface 24 of the outsole 12,24 are indicated by Elbaz et al and therefore inherently define an effective VOTp as indicated in Paragraphs [0194]-[0195]).
Regarding Claim 9, Elbaz et al continues to teach wherein dimensions of said VOTf 12,18,20 defined by said effective VOTp 22 so as to ensure that the predefined treatment zone of the VOTf is positioned over and within said effective VOTp (Refer to Paragraph [0192]-[0195]..The Office takes the position that the VOTf is positioned over the effective VOTp as desired since it meets all the structural limitations as claimed by Applicant).
Regarding Claim 10, Elbaz et al continues to teach wherein said VOTf 12,18,20 defines a last for said footwear 10 (The “last” is considered the inner surface of the vamp 18,20 and insole 12(inside) as defined by Applicant in paragraph [0032]).
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive.
Wherein Applicant argues that Elbaz “does not disclose that "the vamp and insole are configured to provide, when the footwear is in use," - that is, taking into consideration the applied pressure - "dimensions of said VOTf such as to ensure that, within a maximal range of movement of said at least one protuberance, said POC is positioned in a predefined position directly below a predefined treatment zone of the VOTf'”. Such arguments are not persuasive since the claims are directed towards a footwear and thus the vamp and insole only need to be capable of performing the intended use when being worn by a user. The Office takes the position that Elbaz teaches that the footwear provides a volume of treatment VOTf and has a protuberance having a POC which is movable and provides different levels of disturbance for a treatment zone of the VOTf (Refer to [0194] FIG. 11 illustrates the effective area boundaries of positioning of the anterior and posterior protuberances with respect to a support surface, according to embodiments of the present invention which include treatment and alleviating pain for the following diseases and/or conditions: Lateral meniscus tear/damage, Lateral compartment knee osteoarthritis, Valgus knee (genu valgus), Patello--femoral pain syndrome, Patello--femoral deficiency (mal-alignment), MCL Ligament tear, Bone bruise LTP/LFC (AVN), Hip labrum damage (tear), hip musculoskeletal pain, ankle instability (Pronoation), Achilles tendonitis, Tibilias insufficiency, Metatarsalgia, or any combinations thereof). The Office takes the position that in order for treatment to occur the device would have to be “in use” and POC being “predefined position” since it is positioned based on desired treatment and therefore Applicants arguments are not persuasive. Wherein Applicant argues that “In contrast, the invention according to amended independent claim 1 explicitly refers to the abovementioned configuration in 3D, as VOTf is a volume defined by the insole and the inner surface of the vamp. Furthermore, the application as filed repeatedly discusses the claimed 3D configuration: Fig. 2 shows predefined treatment zones in 3D; VOTp has major/minor axes and orthogonal distance d (application as filed, Fig. 6); and the VOTf generation includes computing coordinates (X, Y, Z) based on the maximal range of movement of the protuberance (see Figs. 7, 8A-8B; and 9-11 and accompanying description).”, the Office respectfully disagrees since the claims do not recite any “3D” configuration and Fig. 1 depicts that the footwear is a 3D object.
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.
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/NYCA T NGUYEN/ Primary Examiner, Art Unit 3784
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