DETAILED ACTION
This is in response to application filed on February 25th, 2025 in which claims 1-20 were presented for examination, amended by preliminary amendment on 12/22/25 (and supplemental 1/27/26) to present claims 1, 3-7, 11, 12, 17-27 for examination.
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 (originally Claims 1-6) and Species C (Fig. 6) in the reply filed on 12/22/25 is acknowledged.
Claim(s) 7, 11, 12, 17-20 were withdrawn by applicant from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected embodiment, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/22/25, with Claims 2, 8-10, 13-16 further cancelled, and Claims 21-27 being new.
However, Claim 1 was not directed to the elected Species embodiment of Fig. 6. Fig. 6 is directed to a “mechanical system designed to break in new shoes” ([0064]), with further support of Fig. 6 disclosed in [00171-00185] as being a “testing system” ([00172]). However, Claim 1 included a robotic motion simulator, which was directed to non-elected Fig. 7 ([00186]), which Fig. 6 does not disclose. Fig. 6 also does not disclose a “controller” from Claim 1.
In a courtesy call to Feng Ma on 1/26/26, the issue was indicated and an invitation to file supplemental claims was made in an attempt to amend Claim 1 to better align with Fig. 6. Claims 3-6 are further withdrawn by applicant, especially based on the supplemental response filed 1/27/26.
In summary, Claims 3-7, 11, 12, 17-20 are withdrawn, and Claims 1, 21-28 are being examined under the election. The election is still without traverse.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
[0009]-[0014] has reference numerals 10, 20 and 30 not in either the provisional or the instant figures herein
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.
Specification
The disclosure is objected to because of the following informalities:
Review is recommended of [0009]-[0014] for the reference numerals 100-600 regarding steps 100-600: though the provisional application page 5 has these values, these reference numerals pertaining to steps are not related to the reference numerals 100-600 shown in the Figures herein; it is not recommended for [0009]-[0014] to read “first step, second step” etc. due to [0091]-[0095] already using similar terms
Though directed to a non-elected embodiment, the objections are presented herein for compact prosecution—
[00101] pertaining to Fig. 1, review is needed whether it should read “the right and left side view of the structure, denoted as 102 and 104”
[00102], [00103] it is unclear how 108, 110, and 112 represent different elements
[00158] review is needed whether it should read “There are different methods”
Fig. 7 may be recommended to be broken up into Fig. 7A and 7B, to correspond with [00187] and [00188] respectively; as best understood, [00189] is referring to a (not shown) “Fig. 7C”
See [00261]-00264] Figs. 15, 16 are not in the detailed description of the summary
Appropriate correction is required.
Claim Objections
Claim(s) 1, 26, 28 is/are objected to because of the following informalities:
Claim 1 Line 3 after “three-dimensional” add –(3D)—to provide clarity with use of the term “3D model” in Claim 27 Lines 4, 5
Claim 26 Line 3 “a break-in process” needs review for how it relates to Claim 1 preamble “configured to break in”; similar objection applies to Claim 28 Line 3; Examiner suggests:
Claim 1 preamble to read “An apparatus configured for a break-in process”
Claim 26 to read “the break-in process”, such that Claim 28 Line 3 is also correct
Disagreement with any of the aforementioned may warrant at least a 112(b) indefiniteness rejection without constituting a new rejection
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claim(s) 1, 21-28 is/are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
The term “robotic rod” in Claim 1 Line 6 is considered new matter. Despite applicant remarks presented 1/27/26, the mere disclosure of “configured to simulate real-world walking conditions to flex and condition the shoe” in [00171] does not provide support for robotic/repeated motions. Especially as the rod is disclosed as being of a mechanical system ([0064], [00171]), one of ordinary skill in the art understands the rod to be mechanical, and not robotic (a machine with automatic process, such as via programming on a computer). Furthermore, though applicant can be their own lexicographer, support has not been found for the term “robotic” to be interpreted as “repeated motion” via a clear definition in the original specification. Examiner recommends cancelling the term.
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.
Claim(s) 21-28 is/are rejected under U.S.C. 112(b).
Claim 21 recites the limitation "the shoe" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
As such, the term “the shoe” in Claim 21 Line 2 is unclear and therefore renders the claim indefinite. It is unclear when “a shoe” was established, and how the term differs from “footwear or sportswear” established in Claim 1 Line 1 preamble, also in Claim 1 Line 8 on which Claim 21 depends. The term is also found in Claim 23, 25, 26. For the purposes of applying art and providing rejections, the terms will be considered the same.
