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 .
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed on 01/13/2025 and 11/12/2025 has been acknowledged
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2022-121751, filed on 07/29/2022.
Claim Objections
Claims 13 and 15 are objected to because of the following informalities:
Claim 13 recites the term “the loop”. Examiner is unsure if this is “looped state” in claim 11 or a new loop.
Claim 15 recites the term “claims 1”. Please fix to “claim 1”. The claim also recites “the size”. Please fix to “a size”.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US-20130028368-A1 (“Oshio”).
Regarding claim 1, Oshio teaches a foot-mounted device (Oshio Claim 1 “A pedometer mountable on a shoe”) comprising:
a device that applies vibrations to a foot of a user or acquires data related to motions or biological information of the user (Oshio Claim 1 “when the user walks or runs while wearing the shoe having the pedometer unit mounted thereon, the pedometer unit detects the electric current produced by the pressure exerted on the electromotive unit by the loading applied from the bottom of the user's foot and at least measures the number of walking steps based on the detected electric current” and Fig. 13B ref 2A);
a control unit that has a control part (Oshio Fig. 13A ref 6a) connected to the device (Oshio Figs. 13A – 13B ref 6); and
wiring that connects the control part and the device (Oshio Fig. 1A-1D ref 3 and Fig. 13B ref 3 and [0079] “A wire material 3 is connected to the electromotive unit 2 and configured to deliver the electric current produced by the electromotive unit 2. The wire material 3 is formed by a two-core parallel cable having a length of approximately 10 cm and configured to deliver the electric current from the inside of a shoe to the outside of the shoe. The wire material 3 is fixed onto a desired position in the shoe by a fastener 4, which is realized by a clip 4a. On the end of the clip 4a, a housing 5 including therein a pedometer unit 6 shown in FIG. 13A is integrally provided. Inside the clip 4a, a groove 4d is formed, into which the wire material 3 is fitted.”), wherein the control unit includes:
a housing that accommodates the control part (Oshio Fig. 13A ref 5 “housing”); and
a fixing implement that secures the housing to footwear (Oshio Fig. 4A-5B) worn by the user (Oshio Fig. 1A ref 4 “fastener” and 4a “clip”), wherein the wiring extends through a space between the housing and the fixing implement so as to extend away from the fixing implement (Oshio Figs. 1D & 5A-5B and [0079] “Inside the clip 4a, a groove 4d is formed, into which the wire material 3 is fitted. The free end of the wire material 3 is inserted into the housing 5 and connected to the pedometer unit 6.”), and connects the control part and the device (Oshio Figs. 13A ref 2A and ref 6a) in a state where a portion extending from between the housing and the fixing implement forms a loop (Oshio Figs. 4A-5B and 13A).
With respect to claims 11-12, all limitations have been examined with respect to the device in claim 1. The device taught/disclosed in claim 1 can clearly perform the device of claims 11-12. Therefore claims 11-12 are rejected under the same rationale.
Regarding claim 13, Oshio teaches all of the elements of the current invention in claim 11. Oshio further discloses that the device is positioned inside the footwear in a state where the foot-mounted device is in use (Oshio Fig. 5A), and the loop is formed by a portion of the wiring extending from inside the footwear (Oshio Fig. 5A-5B ref 3).
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) 2-3, 5, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US-20130028368-A1 (“Oshio”).
Regarding claim 2, Oshio teaches all of the elements of the current invention in claim 1. In a different embodiment, Oshio further discloses that the fixing implement (Oshio Fig. 10A ref 3A) is detachably attached to the housing (Oshio Fig. 10A and [0103] “a connector 10 is provided on the end of the fixable wire material 3A, so that the fixable wire material 3A can be inserted into and removed from a connector 10 provided in the housing 5.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified one embodiment of Oshio to incorporate the teachings of a different embodiment such that the fixing implement is detachably attached to the housing. Doing so would allow for disconnecting the housing and reconnecting to a computer in order to manage data (Oshio [0104]). Additionally, Oshio does not teach away from combining these features, nor is there any indication that such a combination would render the device unsatisfactory for its intended purpose (Oshio [0022]).
