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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the shoe insertion edge is in a triangular shape (claim 11); and the compressible body made of charcoal foam (claim 10) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered from the original disclosure.
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
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: In claims 7 and 10, the compressible body made of foam and the foam is made of charcoal foam, is lacking support and antecedent basis for this terminology. The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.
Claim Rejections - 35 USC § 112
Claims 7 and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The language with regard to the compressible body being a foam and a charcoal foam is not sufficiently described in the specification and the drawings, to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention. In fact, the specification do not even mention the foam and the foam being a charcoal foam. Moreover, the figures do not show this charcoal foam. It is not clear what “charcoal foam” actually is. Is this foam particles scattered throughout a body of foam? Is this an external coating of charcoal covering a foam body? This is just a couple of examples. It would conclude any matter added to clarify this would entail new matter which is not permitted.
Claims 1-17 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. Below is an example of some of the issues found but is not to be construed as a complete list due to all the defects found.
The term “sufficient” is used throughout the claims (e.g. Claim 1, line 2: “sufficient size” and this term is unclear and indefinite since this term is vague and the scope can’t be determined.
Throughout the claims, terms lack proper antecedent basis and are therefore indefinite. For example: In claim 1, line 4, “the form”; claim 1, line 8, “the toe box”.
Throughout the claims, there are double recitation of the same term. For example: “a firmness” is recited twice in claim 1, line 3 and again in claim 5, lines 1-2; an again in claim 6, lines 1-2.
The claims are full of functional language which don’t properly indicate and/or it is not clear what additional structure is being defined by this functional language.
In claim 3, “a shoe insertion edge” is not understood inasmuch as reference numeral “202” doesn’t show an edge (see figure 2A). As best understood from the rest of the disclosure the area that corresponds to “202” and “204” appear to be a smooth contoured surface on the top surface oof the inert. There is no edge as understood.
In claims 10, the language with regard to the compressible body being a charcoal is not understood. The specification do not even mention the foam and the foam being a charcoal foam. Moreover, the figures do not show this charcoal foam. It is not clear what “charcoal foam” actually is. Is this foam particles scattered throughout a body of foam? Is this an external coating of charcoal covering a foam body? This is just a couple of examples. It would conclude any matter added to clarify this would entail new matter which is not permitted.
In claim 13, the phrase “said operation shaft is extended lengthwise to fill the entirely of a footwear” is not understood. The shaft “206” appears to be permanent portion of the shoe body (200) and doesn’t extend lengthwise, at least doesn’t extend lengthwise with regard to the claimed insert.
Claim 14 is indefinite, inasmuch as applicant is defining the surface (204) by a specific toe box angle of a footwear. The toe box of the footwear is not claimed in combination and therefore it is improper to define the surface of the shoe crease remover insert with regard to the footwear. It is impossible to define the scope of this claim inasmuch as the footwear could be a number of different types, shapes, etc.
An effort have been made to identify all indefinite language with the pending claims. However, the claims are written rather narrative in form, and Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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 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) 1-6,8-9 and 12-17, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2975444 (Drew).
Regarding claims 1-6,8-9 and 12-17 Drew discloses a shoe crease remover Insert (resilient shoe tree to maintain the same shape and configuration in the instep portion of the shoe (see col. 1, lines 15-30), comprising: a compressible body of sufficient size to fit inside an article of footwear (see figures 1-7, especially figures 6-7; and at least col. 2, lines 1-6), characterized by a shape retention, a flexibility, and a firmness, wherein the shape retention allows the said compressible body to retain the form prior to any applied force needed to compress the said compressible body for insertion into footwear; wherein the flexibility allows the shape of said compressible body to be temporarily manipulated for insertion into footwear; wherein the firmness allows said compressible body to provide sufficient force to the toe box of a footwear to reduce the appearance of toe box creases while inserted into footwear without requiring external force or pressure from a user. See col. 1, lines 15-30, 58-64, col. 2, lines 1-6, 13-18 and 53-70.
The resilient shoe tree has all of the structure as claimed and it teaches most if not all of the functional language and statements of intended used found throughout all of the claims. To the extent that some of the functional language is not specifically mentioned, it is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977).
With regard to claim 2, the forward top surface has an edge which represents “a shoe insertion edge”.
With regard to claim 4, as shown in the figures the shoe tree has a sufficient curvature to be inserted in footwear.
