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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure is objected to because the recitation, “The invention relates to…” is improper for US patent abstract practice. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-12 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation: “the textile outer chamber has an upper membrane (2) and a lower membrane (3) which are connected to one another by a lateral membrane (4) and by a plurality of partitions (5),…”, and the claim also recites “which are preferably sewn together,…”; which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The broadest reasonable interpretation of this recitation for this examination is: that the “the textile outer chamber has an upper membrane (2) and a lower membrane (3) which are connected to one another by a lateral membrane (4) and by a plurality of partitions (5),…”.
Also claim 3 recites the broad recitation “comprises reinforcements”, and the claim also recites ‘in particular reinforcements made of rigid or semi-rigid materials’, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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(s) 1-5, 8, and 9 is/are rejected under 35 U.S.C. 102a(1) as being anticipated by US 5118555 (Horovitz).
Regarding claim 1, ‘555 discloses: a dual chamber [10, fig.1] for the absorption of a heterogeneous pressure increase following an impact or a step [element 10 is capable of absorbing a heterogeneous pressure increase following an impact or a step; further this is a statement of intended use in the preamble of the claim having no patentable weight which is addressed by the examiner only for completeness], comprising a textile outer chamber [outer layers 12 + 14 and outer layers of 18 formed from fabric/textile form an ‘outer chamber’] and an inflatable inner chamber [24, fig. 1], wherein the textile outer chamber has an upper membrane [12, fig. 1] and a lower membrane [14, fig. 1] which are connected to one another by a lateral membrane [outer surface layers of 18; fig. 1] and by a plurality of partitions [inner layers of 18], which are preferably sewn together, the partitions [any of the inner layers of 18] being positioned such that the textile outer chamber is forced to assume an angular shape during the inflation of the inner chamber [the shape shown in fig. 1 is defined by the partitions; and show an “angular shape”, a rectangle having a shape and having angles].
As noted above, in the 112 rejection, the broader limitation, “connected to one another by a lateral membrane and by a plurality of partitions”, is the interpretation used by the examiner for the attachment rather than the more specific limitation, “preferably sewn together”.
Further, the limitation “preferably sewn together” is a product by process limitation.
The MPEP 2113 is clear:
II. ONCE A PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS FOUND AND A PRIOR ART REJECTION IS MADE, THE BURDEN SHIFTS TO THE APPLICANT TO SHOW AN NONOBVIOUS DIFFERENCE
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be “essentially free of alkali metal.” The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not “essentially free of alkali metal” and therefore a different and nonobvious product.).
III. A REJECTION BASED ALTERNATIVELY ON 35 U.S.C. 102 OR 103 FOR PRODUCT-BY-PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS
“[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Figs. 1 and 5 both show attachment of the upper, lower, lateral, and intermediate membranes to each other to form the dual chamber.
Further, par. 3 explicitly states, “…conventional processes (and equipment therefor) such as weaving and knitting can be employed to form the intimate interlaced unified structure 10 of the present invention.”.
Since all claimed structure is disclosed and even further, known ‘conventional processes’ are also disclosed the prior art is substantially identical to the claimed limitations therefore the burden is shifted to applicant to show a materially different result arising from claimed sewing of the layers than the attachment disclosed by ‘555.
Regarding claim 2, ‘555 discloses: the textile outer chamber furthermore has an intermediate membrane [embodiment in fig. 5 includes a middle/intermediate membrane] extending substantially parallel to the upper membrane [see annotated fig. 5 below] and lower membrane [see annotated fig. 5 below], said intermediate membrane being connected to the upper membrane and lower membrane by the lateral membrane [see annotated fig. 5 below].
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Regarding claim 3, ‘555 discloses: the textile outer chamber comprises reinforcements, in particular reinforcements made of rigid or semi-rigid materials [par. 9 Description of preferred embodiments states, “The structure (first and second layers and partitions) is then impregnated with a thermosetting resinous substance 32 to form a composite layer of the resin and strand material indicated respectively by the numerals 12R, 16R and 18R in FIG. 3. A suitable thermosetting resin can, for example, be an epoxy resin.”; set epoxy is a rigid/semi-rigid material that does ‘reinforce’ the fabric of layers 12, 14 and outer layers of 18.].
Regarding claim 4, ‘555 discloses: the inflatable inner chamber [24, elastomer, par. 4, figs.1 and 2] is made of a single deformable material [24, elastomer par. 4].
