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 .
Election/Restrictions
Applicant’s election without traverse of Group I, species A, subspecies 1 in the reply filed on 1/7/26 is acknowledged.
Claim 21 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/7/26.
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 31 and 34 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.
In claim 31 the phrase “is removable” and in claim 34 the phrase “can be removed…” are confusing, vague, and indefinite. The specification does not use the term “removable” and therefore it is not clear what features or means or structure applicant is referring to or intending to encompass with such language. Also, it is not clear from what element the component is removable from.
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.
Claim(s) 1, 2, 5-8, 10-14, 17-19, and 31-34 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Galiano (2018/0027921).
Galiano shows An insole (figures 6 and 7) comprising one or more cavities (40), wherein said
one or more cavities comprise a component capable of a physiochemical reaction (phase change materials (41) discussed in paragraphs [0002], [0045], and throughout the specification) as claimed.
In reference to claims 2, 5, 6, 32, and 33, elements 13 and 14 are considered a support structure and has apertures (14) and paragraph [0097] which inherently is configured to allow oxygen through inasmuch as applicant has defined such.
In reference to claims 7 and 8, the microcapsules inherently have spaces between the microcapsules and these spaces inherently insulate the cavity at least to some degree inasmuch as applicant has claimed.
In reference to claim 10, the microcapsules inherently are a volume less than the volume of the cavity.
In reference to claims 11-14, see PCM described throughout the specification and discussed in paragraphs [0004]-[0011] and [0020]-[0025].
In reference to claim 17, element 3 is considered to be a physical inhibitor in that is physically inhibits the microcapsules from moving.
In reference to claim 18, see paragraph [0004] which discusses the “catalyst” inasmuch as applicant has claimed such.
In reference to claim 19, see figures 6 and 7 which show an insole as claimed.
In reference to claims 31 and 34, the insole of Galiano is considered to be “removable” inasmuch as applicant has shown, claimed and described such.
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(s) 1-8, 10-15, 17-19, and 31-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Issler (2007/0051018) in view of Pearce (2019/0075884) or Galiano.
Issler shows an insole (60) comprising one or more cavities (shown in figures at 62, 64, and 66), wherein said one or more cavities comprise a component (72, 74, 76) therein which is selected upon the type of cushioning, strength, rigidity, or environment in which the shoe is used (see paragraphs [0042], [0048], and [0056]) and/or density, volume, weight, texture, consistency, etc (see claim 2) substantially as claimed except for the exact filler. Issler does suggests the desire for the insole to have materials
capable of a physiochemical reaction (phase change materials discussed in paragraphs [0062] last sentence and [0074]). Pearce teaches using a filler (105/402) which comprises a phase change gel (see paragraph [0036]) for use in a chamber in an insole (404). Galiano teaches using a filler (41) comprising a phase change material (discussed in paragraphs [0002], [0045], and throughout the specification). It would have been obvious to use the phase change filler materials taught by Pearce or Galiano for the filler in the insole of Issler to provide cushioning benefits, desired responses to pressure, as well as cooling.
In reference to claims 2-4, see Issler support structures (90, 91, 93).
In reference to claim 5, see Issler the motion of the support structures is considered capable of initiating the reaction inasmuch as applicant has defined and claimed such.
In reference to claim 6, Issler teaches air permeable materials for the support structure (which includes the outer chamber materials, see paragraph [0051]).
In reference to claims 7-9, see Issler elements 106, 110, 50 can be considered “spaces” inasmuch as applicant has claimed and defined such.
In reference to claim 10, in Issler the volume of the cavity is inherently greater than that of the component in order for the component to fit into the cavity.
In reference to claims 11-14 and 18, see Pearce paragraph [0036] and Galiano paragraphs [0004]-[0011] and [0020]-[0025].
In reference to claim 17, Issler elements 90, 91, 93 are considered to be physical inhibitors.
In reference to claim 19, see figure 3 of Issler.
In reference to claims 31-34, the “component” of Issler is considered “removable” inasmuch as applicant has disclosed and claimed such.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galiano in view of
Sawyer (2011/0155141).
Galiano shows an insole substantially as claimed except for the exact filler. Sawyer teaches the use of an iron oxidation mixture (see paragraph [0058]) for use as a filler in wearable articles. It would have been obvious to use an iron oxidation mixture as taught by Sawyer in the insole of Galiano to provide an exothermic reaction and to provide support during impact.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galiano in view of Hartmann (2010/0015430).
Galiano shows an insole substantially as claimed except for the exact filler. Hartman teaches the use of a saline solution (see paragraph [0024]) for use as a filler in wearable articles. It would have been obvious to use a saline solution as taught by Hartmann in the insole of Galiano to provide an endothermic reaction and to provide greater thermal regulation properties.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 10-19, and 31-34 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/MARIE D BAYS/Primary Examiner, Art Unit 3732
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