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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the Figures have various instances the number “8” crossed out in pen and replaced with 10 (this should be replaced to be clean), Figures 9-10 should be proper line drawings with clean reference numbers. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
Claim 1 objected to because of the following informalities:
“a first ankle portion including a first ankle indentation shaped and positioned to receive a medial malleolus of a user when the protective boot is worn” should be - a first ankle portion including a first ankle indentation configured to receive a medial malleolus of a user when the protective boot is worn- (configured language covers “shaped” and “positioned” while also clearly avoiding any potential 101 problems)
“a second ankle portion including a second ankle indentation shaped and positioned to receive a lateral malleolus of the user when the protective boot is worn” should be - a second ankle portion including a second ankle indentation configured to receive a lateral malleolus of the user when the protective boot is worn- (configured language covers “shaped” and “positioned” while also clearly avoiding any potential 101 problems)
“a plantar portion including a heel indentation, the heel indentation shaped and positioned to receive a heel of the user when the protective boot is worn” should be -a plantar portion including a heel indentation, the heel indentation configured to receive a heel of the user when the protective boot is worn- (configured language covers “shaped” and “positioned” while also clearly avoiding any potential 101 problems)
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.
Claim(s) 1, 4-15, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 20210030114 A1) in view of McCormick (US 20030233062 A1).
Regarding claim 1, Brown discloses a protective boot (100) for shielding and promoting the healing of a foot of a user, the protective boot (100) (Figures 1-5, device 100 is used along with an AFO thus promoting the healing of a foot of a user, and surrounds a foot thus providing shielding) comprising:
an insert (104) (Figures 1-5) including:
a first ankle portion (See Annotated Figures 1-2) including a first ankle indentation (first-118, [0044] recess 118 thus being a first ankle indentation) shaped and positioned to receive a medial malleolus of a user when the protective boot is worn (See Annotated Figure 1-2, wherein first-118 is at a position of a medial malleolus when worn on a right foot, thus being positioned, and is capable of receiving a portion of a user’s malleolus, thus being shaped);
a second ankle portion (See Annotated Figures 1-2) including a second ankle indentation (second-118, [0044] recess 118 thus being a second ankle indentation) shaped and positioned to receive a lateral malleolus of the user when the protective boot is worn (See Annotated Figure 1-2, wherein second-118 is at a position of a lateral malleolus when worn on a right foot, thus being positioned, and is capable of receiving a portion of a user’s malleolus, thus being shaped); and
a plantar portion (See Annotated Figures 1-2) including a heel indentation (heel-118, [0044] recess 118 thus being heel indentation, the indentation 118 being at a location of where a heel may sit), the heel indentation shaped and positioned to receive a heel of the user when the protective boot is worn (See Annotated Figure 1-2, wherein heel-118 is at a position of a heel when worn on a right foot, thus being positioned, and is capable of receiving a portion of a user’s heel, thus being shaped).
PNG
media_image1.png
647
956
media_image1.png
Greyscale
Brown does not disclose a cover conforming to and enclosing the insert, the cover including: an opening shaped to receive the insert; and a fastener assembly for securing the protective boot around the foot of the user.
Brown does disclose being utilized with an AFO, wherein the AFOs may be of differing shapes and sizes (ankle foot orthotic 101 [0032])
However, McCormick teaches an AFO (title, ankle brace) comprising an analogous insert (stays 15 being inserts into the AFO; Figures 1-5, [0006, 0032], analogous in also being durable material that match with the first and second ankle portions of Brown for being capable of providing support structure to the sides of an ankle when worn by a user) and a cover 10 (ankle brace 10) conforming to and enclosing the insert 15 ([0032] stays 15 enclosed in pockets of the cover 10), the cover 10 including: an opening (pockets) shaped to receive the insert 15 ([0032] stays 15 go into formed pockets, wherein pockets are an opening of space thus being shaped to receive the insert 15); and a fastener assembly for securing the protective boot around the foot of the user (Figure 1 and 9, there are a set of straps that are able to secure the protective boot to the user).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided the cover 10 of McCormick to the insert 102 of Brown through the substitution of analogous stays 15 of McCormick with the insert 102 of Brown in order to provide a further improved AFO comfortability when in use with footwear (McCormick [0007], see further Brown [0007] that is also towards enabling better AFO use with a shoe, thus this combination providing an even further improved usability of footwear and AFO). Examiner further notes that McCormick discloses the stays/inserts 15 may be shaped to the user’s leg, ankle, and foot anatomy in accordance with the shape of Brown (McCormick [0034]).
