DETAILED ACTION
Application Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is in response to Applicant’s submission dated 09/05/2024. Claim(s) 17–36 are pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “steam generator” in claim 17, which has been interpreted to mean “a heater combined with a water tank to generate steam.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 22–26 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 15–24 of co-pending Application No. 18/834879 to Kim et al (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claim limitations of claims 22–26 are present in the reference application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 22–26 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 17–24 of co-pending Application No. 18/727988 to Kim et al (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claim limitations of claims 22–26 are present in the reference application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 22–26 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.
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 “stroke” in claims 22–26 is used by the claims to mean “step,” while the accepted meaning is “a single complete movement, especially one continuously repeated in some process;” or, as it relates to machinery, “one of a series of alternating continuous movements of something back and forth over or through the same line.” The term is indefinite because the specification does not clearly redefine the term. It appears that use of the term “stroke” may be a mistranslation. Appropriate action is necessary.
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.
Claims 17–18 & 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2022/0313061 to Kim et al (hereinafter, “Kim ‘061”).
With regard to claim 17, Kim ‘061 discloses a shoe care device (1) comprising: an inner cabinet (30) having an accommodation space configured to accommodate a shoe (Fig. 2; ¶ 0056); a connection path (71) defining a flow path through which air from the accommodation space is introduced thereinto and then discharged therefrom to the accommodation space (Fig. 3; ¶ 0087); a nozzle duct (50, 70) defining an air passage (Fig. 3; ¶¶ 0086–0087), the nozzle duct (50, 70) having an upper discharge port (106) that opens upward (Fig. 3; ¶ 0117), the nozzle duct (50, 70) further having a first end connected to the inner cabinet (30) and a second end spaced from the first end (Fig. 3; ¶¶ 0056, 0063–0064); a nozzle (50) coupled to the second end of the nozzle duct (50, 70) (Fig. 3; ¶¶ 0056, 0063–0064, 0089–0090), the nozzle (50) being configured to be inserted into the shoe (Fig. 3; ¶¶ 0056, 0063–0064, 0089–0090), the nozzle (50) having a lower discharge port (52a) that opens downward to spray air into the shoe (Fig. 3; ¶¶ 0056, 0063–0064, 0089–0090); a blower (44) located in the connection path (71) (Fig. 3; ¶¶ 0072–0074, 0078), the blower (44) being configured to move air along the connection path (71) (Fig. 3; ¶¶ 0072–0074, 0078); a dehumidifier (43) located in the connection path (71) (Fig. 3; ¶¶ 0069–0072, 0074, 0078), the dehumidifier (43) being configured to dehumidify the air in the connection path (71) (Fig. 3; ¶¶ 0069–0072, 0074, 0078); and a steam generator (not shown) configured to supply steam to the inner cabinet (30) through the upper discharge port (106) of the nozzle duct (50, 70) and the lower discharge port (52a) of the nozzle (50) (¶¶ 0075–0078).
With regard to claim 18, Kim ‘061 further discloses a dry air duct defining a portion of the connection path (71) (Fig. 3; ¶ 0087), the dry air duct being configured to guide air passing through the dehumidifier (43) to the nozzle duct (50) (Fig. 3; ¶ 0072), wherein the steam generator (not shown) is configured to supply steam to a portion of the dry air duct (¶¶ 0075–0078).
With regard to claim 21, Kim ‘061 further discloses a heater (47) located in the connection path (71) (Fig. 1; ¶ 0069), the heater (47) being configured to heat air (Fig. 1; ¶ 0069); and a regeneration path branching from the connection path (Fig. 1; ¶¶ 0069, 0081), the regeneration path being configured to move the air therein heated by the heater (47) (Fig. 1; ¶¶ 0069, 0081).
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 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.
Claims 19–20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘061 in view of US 2009/0223076 to Kim (hereinafter, “Kim ‘076).
With regard to claim 19, Kim ‘061 fails to disclose a steam separator located between the steam generator and the dry air duct, the steam separator being configured to remove condensed water in the steam, the steam separator including a separating connection port; and a steam connection pipe interconnecting a portion of the dry air duct and the separating connection port to discharge steam inside the steam separator. Kim ‘076 teaches a steam separator (12) located after the steam generator (11) (Fig. 1; ¶¶ 0020, 0043), the steam separator (12) being configured to remove condensed water in the steam (Fig. 1; ¶¶ 0020, 0043), the steam separator (12) including a separating connection port (Fig. 1; ¶¶ 0020, 0043); and a steam connection pipe interconnecting a portion of the dry air duct and the separating connection port to discharge steam inside the steam separator (12) (Fig. 1; ¶¶ 0020, 0043). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the shoe care device of Kim ‘061 with the steam/water separator of Kim ‘076 because such a combination would have had the added benefit of capturing liquid water which would provide moisture to the shoe, which would leave the shoes wet.
With regard to claim 20, Kim ‘061 as combined with Kim ‘076 further discloses the dry air duct is connected to the steam connection pipe above the steam separator (Kim: ‘061: Fig. 3; ¶ 0087; Kim ‘076: Fig. 1; ¶¶ 0020, 0043; steam separated before being used for its intended purpose).
Claims 22 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘061 in view of US 2022/0192465 to Lee et al (hereinafter, “Lee ‘465).