With regard to claim 5, element (23) in figures 6-7 represent “an operation shaft”.
With regard to claims 6 and 14-15, the top surface of the shoe tree has a surface which represents “a toe box pressure application surface”. With regard to the increased angle, see figure 7, wherein the top surface has an increased angle (see the pointed line of reference numeral 10b) as compared to the shoe insertion edge at the forward top surface.
With regard to claim 8, see col. 2, lines 1-6.
With regard to claim 12, see figure 6 showing a rounded shape.
With regard to claims 16-17, the compressible body of the shoe tree is coated with a film to prevent perspiration and moisture (see col. 2, lines 8-12) and therefore eliminates moisture and reduces moisture as claimed.
Claim(s) 1-9 and 12-14, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2003/0046778 (Sicurelli).
Regarding claims 1-9 and 12-14, Sicurelli discloses a shoe crease remover Insert (resilient, compressible shoe tree to stabilize the shape of shoes in storage; as least see ¶0002,0014,0015) comprising: a compressible body of sufficient size to fit inside an article of footwear (see figures 7-8 which show shows a shoe tree very similarly shaped to applicant insert and see ¶0094 which teaches the shoe tree can have a handle not shown) characterized by a shape retention, a flexibility, and a firmness, wherein the shape retention allows the said compressible body to retain the form prior to any applied force needed to compress the said compressible body for insertion into footwear (at least see ¶0027,0028,0043 and 0091 teaching the compressible material being a foam rubber); wherein the flexibility allows the shape of said compressible body to be temporarily manipulated for insertion into footwear; wherein the firmness allows said compressible body to provide sufficient force to the toe box of a footwear to reduce the appearance of toe box creases while inserted into footwear without requiring external force or pressure from a user. At least see ¶0002,0014,0015,0027,0028,0043, 0091,0094.
The resilient shoe tree has all of the structure as claimed and it teaches most if not all of the functional language and statements of intended used found throughout all of the claims. To the extent that some of the functional language is not specifically mentioned, it is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977).
With regard to claim 2, the forward top surface of the shoe tree as shown in figures 7-8 has an edge which represents “a shoe insertion edge”.
With regard to claim 4, as shown in the figures 7-8 the shoe tree has a sufficient curvature to be inserted in footwear.
With regard to claim 5, the handle as described in ¶0094 represents “an operation shaft”.
With regard to claim 7, see foam rubber in ¶0028,0043 and 0091.
With regard to claims 6 and 14, the top surface of the shoe tree as shown in figures 7-8 has a surface which represents “a toe box pressure application surface”.
With regard to claim 8, see col. 2, lines 1-6.
With regard to claim 12, the cross sectional views of the shoe tree has a rounded shape corresponding to the rounded shape inside of the shoe.
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.
Claim 10, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Sicurelli ‘778 in view of GB 190910871 (Williamson).
Sicurelli teaches a shoe tree wherein the body is made of foam (see the rejection above) but lacks teaching the foam is a charcoal foam. However, see ¶0034 which teaches additional absorbent material can be provided to the shoe tree.
Heusen teaches a shoe tree which included granular charcoal to absorb and therefore prevent giving off occluded emanations (i.e. odors); see page 1, lines 6-38 and page 2, lines 28-32.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foam rubber body of the shoe tree as taught by Sicurelli with an absorbent such as charcoal, as taught by Heusen, to absorb odors.
Claim 11, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over either [Sicurelli ‘778 or Drew ‘444) in view of US 5950323 (Wroth).
Sicurelli and Drew both teach a shoe tree having substantially a rounded triangular shape but lack specifically teaching being triangular shaped. Wroth teaches an accessory inserted in a shoe having a triangular shape (see claim 8 and figures 1 and 4a). Moreover, figures 4b,4c and 4d teach other shapes which can be used.
It would have been an obvious matter of design choice to make the shoe trees as taught by either Sicurelli or Drew having a triangular shape, as taught by Wroth, inasmuch as a number of different shapes would be suitable to correspond to the specific shape of different styles of shoes including ladies dress shoes which are very pointed at the ends. Moreover, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Conclusion
Examiners are permitted to draft a claim considered to distinguish patentably over the art of record. However, at this point of prosecution, in view of the prior art found, the examiner doesn’t have any suggestions for allowable subject matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556