Regarding claim 4, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses a plurality of protrusions 120 formed completely through a thickness of the insert 102 at the first ankle indentation (first-118) and at the second ankle indentation (second – 118) (See Annotated Figures 1-2, and see Figures 1-5 and [0044], wherein the indentations 118 further form a plurality of protrusions 120 that extend from the exterior of the insert 102, wherein the protrusions 120 are formed from the indentations 118 extending through a thickness of the insert 102).
Regarding claim 5, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses the insert 102 has a unitary structure (Brown [0038]).
Regarding claim 6, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses the insert 102 includes at least two distinct portions (Brown [0038], heel portion 104 and ankle portion 106 are distinct labeled portions of the insert 102).
Regarding claim 7, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses wherein, when unworn, the insert 102 has a substantially planar shape (Figure 1 and 5, the bottom wall 110 is shown to be a flat and thus planar surface, thus the insert 102 has a portion being a substantially planar shape when unworn).
Regarding claim 8, Brown in view of McCormick discloses the invention of claim 1 above.
Brown in view of McCormick further discloses wherein the cover 10 includes:
a first ankle cover portion corresponding to the first ankle portion of the insert 102 (See Annotated Figure 3 of McCormick),
a second ankle cover portion corresponding to the second ankle portion of the insert 102 (See Annotated Figure 3 of McCormick), and
a plantar cover portion corresponding to the plantar portion of the insert 102 (See Annotated Figure 3 of McCormick), and
wherein the fastener assembly includes an ankle fastener (14) (See Annotated Figure 3 of McCormick) configured to extend between the first ankle cover portion and the second ankle cover portion (See Annotated Figure 3 of McCormick and Figure 2 and [0031], fastener 14 extends from the first ankle portion and attaches at the other side to the second ankle portion).
As combined, Brown in view of McCormick does not explicitly disclose when the protective boot is worn by the user and the ankle fastener is engaged, the first ankle portion and the second ankle portion of the insert conform to the ankle of the user.
However, one of ordinary skill in the art would understand that the invention of Brown combined with McCormick would result in this function. McCormick teaches that the fastener 14 causes the analogous stays 15 conform to the lateral and medial malleolus of the user (Figures 1-3 and [0032-0033]) Thus the first and second ankle portions of Brown which as combined with McCormick correspond with the location and function of stays 15 of McCormick would conform to the ankle of the user. Brown further provides a Figure 15 of the insert 102 conforming to the sides of the user’s foot and ankle shape.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date that the combination of Brown and McCormick would be capable of the functionality of: when the protective boot is worn by the user and the ankle fastener is engaged, the first ankle portion and the second ankle portion of the insert conform to the ankle of the user.
PNG
media_image2.png
632
1134
media_image2.png
Greyscale
Regarding claim 9, Brown in view of McCormick discloses the invention of claim 8 above.
McCormick further teaches wherein the ankle fastener (14) (See Annotated Figure 3 of McCormick) further comprises
a hook-and-loop style fastener 14/16/19 (see [0031] hook and loop patch 16 at end of strap 14) including:
a strap 14 attached to an exterior surface of the first ankle cover portion (See Annotated Figure 3, strap 14 attached to exterior surface of the first ankle cover portion) and terminating in a first patch 16 including a first surface 16 of the hook-and-loop style fastener (see [0031] hook and loop patch 16 at end of strap 14); and
a second patch 19 including a second surface 19 of the hook-and-loop style fastener coupled to the second ankle cover portion (See Annotated Figure 3, Figure 2, and [0031] wherein portion 19 of the cover has loop material to mate with the hook material 16).