With regard to claim 22, Kim fails to disclose a controller configured to selectively control: a drying stroke in which air is moved along the connection path to dry the accommodation space; a regeneration stroke in which air is moved and heated along the regeneration path to regenerate the dehumidifier; and a steam stroke in which steam is supplied by the steam generator to the inner cabinet. Lee (‘465) teaches a controller (80) configured to selectively control: a drying stroke in which air is moved along the connection path to dry the accommodation space (¶¶ 0536–0538); a regeneration stroke in which air is moved and heated along the regeneration path to regenerate the dehumidifier (¶¶0536–0538); and a steam stroke in which steam is supplied by the steam generator to the inner cabinet (¶¶ 0551– 0552). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the shoe care device of Kim with the regeneration and steam steps of Lee (‘465) because such a combination would have had the added benefit of improving the ability of the dehumidifier to remove moisture from the drying air and provide steam for sanitization and deodorization.
With regard to claim 24, Kim as already combined with Lee (‘465) further discloses a module housing defining a portion of the connection path (F10) (¶¶ 0109–0110), the module housing being configured to accommodate the blower (220), the dehumidifier (400), and the heater therein (710) (¶¶ 0109–0110), the module housing including: a dry air outlet (42) connected to the dry air duct (¶ 0172); a humid air outlet connected to the regeneration path (F20 (¶ 0146); and a damper (510) located in the module housing (¶ 0110), the damper (510) being configured to selectively shield the dry air outlet and the humid air outlet (¶¶ 0110, 0210).
Claims 27–31 & 36 are rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘061 in view of KR 2023/0026120 to Lee et al (hereinafter, “Lee ‘120; citations directed to attached machine translation).
With regard to claim 27, Kim ’061 fails to disclose the nozzle comprises: a nozzle body hinge-coupled to the second end of the nozzle duct; and a nozzle protrusion protruding downward from the nozzle body, the nozzle protrusion having the lower discharge port at an end of the nozzle protrusion. Lee (‘120) teaches a nozzle comprised of: a nozzle body (560) hinge-coupled to the second end of the nozzle duct (540) (Fig. 3a; ¶ 0404); and a nozzle protrusion (570) protruding downward from the nozzle body (560) (Fig. 3a; ¶¶ 0420–0421), the nozzle protrusion (570) having the lower discharge port at an end of the nozzle protrusion (570) (Fig. 3a). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the shoe drying apparatus of Kim with the hinged nozzle of Lee (‘120) because such a combination would have had the added benefit of being able to be manipulated into the best location for drying a shoe.
With regard to claim 28, Kim fails to disclose the nozzle duct protrudes forwardly from a rear wall of the inner cabinet. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the nozzle duct protrude forwardly from a rear wall of the inner cabinet instead of a side wall, since to shift the location of parts of a device involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
With regard to claim 29, Kim fails to disclose the lower discharge port includes a discharge sloped wall having a height that decreases from a front side to a rear side of the inner cabinet. However, Kim, as modified by claim 28 above, would have disclose the lower discharge port (52a) includes a discharge sloped wall having a height that decreases from a front side to a rear side of the inner cabinet (Figs. 3 & 5; if nozzle was protruding from back wall, height of the discharge port would slope downward from front to back).
With regard to claim 30, Kim further discloses the lower discharge port (52a) further includes a discharge through hole in a portion of the discharge sloped wall (Figs. 3 & 5).
With regard to claim 31, Kim fails to disclose the first end of the nozzle duct is coupled to the inner cabinet by extending through the rear wall of the inner cabinet. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the first end of the nozzle duct be coupled to the inner cabinet by extending through the rear wall of the inner cabinet, since to shift the location of parts of a device involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
With regard to claim 36, Kim ‘061 fails to disclose the first end of the nozzle duct is hinged-connected to a rear wall of the inner cabinet. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the first end of the nozzle duct be hinged-connected to a rear wall of the inner cabinet, since to shift the location of parts of a device involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Claims 32–33 are rejected under 35 U.S.C. 103 as being unpatentable over Kim ‘061 in view of Lee ‘120, and further in view of Official Notice.
With regard to claim 32, Kim ‘061 fails to disclose a nozzle sealing part surrounding an outer peripheral surface of the nozzle duct, the nozzle sealing part being located at the rear wall of the inner cabinet. It is old and well-known in the art to use seals to prevent leakage around penetrations (such as burners or air conduits) into cavities (such as ovens, kilns, drying chambers, etc.) using silicone seals (typically O-rings). As such, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the shoe care device of Kim ‘061 with a silicone seal known in the art because such a combination would have had the added benefit of preventing leakage of the drying air.
With regard to claim 33, Kim ‘061 as previously combined with Official Notice further discloses the nozzle sealing part is made of a heat-resistant material (seals are made of silicone, which is heat-resistant).
Allowable Subject Matter
Claims 23 & 25–26 would be allowable if rewritten to overcome the provisional rejections under 35 U.S.C. 101 (Obvious-type Double Patenting), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 34–35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see PTO-892 attached. Applicant is encouraged to review the cited references prior to submitting a response to this office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J LAUX whose telephone number is (571)270-7619. The examiner can normally be reached 8:30-5:30 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached at (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J LAUX/Primary Examiner, Art Unit 3762
August 24, 2026
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