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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because language “the present invention…”, which is not clear and concise language. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The use of the term CALCULO and ECO, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1 is objected to because of the following informalities: the limitation “a region covering a thenar, a hypothenar and a portion therebetween on a sole of a forefoot of the sock main body” should read “a region of the sock covering a thenar, a hypothenar and a portion therebetween on a sole of a forefoot of the sock main body when worn”. 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.
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.
Claim 1-10 and the claims that depend therefrom 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.
Regarding claim 1, it is unclear if “a starting point in a region covering a second metatarsal bone, a third metatarsal bone, and a fourth metatarsal bone” is referring to the user’s foot or a portion of the sock. It is unclear where the starting point is located and where the anti-slip portions are located. Is the starting point the entire area of the second metatarsal bone, third metatarsal bone, and a fourth metatarsal bone and the anti-slip portions extend from the boundary of that outward/inward? Further, it is unclear what would be outer and inner when referring to the sock sole, is the inner the medial side of the sock and the outer the lateral side of the sock, or is the inner the center of the sock and the outer is the outer periphery of the sock? It is unclear how the anti-slip portions are arranged along the sole. For examination purposes, the Examiner is interpreting the inner to be the medial side and the outer to be the lateral side of the sock.
Regarding claim 2, it is unclear how the areas of the sections made by virtual lines at regular intervals form sections that increase. What is increasing? Do you mean to claim that the anti-slip portions increase in size or amount in the regularly spaced intervals? The Examiner is interpreting the amount of anti-slip portion in each regularly spaced interval to be more or cover a larger area of the regularly spaced intervals.
Moreover, Claim 2 is unclear because it is confusing how “inward” and “outward” are associated with the sole structure. Is inward toward the center of the sock or toward the medial side of the sock? It is unclear how the anti-slip portions are structured. For examination purposes, the Examiner is interpreting the medial side of the sock to be inwards and the lateral side of the sock to be outwards.
Regarding Claim 4, it is unclear what claim 4 is requiring of the starting point, is the starting point becoming more limited in size, than that required by claim 1? Does the starting point still include the structure as recited in claim 1?
Regarding Claim 6, it is unclear how there are claimed third portions, when there are no presented or claimed second portions. Claim 1 from which claim 6 depends only requires first portions. Are there second portions? It is unclear what is required structurally to read on the claims.
Regarding Claim 7, it is unclear how there are claimed fourth portions, when there are no presented or claimed second and third portions. Claim 1 from which claim 7 depends only requires first portions. Are there second and third portions? It is unclear what is required structurally to read on the claims. It is unclear how there are claimed fifth portions, when there are no presented or claimed second, third and fourth portions. Claim 1 from which claim 9 depends only requires first portions. Are there second, third and fourth portions? It is unclear what is required structurally to read on the claims.
Regarding Claim 8, it is unclear what “an exterior side of a region” is referring to, is this of the sock or a user’s foot? Is the anti-slip portions covering the enter region or only a portion of the claimed region? It is unclear what the anti-slip portions cover.
Regarding Claim 10, it is unclear what “five-toed type” sock requires structurally. Is this referring to five separate toe stalls or just a sock that can accommodate five toes?
Any remaining claims are rejected as depending from a rejected base claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 requires the starting point to be a smaller area of the sock, than that required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-10 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).
Regarding claim 1, the limitation “a starting point in a region covering a second metatarsal bone, a third metatarsal bone, and a fourth metatarsal bone” should include the language “configured to”, “adapted to”, “when worn”, or other similar language to avoid positively claiming a human body part.
Claim 4 includes the limitation “the starting point is located in a region covering a diaphysis of the third metatarsal bone” should include the language “configured to”, “adapted to”, when worn, or other similar language to avoid positively recited a human body part.
Claim 9 includes the limitation “wherein the anti-slip portion comprises a fifth anti-slip portion disposed on an exterior side of a region extending from a heel to an upper end of a leg” should including the language “configured to”, “adapted to”, when worn, or other similar language to avoid positively recited a human body part.
Any remaining claims are rejected as depending from a rejected base claim, as these claims read in independent form would include the limitations of the base claim.
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) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (WO/2019172249).
In regard to claim 1, Tanaka et al. teaches a sports sock comprising: a sock main body (sock in figures 2 images: a, b and c); and an anti-slip portion disposed on an exterior side of the sock main body (paragraphs 0033-0035 of English translation), wherein the anti-slip portion comprises an anisotropic first anti-slip portion disposed on an exterior side of a region covering a thenar, a hypothenar, and a portion therebetween on a sole of a forefoot of the sock main body (see region of sock covering the ball of the foot in figure 2b), and the first anti-slip portion comprises: a plurality of first inner anti-slip portions arranged in a radial fan-shaped manner (see annotated figure below), a longitudinal direction of each of the first inner anti-slip portions extending inward from a starting point in a region covering a second metatarsal bone, a third metatarsal bone, and a fourth metatarsal bone (see annotated figure below); and a plurality of first outer anti-slip portions arranged in a radial fan-shaped manner (see annotated figure below), a longitudinal direction of each of the first outer anti-slip portions extending outward from the starting point (see annotated figure below).
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In regard to claim 2, Tanaka et al. teaches wherein, when each of the first inner anti-slip portions is divided into two or three sections using virtual lines at regular intervals along a longitudinal direction (see annotated figure below, virtual lines are dashed arrow lines), areas of the sections increase inward from the starting point, and when each of the first outer anti-slip portions is divided into two or three sections using virtual lines at regular intervals along a longitudinal direction, areas of the sections increase outward from the starting point (see annotated figure below).
