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 9 is objected to because of the following informalities:
Claim 9, “is adjusted” (line 4) should be deleted.
Appropriate correction is required.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Pursuant to the 2019 Revised Patent Subject Matter Eligibility Guidance (MPEP 2106), the following analysis is made:
Under step 1 of the Guidance, the claims fall within a statutory category.
Under step 2A, prong 1, claims 1, 13, and 14 recite an abstract idea of “calculate design data of the insole based on the data received by the input (i.e., first data, second data)” (mathematical concept).
The mere nominal recitation of a generic processor does not take the claim limitation out of the abstract idea (MPEP 2106.04(a)(2) (III)).
Under step 2A, prong 2, the claim limitations are not integrated into a practical application (MPEP 2106.04(d)(I)).
An input configured to receive an input of data and an output configured to output the design data calculated by the processing circuitry are directed to insignificant extra solution activities (see MPEP 2106.05(g)).
Under step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
An input configured to receive an input of data and an output configured to output the design data calculated by the processing circuitry are well-understood, routine, and conventional elements known in the industry (see MPEP 2106.05(d)).
The remaining dependent claims do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea.
Claims 4 is directed to a conventional insignificant extra solution activity of data gathering.
Claims 2, 3, and 5-12 are directed to an abstract idea/data.
Accordingly, claim 1 and its dependent claims 2-12 and claims 13 and 14 are patent ineligible under 35 USC 101.
Claim 14 is drawn to a "recording medium". The broadest reasonable interpretation of a claim drawn to a recording medium covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent (see MPEP 2111.01). Because the broadest reasonable interpretation covers a signal per se, a rejection under 35 USC 101 is appropriate as covering non-statutory subject matter. See 351 OG 212, Feb 23 2010.
The Examiner suggests that Applicant amends the claims as follows: insert -- non-transitory – before “recording medium".
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.
Claims 1, 2, 4, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arayama et al. (US 2015/0006119).
Regarding claims 1, 13, and 14, Arayama et al. discloses an insole designing apparatus and method (Fig. 3) for use in designing an insole of footwear (paragraph 0018), the insole designing apparatus comprising:
an input (input of 58) configured to receive an input of data (input from 52, 54, Fig. 3);
a processing circuitry (58) configured to calculate design data of the insole
based on the data received by the input (Fig. 3); and
an output (60) configured to output the design data calculated by the processing circuitry (58) (Fig. 3),
wherein the data received by the input at least includes first data associated with foot shape of a user (data from foot 52) and second data associated with an inside of the footwear (a design parameter input unit 54 that, with respect to the shape of a specific portion of the surface of an insole, Abstract, lines 6-8; the insole is in accordance with the dimensions and shape of the inside of the shoe, paragraph 0047, lines 13-16),
the processing circuitry is configured to calculate the design data based on the first data and the second data (Abstract, lines 13-17; Fig. 3).
Regarding claim 14, Arayama et al. further discloses a recording medium (70) having a program recorded thereon (paragraph 0039, lines 1-3) for use in an insole designing apparatus (50, Fig. 3; paragraph 0039, lines1-3) that designs an insole of footwear, the insole designing apparatus (50, Fig. 3) including:
an input (input of 58) configured to receive an input of data (input from 52, 54 to 58, Fig. 3);
the processing circuitry (58) configured to calculate design data of the insole based on the data received by the input (Fig. 3), the program being executable by the processing circuitry (paragraph 0039, lines 1-3).
Regarding claim 2, Arayama et al. discloses
the second data includes data of a portion in which the inside of the footwear and the insole are in contact with each other (insole to be placed inside the shoe, paragraph 0047, lines 13-16), and
the processing circuitry is configured to calculate the design data of a contour of the insole in contact with the inside of the footwear (paragraph 0047, lines 13-16) based on the second data (54, Abstract, lines 6-8).
Regarding claim 4, Arayama et al. discloses
a storage (54) in which the second data is storable (Fig. 3) in association with product information of the footwear (the insole information is inputted in accordance with the dimensions and shape of the inside of the shoe, paragraph 0047, lines 13-16),
wherein the processing circuitry (58) is configured to read the second data from the storage (54) based on the product information of the footwear received by the input (54 receives design parameters, Abstract, line 6).
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 applied reference to Sakiyama et al. (US 2024/0065385) has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Claims 3 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Arayama et al. in view of Sakiyama et al. (US 2024/0065385).
Regarding claim 3, Arayama et al. does not disclose the second data includes data obtained by scanning or capturing an image of the inside of the footwear mounted with the insole and data of a scanned shape or an image-captured shape of the insole of the footwear.