The term “additional support” in Claim 27 Line 2 is unclear and therefore renders the claim indefinite. No initial support was established in order to have “additional” support. Examiner recommends deleting the term “additional.”
Dependent claims are rejected at the least for depending on rejected claims.
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.
FIRST REJECTION: Claim(s) 1, 21, 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanamaki (JPH 06284908).
Regarding Claim 1, Kanamaki teaches an apparatus configured to break in footwear or sportswear (it is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; abstract "device which can reduce the tight feeling of a new shoe by mechanically breaking a new shoe in"), comprising
a three-dimensional model of a user's feet or body (see Fig. 1 for 3D; abstract "false ankle 12 to play a role of movement similar to an ankle"; Kanamaki teaches the ankle which meets the structural limitations in the claims and performs the functions as recited such as being capable of being of a user’s feet or body);
a robotic rod configured to simulate real-world walking conditions to flex and condition the footwear or sportswear (see Fig. 1; abstract "role of movement similar to an ankle in walking by alternating motions of cylinders 1 and 2"; cylinder 1 and/or 2 to be rod; Kanamaki teaches the rod which meets the structural limitations in the claims and performs the functions as recited such as being capable of therefore capable of simulating as recited, especially in light of the recitation; for robotic-- [0004] "mechanical device that walks...on ...surface and breaks in shoes...ankle of the present invention has a mechanism that changes the ...computer controls the ground contact pressure, bending angle, instep height, foot width, walking time, etc"; wherein the involvement of a computer indicates robotic).
Regarding Claim 21, Kanamaki teaches the apparatus of claim 1, further comprising a bending lever arm configured to apply force to bend the shoe at a forefoot area, simulating walking or running conditions (see Fig. 1; [0006] “(7) and (9) are…road surfaces”; [0006] "in (8), when the foot is kicked out by the hinge, it bends upward in an inverted shape, and a pressure equivalent to the weight is applied to the tip of the toe to impart a bending familiarity"; inasmuch as 7, 9 have extent, 7, 9 constitute arms 7, 9 also have hinge 8 and therefore constitute bending levers; Kanamaki teaches the bending lever arm which meets the structural limitations in the claims and performs the functions as recited such as being capable of applying force to bend the shoe at a forefoot area, especially in light of the recitation, and simulating the recited conditions, especially in light of [0005] “when the cylinders…are operated alternately, the ankles move in the same way as when walking).
Regarding Claim 22, Kanamaki teaches the apparatus of claim 21, further comprising a hinge mechanism configured to generate bending motion for the bending lever arm (see Fig. 1, hinge at 8; Kanamaki teaches the hinge mechanism which meets the structural limitations in the claims and performs the functions as recited such as being capable of being able to generate bending motion, especially in light of the recitation of [0006]).
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.
SECOND REJECTION: Claim(s) 1, 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliss (USPN 2008237) in view of Kanamaki (JPH 06284908).
Regarding Claim 1, Bliss teaches an apparatus configured to break in footwear or sportswear (it is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; see Fig. 1; page 1 Col. 1 Lines 13-17 "present improvement is intended…for use in retail shoe stores by which this breaking-in of the shoes can be quickly effected"; Bliss teaches the apparatus which meets the structural limitations in the claims and performs the functions as recited such as being capable of breaking in footwear or sportswear, especially in light of the recitation), comprising:
a three-dimensional model of a user's feet or body (see Fig. 1; page 1 Col. 1 Line 51 "last block b"; Bliss teaches the block which meets the structural limitations in the claims and performs the functions as recited such as being capable of modeling user’s feet or body as recited).
Bliss does not explicitly teach a robotic rod configured to simulate real-world walking conditions to flex and condition the footwear or sportswear.
Kanamaki teaches a robotic rod configured to simulate real-world walking conditions to flex and condition the footwear or sportswear (see Fig. 1; abstract "device which can reduce the tight feeling of a new shoe by mechanically breaking a new shoe in"; abstract "false ankle 12 to play a role of movement similar to an ankle", wherein Fig. 1 shows 3D; abstract "role of movement similar to an ankle in walking by alternating motions of cylinders 1 and 2"; cylinder 1 and/or 2 to be rod; Kanamaki teaches the rod which meets the structural limitations in the claims and performs the functions as recited such as being capable of therefore capable of simulating as recited, especially in light of the recitation; for robotic-- [0004] "mechanical device that walks...on ...surface and breaks in shoes...ankle of the present invention has a mechanism that changes the ...computer controls the ground contact pressure, bending angle, instep height, foot width, walking time, etc"; wherein the involvement of a computer indicates robotic).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bliss to have at least cylinder 2, related to a computer, of Kanamaki in order to provide additional break in functionalities, such as at the heel, especially as both Kanamaki and Bliss are directed to instep break-in functionalities already.
