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 .
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: strap 200 (paragraph 0045). 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. 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 § 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.
Claims 11 and 13 are 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 11 recites the limitation "an axis of rotation of the rotatable connection is approximately aligned with the axis of rotation of the user’s ankle" in line(s) 5-7. This limitation encompasses a part (ankle) of a human organism. The examiner suggests that the limitation should be amended to read --configured to be approximately aligned with--, --adapted to be approximately aligned with--, or similar language to clarify that no part of a human organism is positively recited.
Claim 13 recites the limitation "the section of the medial hindfoot region is disposed parallel to or anterior to the axis of rotation of the user’s ankle" in line(s) 1-2. This limitation encompasses a part (ankle) of a human organism. The examiner suggests that the limitation should be amended to read --configured to be disposed parallel to or anterior to--, --adapted to be disposed parallel to or anterior
to--, or similar language to clarify that no part of a human organism is positively recited.
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 (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 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) 1-8, 12-13, and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hatfield et al. (US 2013/0160328), herein Hatfield.
Regarding claim 1, Hatfield discloses a footwear (500) comprising: a strap comprising a lateral strap portion (516) connected to a lateral forefoot region of the footwear and a medial strap portion (514) connected to a medial hindfoot region of the footwear; and a heel counter (512; paragraphs 0054, 0097) configured to be positioned adjacent to a user's heel when worn, wherein the heel counter is stiffer than an adjacent portion of an upper of the footwear (paragraph 0054), and wherein the heel counter is configured to support the medial strap portion (at 520), wherein the strap is configured to apply a foot inversion resisting tension to a user's foot when the footwear is worn by the user (due to the location of the straps around the foot) (paragraphs 0053, 0054, 0096-0102, 0106-0110; Fig. 5B-6).
Regarding claim 2, Hatfield discloses that the heel counter is configured to support the medial strap portion at a location proximal to an axis of rotation of the user's ankle in a sagittal plane when the footwear is worn by the user (Fig. 5C).
Regarding claim 3, Hatfield discloses a closure system (508, 518, 534) configured to secure the footwear to the user's foot, and wherein the closure system is configured to connect the lateral strap portion to the medial strap portion (paragraphs 0099-0100, 0106-0107, 0110; Fig. 5B-6).
Regarding claim 4, Hatfield discloses that the closure system comprises a lacing system, and wherein the lateral strap portion comprises at least one lateral eyelet (518) configured to receive a portion of a lace of the lacing system and the medial strap portion comprises at least one medial eyelet (518) configured to receive a portion of a lace of the lacing system (paragraphs 0099-0100, 0106-0107, 0110; Fig. 5B-6).
Regarding claim 5, Hatfield discloses that each of the at least one lateral eyelet is disposed anterior to a corresponding medial eyelet (paragraph 0100; Fig. 6).
Regarding claim 6, Hatfield discloses that at least a portion of the lateral strap portion is configured to connect to the lateral forefoot region of the footwear at a first location aligned with and/or posterior to the user's 5th Metatarsophalangeal joint when the footwear is worn by the user (Fig. 5B, 6).
Regarding claim 7, Hatfield discloses that the lateral strap portion comprises a posterior end portion and an anterior end portion, and wherein the posterior end portion is configured to connect to the lateral forefoot region of the footwear at the first location aligned with and/or posterior to the user's 5th Metatarsophalangeal joint when the footwear is worn by the user (Fig. 5B, 6).
Regarding claim 8, Hatfield discloses that the anterior end portion of the lateral strap portion is configured to connect to the lateral forefoot region of the footwear at a second location anterior to the user's 5th Metatarsophalangeal joint when the footwear is worn by the user (Fig. 5B, 6).
Regarding claim 12, Hatfield discloses that the heel counter is configured to support the medial strap portion along a section of the medial hindfoot region aligned with a talus of the user's foot when the footwear is worn by the user (Fig. 5C).
Regarding claim 13, Hatfield discloses that the section of the medial hindfoot region is disposed parallel to or anterior to the axis of rotation of the user's ankle (Fig. 5C).
Regarding claim 15, Hatfield discloses that an axial stiffness of the lateral strap portion and the medial strap portion is greater than a stiffness of an adjacent portion of the footwear oriented in a direction aligned with the strap (wherein wires 540 provide increased axial stiffness to the strap portions; paragraph 0110).
