DETAILED ACTION
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 .
Status of Claims
This Office Action is in response to Claims 1-3, filed March 14, 2024, which are pending in this application.
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 insole AND the arch structure (claim 1), the injected PU passing only through the slots of the insole (claim 1), and the profile of the arch structing being always parallel to a shape of the sole (claim 1), an arched zone (Claim 2) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “5” has been used to designate both the insole and the arch structure (beginning on p. 6).
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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites the limitation "the heel" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “heel reinforcing element” claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-2 (and claim 3 at least for depending from a rejected claim) 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.
Claim 1 is indefinite as it recites, “a heel reinforcing element for protecting and stiffening the heel located between the inner and outer stocking portions”. It is unclear which structure, the heel or the heel reinforcing element is located between the inner and outer stocking portions. Examiner respectfully suggests amending to recite, “a heel reinforcing element for protecting and stiffening [[the]] a heel, the heel reinforcing element located between the inner and outer stocking portions”
Claim 1 is indefinite as it recites, “a padding element of a collar of the shoe arranged between the inner and outer stocking portions”. It is unclear which structure, the padding element or the collar, is arranged between the inner and outer stocking portions. Examiner respectfully suggests amending to recite, “a collar comprising a padding element, the padding element
Claim 1 is indefinite as it recites, “an insole having an arch structure arranged between the inner and outer stocking portions”. First it is unclear which structure, the insole or the arch structure, is arranged between the inner and outer stocking portions. As the specification refers to both insole 5 and arch structure 5 (see pages 6 and 12-13 for disclosure of the insole/arch structure), and the drawings only show the structure of 5 as having slots 50 and lateral edge 51, it is unclear as to what constitutes the arch structure, as it could be the entire insole, the lateral edge 51, a portion of the insole such as portion within the arch or the portion exclusive of the lateral edge, or otherwise. For purposes of examination, Examiner has interpreted the insole and the arch structure to be the same structure.
Claim 1 is indefinite as it recites, “a sole formed of injection-moulded polyurethane”. As the previous phrase of the claim recites, “with the insole and a sole of the shoe”, it is unclear if “a sole formed of injection-moulded polyurethane” is referring to the sole previously recited or to a different/additional sole.
Claim 1 is indefinite as it recites, “wherein a predetermined quantity of the injected polyurethane passes only through the slots of the insole so as to form the fixing and gripping points between the sole and the insole and the inner and outer stocking portions”. It is unclear how a predetermined quantity only passes through the slots of the insole, since it is unclear how the quantity passing through is predetermined. Further if a predetermined quantity only passes through the slots of the insole, it is unclear how fixing or gripping points are between the sole and the insole and the inner and outer stocking portions since the predetermined quantity of injected polyurethane would also need to pass through at least the outer stocking as well as the slots and Fig. 6 show “holding hooks 60” (i.e. the injected PU) passing though the outer stocking portion, the insole/arch structure, and the the inner stocking portion. Examiner has interpreted the limitation to mean, “wherein the outer stocking portion, only through the slots of the insole, and into the inner stocking portion so as to form the fixing and gripping points between the sole and the insole and the inner and outer stocking portions”.
Claim 1 is indefinite as it recites, “wherein a profile of the arch structure is always parallel to a shape of the sole and has a lateral edge with a preset portion which extends above the sole”. First it is unclear what is meant by “a profile of the arch structure is always parallel to a shape of the sole”. This is disclosed on p. 12 of the specification which recites, “In accordance with the present invention, the arch structure 5 is shaped, variable and modulable in relation to the sole profile that it is desired to obtain as an aesthetic aspect as shown in figure 3A. In fact, the arch structure, in the profile/section thereof, is always parallel to the shape of the sole 7 and always has the lateral edge 51 above the level of the sole by a predetermined amount, as shown in figure 3A and in figure 3B”, thus reciting that the arch structure 5 is variable and modulable to the sole profile and also always parallel to the shape of the sole. Further, neither of Figs. 3A or 3B show the structure 5 as being always parallel to the shape of the sole. Therefore it is unclear as to the meaning of this limitation and made further unclear by the indefiniteness of what the arch structure is versus the insole.
