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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
Wording in Line 5. Replacing “on the sole toward the longitudinal direction” with “on the sole in the longitudinal direction” is suggested.
Wording in Line 13. Replacing “blocking direction away from the sole” with “blocking direction projecting vertically away from the sole” is suggested.
Appropriate correction is required.
Claim 5 is objected to because of the following informality: Wording in Line 3. Replacing “plurality of blocking flanges are of different numbers” with “plurality of blocking flanges are of different quantities” is suggested. Appropriate correction is required.
Claim 6 is objected to because of the following informality: Wording in Line 1. Replacing “top end” with “top circumferential surface” is suggested. Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wrike (US 5803466 A). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 1, Wrike teaches a roller skate [Wrike Fig. 1] including: a boot including a body portion and a sole, the sole having a longitudinal direction and including two receptacles arranged in interval in the longitudinal direction [Wrike Figs. 2-4, Boot Body Portion: Reference Character 12; Boot Sole: combination of Reference Characters 22, 24, 30, and 40; Sole Receptacles: Reference Characters 36 (typ) and 46 (46); Wrike Paragraph 7: “the toe plate includes two pair of spaced apart flanges, designated 32a, 32b and 32a', 32b', respectively, which extend downwardly from a lower face 33. Each of the flange pairs 32 defines a cavity 36 therebetween.”; Wrike Paragraph 8: “the heel plate 40 also includes two pair of spaced apart flanges, designated 42a, 42b, and 42a', 42b', respectively, which extend downwardly from its lower face 43 to define a cavity therebetween 46”]. It should be noted that while Wrike’s sole consists of multiple components, it would have been obvious to one with ordinary skill, in the art before the effective filing date of the invention, to modify the sole components of Wrike to be of a unitary construction, as a matter of obvious design choice. Applicant should note that it has been held that forming in one piece an article which has formerly been formed in two or more pieces and put together involves only routine skill in the art. See, e.g., In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) and “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” (MPEP2144.04(V).
Wrike further teaches that each of the two receptacles including a wall and at least one slot open on the sole toward the longitudinal direction, the wall defining at least one opening of the at least one slot [Wrike Figs. 3 and 4, Walls: Reference Characters 32b, 32b', 42b, and 42b'; Slot: space formed by Reference Characters 33, 32b, and 32b']; a roller assembly including a frame and a plurality of rollers disposed on the frame [Wrike Fig. 1, Frame: Reference Character 14; Roller: Reference Character 16 (typ); Wrike Paragraph 15: “The frame 14 is constructed by attaching the upper portion 51, 52 of a sidewall 50a, 50b to the opposing inner faces of the flanges 32a, 32b, 42a, 42b. The bolts 60 are inserted through aligned openings 46a, 46b, 46a', and 46b, in the flange pairs 32, 42 and the sidewalls 50a, 50b, respectively.”], the frame including two insertion portions arranged in interval in the longitudinal direction, the two insertion portions being respectively insertable in and detachable from the two receptacles in the longitudinal direction, each of the two insertion portions being blocked by the wall of one of the two receptacles in a blocking direction away from the sole [Wrike Fig. 2, Reference Characters 51 (typ) and 52 (typ); Wrike Paragraph 15: “FIGS. 2 and 5 best illustrate the sidewalls 50a, 50b. The front and rear upper portions 51, 52 of the sidewalls 50a, 50b are configured to be received into the cavities formed by the flange pairs 32, 42 of the toe or heel plates 30, 40.”]; and a plurality of fasteners securing the frame to the sole [Wrike Fig. 2, Reference Character 60 (typ); Wrike Paragraph 15: “A plurality of fasteners 60 secure the sidewall 50a positioned in the cavity 36.”].
