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
The drawings are objected to because Figure 5 is very hard to make out due to line shading and there is text on the figure that needs to be removed. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because there is additional text on the sheet and the title is repeated in the abstract. 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 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.
Claim Objections
Claim 1 is objected to because of the following informalities: the limitations “that covers at least a portion of a toe side of a foot” and “that covers a heel side part of the foot” should read “that covers at least a portion of a toe side of a foot when worn” and “that covers a heel side part of the foot when worn”. Appropriate correction is required.
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, 4, 6, 8-20 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.
Regarding claims 2, 4, 6 and 8, it is unclear what applicant is requiring of the claim a ratio or the weaving pressure of different areas of the footwear. The claim uses “:” multiple times in the claims and it is unclear what would be required of the pressure of the areas to read on the limitations as claimed.
Regarding claim 6, it is unclear what is required of the wearing pressure of the ankle and upper ankle area, since the values overlap and the ration can be equal. How can the wearing pressure of the ankle area be higher than the value of the upper ankle area when the noted ranges would read as the same value with a ratio of 1:1? It is unclear what is required to read on the claim.
Regarding claim 8, it is unclear what is required of the wearing pressure of the upper ankle and shin covering portion, since the values overlap and the ratio can be equal. How can the wearing pressure of the upper ankle area be higher than the value of the shin area when the noted ranges would read as the same value with a 1:1 ratio? It is unclear what is required to read on the claim.
Regarding claims 9, 11, 13, 15, 17 and 19 it is unclear what structure and/or materials would be required to read on the limitation “for promoting falling asleep”? The claimed limitation does not appear to further define the invention. It is unclear what would or would not be needed of the footwear item to read on these claims.
Any remaining claims are rejected depending from a rejected base claim.
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) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Higgins et al. (US 11/076,974).
In regard to claim 1, Higgins et al. teaches a footwear item (10) comprising: a first foot covering portion that covers at least a portion of a toe side of a foot (see annotated figure 2 below); and a second foot covering portion that covers a heel side part of the foot and is continuous with the first foot covering portion (see annotated figure 2 below); wherein a wearing pressure of the second foot covering portion is higher than a wearing pressure of the first foot covering portion (see annotated figure 2 below and column 7, lines 2-44).
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In regard to claim 2, Higgins et al. teaches wherein the wearing pressure of the first foot covering portion (see annotated figure above): the wearing pressure of the second foot covering portion (see annotated figure above) is 9.50±0.49 hPa: 33.20±3.56 hPa (see column 7, lines 2-44 detailing the different pressure ranges of each section that reads on the ration claimed).
In regard to claim 3, Higgins et al. teaches further comprising an ankle covering portion that covers an ankle and is continuous with the second foot covering portion (see annotated figure 2 above or the ankle section can be sections 6 and 7), wherein the wearing pressure of the second foot covering portion is higher than a wearing pressure of the ankle covering portion (see annotated figure 2 above and column 7, lines 2-44).
In regard to claim 4, Higgins et al. teaches wherein the wearing pressure of the second foot covering portion (sections 3-5 in annotated figure above): the wearing pressure of the ankle covering portion (sections 6 and 7) is 33.20±3.56 hPa: 8.17±2.62 hPa (see column 7, lines 2-44, detailing the different pressure ranges in the sections that reads on the ratio claimed).
In regard to claim 5, Higgins et al. teaches further comprising: an upper ankle covering portion that covers an upper portion of an ankle and is continuous with the ankle covering portion (upper ankle portion: section 7), wherein the wearing pressure of the ankle covering portion is higher than a wearing pressure of the upper ankle covering portion (ankle portion 6 has a higher pressure than upper ankle portion 7 as detailed in annotated figure 2 above and in column 7, lines 2-44).
In regard to claim 6, Higgins et al. teaches wherein the wearing pressure of the ankle covering portion (section 6): the wearing pressure of the upper ankle covering portion (section 7) is 8.17±2.62 hPa: 5.63±0.51 hPa (see column 7, lines 2-44 detailing the different pressure ranges in the sections that reads on the ration claimed).
In regard to claims 9, 11, 13, 15, 17 and 19 Higgins et al. teaches wherein the footwear item is for promoting falling asleep (no additional structure is being required of this claim, the footwear item of Higgins et al. teaches all the claimed structure that would therefore promote falling asleep).
In regard to claim 10, 12, 14, 16, 18 and 20 Higgins et al. teaches wherein the footwear item has a cylindrical shape with openings on both sides (see figures 2, openings 11 and 12 on each end of the footwear).
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) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins et al. (US 11,076,974) in view of Messier (US 9,777,413).
Higgins et al. teaches a footwear article as described above in claims 1, 3 and 5. However, Higgins et al. fails to teach further comprising a shin covering portion that covers at least a portion of a shin and is continuous with the upper ankle covering portion, wherein the wearing pressure of the upper ankle covering portion is higher than a wearing pressure of the shin covering portion; and wherein the wearing pressure of the upper ankle covering portion: the wearing pressure of the shin covering portion is 5.63±0.51 hPa: 4.8±3.13 hPa.
In regard to claim 7, Messier teaches a compression sock wherein the sock has regions that extend over a calf of a user (see figures 2-5) further comprising a shin covering portion that covers at least a portion of a shin and is continuous with the upper ankle covering portion (see figures 2-5 different sections of sock that extend up past the knee of the user), wherein the wearing pressure of the upper ankle covering portion is higher than a wearing pressure of the shin covering portion (see figures 2-5 and column 7, lines 8-28 detailing that the pressure decreases from the foot to the leg opening, making the upper ankle section with a higher compression than the calf section).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the footwear article of Higgins et al., with the longer leg section as taught by Messier, since the footwear article of Higgins et al. provided with a longer leg section would provide a footwear article that provides decreasing pressure along a greater portion of a user’s leg from the ankle to the leg opening for proper support and circulation.
In regard to claim 8, the combined references teach the compression pressure being higher in the upper ankle than the shin portion, however, Higgins et al. and Messier fail to teach the exact wearing pressure ration of 5.63±0.51 hPa: 4.8±3.13 hPa.
It would have been obvious before the effective filing date to one having ordinary skill in the art and through routine experimentation to have determined the proper ratio of one section of a footwear article to another section of the footwear article based upon a user’s medical needs and anatomy of the leg. The ratio being 5.63±0.51 hPa: 4.8±3.13 hPa would not destroy the footwear articles of Higgins et al. and Messier, since they both require a lower compression region as the article extends up the user’s leg.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be found cited on PTO-892 form submitted herewith. The cited prior art to Rock (US 11,560,651) is of particular relevance to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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, Clinton T Ostrup can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732
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