Furthermore, the term “robotic” is seen as obvious to one of ordinary skill in the art because such automation of a rod would not have produced a new and unexpected result and therefore has no patentable significance. In other words, broadly providing an automatic or mechanical means to replace a manual activity which accomplishes the same result is not sufficient to distinguish over the prior art, in reVenner 262 F.2d 91, 95, 120 UPSQ 193, 194 (CCPA 1958).
Regarding Claim 21, modified Bliss teaches all the claimed limitations as discussed above in Claim 1.
Bliss further teaches a bending lever arm (9) configured to apply force to bend the shoe at a forefoot area, simulating walking or running conditions (see Fig. 1; page 1 Col. 2 Lines 31-36 "oscillatory plate 9 is fulcrumed on the transverse fulcral rod 8, which passes through a rearward transversely bored hinge lug so as to permit the rocking of the plate upwardly and back by suitable actuating means and thereby produce flexing of the forepart of the shoe"; see Fig. 3, bottom view, where plate 9 hinges and therefore is a bending lever, and can be considered an arm as it extends; Bliss teaches the bending lever arm which meets the structural limitations in the claims and performs the functions as recited such as being capable of apply force to bend the shoe at a forefoot area, especially in light of Fig. 1 and the recitations, and for simulating conditions as recited, especially in light of page 1 Col. 1 Lines 13-14, 29-32 “improvement is intended to…soften and render flexible that portion of the upper…when the wearer of the shoe is walking”).
Regarding Claim 22, modified Bliss teaches all the claimed limitations as discussed above in Claim 21.
Bliss further teaches a hinge mechanism (8) configured to generate bending motion for the bending lever arm (Fig. 1; Col. 2 Lines 31-36 "fulcral rod 8, which passes through a rearwardly transversely bored hinged lug"; Bliss teaches the hinge which meets the structural limitations in the claims and performs the functions as recited such as being capable of generating bending motion for the arm especially in light of the recitations).
Regarding Claim 23, modified Bliss teaches all the claimed limitations as discussed above in Claim 22.
Bliss further teaches a cam system configured to apply rotational motion to repeatedly bend the shoe (see Fig. 1; page 1 Col. 2 Lines 38-53 "suitable means may be provided for flexing the oscillating plates…shown for this purpose a small motor M connected by suitable reducing gearing 13, 13a, 13b, and 13c to the crank shaft 12, which carries at its opposite ends oppositely disposed cranks 12a which are operatively connected with the respective plates 9 by means of connecting links 11 having pivotal connection with lugs 9b on the bottom of the respective plates and with the respective crank element 12a…one plate is flexing one of the pair of shoes upward while the other plate is returning from flexing to normal position, so that the two plates work in alternation"; Bliss teaches a rotational system which meets the structural limitations in the claims and performs the functions as recited such as being capable of being a cam of applying rotational motion to repeatedly bend the shoe, especially in light of the recitations).
Regarding Claim 24, modified Bliss teaches all the claimed limitations as discussed above in Claim 23.
Bliss further teaches a rotation shaft (12) configured to support the rotating cam, ensuring controlled and repeatable bending forces (see Fig. 1; page 1 Col. 2 Lines 38-53; Bliss teaches the rotating shaft which meets the structural limitations in the claims and performs the functions as recited such as being capable of supporting the rotating cam, ensuring controlled and repeatable bending forces, especially in light of the recitations).
Claim(s) 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliss (USPN 2008237) in view of Kanamaki (JPH 06284908), as applied to the SECOND REJECTION above, further in view of Nishizawa et al (USPN 5265026), herein Nishizawa.
Regarding Claim 25, modified Bliss teaches all the claimed limitations as discussed above in Claim 24.
Bliss teaches a direction of rotation applied to bend the shoe (see Fig. 1, Col. 1 Lines 31-53).
Bliss does not explicitly teach a rotational motion indicator configured to show the direction of rotation.
Nishizawa teaches a rotational motion indicator configured to show a direction of rotation applied (see Figs. 3, 4; Col. 7 Lines 33-36 "Fig. 4 shows…operating of causing the LED 19 to emit light…which corresponds to the signal 21 indicating the direction of rotation of the...machine 1").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bliss’ rotation to have the indicator of Nishizawa in order to monitor the direction of rotation and determine errors (abstract), especially as both references are in the same art of endeavor of rotating machine elements.
Regarding Claim 26, modified Bliss teaches all the claimed limitations as discussed above in Claim 25.