Regarding claim 16 Hatfield discloses a method of resisting foot inversion comprising: connecting a lateral strap portion (516) connected to a lateral forefoot region of a footwear and a medial strap portion (514) connected to a medial hindfoot region of the footwear; positioning a heel counter (512) adjacent to a user's heel when the footwear is worn by the user, wherein the heel counter is stiffer than an adjacent portion of an upper of the footwear (paragraphs 0054, 0097); supporting the medial strap portion with the heel counter (at 520); and applying a foot inversion resisting tension to the user's foot with the strap (by tightening the straps and/or laces) (paragraphs 0053, 0054, 0096-0102, 0106-0110; Fig. 5B-6).
Regarding claim 17, Hatfield discloses that supporting the medial strap portion with the heel counter comprises supporting the medial strap portion along a portion of the medial hindfoot region below an axis of rotation of a user's ankle in a sagittal plane when the footwear is worn by the user (Fig. 5C).
Regarding claim 18, Hatfield discloses securing the footwear to the user's foot with a closure system (508, 518, 534), and connecting the lateral strap portion and medial strap portion to the closure system (paragraphs 0099-0100, 0106-0107, 0110; Fig. 5B-6).
Regarding claim 19, Hatfield discloses that the closure system comprises a lacing system, and wherein the lateral strap portion comprises at least one lateral eyelet (518) configured to receive a portion of a lace of the lacing system and the medial strap portion comprises at least one medial eyelet (518) configured to receive a portion of a lace of the lacing system paragraphs 0099-0100, 0106-0107, 0110; Fig. 5B-6).
Regarding claim 20, Hatfield discloses that each of the at least one lateral eyelet is disposed anterior to a corresponding medial eyelet (paragraph 0100; Fig. 6).
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) 9, 10, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield, as applied to claim 1.
Regarding claim 9, Hatfield discloses a tongue (throat portion of bootie 504) disposed on a dorsal side of the footwear (Fig. 6). Hatfield does not specifically discloses that the tongue is elastic. However, Hatfield teaches that a bootie (108) may be made from an elastomeric fabric (paragraph 0049). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the tongue of bootie 504 of an elastic material, as taught by the embodiment of bootie 108, in order to provide a better and more secure fit of the bootie to the foot. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
The elastic tongue would be configured to apply a dorsiflexion assisting torque to a user's foot when the footwear is worn by the user and the foot of the user is disposed in a plantar flexed position, due to the elastic nature and position on the dorsal side of the foot.
Regarding claim 10, the elastic tongue is configured to bias the user's foot towards a neutral position when the footwear is worn by the user and in a plantar flexed position, due to the elastic nature and position on the dorsal side of the foot.
Regarding claim 14, Hatfield discloses that the heel counter is configured to support the medial strap portion along a portion of the medial hindfoot region disposed at a distance from the axis of rotation of the user's ankle when the footwear is worn by the user (Fig. 5C).
Hatfield appears to show a distance between 0 mm and 40 mm (Fig. 5C), but does not disclose the specific distance. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the heel counter support at a distance between 0 mm and 40 mm from the axis of rotation of the user’s ankle in order to provide sufficient support at the medial rear portion of the foot. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield, as applied to claim 1, in view of Roser (US 2013/0263349).
Regarding claim 11, Hatfield does not disclose a yoke, rotatable connection, or spring. Roser teaches a footwear having an exoskeleton with a heel counter/base (110), a yoke (104) configured to contact the user's leg above the user's ankle and below the user's knee when the footwear is worn by the user; a rotatable connection (113) rotatably connecting the base and the yoke, wherein an axis of rotation of the rotatable connection is approximately aligned with the axis of rotation of the user's ankle; and a spring (121) configured to connect between the base and the yoke and apply a plantar flexion assisting torque between the yoke and the base. The yoke and spring provide a high-top footwear which manages forces from the lower leg to reduce the effort exerted by a user and improve performance during movement (Abstract; paragraphs 0025-0039, 0112-0125; Fig. 1A-4B). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a yoke, rotatable connection, and spring, as taught by Roser, to the footwear of Hatfield in order to provide a high-top footwear which manages forces from the lower leg to reduce the effort exerted by a user and improve performance during movement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 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 at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732