Claims 2-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wrike (US 5803466 A) in view of Chiasson (CA 2181212 C). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 2, Wrike teaches a roller skate including a sole and frame but does not teach blocking flanges and engaging flanges. Chiasson teaches the roller skate of claim 1, wherein the sole further has a width direction, the wall includes a plurality of blocking flanges arranged in interval in the width direction and extending in the width direction, each of the two insertion portions includes a plurality of engaging flanges arranged in interval in the width direction and extending in the width direction, and the plurality of engaging flanges are inserted in the at least one slot and blocked by the plurality of blocking flanges in the blocking direction [Chiasson Figs. 2 and 7, Blocking Flanges: Reference Character 16; Engaging Flanges: horizontal surfaces on the top of Reference Character 48]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, blocking flanges and engaging flanges in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this would have achieved the desirable result of facilitating installation/removal of the frame and lowering the skater’s center of gravity, as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”]. It should be noted that using blocking flanges in conjunction with engaging flanges would not necessitate substantial modification of Wrike’s invention and would not change its principle of operation. Further, the use of this feature is common in the art [Cheatham (US 6042124 A): Figs. 1 and 2; Jogyeok (KR 200326938 Y1): Fig. 2; Hsu (US 6247708 B1): Fig. 1]. In each cited prior art invention, the claimed arrangement facilitates installation/removal of the frame to/from the sole, as would be recognized by a person having ordinary skill in the art. Applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Regarding Claim 3, Wrike teaches a roller skate including a sole and frame but does not teach blocking flanges including at least one perforation. Chiasson teaches the roller skate of claim 2, wherein each of the plurality of blocking flanges includes at least one perforation disposed therethrough in the blocking direction, and each of the plurality of fasteners is disposed through one of the plurality of engaging flanges and one of the at least one perforation and connected to the sole [Chiasson Page 8, Lines 23-24: “Frame 14 for supporting the wheels is secured to the attachment plates 16 and 18 in any convenient manner such as mechanical fasteners [not shown] or adhesive.”]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, a perforations in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this, in conjunction with the flanges, would have achieved the desirable result of facilitating lowering the skater’s center of gravity as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”]. It should be noted that the use of perforations in conjunction with blocking flanges and engaging flanges is common in the art [Cheatham (US 6042124 A): Figs. 1 and 2; Jogyeok (KR 200326938 Y1): Fig. 2; Hsu (US 6247708 B1): Fig. 1]. The arrangement presented in the prior art would facilitate installation/removal of the frame. It should be further noted that applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Regarding Claim 4, Wrike teaches a roller skate including a sole and frame but does not teach blocking flanges including at least one perforation on a lateral side. Chiasson teaches the roller skate of claim 3, wherein the at least one perforation is open on a lateral side of at least one of the plurality of blocking flanges in the width direction [Chiasson Fig. 2, Blocking Flanges: Reference Character 16; Engaging Flanges: horizontal surfaces on the top of Reference Character 48; Slot: Reference Character 38; Chiasson Page 8, Lines 23-24: “Frame 14 for supporting the wheels is secured to the attachment plates 16 and 18 in any convenient manner such as mechanical fasteners [not shown] or adhesive.”]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, perforations in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this would have achieved the desirable result of facilitating lowering the skater’s center of gravity, as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”]. It should be noted that the use of perforations in blocking flanges and engaging flanges is known in the art [Jogyeok (KR 200326938 Y1): Fig. 2; Hsu (US 6247708 B1): Fig. 1]. The arrangement presented in the prior art would facilitate installation/removal of the frame. It should be further noted that applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Regarding Claim 5, Wrike teaches a roller skate including a frame that is secured to a sole using fasteners but does not teach different quantities of perforations. Wrike teaches the roller skate of claim 3, wherein the at least one perforation of one of the plurality of blocking flanges and the at least one perforation of another one of the plurality of blocking flanges are disposed offset in the longitudinal direction relative to each other but does not explicitly teach non-identical quantities of perforations on the flanges. Applicant’s stated motivations for including additional perforations/fasteners on one flange, i.e., providing greater structural strength, better stability, and favorable force transmission, are acknowledged but are regarded as expected outcomes applicable in any similar flange-to-flange systems, as would be recognized by a person having ordinary skill in the art before the effective filing date of the claimed invention. Accordingly, featuring additional perforations/fasteners on one flange is regarded as a rearrangement of parts, without any new or unexpected results, and is thus regarded as an obvious engineering design choice. It should be noted that the rearranging of parts of an invention involves only routine skill in the art (In re Japikse, 86 USPQ 70).
Regarding Claim 6, Wrike teaches a roller skate including a plurality of rollers but does not teach at least one roller being higher than the bottom surface of an engaging flange. Chiasson teaches the roller skate of claim 1, wherein a top end of at least one of the plurality of rollers is higher than all bottom surfaces of the plurality of engaging flanges [Chiasson Figs. 1, 2, and 7, wheel Reference Character 22]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, raised top circumferential surfaces in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this would have achieved the desirable result of facilitating lowering the skater’s center of gravity, as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”].
Regarding Claim 7, Wrike teaches a roller skate including a sole but does not teach a groove. Chiasson teaches the roller skate of claim 1, wherein the sole further includes at least one groove, and at least one of the plurality of rollers is partially within the at least one groove and located between two sides of the sole [Chiasson Figs. 2 and 7; Reference Characters 22, 30, and 38]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, a groove in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this would have achieved the desirable result of facilitating lowering the skater’s center of gravity, as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”].
