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 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 2-9, 11-13, and 18-23 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.
In claims 1 and 20 the phrases “base layer is coupled to a mid portion” and “the base layer and the mid portion are configured to be…” and reference to a mid portion in claims 22 and 23 are confusing, vague, and indefinite because it is not clear where or what “mid portion” is being referred to, a mid portion of what element is being referred to?
Claim Rejections - 35 USC § 102
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.
Claim(s) 2-4, 7, 9, 11-13, and 19-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Montoscuro (2814132).
Montoscuro shows A multi-layer orthotic system to provide orthotic support, comprising:
a base layer (11 and 21) having a distal end and a proximal heel end;
an upper layer (14 or 14’) above and coupled to the base layer, the upper layer having:
a rear portion configured as a rear spring area to provide suspension to a heel of a foot to
decelerate heel strike during a gait cycle (see figures 2 or 4); and
an arch portion to support an arch area of the foot (see figures),
wherein one of the base layer or the upper layer comprises a front portion to support a
forefoot or ball of the foot (10/21),
wherein the arch and rear portions of the upper layer are suspended over the base layer to
create a spring section (see figures 2 or 3), wherein the base layer is coupled to a mid portion to form the spring section (at 18 and 19 or 29 and 30 which are at the “mid portion” (central longitudinally)), and wherein at least a portion of the base layer and the mid portion are configured be coplanar when compressed and non-coplanar when not compressed (see element 11 and the lower portion of the upper layer formed by 15, 13, 22, or 23) as claimed.
In reference to claim 3, see figure 2 which is considered bi-layer.
In reference to claim 4, see figure 4 which is considered to be tri-layer.
In reference to claim 7, see column 1 lines 23-41 and figures.
In reference to claims 9 and 11, element 13 is considered to be a “shim” inasmuch as applicant has defined and claimed such.
In reference to claims 12 and 13, see figures 1 and 3.
In reference to claim 19, see figures 1 and 2.
In reference to claim 20, Montoscuro shows A method of providing orthotic support, comprising:
coupling an upper layer (14 or 14’) to a base layer (11 and 21), the base layer having a distal end and a proximal heel end and the upper layer positioned above the base layer, wherein the base layer is coupled to a mid portion to form a spring section, and wherein at least a portion of the base layer and the mid portion are configured be coplanar when compressed and non-coplanar when not compressed (see figures 2 and 4);
suspending arch and rear portions of the upper layer over the base layer to create a rear
spring section and a mid-spring section to decelerate heel strike during a gait cycle (see figures 2 and 4); and
supporting a forefoot or ball of the foot using a front portion of one of the base layer or the
upper layer (see 10 or 21) as claimed.
In reference to claim 21, element 13 is considered to be a “shim” inasmuch as applicant has defined and claimed such.
In reference to claim 22, Montoscuro shows “mechanical fasteners” (18 and 19 or 30 and 29).
In reference to claim 23, the layers are considered to be integral as they form one piece.
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montoscuro in view of King (2011/0009982).
Montoscuro shows an orthotic system substantially as claimed except for terminating the orthotic at the location of a base of user’s toes. King teaches the well known and obvious alternative termination of an orthotic at a base of a user’s toes (see figure 4F). It would have been obvious as taught by King and as is well known and conventional to terminate the orthotic at the location of a base of user’s toes in the system of Montoscuro to reduce weight and cost and to increase flexibility.
Allowable Subject Matter
Claims 5, 6, and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 2-9, 11-13, and 18-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/Primary Examiner, Art Unit 3732