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 .
Election/Restrictions
Applicant’s election without traverse of Species A in the reply filed on 1/14/2026 is acknowledged.
Applicant indicates claims 1-5, 10-14 and 18 as reading on the elected Species A. It is noted that claims 10-11 are dependent on claim 8 which was not elected. Therefore, claims 10-11 are being withdrawn. Claim 12 recites “an orthotic body… comprising a pair of heel arms… wherein the insert is secured to the heel arms” which are features from the non-elected embodiment of Species B (see Figures 10-13 having heel arms (27). Therefore, claims 12-14 and 18 are also not drawn toward the elected invention and are therefore being withdrawn.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/14/2026.
Claims 1-20 are currently pending, of which claims 1-5 are currently being examined.
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.
Claim 1-5 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.
Claim 1 recites “a compression insert having a heel surface and collapsible scaffold matrix”. It is unclear if the claim is requiring a compression insert, wherein the compression insert has a heel surface and a collapsible scaffold matrix, or if the claim requires two elements (1. a compression insert that has a heel surface and 2. a collapsible scaffold matrix). For purposes of examination, it is being interpreted as a compression insert, wherein the compression insert has both a heel surface and a collapsible scaffold matrix.
Claim 4 recites the limitation "the calcaneus" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “cantilevered” in claim 5 is used by the claim to mean interconnected series of supports while the accepted meaning is “a projecting beam or member supported at only one end” (see definition of cantilevered at Merriam-Webster.com). The “cantilevered” supports disclosed by applicant are shown and disclosed as being connected on both ends to each other (see Figures 1 and 4) whereas “cantilevered” typically has one free end. Therefore, the term is indefinite because the specification does not clearly redefine or clearly set forth what is meant by the term.
Claims 2-3 are rejected due to their dependency.
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 4 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 4 recites “said heel surface is positioned below the calcaneus of a user” which positively recites the human body. It is suggested that applicant use “configured to” or similar language to obviate the rejection.
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.
Claim 1-2 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al (US 6,497,057 B1).
Regarding claim 1, Lee discloses a compression orthotic device (Figure 4) comprising: an orthotic body (106) having a toe portion (left side of 106 in Figure 4), a mid-foot portion (middle of 106 in Figure 4) and a heel portion (104; Figures 3-4); a heel aperture (300) positioned at the heel portion (Figure 4); a compression insert (cushion 204 compresses to absorb energy Col. 3, lines 1-8; Abstract) having a heel surface (lower of the two sheets that sandwich the honeycomb cells, Col. 2, lines 42-46; lower sheet surface of 204 is in contact with the heel 104) and collapsible scaffold matrix (hexagonal cells of honeycomb structure 204) configured to compresses in response to an externally applied force (Col. 2, lines 42-46; Col. 3, lines 1-8), wherein the insert is secured to the heel portion of the orthotic body such that the collapsible scaffold matrix extends through the heel aperture (see Figure 4 where honeycomb structure extends through cavity 300).
Regarding claim 2, Lee discloses wherein said heel surface is secured to a channel (500) positioned adjacent to the heel aperture (Figure 4).
Regarding claim 4, Lee discloses wherein said heel surface (lower of the two sheets that sandwich the honeycomb cells, Col. 2, lines 42-46; lower sheet surface of 204 is in contact with the heel 104) is positioned below the calcaneus of a user (Figure 4).
Regarding claim 5, as best can be understood Lee discloses wherein said collapsible scaffold matrix comprises a plurality of interconnected series of cantilevered supports (see interconnected diagonal support arms of hexagonal cells of honeycomb structure 204; the arms of honeycomb cells interconnect to support pad 202 and thus as best can be understood are considered to be a series of cantilevered supports; Figures 2 and 4) that are configured to be compressed in response to an externally applied force (depressing honey-comb cushion 204 which compresses to absorb energy, Col. 3, lines 1-8).
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over by Lee et al (US 6,497,057 B1) in view of Brown (US 6,601,320 B1).
Regarding claim 3, Lee discloses that as applied above wherein the heel surface (lower of the two sheets that sandwich the honeycomb cells, Col. 2, lines 42-46; lower sheet surface of 204 is in contact with the heel 104) is secured to a channel (500; Figure 4) positioned adjacent to the heel aperture (Figure 4). Lee does not disclosed it is attached by adhesive. Brown teaches a similar orthotic assembly wherein a heel surface of a compression insert (130) is secured by adhesive to stabilize and prevent shifting (134, Col. 12, lines 1-7 and 28-30). It would have been obvious to one of ordinary skill in the art at the time of filing to provide the compression insert and heel surface of Lee secured by adhesive, as taught by Brown, to stabilize and prevent shifting (Brown, Col. 12, lines 28-30).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kari Rodriquez whose telephone number is 571-270-1909. The examiner can normally be reached Monday-Friday 6-3 EST.
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/KARI K RODRIQUEZ/Primary Patent Examiner, Art Unit 3786