Claim 1 is indefinite as it recites, “wherein the upper is made with reverse processing so as to obtain a three-dimensional weave”. It is unclear if the upper is knit or woven, which are two different types of fabric construction that contradict one another. While both terms are used in the specification, likely due to translation issues, based on the translated title and steps of making the upper, it appears that the upper is knit. Therefore, Examiner has interpreted the claim to be “so as to obtain a three-dimensional knit” and respectfully suggests amending the claims and specification to only refer to knitting and not weaving.
Claim 2 is indefinite as it recites, “wherein the arch structure is shaped and has an arched zone that follows a conformation of a plantar arch of a user”. While it remains unclear as to the difference between the insole and the arch structure, it is further unclear what the “arched zone” is referring to. The arch zone is not specifically pointed out in the drawings and the specification only recites, “Further, the arch structure, being shaped, has an arched zone that follows the conformation of the plantar arch, as shown in figure 3B, and has the lateral edge 51 that enables both the foot of the user and the inner stocking to be protected that makes up the upper, as shown in figure 5” (top of p. 13). As Fig. 3b only shows the lateral edge portion of the insole, Examiner has interpreted this limitation to mean that the lateral edge has an arched zone that follows the plantar arch.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 2 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 2 recites, “wherein the arch structure is shaped and has an arched zone that follows a conformation of a plantar arch of a user….” As such, Applicant has positively recited and claimed a human body part, because plantar arch of a wearer’s foot is actively being recited as being conformed to within a product claim. Examiner respectfully suggests amending to add functional language such as "adapted to” or “configured to” preceding any reference to a human or human body part. For example, Applicant could recite, "wherein the arch structure is shaped and has an arched zone [[that]] configured to follow[[s]] a conformation of a plantar arch of a user”
Allowable Subject Matter
Claims 1-3 (as best as can be understood) would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 101, set forth in this Office action.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: As best as the claims have been understood and interpreted by the Examiner, claims are allowable over the prior art of record as none of them, alone or in combination, disclose a shoe with an upper having a double stocking, a heel reinforcement, a collar padding element, and an insole with a lateral edge extending above the sole, the insole in between layers of the double stocking, the insole being thermoformed felt and having slots, a sole, where the PU of the sole extends through the outer layer of the double stocking and slots of the insole creating gripping points and fixing the sole, insole, and the layers of the double stocking layers, and the upper having thermoset yarn and is seamless. The closest prior art is Cartabbia (US 2021/0008823), Notzold (US 5628127), and Biotteau (FR 2576195). Cartabbia teaches a shoe with an upper having a double stocking, a heel reinforcement, and an insole in between layers of the double stocking, and the upper having thermoset yarn and is seamless, but does not teach a collar padding element, the insole being thermoformed felt and having slots, a sole, where the PU of the sole extends through the outer layer of the double stocking and slots of the insole creating gripping points and fixing the sole, insole, and the layers of the double stocking layers. Biotteau teaches an thermofelted insole with slots and where the PU of the sole extends through and outer layer (3) of the upper and into slots of the insole creating gripping points and fixing the sole, insole, but does not teach fixing an inner layer of the double stocking. Notzold teaches the slots extending entirely through the insole but also does not teach fixing the inner layer of the double stocking. Modifying Cartabbia, Notzold, or Biotteau to have the claimed structure would be hindsight reconstruction based on Applicant’s own disclosure, therefore the claims are allowable, based on Examiner’s best interpretation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Hipp (US 2017/0311672) teaches double stocking type upper with ankle collar padding, and Boucher (US 2017/0208900) teaches a double stocking type upper with an insole with upward extending lateral edges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732