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 .
Examiner’s Note
It is noted that the currently pending claim set includes two claims numbered as claim 3. For examination purposes, the second claim 3 is being referred to as claim 4.
Claim Objections
Claims 1, 3, and 4 are objected to because of the following informalities: the phrase “an elongated a shoe insole” in line 3 of claims 1 and 3 should be amended to read “an elongated shoe insole”; the second claim 3 should be amended to read as claim 4. Appropriate correction is required.
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 1-4 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 phrase “the shoe” in lines 3-4 lacks proper antecedent basis. For examination purposes, the phrase is being interpreted as “a shoe”. The same indefiniteness issue and interpretation apply to claim 3. Regarding claim 2, the phrase “a shoe” lacks proper antecedent basis. It is unclear if the “a shoe” recited in claim 2 is the same shoe or a different shoe than the shoe recited in line 9 of claim 1. For examination purposes, the shoe of claim 2 is being interpreted as the shoe in line 9 of claim 1. The same indefiniteness issue and interpretation apply to claim 4. Regarding claim 3, the phrase “an insole” in line 5 lacks proper antecedent basis. It is unclear if the insole in line 5 is the same as or different than the insole recited in line 3. For examination purposes, the insole of line 5 is being considered the same insole as the one recited in line 3. Further regarding claim 3, the limitation “a battery assembly disposed distal to said toe portion” renders the claim indefinite in that it is not a step.
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.
Claims 3 and 4 are rejected under 35 U.S.C. 101 because merely “providing” individual elements of an apparatus is not properly drawn to one of the four categories of patent eligible subject matter.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Smulyan et al.’532 (US Pub No. 2018/0263532) in view of Novak’435 (US Pub No. 2007/0203435).
Regarding claim 1, Figures 1 and 2 of Smulyan et al.’532 disclose an apparatus for initiating a human response to perceived toe walking (see ABSTRACT), the apparatus comprising: an elongated shoe insole 108 dimensioned and configured for placement within a shoe 200 of a human person; said insole having a toe portion 104 and a heel portion 102 at opposite axial extremities of the shoe insole (as seen in Figures 1 and 2); a vibrator assembly disposed within the insole (Figure 4, vibrator assembly 408, sections [0024], [0028], [0033]); and a battery assembly disposed within the insole (section [0028] discloses use of a power source; Official notice is being taken that it is well known in the art to use a battery assembly as a power source); wherein said vibrator and said battery assembly are connected to cause the vibrator assembly to vibrate in response to tip toe stepping by the human wearing the shoe having the elongated insole installed therein (see ABSTRACT, sections [0024], [0033]).
Smulyan et al.’532 discloses all of the elements of the current invention, as discussed above, except for the apparatus comprising a momentary electric switch disposed proximate to said toe portion, said momentary electric switch being responsive to tip toe stepping by the human, the momentary electric switch, vibrator assembly, and battery assembly being connected in series whereby momentary closure of said momentary electric switch causes said vibrator assembly to vibrate. Figure 1 of Novak’435 teaches a similar apparatus, wherein an electric switch is connected to a vibrator assembly and a battery assembly to provide vibratory stimulus to a human in response to a tip toe stepping trigger signal (see description of Figure 1, and sections [0034], [0038], [0051-0052]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the apparatus of Smulyan et al.’532 such that it includes an electric switch connected to the vibratory assembly and battery assembly, whereby closure of the electric switch causes said vibratory assembly to vibrate, as taught by Novak’435, as it would merely be combining prior art elements according to known methods to yield predictable results. The modification to Smulyan et al.’532 would provide a means by which to provide a momentary vibration to the human when tip toe stepping is detected. Smulyan et al.’532 discloses that the vibration is momentary (“predetermined period of time” as disclosed in the ABSTRACT, and sections [0004], [0063]), thus, in the combination of Smulyan et al.’532 in view of Novak’435, the electric switch would be a momentary electric switch that causes momentary vibration when the switch is momentarily closed.
Smulyan et al.’532 in view of Novak’435 discloses all of the elements of the current invention, as discussed above, except for the momentary electric switch being disposed proximate to the toe portion, the vibratory assembly being disposed distal to the toe portion, and the battery assembly being disposed distal to the toe portion. However, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have arranged the momentary electric switch proximate to the toe portion, the vibrator assembly distal to the toe portion, and the battery assembly distal to the toe portion as the positioning of claimed elements has been held to be an obvious matter of design choice when the claimed positioning would not modify the operation of a device (MPEP 2144.04 VI. C. Rearrangement of Parts). Situating the momentary electric switch proximate to the toe portion, the vibrator assembly distal to the toe portion, and the battery assembly distal to the toe portion would not have modified the operation of the device of Smulyan et al.’532 in view of Novak’435.
Smulyan et al.’532 in view of Novak’435 discloses all of the elements of the current invention, as discussed above, except for explicitly teaching that the momentary electric switch, vibrator assembly, and battery assembly are connected in series. However, it would have been obvious to one of ordinary skill in the art to have tried connecting the components in series as it would merely be choosing from a finite number of identified, predictable solutions (connecting in series or connecting in parallel), with a reasonable expectation of success.
Regarding claim 2, Figure 2 of Smulyan et al.’532 discloses that the apparatus comprises the shoe 200 dimensioned and configured for receiving said insole.
Regarding claims 3 and 4, the sections of Smulyan et al.’532 cited above, as modified by Novak’435, inherently discloses a method of providing each of the elements of claim 2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Sanabria-Hernandez’343 (US Pub No. 2008/0066343) discloses an apparatus for initiating a human response to perceived toe walking, the apparatus comprising an elongated shoe insole having a toe portion and a heel portion at opposite axial extremities of the shoe insole, a shoe dimensioned and configured for receiving the insole, sensors disposed proximate to the toe portion, and a vibratory assembly and a battery assembly both disposed distal to the toe portion that, in response to the sensors determining tip toe stepping, provide vibratory stimulation to the heel portion of the human. Werner’392 (US Pub No. 2022/000392), Pretzer-Aboff et al.’500 (US Pub No. 2022/0015500), and Javitt et al.’749 (USPN 10,595,749) each disclose an insole configured to be placed within a shoe, wherein the insole comprises sensors proximate to a toe portion, a vibrator assembly distal to the toe portion, and a battery assembly distal to the toe portion, wherein the vibrator assembly and battery assembly, in response to receiving a trigger signal based on data acquired by the sensors, cause a vibratory stimulation to the heel portion of a human.
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/ETSUB D BERHANU/ Primary Examiner, Art Unit 3791