Regarding claim 3, Oshio teaches all of the elements of the current invention in claim 1. Oshio further discloses that the foot-mounted device further comprises: an inner plate inserted into the footwear (Oshio Fig. 1A ref 2 “electromotive unit”), wherein the inner plate includes: an inner plate body in which the device is disposed (Oshio [0020] “The flat-plate-like electromotive unit can be constituted by a piezoelectric electromotive unit having a flat and thin piezoelectric element on a flexible and flat-plate-like substrate.” And Figs. 3A-3C).
In a different embodiment, Oshio also discloses an extension part extending in a direction away from the inner plate body and having a distal end portion (Oshio Fig. 10A-11A ref 10 “connector”) connected to the housing, the extension part is provided as a separate member from the fixing implement, and the wiring is disposed inside the extension part (Oshio Fig. 10A-11A ref 3A “fixable wire material”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified one embodiment of Oshio to incorporate the teachings of a different embodiment such that the inner plate includes an extension part extending in a direction away from the inner plate body and having a distal end portion connected to the housing, the extension part is provided as a separate member from the fixing implement, and the wiring is disposed inside the extension part. Doing so would allow for disconnecting the housing and reconnecting to a computer in order to manage data (Oshio [0104]). Additionally, Oshio does not teach away from combining these features, nor is there any indication that such a combination would render the device unsatisfactory for its intended purpose (Oshio [0022]).
Regarding claim 5, Oshio teaches all of the elements of the current invention in claim 3. In a different embodiment, Oshio also discloses that the extension part includes: a first portion extending upward from the inner plate body (Oshio Fig. 10A); a curved portion bent from an upper end of the first portion (Oshio Fig. 10A); and a second portion extending downward from an end of the curved portion (Oshio Fig. 10A), and the housing is secured to a lower end of the second portion (Oshio Fig. 10A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified one embodiment of Oshio to incorporate the teachings of a different embodiment such that the extension part includes: a first portion extending upward from the inner plate body ; a curved portion bent from an upper end of the first portion; and a second portion extending downward from an end of the curved portion, and the housing is secured to a lower end of the second portion. Doing so would allow for disconnecting the housing and reconnecting to a computer in order to manage data (Oshio [0104]). Additionally, Oshio does not teach away from combining these features, nor is there any indication that such a combination would render the device unsatisfactory for its intended purpose (Oshio [0022]).
Regarding claim 14, Oshio teaches all of the elements of the current invention in claim 11. Oshio further discloses that the wiring further includes: a first portion extending in a predetermined direction; a second portion folded back from the first portion and extending so as to face the first portion (Oshio Fig. 12A-12B and [0102] “The fixable wire material 3A may be used to fix the pedometer onto a shoe in such a manner that an initially straight fixable wire material 3A may be bent along the edge of the shoe to clip the edge of the shoe, or in such a manner that a fixable wire material 3A may be bent in advance like a clip may clip the edge of a shoe.”).
Oshio does not expressly disclose or otherwise teach that the wiring further includes a retainer that defines a distance between the first portion and the second portion. Nevertheless, Oshio at least suggests the idea that the wiring further includes a retainer that defines a distance between the first portion and the second portion (Oshio Figs. 12A-12D and [0106] “The fixable wire material 3A clips the edge of the shoe and is thus fixed”). Further, the claimed element device is generally not patentably distinguishable from a prior art device with both functioning in the same manner. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to achieve such structure of the wiring to ensure that the wiring is secure.