Regarding claim 5, ‘555 discloses: the dual chamber [10, fig.1] comprises a plurality of inflatable inner chambers [24, figs. 1-3], each inner chamber being capable of being inflated independently of the other inner chambers, to a distinct pressure level [par. 9 states, “Each end of the tubular members is sealed as shown at 26 to form a single cell fluid-impermeable member 24.”; each member 24 is therefore functionally capable of being independently inflated to distinct pressure levels].
Regarding claim 8, ‘555 discloses: the distribution of the plurality of partitions (5) is asymmetrical [both figs. 6b and 6c show partitions that are asymmetric in respect to their lengths in fig. 6b and their positional orientations in fig. 6c.].
Regarding claim 9, ‘555 discloses: the inflatable inner chamber is attached to the textile outer chamber at a plurality of points [fig.3, shows inflatable chamber walls 28 expanded under pressure creating outward pressure on the walls 28 so that they are “attached” through the outward mechanical pressure on walls 28 to the textile outer chamber layers 12 and 14 at numerous points of attachment; further there would be some adhesion of the chamber walls 28 outer upper, outer lower and outer lateral surfaces to the textile chamber during the resin curing process in fig.4 and par. 13].
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.
Claim(s) 6, 7, and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5118555 (Horovitz) in view of US 5846063 (Lakic).
Regarding claims 6, 7, and 10-12, ‘555 does disclose a dual chamber as noted above that is inflated by gas, per claims 6 and 7; and is functionally capable of absorbing an increase in pressure caused by any impact, per claim 11, including a step, per claim 10; and/or protection of an object from an impact or friction, per claim 12.
Regarding claims 6 and 7, ’555 does not teach a connection network as required in claims 6 and 7.
However, ‘063 is referenced as it does teach an inflatable lining/cushioning structure that does include: a connection network arranged in the inflatable inner chamber [air pump 50; flapper valve 56; flexible tubes 48, 70; pressure control valve 58; check valve 68; all are components of a “connection network” in the liner chamber] and designed to displace air and pressure volumes in the inner chamber when the lining/cushioning structure experiences dynamic motion [par. 28 states, “It is a further additional objective of this invention to provide air circulation channels and apertures in the aforementioned inner sole and/or upper lining whereby normal walking activities will force air circulation through the inner sole and footwear.”]; per claim 6 and the connection network comprises one or more mechanical gas control elements such as check valves, flow regulators, pressure regulators or pressure relief valves [air pump 50; flapper valve 56; flexible tubes 48, 70; pressure control valve 58; check valve 68; all are components of a “connection network” in the liner chamber]; per claim 7.
Therefore it would have been obvious to one of ordinary skill in the art prior to filing the invention to modify the cushioning structure of ‘555 to the inflatable lining structure as taught by ‘063 to enhance the cushioning effects of an inflatable cushioning structure to allow air circulation and pressure adjustment between the channels of the cushioning structure during normal walking activities.
Regarding claim 10-12, ‘555 does not teach the specific intended uses stated in the preamble of claims 10-12. In one respect, the intended use statements in the preamble of claims have no patentable weight. In that aspect, claims 10-12 are fully disclosed.
For full clarity on claims 10-12, ‘063 is referenced as it explicitly teaches, “It is an objective of this invention to provide an inflatable lining for apparel and protective gear such as gloves, shoes, seats, helmets and shields or splints with an integral air pump for pressurization [par. 17].”.
Therefore it would have been obvious to one of ordinary skill in the art prior to filing the invention to modify the cushioning structure of ‘555 to the inflatable lining structure as taught by ‘063 to be used in various types of apparel and protective gear, including helmets, per claim 11 and 12, and shoe soles, per claim 10; to provide those items with improved cushioning characteristics to those items using an inflatable cushioning structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Numerous devices that use inflatable cushioning linings are attached to instant PTO-892.
US 4999932 discloses shoe soles with variable inflatable cushioning structure.
US 5074765 discloses an air pump system for elastomeric inflatable chambers.
US 5315715 discloses a headwear device with deformable inflated chambers.
US 54066661 discloses a cushioning bladder and air pump system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H MUROMOTO JR whose telephone number is (571)272-4991. The examiner can normally be reached M-Th 730-1730.
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, Alissa Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H MUROMOTO JR/Primary Examiner, Art Unit 3732
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