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 Amendment
The amendments filed on 10/07/2025 have been entered. Claims 1 and 6-12 remain pending in the application, with Claims 10 and 11 being withdrawn, and Claim 1 being newly amended.
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.
Claim(s) 1, 6-8, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunt (US 4309832) in view of Norton et al. (US 5642575).
Regarding Claim 1, Hunt teaches footwear (10) comprising: an upper (12) configured to surround a wearer’s foot (fig. 3 shows the footwear (10) comprising an upper (12), the upper being shaped and sized such that it would surround a wearer’s foot); a supporter (14) disposed below the upper and configured to support the foot (fig. 3 shows the supporter (14, also annotated) being disposed below the upper and being positioned to support the foot); and a walking assister (18) mounted to a mounting groove (see annotated Fig.) of the supporter configured to be adjacent to a metatarsophalangeal joint of the foot (col. 3 ll. 22-26 teaches “Hinge joint 18 extends substantially transversely across the complete width of the ball region of the foot, and preferably passes substantially under the region of the first metatarso-phalangeal joint 24 of the foot 28 as shown in FIG. 4”. Examiner notes that the footwear will fit differently sized feet in different manners and an intended relative position of the walking assistor to the wearer's foot anatomy is functional and not patentably significant.), wherein the walking assister is compressed in a mid-stance motion of the wearer, and restored in a toe-off motion of the wearer (col. 3 ll. 55-57 teaches “The forefoot hinge joint 18, as previously described, should be constructed to allow easy longitudinal bending of the sole at that location,” therein the walking assistor (18) is clearly capable of being compressed and restored, and as such would be able to perform the function of being compressed in a mid-stance motion of the wearer and restored in a toe-off motion of the wearer), and the walking assister comprises a first frame area (see annotated Fig.) disposed adjacent to a front region of the mounting groove, a second frame area (see annotated Fig.) disposed adjacent to a back region of the mounting groove, and an elastic area (see annotated Fig.) connecting top portions of the first and second frame areas and generating elasticity between the first and second frame areas (annotated fig. 3 shows the walking assistor including the first frame area and the second frame area at the front and back regions of the mounting groove, respectively, and an elastic area connecting the two, and therein clearly capable of generating elasticity between the first and second frame areas when they are flexed in relation to one another), wherein the walking assister comprises a first assister (18) configured to be disposed frontward with respect to the metatarsophalangeal joint, a second assister (30) disposed configured to be disposed backward with respect to the metatarsophalangeal joint (fig. 3 shows the first assister (18) and the second assister (30) being disposed frontward and backward with respect to the metatarsophalangeal joints, respectively), and the walking assistor causes the supporter to be bent at different angles during walking of the wearer (fig. 3 shows the first (18) and second (30) walking assisters being of different heights and having differing amounts of material of the supporter above them, therein clearly each of the first and second assister would cause the supporter to be bent at different angles during walking), wherein each of the first and second assisters is shaped to have a central portion facing forwards to correspond to the shape of the metatarsophalangeal joint, and edges extending backwards from the central portion (Hunt teaches that “if a region of the sole is fairly flexible, then a joint in that region may be curved. For example, a joint 30 at the ball of the foot, instead of being straight, might follow a curved line which passes under all five metatarso-phalangeal joints” (col. 4 ll. 1-5), wherein a curved line passing under the metatarsophalangeal joints would necessarily have a central portion facing forwards with edges extending backwards from the central portion. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hunt such that each of the first (18) and second (30) assisters are shaped to have a central portion facing forwards and edges extending backward to correspond to the shape of the metatarsophalangeal joints so as to provide increased flexibility in the sole), wherein the first assister is configured to maintain a front region of the supporter in an upwardly bent state by 20 to 30° with respect to the metatarsophalangeal joint even in an unworn state(fig. 3 shows the first assister (18) maintaining the front region to be bent upwards in an unworn state. Hunt does not explicitly teach wherein the supported is bent upwards by 20 to 30° with respect to the metatarsophalangeal joint. However, it should be noted that the upwards angle of the front portion as caused by the first assister is a result effective variable. The angle must be high enough so as to aid the wearer in having an efficient gait cycle, but low enough that the wearer’s foot is not put in an uncomfortable, unnatural position. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create the invention of the prior art with the first assister causing a front region of the supporter to bent upwards by 20 to 30° with respect to the metatarsophalangeal joint since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In the present invention, one would have been motivated to optimize the efficiency of the footwear and the comfort of the wearer, wherein the first assister (18) causes the wearer’s toes to remain bent upwards in a state that no force is exerted thereon or in a heel strike motion (fig. 3 shows the first assister (18) causing the supporter (14), and therefore the wearer’s toes, to remain bent upwards when there is no force exerted thereon), a space between the first frame area and the second frame area to become narrow in the mid-stance motion, and the space between the first frame area and the second frame area to become wide in the toe-off motion (col. 3 ll. 55-57 teaches “The forefoot hinge joint 18, as previously described, should be constructed to allow easy longitudinal bending of the sole at that location,” therefore the first assister is clearly capable of having a space between the first and second frame areas narrow in a midstance motion and to become wide in the toe-off motion), wherein the mounting groove and the walking assister are customized corresponding to the positions and shapes of the metatarsophalangeal joint and toes for each individual (the mounting groove and walking assistor could clearly be customized to the position and shape off the wearer’s joints and toes. Examiner notes that the shoe of Hunt could clearly be the custom fit for at least one wearer).