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In regard to claim 3, Tanaka et al. teaches wherein the anti-slip portion is made of resin (paragraph 0028 of English translation), when each of the first inner anti-slip portions is divided into two or three sections using virtual lines at regular intervals along the longitudinal direction (see annotated figure above), an area of the resin in the section that is the closest to an inner end side is larger than an area of the resin in the section that is the closest to the starting point (see annotated figure above), and when each of the first outer anti-slip portion is divided into two or three sections using virtual lines at regular intervals along the longitudinal direction (see annotated figure above), an area of the resin in the section that is the closest to an outer end side is larger than an area of the resin in the section that is the closest to the starting point (see annotated figure above).
In regard to claim 4, Tanaka et al. teaches wherein the starting point is located in a region covering a diaphysis of the third metatarsal bone (see annotated figure 1 under claim 1 detailing the starting point the is located in a region that would cover a diaphysis of the third metatarsal bone when worn).
In regard to claim 5, Tanaka et al. teaches wherein the first inner anti-slip portions comprise: one or more first inner lower anti-slip portions (see annotated figure below: dashed line of lower anti-slip portion), a longitudinal direction of each of the first inner lower anti-slip portions extending obliquely inward and downward from the starting point (see dashed line in annotated figure below); and one or more first inner upper anti-slip portions (see solid line on upper portion of anti-slip portion), a longitudinal direction of each of the first inner upper anti-slip portions extending obliquely inward and upward from the starting point (see solid line in annotated figure below), and the first outer anti-slip portions comprise one or more first outer lower anti-slip portions, a longitudinal direction of each of the first outer lower anti-slip portions extending obliquely outward and downward from the starting point (see annotated figure below).
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In regard to claim 6, Tanaka et al. teaches wherein the anti-slip portion comprises a plurality of anisotropic third anti-slip portions disposed on an exterior side of a sole of a toe of the sock main body, and a longitudinal direction of each of the third anti-slip portions extends in a foot length direction (Figure 2, image b top longitudinal anti-slip portions along the toe).
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) 7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (WO2019/172249) in view of JP2019/2080A (herein referred to as JP2019).
Tanaka et al. fails to teach a plurality of anisotropic fourth anti-slip portions disposed on an exterior side of a sole of a rear foot of the sock main body, and a longitudinal direction of each of the fourth anti-slip portions extends in a foot length direction; and wherein the sports sock is a five-toed type.
In regard to claim 7, JP2019 teaches a sock with anti-slip portions wherein the anti-slip portion comprises a plurality of anisotropic fourth anti-slip portions disposed on an exterior side of a sole of a rear foot of the sock main body, and a longitudinal direction of each of the fourth anti-slip portions extends in a foot length direction (see figure 8, arrows and letters and paragraph 0103-0107).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the sock of Tanaka et al. with the anti-slip portions in the rear of the sole extending in a foot length direction as taught by JP2019, since the sock of Tanaka et al. provided with foot length extending anti-slip portions in the rear of the sole would provide for better traction within the shoe when performing front to back body/leg movements.
In regard to claim 10, JP2019 teaches wherein the sports sock is a five-toed type (paragraph 0077, five finger housings of the sock described).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the sock of Tanaka with the five finger housings as taught by JP2019, since the sock of Tanaka provided with fiver finger housing would teach a sock that has better toe grip during use.
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (WO2019/172249) in view of Coffinardi et al. (US 2024/0041135).
Tanaka et al. fails to teach wherein the anti-slip portion comprises one or more anisotropic second anti-slip portions disposed at a center on an exterior side of a region covering a malleolus medialis, a malleolus lateralis, and a portion therebetween on an instep side, and a longitudinal direction of each of the second anti-slip portions extends in a foot width direction and a height such that the sports sock extends to an area comprising an above-the ankle region and a below-the knee region, wherein the anti-slip portion comprises a fifth anti-slip portion disposed on an exterior side of a region extending from a heel to an upper end of a leg.
In regard to claim 8, Coffinardi et al. teaches a sock wherein the anti-slip portion comprises one or more anisotropic second anti-slip portions disposed at a center on an exterior side of a region covering a malleolus medialis, a malleolus lateralis, and a portion therebetween on an instep side, and a longitudinal direction of each of the second anti-slip portions extends in a foot width direction (see figure 13, identifier 9 and paragraphs 0241-0242).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the sock of Tanaka et al. with the front anti-ship portion as taught by Coffinardi et al., since the sock of Tanaka et al. provided with a front anit-slip portion would provide a sock with means to further secure the shoe and the sock together during use (paragraph 00242 of Coffinardi et al.).
In regard to claim 9, Coffinardi et al. teaches having a height such that the sports sock extends to an area comprising an above-the ankle region and a below-the knee region, wherein the anti-slip portion comprises a fifth anti-slip portion disposed on an exterior side of a region extending from a heel to an upper end of a leg (see figure 8, arrows and letters and paragraph 0103-0107).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the sock of Tanaka et al. extending farther up the leg and having anti-slip portions extending up the leg as taught by Coffinardi et al., since the sock of Tanaka et al. provided with a longer leg portion and anti-slip portions extending up the leg portion would provide a sock that allows for goop grip against a high top shoe or bottom in the heel and calf for better grip of the foot therein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be found cited in PTO-892 form submitted herewith. The cited prior art to Alley (US 2005/0091729) is of particular relevance to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton T Ostrup can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732