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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on 7/6/2025 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/6/2025.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “800”,”801”,”802”,”803”,”804” and “805” has been used to designate both different structure (see figures 5A-5B and figure 8; for example “801” is used to represent an orthotic insole in figure 8 and a heel counter in figures 5A-5B. Also, “403” has not been shown in figure 3 (see ¶0058). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: See figure 6B: i.e. reference characters: 600,602,604 and 605. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Figure 4A-4B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
Claims 1-13 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 pre-AIA the applicant regards as the invention.
In claim 1, the phrase “having modifications from the customer foot impression data based on known properties of the non-customer specific last” is vague, unclear and indefinite. It is not clear what “modification” and “known properties” applicant is talking about. Claim 2 defines the “known properties” but doesn’t indicate on how they are modified.
In claim 1, the phrase “lasting the shoe based on the known properties of the non-customer specific last and the customer-specific orthotic to yield a women's shoe” is vague, unclear and indefinite. It is not clear what “known properties” applicant is talking about. Claim 2 is an example of “known properties” being defined.
In claim 2, “the length”, “the width” and “the depth” lack proper antecedent basis and are therefore indefinite.
In claim 3, “the forefoot width”, “the midfoot width” and the “heelcup width” lack proper antecedent basis and are therefore indefinite.
In claims 4-5, “the depth” lack proper antecedent basis and are therefore indefinite.
In claim 7, “the proprietary last” lack proper antecedent basis and are therefore indefinite. Moreover, in claim 1, it recites “lasting of the shoe” and therefore it should be clarified that this “proprietary last” is doing this step as claimed. Otherwise, there would appear to be a double recitation of the last if not amended correctly.
In claims 6-11 below the examiner “boldfaced” the terms that lack proper antecedent basis and are therefore indefinite.
6. (Original) The method of Claim 1, wherein the modifications include at least one of: preparing the length of the orthotic to be about 65% of the customer impression length; preparing the forefoot width of the orthotic to be about 80% of the customer impression forefoot width; and preparing the heel cup width to be about 93% of the customer impression heel cup width.
7. (Original) The method of Claim 6, wherein the proprietary last has: a length of about 107% of the customer impression length; a forefoot width of about 103% of the customer impression forefoot width; and a heel cup width of about 95% of the customer impression heel cup width.
8. (Original) The method of Claim 1, wherein the midfoot width of the orthotic is reduced by about 14.5% compared to the customer impression data, and wherein reducing the heel cup height of the orthotic is reduced by about 53% compared to the customer impression data.
9. (Original) The method of Claim 1, wherein the known properties of the non- customer specific last include the width of the last.
10. (Original) The method of Claim 4 wherein the depth of the orthotic is about 5 - 7 mm.
11. (Original) The method of Claim 10, wherein the last is prepared having a depth portion across the footbed at least equal to the depth of the orthotic.
In claim 11, it is not clear if “the last” was in reference to the “proprietary last” or the “non-customer specific last”. If it is the proprietary last then there is not antecedent basis.
In claim 12, “the depth of the orthotic” lacks proper antecedent basis.
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 1-13, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0270212 (Oshima et al) in view of US 2017/0318900 (Charlesworth).
Regarding claims 1-13, Oshima discloses a method of manufacturing a shoe having a customer-specific fit from a non-customer specific last (at least see ¶0036,0105,0106,0116) which teaches modifying an existing last (SM) to produce a “modified shoe last”) , the shoe being configured to receive a customer-specific orthotic (at least see ¶0048 which teaches a foot orthosis for correcting the shape of the sole), the method comprising the steps of:
receiving customer foot data (at least see figures 9,11 and corresponding description);
producing a custom orthotic (Measured Insole (MIS) and/or virtual insole (VIS)) from the customer foot data having modifications from the customer foot data based on known properties of the non-customer specific last (at least see figures 6,8,13 and 19, the “insole” represents the orthotic and at least ¶0105,0106,0116,0237,0239,0262-0263,0273,0274,0293); see existing shoe last (SM) – see figure 3,5 which is modified to obtain new custom last (see figure 28 and see figure 36, specifically S1015 – “Produce shoes using modified shoe lasts”)); and
lasting the shoe based on the known properties of the non-customer specific last and the customer-specific orthotic to yield a women's shoe having a customer-specific fit configured to receive a customer-specific orthotic (at least see ¶0116 and flow chart in figure 36 showing the entire concept including S1015 “Produce shoes using modified shoe lasts).
Oshima lacks teaching the customer foot data is obtained by an impression to produce the custom insole (i.e. orthotic).
Charlesworth teaches a custom made orthotic which the customer’s data is obtained from the customers’ foot impression; see ¶0078, lines 9-12.
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 the method of manufacturing a women’s shoe as taught by Oshima with the customer’s foot data is obtained by an impression to produce the custom orthotic, as taught by Charlesworth, to provide a more economical means of collecting the customer’s foot data.
Regarding claims 2-6 and 9-12, at least see ¶0106,0237-0239 of Oshima.
Regarding claims 7-8, Oshima doesn’t provide the specific percentages and measurements as claimed but it would appear to be an obvious design choice for the user and/or a skilled professional (see ¶0002,0003,0336) to modify an existing last (SM) to obtain the proprietary last (i.e. “modified shoe last”) with the percentages and measurements as claimed inasmuch as a number of different sizes would appear to be suitable depending on the individual wearer and the activity for be used for. That is, these parameters are recognized in the art to be a variable that is result effective. Generally, it is considered to have been obvious to develop workable or even optimum ranges for such variables. For example, see In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Since the applicant has not demonstrated or even alleged that these specifically claimed parameters for the pivoting spine produces unexpected results, it is our conclusion that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum percentages and thereby arrive at the specific variables claimed by the applicant.
Regarding claim 13 (i.e. ballet style flat) and claim 1 (i.e. the preamble of claim 1, “a women’s shoe”), the method as taught above is for making a shoe but doesn’t specifically list all the types of shoe’s and more specifically list a women’s shoe or a ballet style flat. However, the shoe which is manufactured by the method as taught above can inherently be used by a women and inherently be used as a ballet style flat.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556