Sakiyama et al. discloses a second data includes data obtained by scanning or capturing an image (via 2) of the inside of the footwear (Fig. 1) mounted with the sock liner (paragraph 0034, lines 1-2; Fig. 1) and data of a scanned shape or an image-captured shape of the sock liner of the footwear (Fig. 1). It is noted that the insole, while different from the sock liner, is closely related to the sock liner.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with data of a scanned inside of the footwear and data of a scanned shape or an image-captured shape of the insole of the footwear as disclosed by Sakiyama et al. for the purpose of designing an insole of the footwear, since the insole of the footwear is closely related to the sock liner of the footwear.
Regarding claim 5, Arayama et al. does not disclose when a size of the footwear received by the input differs from a size of the footwear in the second data stored in the storage, the processing circuitry is configured to adjust the size of the footwear in the second data.
Sakiyama et al. discloses when a size of the footwear received by the input (subject’s data, S207, Fig. 16) differs from a size of the footwear in the second data stored in the storage (second sample data, S207, Fig. 16), the processing circuitry is configured to adjust the size of the footwear in the second data (S207).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with adjusting the size of the footwear as disclosed by Sakiyama et al. for the purpose of obtaining an optimum footwear data.
Regarding claim 6, Arayama et al. discloses the input (Fig. 3) is further configured to receive:
a first property parameter indicating properties required of the footwear by the user (insole data is in accordance with dimensions and shape of the shoe, paragraph 0047, lines 13-16, e.g., insole length, width, shape, paragraph 0046, lines 8-9); and
a second property parameter indicating properties of the footwear selected by the user (design parameters, e.g., peak height, peak position, arch length, paragraph 0048, lines 3-4).
Arayama et al. does not disclose the processing circuitry is configured to adjust the design data based on a difference between the first property parameter and the second property parameter.
Sakiyama et al. discloses a processing circuitry is configured to adjust the design data based on a difference between the first property parameter (footwear functions) and the second property parameter (footwear data) received by the input (Abstract, lines 10-12).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with adjusting the design data as disclosed by Sakiyama et al. for the purpose of obtaining an optimum design data.
Regarding claim 7, Arayama et al. discloses the first property parameter and the second property parameter include at least one of: arch support (arch length, paragraph 0048, line 4).
It is noted that the first property parameter and the second property parameter include at least one of: cushioning performance; stability; grip; bendability; fit; durability; breathability; lightness in weight; repulsion; support against rapid moves and turns are alternative limitations because they are recited in the alternative form..
Regarding claim 8, Arayama et al. discloses the design data includes at least one of: thickness in each portion (insole thickness, paragraph 0046, line 8).
It is noted that the design data includes at least one of: material; structure; cup height in each portion; scale ratio of the insole; arch position; and bottom surface shape are alternative limitations.
Regarding claim 9, Arayama et al. does not disclose the processing circuitry is configured to adjust the design data, so that the second property parameter having a differential value to the first property parameter, the differential value being greater than or equal to a predetermined value, is adjusted to have a value close to the first property parameter.
Sakiyama et al. discloses a processing circuitry is configured to adjust the design data (S107), so that the second property parameter having a differential value to the first property parameter, the differential value being greater than or equal to a predetermined value (S106), is adjusted to have a value close to the first property parameter (so there is no difference between footwear functions/data, S108).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with adjusting the design data as disclosed by Sakiyama et al. for the purpose of obtaining an optimum design data.
Regarding claim 10, Arayama et al. does not disclose the processing circuitry is configured to adjust the design data, so that the second property parameter has a value greater than or equal to the first property parameter selected by the user.
Sakiyama et al. discloses the processing circuitry is configured to adjust the design data (S107), so that the second property parameter has a value greater than or equal to the first property parameter selected by the user (S106).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with adjusting the design data as disclosed by Sakiyama et al. for the purpose of obtaining an optimum design data.
Regarding claim 11, Arayama et al. does not disclose the processing circuitry is configured to predict a foot shape of the user in an unloaded state from the first data to calculate the design data of the insole based on the foot shape predicted earlier.
Sakiyama et al. discloses a processing circuitry is configured to predict a foot shape of the user in an unloaded state from the first data (S204) to calculate the design data of the sock liner based on the foot shape predicted earlier (paragraph 0133). It is noted that the insole, while different from the sock liner, is closely related to the sock liner.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with predicting a foot shape of the user as disclosed by Sakiyama et al. for the purpose of calculating the design data of the insole, since the insole of the footwear is closely related to the sock liner of the footwear.
Regarding claim 12, Arayama et al. does not disclose the design data is data associated with the insole including a three-dimensional mesh structure.
Sakiyama et al. discloses a design data is data associated with the insole including a three-dimensional mesh structure (Fig. 8; paragraph 0016).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Arayama et al. with a three-dimensional mesh structure as disclosed by Sakiyama et al. for the purpose of calculating the design data of the insole, since the insole of the footwear is closely related to the sock liner of the footwear.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Nghiem whose telephone number is (571) 272-2277. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Schechter can be reached at (571) 272-2302. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 August 15, 2026
Prosecution Insights