Regarding Claim 8, Wrike teaches a roller skate including a sole but does not teach a groove. Chiasson teaches the roller skate of claim 7, wherein one of the at least one groove is disposed through the sole [Chiasson Figs. 1, 2 and 7; Reference Characters 30 and 38]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, a groove disposed through the sole in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this would have achieved the desirable result of facilitating lowering the skater’s center of gravity, as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”].
Regarding Claim 9, Wrike teaches a roller skate including a sole but does not teach a groove. Chiasson teaches the roller skate of claim 7, wherein in the longitudinal direction, one of the at least one groove between the two receptacles has a length larger than a radius of each of the plurality of rollers [Chiasson Fig. 7, Reference Character 38]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of Wrike to include, with a reasonable expectation of success, a groove length larger than a wheel radius in view of Chiasson. A person having ordinary skill in the art would have been motivated to combine Wrike and Chiasson because this would have achieved the desirable result of effectively raising the wheel thereby facilitating lowering the skater’s center of gravity, as recognized by Chiasson [Chiasson Page 2, Lines 5-7: “The present invention relates to skates; particularly in-line roller skates designed to lower the centre of gravity of the skater by bringing the wheels closer to the plantar surface of the skater's foot.”; Page 3, Lines 10-12: “It has been recognised that the closer the skater's centre of gravity is to the skating surface, the more stable the skater will be and the more control he will have over his motion”]. It should be noted that while Chiasson does not explicitly indicate groove length or wheel radius, the relative dimensions of the claimed invention can be seen, by inspection of Chiasson Fig. 7, to be on the order of those of Chiasson. It should be further noted that applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wrike (US 5803466 A) in view of Chiasson (CA 2181212 C) and further in view of Chang (US 6572120 B2). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 10, the combination of Wrike and Chiasson teaches a roller skate including blocking flanges but does not teach protrusions. Chang teaches the roller skate of claim 2, wherein the wall of one of the two receptacles further includes a protrusion between two of the plurality of blocking flanges, and one of the two insertion portions is blocked by the protrusion in the longitudinal direction [Chang Fig. 1, Protrusion: unnumbered protrusion extending vertically between walls Reference Character 23 at forwardmost and rearmost ends of the respective front and back blocking flanges respectively; Chang “Detailed Description of the Invention” Paragraph 3: “The sole 1 comprises two cavities 11 having an opening defined therein and an upper side 12 mounted a sole-pad 22 between two cavities 11. The bases 21 are mounted in the associated cavity 11, which can functionally stow, extract and lock the wheel assembly 3”]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the roller skate of the combination of Wrike and Chiasson to include, with a reasonable expectation of success, a protrusion in view of Chang. While Chang does not explicitly provide a motivation for including a protrusion, such feature would provide a mating surface for the Blocking Flange and Engaging Flange and thereby increase the stability of the Blocking Flange/Engagement Flange interface, would prevent forward/rearward movement of the engaging flange, and would increase rigidity of the receptacle, as would be recognized by a person having ordinary skill in the art. It should be noted that applying a known technique to a known device, method, or product ready for improvement to yield predictable results is likely to be obvious. (See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007); see MPEP § 2143, D.).
Regarding Claim 11, the combination of Wrike and Chiasson teaches a roller skate including blocking flanges but does not teach inclined protrusions. Chang teaches the roller skate of claim 10, wherein the protrusion includes an inclined surface, the inclined surface extends in the width direction and is inclined to the blocking direction, and the engaging flange of one of the two insertion portions includes an inclined surface abutted against the inclined surface of the protrusion [Chang Fig. 1, Protrusion: unnumbered protrusion extending vertically between walls Reference Character 23 at forwardmost and rearmost ends of the respective front and back blocking flanges respectively]. Applicant’s stated motivations for including an inclined surface, i.e., facilitating assembly and making the Blocking Flanges and Engaging Flanges press more firmly against each other, are acknowledged but are regarded as expected outcomes applicable in any similar inclined surface, as would be recognized by a person having ordinary skill in the art before the effective filing date of the claimed invention. Accordingly, featuring an inclined surface is a change in form or shape, without any new or unexpected results, and is thus regarded as an obvious engineering design choice. See In re Dailey, 149 USPQ 47 (CCPA 1966) (see also MPEP § 2144.04).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL T WALSH whose telephone number is 303-297-4351. The examiner can normally be reached Monday-Friday 9:00 am - 5:30 pm ET.
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/MICHAEL T. WALSH/Examiner, Art Unit 3613