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 multilayer construction / layers including the individual layers as defined in claims 6 and 8-16 must be shown or the feature(s) canceled from the claim(s). For example, see claim 8 defining each layer as “concentric and continuous”. No new matter should be entered.
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.
The drawings are objected to because they are black and white photographs and/or grayscale drawings. Black and white photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. Photographs or photomicrograph printed on sensitized paper are acceptable as drawings, in lieu of India ink drawings, as are photographic images submitted via EFS-Web, to illustrate inventions which are incapable of being accurately or adequately depicted by India ink drawings, e.g., electrophoresis gels, blots, (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, metallurgical microstructures, textile fabrics, grain structures and, in a design patent application, ornamental effects. The photographs or photomicrographs must show the invention more clearly than they can be done by India ink drawings and otherwise comply with the rules concerning such drawings. Black and white photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). There is no requirement for a petition or petition fee, and only one set of photographs is required. See 37 CFR 1.84(b)(1). To be acceptable, such photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. If several photographs are used to make one sheet of drawings, the photographs must be contained on a single sheet.
On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is 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. In claim 8, the phrase “each of the layers is concentric and continuous, except for a suitable at least one closure mechanism” lacks sufficient details in the written disclosure. It is suggest this subject matter is deleted inasmuch as it would only entail new matter to correct.
Claims 4,6,8-16 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 pre-AIA the applicant regards as the invention.
The term “semi-rigid” in claim 4 is vague and indefinite inasmuch as the disclosure is silent with regard to the parameters such as flexural rigidity and/or modulus of elasticity of such material. Therefore, the scope of such terms can’t be determined.
In claim 8, it is not clear what applicant means by “each of the layers is concentric and continuous, except for a suitable at least one closure mechanism” and therefore the scope of the claim can’t be determined. It is suggested claim 8 is canceled inasmuch as the examiner has no suggestion on how to correct this without involving new matter.
In claim 9, the expression “a desired order” is unclear and indefinite.
In at least claims 6 and 9, applicant uses the expression “and/or” and therefore it is not clear if applicant is claiming both things on each side of this expression or whether the limitations are intended as alternatives.
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) 1-4,6,8-11,13,14,15,17,18,19,20 and 24-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2019/0289953 (Wright).
Regarding claims 1-4,6,8-11,13,14,15,17,18,19,20 and 24-25, Wright discloses a heated overshoe (10) comprising:
a. a sole portion (14),
b. an upper portion (18) sized and configured to fit over a shoe worn by a user, encompassing at least the shoe,
c. at least one closure mechanism (e.g. zipper 46 and/or drawstring closure (not labeled but shown in figure 1) provided in the upper portion to open and close at least a portion of the upper portion for donning and doffing the heated overshoe and
d. at least one heat generating device (see figure 7at least including conductive layer 66, conductive yarn 70, 122,124,136, etc. which is charged with a battery (see ¶0041 and battery 142 in figure 16) via connector 136 and wires 122,124) and provided in at least the upper portion.
Regarding claim 2, the upper portion of the upper covering the ankle and lower calf of the wearer represents a shaft portion.
Regarding claim 3, see figure 7.
Regarding claim 4, at least see figures 6 and 13 and see the last two sentences of ¶0038.
Regarding claim 6, at least see figures 10-11 and 14; and ¶0042.
Regarding claim 8, as understood, see figure 7 showing the upper being concentric (top portion is circular) and continuous throughout.
Regarding claims 9, see figures 10-11 and 14 showing the desired order of the layers.
Regarding claims 10-15 and 20, at least see figures 10-11 and ¶0042 including outer layer (54), insulating layer (62), flexible heating layer (66) and inner layer (74) and heat generating device (at least see pocket (200) which contains a battery (see ¶0041 and see battery 142 in figure 16 which .
Regarding claim 17, see drawstring closure on the front.
Regarding claim 18, zipper (46) is approximately centrally located as claimed.
Regarding claim 19, the figures do not show a tongue and therefore the upper portion does not include a tongue.
Regarding claim 20, at least see pocket (200) which contains a battery (see ¶0041 and see battery 142 in figure 16.
Regarding claim 24, see ¶0054, lines 16-21 teaching a timer as claimed.
Regarding claim 25, the heated overshoe is for each shoe and therefore teaches a pair of heated overshoes.
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 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright ‘953 in view of KR 2018-0096061 (Pak). See English translation of Pak.
Wright teaches the heated overshoe as claimed (see the rejection above for details) except for the upper portion comprises a heat reflective layer.
Pak teaches a heated shoe wherein a heat reflective layer (barrier layer 4 is aluminum foil to prevent heat from being released to the outside; see page 5, lines 19-21 of the translation) is adjacent to the heating layer (122).
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 heated overshoe taught by Wright with a heat reflective layer adjacent to the heating layer, as taught by Pak, to retain the heat from escaping.
Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright ‘953 in view of US 5565124 (Balzano) and KR 2018-0096061 (Pak). See English translation of Pak.
Wright teaches the heated overshoe as claimed (see the rejection above for details) except for:
a second thermally insulating layer adjacent to an inner surface of the flexible heating layer; and
the upper portion comprises a heat reflective layer adjacent to the heating layer.
Balzano teaches a heat generating system in an article of footwear (i.e. flexible circuit heater 14) having first and second insulating layers (e.g. 32,33 and 51,52; also see col. 1, lines 55-60, col. 2, lines 25-31, col, 4, lines 59-62 and figures 6-8 and 11) on opposite sides of the flexible heater.
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 heated overshoe as taught by Wright with a second thermally insulating layer adjacent to an inner surface of the flexible heating layer (on the opposite side of the first insulating layer), as taught by Balzano, to provide further insulation to the overshoe.
Pak teaches a heated shoe wherein a heat reflective layer (barrier layer 4 is aluminum foil to prevent heat from being released to the outside; see page 5, lines 19-21 of the translation) is adjacent to the heating layer (122).
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 heated overshoe taught by the combination above a heat reflective layer adjacent to the heating layer, as taught by Pak, to retain the heat from escaping.
Claim 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright ‘953 in view of EP 1293140 (Colombo)
Wright teaches the heated overshoe as claimed (see the rejection above for details) except for having a sensing device to sense one or more parameters.
Columbo teaches a heating device in a shoe having a temperature sensor (44) on the heated insole (2); at least see ¶0051.
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 heated overshoe as taught by Wright with a sensing device (temperature sensor) to sense one or more parameters, as taught by Columbo, to sense the temperatures of the heater inside of the overshoe.
Conclusion
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.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, 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, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