Examiner notes that the limitation “wherein the mounting groove and the walking assister are customized corresponding to the positions and shapes of the metatarsophalangeal joint and toes for each individual” is being treated as a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case, this data could clearly be taken and integrated into the process of manufacturing the sole of Hunt, as Hunt does not teach away from positioning the structures in any minutely different manner that would allow the sole to be custom created.
Hunt does not teach wherein the walking assister is configured as a torsion spring to generate elasticity in a lengthwise direction of the supporter.
Attention is drawn to Norton et al. which teaches an analogous article of footwear. Norton et al. teaches a sole structure comprising: a supporter (16) configured to support the foot (fig. 2 shows the supported (16) configured to support the foot); and a walking assister (25) mounted to a mounting groove (22) of the supporter configured to be adjacent to a metatarsophalangeal joint of the foot (annotated fig. 2 shows the walking assistor (25) configured to be adjacent to a metatarsophalangeal joint) and configured as a torsion spring to generate elasticity in a lengthwise direction of the supporter (col. 1 ll. 25-55, “The domes have mechanical spring like action in each recess, deflecting under forces transmitted through the cellular foam cushion, temporarily storing energy and rebounding after the impact force is removed,” therein the walking assistor is clearly formed as a torsion spring), wherein the walking assister is compressed in a mid-stance motion of the wearer, and restored in a toe-off motion of the wearer (col. 1 ll. 25-55, “The domes have mechanical spring like action in each recess, deflecting under forces transmitted through the cellular foam cushion, temporarily storing energy and rebounding after the impact force is removed,” wherein the walking assistor would clearly compress under the forces transferred mid-stance and be restored/rebound when the forces are removed during toe-off), and the walking assister comprises a first frame area (see annotated Fig.) disposed adjacent to a front region of the mounting groove, a second frame area (see annotated Fig.) disposed adjacent to a back region of the mounting groove, and an elastic area (see annotated Fig.) connecting top portions of the first and second frame areas and generating elasticity between the first and second frame areas (annotated fig. 3 shows the first and second frame areas and the elastic area connecting the two, where the elastic area could clearly generate elasticity between the frame areas), wherein the walking assister comprises a first assister (see annotated Fig.) configured to be disposed frontward with respect to the metatarsophalangeal joint, a second assister (see annotated Fig.) configured to be disposed backward with respect to the metatarsophalangeal joint (annotated fig. 1 shows the first and second assisters configured to be disposed forward and backward to the metatarsophalangeal joint, respectively).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hunt to include the teachings of Norton et al. such that the walking assistor is configured as a torsion spring to generate elasticity in a lengthwise direction of the supporter so as to increase the cushioning effect of the midsole (col. 1 ll. 52-58, “The domes have mechanical spring like action in each recess, deflecting under forces transmitted through the cellular foam cushion, temporarily storing energy and rebounding after the impact force is removed. The net cushioning effect is the combined result of compression of the cushion material and deflection of the domes of resilient material.”), especially as Hunt teaches the walking assister having some bending and restorative forces, but does not explicitly teach the supporter being a spring (Hunt col. 3 ll. 55-57, “The forefoot hinge joint 18, as previously described, should be constructed to allow easy longitudinal bending of the sole at that location”).
Regarding Claim 6, Hunt teaches all of the limitations of the footwear of Claim 1, as discussed in the rejections above. Hunt further teaches wherein the second assister (30) provides elasticity to a back region of the supporter (14) (fig. 3 shows the second assister (30) being provided in the back region of the supporter, and as col. 3 ll. 51-53 teaches “Hinge joint 30 is received in groove 34 and relieves longitudinal sole stiffness between the heel and the shank,” the second assister (30) clearly provides elasticity to a back region of the supporter).