Regarding claim 15, Oshio teaches all of the elements of the current invention in claim 1. In a different embodiment, Oshio further discloses that the wiring is not secured to the fixing implement (Oshio Fig. 2A) and is configured so that the size of the loop changes when an attachment position of the control unit relative to the footwear changes (Oshio Figs. 12A-12D and [0106] “FIGS. 12A to 12D illustrate an exemplary embodiment of the fixable wire material 3A constituting the pedometer for a shoe relating to the present invention. The fixable wire material 3A, which is appropriately rigid and flexible and electrically conductive, is formed into the shape shown in the drawings in the present exemplary embodiment.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified one embodiment of Oshio to incorporate the teachings of a different embodiment such that the wiring is not secured to the fixing implement and is configured so that the size of the loop changes when an attachment position of the control unit relative to the footwear changes. Doing so would allow for disconnecting the housing and reconnecting to a computer in order to manage data (Oshio [0104]). Additionally, Oshio does not teach away from combining these features, nor is there any indication that such a combination would render the device unsatisfactory for its intended purpose (Oshio [0022]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oshio in view of US-5323650-A to Fullen et. al. (“Fullen”)
Regarding claim 4, Oshio teaches all of the elements of the current invention in claim 3. Oshio further discloses that the housing is attached to a side of the footwear (Oshio Fig. 4C). In a different embodiment, Oshio also discloses that the extension part extends upward from the inner plate body (Oshio Fig. 10A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified one embodiment of Oshio to incorporate the teachings of a different embodiment such that the extension part extends upward from the inner plate body. Doing so would allow for the device to be attached to any position of the shoe (Oshio claim 9). Additionally, Oshio does not teach away from combining these features, nor is there any indication that such a combination would render the device unsatisfactory for its intended purpose (Oshio [0022]).
Oshio does not teach that the inner plate body has a shape extending along an outer part of the foot of the user. However, Fullen teaches that the inner plate body has a shape extending along an outer part of the foot of the user (Fullen (2) “there is shown a shoe 10 containing a force sensor array 100 and an electronic circuit module 500 connected thereto by means of a flat ribbon cable 102. Force sensor array 100 is arranged to cover the entire area of contact between the bottom of the wearer's foot and shoe 10.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified the apparatus of Oshio to incorporate the teachings of Fullen such that the inner plate body has a shape extending along an outer part of the foot of the user. Doing so would ensure that forces applied to the foot are evenly distributed over the entire surface or sole of the foot (Fullen (4)).
Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oshio in view of WO-2015013928-A1 (“Xie”)
Regarding claim 6, Oshio teaches all of the elements of the current invention in claim 1. Oshio further disclsoes that the fixing implement is a clip member (Oshio ref 4a “clip”) and is inserted between the footwear and the foot of the user (Oshio Fig. 4A-4C). Oshio does not teach that the clip member includes a leaf spring part coupled to the housing; and a plate insertion part that is formed so as to be connected to a part of the leaf spring part on a side opposite to a side connected to the housing, and is inserted between the footwear and the foot of the user. However, Xie teaches that the clip member includes a leaf spring part coupled to the housing (Xie Figs. 1-5 and ref 4 “clip-use spring”); and a plate insertion part that is formed so as to be connected to a part of the leaf spring part on a side opposite to a side connected to the housing, and is inserted between the footwear and the foot of the user (Xie Figs. 1-5 and Abstract “a clip (3) fixed on the exterior of the lower housing, and, a clip-use spring (4) and a dower that are connected to the clip.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified the apparatus of Oshio to incorporate the teachings of Xie such that the clip member includes a leaf spring part coupled to the housing; and a plate insertion part that is formed so as to be connected to a part of the leaf spring part on a side opposite to a side connected to the housing, and is inserted between the footwear and the foot of the user. Doing so would ensure that the device will not move during physical activity (Xie Description [Technical Field]).
Regarding claim 7, Oshio as modified by Xie teaches all of the elements of the current invention in claim 6. Oshio further discloses that the wiring is disposed between two parts and in a state where the wiring is covered by a plate part (Oshio Figs. 1A-1B and 5A-5B). Xie further teaches that a first leaf spring part and a second leaf spring part located at positions separated from each other in a direction intersecting an extending direction of the wiring are provided as the leaf spring part (Xie Fig. 2 and Description “the clip spring 4 includes a spring 41 and a positioning member 42 extending from both ends of the spring. The positioning member 42 includes a vertical arm 43 and a cross arm 44, and the angle between the cross arm 44 and the vertical arm 43 is 90. , for clips The spring 4 is integrally formed. The cross arm 44 and the spring 41 are parallel to each other, and the cross arm 44 extends toward the inner side of the spring 41.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to further incorporate the teachings of Xie to Oshio as modified by Xie such that a first leaf spring part and a second leaf spring part located at positions separated from each other in a direction intersecting an extending direction of the wiring are provided as the leaf spring part. Doing so would ensure that the device will not move during physical activity (Xie Description [Technical Field]).