Regarding claim 10, Brown in view of McCormick discloses the invention of claim 8 above.
McCormick further teaches wherein the fastener assembly further includes a plantar fastener 13 (Annotated Figure 3, plantar portion has a fastener 13) configured such that, when the protective boot is worn by the user, the plantar fastener extends across an instep of the user (Figure 1 and [0036]).
Regarding claim 11, Brown in view of McCormick discloses the invention of claim 10 above.
McCormick further teaches wherein the plantar fastener 13 further comprises a hook-and-loop style fastener (see [0037], hook and loop fastener system) including:
a strap 13 attached to an exterior surface of the plantar portion (See Annotated Figure 3 and Figure 2) and terminating in a first patch 29 including a first surface of the hook-and-loop style fastener (Annotated Figure 3 and [0038] surface 29 is hook material); and
a second patch 19 coupled to the exterior surface of the plantar portion (See Figure 2 in view of Annotated Figure 3, wherein patch/surface 19 is coupled also to the exterior surface of the lower plantar portion), the second patch 19 including a second surface of the hook-and-loop style fastener ([0038] loop material being a second surface at stay cover 19).
Regarding claim 12, Brown in view of McCormick discloses the invention of claim 1 above.
McCormick further teaches the cover 10 is formed from a moisture-wicking material (see [0030]).
Regarding claim 13, Brown in view of McCormick discloses the invention of claim 12 above.
McCormick further teaches wherein the moisture-wicking material is one of polyester, polypropylene, nylon, micromodal rayon, and bamboo (see [0035] polyester material with moisture wicking properties).
Regarding claims 14 and 15, Brown in view of McCormick discloses the invention of claim 1 above.
McCormick further teaches wherein the cover is formed from a quick-drying material, wherein the quick-drying material is one of polyester and a polyester-cotton blend ([0035] cover is formed from polyester, further See MPEP 2112.01(I) which states “when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent”, as such as polyester in the claim is provided to have qualities of being quick-drying material, McCormick teaching polyester material for the cover also further inherently provides for the property of “quick-drying”).
Regarding claims 19, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses wherein the heel indentation (heel 118) extends through a thickness of the insert 102 such that the heel indentation forms a heel hole (See Annotated Figure 1-2 of Brown and Figures 1-5 therein, wherein as shown the hollow space of heel indentation 118 extends through a thickness of the wall 112, best seen in Figure 6, thus forming a heel hole, wherein as claimed the heel hole is not required to extend from an interior surface of the insert 102 to an exterior surface of the insert 102).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 20210030114 A1) in view of McCormick (US 20030233062 A1) in view of Iglesias (US 20160302957 A1).
Regarding claim 2, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses wherein the insert 102 is formed of silicone material (Brown [0035]).
Brown in view of McCormick does not disclose the insert is formed from a solid gel or gel-like flexible material.
However, Iglesias teaches an analogous boot (Abstract, Figure 5) having an analogous silicone that may be solid gel or gel-like flexible material (gel silicone rubber; [0112] “In some aspects of the walking boot, the first material may be a gel or silicone such as RK Rubber Silicone”) for improved shock absorption, strength, and abrasion resistance ([0012]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have chosen the silicone of Brown to be the gel silicone rubber of Iglesias in order to provide improved properties of shock absorption, strength, and abrasion resistance for a boot/foot device (Iglesias[0012]) (thus being a solid gel or gel-like flexible material).
Regarding claim 3, Brown in view of McCormick discloses the invention of claim 1 above.
Brown further discloses wherein the insert 102 is formed of silicone material (Brown [0035]).
Brown in view of McCormick does not disclose the insert is formed from a silicone rubber gel.
