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 .
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 4, 5, and 7 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 4 the phrase “configured such that….” attempts to define and claim the insole in reference to an undefined element, i.e a user’s heel, large toe, third toe rendering the claim vague and indefinite. It is suggested that applicant change this language to something similar to “wherein the rib extends from a center of the heel area of the insole to a location between a medial edge of the insole and a location between the medial edge and a longitudinal axis of the insole so that when used the rib would define an axis extending substantially from a center of a user’s heel to a location between an outer edge of the large toe and an inner edge of a third toe of the user”.
In claim 5 the phrase “configured such that…” attempts to define and claim the insole in reference to an undefined element, i.e a user’s heel, big toe, second toe rendering the claim vague and indefinite. It is suggested that applicant change this language to something similar to “wherein the rib extends from a center of the heel area of the insole to a location approximately half way between a medial edge of the insole and a location between the medial edge and a longitudinal axis of the insole so that when used the rib would define an axis extending substantially from a center of a user’s heel to a location between the big toe and a second toe of the user”.
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, 3, 9-12, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pedersen (2017/0006961).
Pedersen shows A system for normalizing foot motion, comprising:
a shoe including an outer sole (see abstract and paragraph [0017] which stated the orthotic device is for insertion into footwear which inherently has an outer sole); and
an insole (102) proportioned for use with said outer sole, the insole comprising an elongated rib (130) originating at a heel end of the insole and extending substantially linearly towards a forefoot end of the insole (see figures 2 and 4), said rib (130) spaced apart from lateral edges of the insole (see figure 4),
wherein the rib (130) is flared at the heel end of the insole (see figures 2 and 10), such that the rib is wider at the heel end than at the forefoot end of the insole (see figures 2 and 10) as claimed.
In reference to claim 3, Pedersen shows An insertable insole (102) for use with footwear (see abstract and paragraph [0017]), comprising:
an elongated rib (130) originating at a heel end of the insole and extending substantially
linearly towards a forefoot end of the insole, said rib spaced apart from lateral edges of the
insole (see figures 2 and 4),
wherein the rib is flared at the heel end of the insole (see figures 2 and 10), such that the rib is wider at the heel end than at the forefoot end of the insole (see figures 2 and 10) as claimed.
In reference to claims 9, 10, the insole of Pedersen is considered a partial insole and shaped as shown in the figures as claimed.
In reference to claims 11 and 12, the insole of Pedersen is considered to be a substrate.
In reference to claim 14, element 136 may be considered to be a rib as claimed.
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) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedersen in view of Schwartz (2019/0373985).
Pedersen shows an insole substantially as claimed except for a fabric covering. Schwartz teaches providing a fabric covering (65) over a substrate (50) and rib (10). It would have been obvious to provide a fabric covering as taught by Schwartz in the insole of Pedersen to provide a softer and more comfortable insole.
Allowable Subject Matter
Claims 4, 5, and 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The Examiner has provided language which would overcome the 112 rejections above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-5, 7, and 9-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
After updating a search for the new independent claims the Examiner has found the attached references which read on the claims. It is noted that there is allowable subject matter as noted above.
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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Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/Primary Examiner, Art Unit 3732