Oshio as modified by Xie does not expressly disclose or otherwise teach that the wiring is disposed between the first leaf spring part and the second leaf spring part in a state where the wiring is covered by the plate insertion part. Nevertheless, Oshio at least suggests the idea that the wiring is disposed between two parts and in a state where the wiring is covered by a plate part (Oshio Figs. 1A-1B and 5A-5B). Further, the claimed element device is generally not patentably distinguishable from a prior art device with both functioning in the same manner. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to achieve such positioning of the wiring to ensure that the wiring is secure.
Regarding claim 8, Oshio as modified by Xie teaches all of the elements of the current invention in claim 6. Xie further discloses that the the housing includes: a coupling recess to which the leaf spring part is coupled; and a guide groove formed to extend toward the coupling recess on a surface of the housing on which the coupling recess is formed, wherein the leaf spring part is slidably moved along the guide groove so that a distal end portion of the leaf spring part is inserted into and secured to the coupling recess (Xie Figs. 3-4 ref 23 & 32 and Description “first recessed portion corresponding to the shape of the positioning member is disposed between the first connecting portions, and a second portion for fixing the positioning member is disposed between the second connecting portions The limiting portion, the second limiting portion is two protruding and staggered parallel parallel block structures. This is a fixed form of the spring clip and the clip and the lower case so that the spring clip does not sway after being fixed”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to further incorporate the teachings of Xie to Oshio as modified by Xie such that the housing includes: a coupling recess to which the leaf spring part is coupled; and a guide groove formed to extend toward the coupling recess on a surface of the housing on which the coupling recess is formed, wherein the leaf spring part is slidably moved along the guide groove so that a distal end portion of the leaf spring part is inserted into and secured to the coupling recess. Doing so would ensure that the device will not move during physical activity and all parts of the device are secure (Xie Description [Technical Field]).
Regarding claim 9, Oshio as modified by Xie teaches all of the elements of the current invention in claim 6. Oshio further discloses that a gap between a distal end portion of the plate insertion part and the housing is increased when the device is inserted between the foot and footwear (Oshio [0079] “the clip 4a is formed by an appropriately flexible resin material or the like and into U-shaped, so that the clip 4a can be fixed by clipping a desired edge of the shoe”). Xie further discloses that in the plate insertion part, a pressing part to be pressed by the user is formed near a connection portion between the plate insertion part and the leaf spring part, and the fixing implement is configured so that the leaf spring part is elastically deformed by having the user press the pressing part (Xie Fig. 1 & 4-5 ref 3 and Description “One end of the pin is provided with a protruding strip-shaped friction member, so that when the pin is inserted, the friction member can be pinched by hand”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to further incorporate the teachings of Xie to Oshio as modified by Xie such that in the plate insertion part, a pressing part to be pressed by the user is formed near a connection portion between the plate insertion part and the leaf spring part, and the fixing implement is configured so that the leaf spring part is elastically deformed by having the user press the pressing part. Doing so would ensure that the device will not move during physical activity and all parts of the device are secure (Xie Description [Technical Field]).
Regarding claim 10, Oshio as modified by Xie teaches all of the elements of the current invention in claim 9. Oshio as modified by Xie does not expressly disclose or otherwise teach that the housing has, on a surface opposite to a side on which the fixing implement is provided, a guide recess that is pressed by the user's other finger while the user presses the pressing part with the finger. Nevertheless, Xie at least suggests the idea that the housing has, on a surface opposite to a side on which the fixing implement is provided, a guide recess that is pressed by the user's other finger while the user presses the pressing part with the finger (Xie Fig. 1 & 4-5 ref 3 and Description “One end of the pin is provided with a protruding strip-shaped friction member, so that when the pin is inserted, the friction member can be pinched by hand”).
Further, the claimed element device is generally not patentably distinguishable from a prior art device with both functioning in the same manner. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to achieve such structure of the housing to ensure functional clarity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON TOAN NGUYEN whose telephone number is (571)272-6163. The examiner can normally be reached M-T: 8-5:30 F1:8-12 F2: Off.
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/J.N./Examiner, Art Unit 3666
/SCOTT A BROWNE/Supervisory Patent Examiner, Art Unit 3666
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