Regarding Claim 7, Hunt teaches all of the limitations of the footwear of Claim 6, as discussed in the rejections above. Hunt further teaches wherein the second assister (30) is compressed by the wearer’s weight upon switching over from the mid-stance motion to the toe-off motion, and then provides elasticity to the back region of the supporter to assist a back of the foot in stretching (col. 3 ll. 51-53 teaches “Hinge joint 30 is received in groove 34 and relieves longitudinal sole stiffness between the heel and the shank, permitting a more gentle heel landing” therein the second assister is clearly capable of being compressed by the wearer’s weight when switching from the mid-stance to the toe-off motion and then providing elasticity to the back region to assist a back of the foot in stretching).
Regarding Claim 8, Hunt teaches all of the limitations of the footwear of Claim 1, as discussed in the rejections above. Hunt further teaches wherein a material of the first (18) and second (30) assisters comprises a plastic material (col. 4ll. 29-31, “it is recommended that the outer soles be molded of a strong material, such as a hard-wearing rubber or plastic,” wherein the first (18) and second (30) assisters are formed of the same material of the outer sole (16) as shown in figs. 2 and 3).
Regarding Claim 12, Hunt teaches all of the limitations of the footwear of Claim 1, as discussed in the rejections above. Hunt further teaches wherein each elastic area (see annotated Fig.) of the first and second assistors is disposed to face toward the metatarsophalangeal joint (fig. 3 shows the elastic areas of the first and second assistors being disposed to face upward, and therein towards the metatarsophalangeal joint. Examiner notes that the footwear will fit differently sized feet in different manners and an intended relative position of the elastic areas to the wearer's foot anatomy is functional and not patentably significant.).
Regarding Claim 13, Hunt teaches all of the limitations of the footwear of Claim 1, as discussed in the rejections above. Hunt does not explicitly teach wherein the mounting groove and the walking assister are customized corresponding to the positions and shapes of the metatarsophalangeal joint and toes for each individual. However, Examiner notes that this limitation is being treated as a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP § 2113). In the instant case, Hunt teaches the mounting groove (see annotated Fig.) and the walking assister (18), and therefore this limitation is considered as being met.
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Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hunt (US 4309832) in view of Ellis (US 2008/0086916).
Regarding Claim 9, Hunt teaches all of the limitations of the footwear of Claim 1, as discussed in the rejections above.
Hunt does not teach wherein a material of the first and second assisters comprises at least one of reinforced nylon, polycarbonate, and acetal resin.
Attention is drawn to Ellis, which teaches an analogous article of footwear. Ellis teaches footwear (see fig. 1C) comprising: an upper (21) surrounding a wearer’s foot (fig. 1C shows the upper (21) being sized and shaped to surround a wearer’s foot); a supporter (148) disposed below the upper and supporting the foot (fig. 1C shows the supporter (148) being disposed below the upper (21) and positioned to support a wearer’s foot); and a walking assister (149) mounted to the supporter (fig. 1C shows the walking assister (149) being positioned below to be mounted on the supporter (148)). Ellis further teaches wherein a material of the walking assisters comprises at least one of reinforced nylon, polycarbonate, and acetal resin (paragraph [0229], “Potential midsole 148 and outsole 149 materials include elastomers, rubber, and plastic, as noted above, including polymers (used singularly or in combination); examples are polyolefins, fluoropolymers, and vinyls, as well as polypropylene, polystyrene, nylon, polycarbonate and acrylics, including in the form of fibers” (emphasis added)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hunt to include the teachings of Ellis such that a material of the first and second assisters comprises at least one of reinforced nylon, polycarbonate, and acetal resin so provide a durable material for the walking assisters, preventing them from wearing too fast during use, especially as Hunt teaches the walking assisters being formed of plastic, but is silent as to the specific type of plastic (col. 4ll. 29-31 of Hunt “it is recommended that the outer soles be molded of a strong material, such as a hard-wearing rubber or plastic,” wherein the first (18) and second (30) assisters are formed of the same material of the outer sole (16) as shown in figs. 2 and 3).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 6-12 have been considered but are moot because the new ground of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations.
Regarding Claim 1, Applicant submits that Hunt does not teach the first assistor being configured to maintain the front region of the supporter in an upwardly bent state by 20-30 degrees even in an unworn state. Examiner disagrees, and submits that modified Hunt teaches the structure and elasticity of the first assister as recited in the claims and therein is capable of performing the functions of maintaining the bend angle. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (MPEP 2114). Examiner notes that Applicant has not structurally differentiated the claim limitations from the prior art of record and therefore it is not persuasive that the function is not met. For at least these reasons, the rejection of the limitations of Claim 1 is maintained over Hunt.
Conclusion
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/HALEY A SMITH/Primary Examiner, Art Unit 3732