Bliss further teaches a base platform (3) configured as a foundation of the apparatus while holding the shoe in place during a break-in process (see Fig. 1; page 1 Col. 2 Lines 3-7 "machine itself is provided with a base 1 from which extends upwardly an upright or standard 2, on which is mounted a horizontal fixed plate or platform 3 upon which the shoe rests"; Bliss teaches the base platform 3 which meets the structural limitations in the claims and performs the functions as recited such as being capable of being a foundation while being part of the system holding the shoe during break-in process).
Regarding Claim 27, modified Bliss teaches all the claimed limitations as discussed above in Claim 26.
Bliss further teaches a support block configured to provide additional support to the base platform (see Fig. 1; page 1 Col. 2 Lines 3-7; the support block being upright or standard 2 and/or base 1; Bliss teaches 1 and/or 2 which meets the structural limitations in the claims and performs the functions as recited such as being capable of providing support to the platform 3).
Modified Bliss further teaches wherein the robotic rod comprises a vertical pressure rod coupled to the 3D model configured to apply a downward force on the 3D model, mimicking weight distribution during walking (see Kanamaki Fig. 1 and abstract for at least vertical cylinder 2 coupled via 4 to ankle 12; [0006] “(2) is a cylinder for lifting the heel, and pulls out the wire of (4)…to perform a kicking motion”; Kanamaki teaches cylinder 2 connected which meets the structural limitations in the claims and performs the functions as recited such as being capable of vertical pressure and applying a downward force, especially in light of the recitations, such as lifting and kicking motion; wherein lifting indicates a vertical pressure/force and kicking indicates that the force/pressure would be downward when the device returns to original state, and/or due to Newton’s Third Law of Motion, that an upward force exerted on the 3D model would also have a downward force on the 3D model; similarly, as for mimicking—Kanamaki teaches cylinder 2 connected which meets the structural limitations in the claims and performs the functions as recited such as being capable of mimicking the weight distribution during walking, especially in light of [0005] “when the cylinders in (2) are operated alternately, the ankles move in the same way as when walking”).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bliss (USPN 2008237) in view of Kanamaki (JPH 06284908) and Nishizawa et al (USPN 5265026), herein Nishizawa, as applied to the SECOND REJECTION above, further in view of Wei et al (USPN 9723896), herein Wei.
Regarding Claim 28, modified Bliss teaches all the claimed limitations as discussed above in Claim 27.
Modified Bliss teaches a direction of applied forces simulating foot pressure (Bliss already taught force at the forefoot via plate 9; Kanamaki teaches force at the heel via cylinder 2).
Bliss does not explicitly teach a force application indicator configured to indicate the direction of applied forces, thereby providing visual feedback on the break-in process.
Wei teaches a force application indicator configured to indicate the direction of applied forces, thereby providing visual feedback (see Fig. 3; Col. 4 Lines 17-18 "data acquisition system software 10 comprises a ...data display module"; Col. 4 Lines 33-35 "data display module simulates and displays three-dimensional forces according to data, and displays a three-dimensional force vector diagram").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bliss’ forces to have an application indicator as taught by Wei to help check and analyze problems, improve accuracy, save manpower, material resources, research, development time, and make shoe fitter and more comfortable (abstract).
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that modified Bliss teaches visual feedback on the break-in process (Bliss’ forces are of a break-in process, wherein Wei teaches the visual feedback for the forces).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be used to formulate a rejection if necessary: Byrnes (USPN 1015291), Ross (USPN 11559110), Newman (USPN 3810270), Eisen (USPN 1848702) directed to an apparatus configured to break in footwear or sportswear having a vertical pressure rod and bending lever arm; Paquette et al (USPN 4432223), Langenhol (USPN 0914431), Costigan (USPN 1848697), Faber et al (USPN 2464969), Bancroft (USPN 1331232), Klingenfeld et al (USPN 1140599), Eddins (USPN 1023510) directed to apparatus for footwear break-in having a vertical pressure rod; Segal (USPN 2007814), Bergeron et al (USPN 3477079), Heisler (USPN 0476460) directed to apparatus for footwear break-in; O’Bannon et al (USPN 6131436) directed to adding robotics to a testing system; Hayashi (USPN 4130007) directed to a footwear testing system; Clark (USPN 2455559), Engel et al (USPN 2157123) directed to a system supporting footwear for pressing; Seewald (DE 102009/029964) directed to non-elected embodiments Figs. 11, 15, 16.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, 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 571-272-4888. 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.
/GRACE HUANG/Primary Examiner, Art Unit 3732