However, Iglesias teaches an analogous boot (Abstract, Figure 5) having an analogous silicone that may be silicone rubber gel (gel silicone rubber; [0112] “In some aspects of the walking boot, the first material may be a gel or silicone such as RK Rubber Silicone”) for improved shock absorption, strength, and abrasion resistance ([0012]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have chosen the silicone of Brown to be the silicone rubber gel of Iglesias in order to provide improved properties of shock absorption, strength, and abrasion resistance for a boot/foot device (Iglesias [0012]) (thus being a solid gel or gel-like flexible material).
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 20210030114 A1) in view of McCormick (US 20030233062 A1), in further view of Grundmann (US 20240366411 A1).
Regarding claim 16, Brown in view of McCormick discloses the invention of claim 1 above.
Brown in view of McCormick does not disclose an Achilles support protrusion extending from the heel indentation between the first ankle portion and the second ankle portion.
However, Grundmann teaches an Achilles support protrusion 1 (Figures 1A-5, Abstract) located extending away from the heel of the user when in use and between the lateral and medial sides of the ankle (Figures 3-5), wherein the Achilles support protrusion may be used with a foot orthotic and provides healing for an Achilles of a user (see [0058-0060]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided the Achilles support protrusion 1 as taught by Grundmann to be in use with the insert 102 of Brown in view of McCormick in order to improve the foot healing device of Brown in view of McCormick by further aiding the healing of Achilles tendon injury or disorder (Grundmann [0060]), wherein one of ordinary skill in the art would recognize that using the devices of Grundmann and Brown together, would result in the Achilles tendon protrusion 1 extending away from the heel indentation of Brown and be between the first and second ankle portions.
Regarding claim 17, Brown in view of McCormick and Grundmann discloses the invention of claim 16 above.
Brown in view of McCormick and Grundmann does not disclose the Achilles support protrusion is integrally formed with the insert.
However, Grundmann teaches the Achilles support protrusion may be made integral with an orthosis (Grundmann [0057]) and the MPEP provides that making integral is merely an obvious engineering choice (MPEP 2144.V.B, In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "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.")), wherein the instant application lacks any criticality towards the Achilles support protrusion being integral with the insert, as the instant application provides multiple alternative non-integral choices of construction (Instant App Para [0051]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the Achilles support protrusion 1 of Grundmann integral with the insert 102 of Brown as a matter of obvious engineering and design choice, wherein Grundmann provides being made integral with an orthosis (Grundmann [0057]).
Regarding claim 18, Brown in view of McCormick and Grundmann discloses the invention of claim 16 above.
Grundmann further teaches wherein the Achilles support protrusion 1 includes a plurality of perforations 20 (Figure 2 and [0071]) formed completely through a thickness thereof (see [0040-0043, 0071] a plurality of perforations are provided completely through a thickness of device/support protrusion 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 3584622 A (Domenico) – ankle orthotic of similar construction in regards to the cover
US 4076022 A (Walker) – heel portion with perforations
US 4841957 A (Wooten) – Achilles support protrusion in a foot brace
US 5372576 A (Hicks) – foldable planar foot brace
US 5797862 A (Lamont) – medical boot
US 5827211 A (Sellinger) – ankle, foot, heel boot
US 6308713 B1 (Coleman) – heel protection device
US 6640810 B1 (Callsen) – foot protective with inserts and cover
US 6994681 B2 (Slautterback) – orthotic liner
US 7455651 B2 (Mollica) – planar, foldable, ankle orthotic
US 8721578 B2 (Gaylord) – ankle orthotic with insert and cover
US 10092435 B2 (Heyd) – ankle orthotic with rigid unitary stay
US 9066789 B2 (Dennis) – foot boot with internal layers surrounded by a cover layer
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN S ALBERS whose telephone number is (571)272-0139. The examiner can normally be reached Monday-Friday 7:30 am to 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael Bredefeld can be reached at (571) 270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN S ALBERS/Patent Examiner, Art Unit 3786
/RACHAEL E BREDEFELD/Supervisory Patent Examiner, Art Unit 3786