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 .
DETAILED ACTION
The preliminary amendment filed 11 August 2025 has been entered. Currently Claims 21-22, 26-30, 33, 36-37, 40-42 and 45-51 are pending.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: ARTICLES OF FOOTWEAR HAVING VIBRATING MOTORS
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.
The applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claims 21-22, 26-28, 30, 36-37, 41-42 and 46-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown (U.S. PG Publication No. 2015/0096203).
Regarding Claim 21 and 45, Brown discloses in Figures 1-7, an article of footwear comprising: a sole 18; a mounting layer 22 coupled with the sole, the mounting layer 22 having pockets, each pocket configured to receive a motor; a plurality of motors 38, 40, 42, 44 and 46 for at least 3 vibration zones, each motor disposed in one of the pockets and configured to vibrate (the motors are disposed within the insert 22 in an opening or pocket); a protective housing coupled to the mounting layer 22, the protective housing 60 containing a battery 58 and control circuitry (electrical assembly including wires 48, 50, 523, 54, 56 inherently connects battery and switch and charger plug Para 0028), wherein the battery 58 is configured to power the motors 38, 40, 42, 44 and 46 , and wherein the control circuitry is configured to control the motors 38, 40, 42, 44 and 46; and a switch 62 coupled to the control circuitry and configured to turn the motors on and off (Para 0028).
Regarding Claim 22, Brown discloses the article of footwear of claim 21, wherein the article of footwear comprises a slide (the invention pertains to all kinds of footwear including slippers para 0003).
Regarding Claim 26, Brown discloses in Figures 1-7 The article of footwear of claim 21, wherein the plurality of motors 38, 40, 42, 44 and 46 comprises at least one motor disposed in a forefoot region of the sole, at least two motors disposed in a midfoot region of the sole, and at least two motors disposed in a rearfoot region of the sole (clearly shown in Figure 2).
Regarding Claim 27, Brown discloses in Figures 1-7, the article of footwear of claim 21, wherein the pockets are disposed on a bottom of the mounting layer 22.
Regarding Claim 28. Brown discloses the article of footwear of claim 27, wherein the pockets comprise five pockets (each corresponding to each of the motors 38, 40, 42, 44 and 46).
Regarding Claim 30, Brown discloses in Figures 1-7, the article of footwear of claim 21, wherein the switch 62 comprises a button disposed on an interior of the article of footwear such that a user's foot can operate the switch while wearing the article of footwear (on off switch 62 Para 0028).
Regarding Claim 36, Brown discloses in Figures 1-7, the article of footwear of claim 21, wherein the battery is rechargeable, the article of footwear further comprising a charging port configured to receive a charger to charge the battery (Para 0028).
Regarding Claim 37, Brown discloses in Figure 1, the article of footwear of claim 21, wherein the protective housing 60 is disposed in an approximate foot arch section of the sole.
Regarding Claim 41, Brown is seen to disclose the equivalent structure for the insert 22 or sole where the article of footwear of claim 21, wherein the article of footwear is injection molded.
Regarding the injection molding, the applicant is advised that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, (Fed. Cir. 1985). In this case, the cited limitations failed to distinguish the claimed structure from the patented footwear of Brown. See MPEP § 2113
Regarding Claim 42, Brown discloses in Figures 1-7, the article of footwear of claim 21, wherein a top surface of the sole 8 comprises cavities, wherein the cavities comprise a cavity for each of the plurality of motors 38, 40, 42, 44 and 46 and cavity for the protective housing 68.
Regarding Claim 46, Brown discloses in Figures 1-7, the article of footwear of claim 45, wherein the three vibration zones comprise a front vibration zone having at least one vibrating motor 38 of the plurality of vibrating motors disposed in a forefoot region of the sole.
Regarding Claim 47, Brown discloses in Figure 1, the article of footwear of claim 45, wherein the three vibration zones comprise a middle vibration zone having at least two vibrating motors 40, 42 of the plurality of vibrating motors disposed in a midfoot region of the sole.
Regarding Claim 48, Brown discloses in Figure 1, the article of footwear of claim 45, wherein the three vibration zones comprise a back vibration zone having at least two vibrating motors 44, 46 of the plurality of vibrating motors disposed in a rearfoot region of the sole.
Regarding Claim 49, Brown discloses in Figures 1 and 5, the article of footwear of claim 45, wherein the plurality of vibrating motors 38, 40, 42, 44 and 46 is at least partially embedded within the sole.
Regarding Claim 50, Brown discloses in Figures 1 and 5, the article of footwear of claim 45, further comprising a mounting layer 22 coupled to the sole, wherein the mounting layer comprises a plurality of pockets, and wherein each of the plurality of vibrating motors 38, 40, 42, 44 and 46 is disposed in one of the plurality of pockets (Par 0028).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claims 29, 40 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (U.S. PG Publication No. 2015/0096203).
Regarding Claim 29, Brown does not disclose the mounting layer 22 is silicone.
It would have been obvious to one of ordinary skill in the art at the time of filing to use a thermally and flexible material such as silicone, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945).
Regarding Claim 40 and 51, Brown discloses that the invention relates to all types of footwear (para 0003 including a slide or slipper) but does not disclose a strap coupled to the sole, the strap extending from a lateral side of the sole to a medial side of the sole such that an area between the strap and the sole is configured to receive a wearer's foot.
In this case, selecting a given style of footwear having strap extending between the lateral sides for would have flown naturally to one of ordinary skill in the art as necessitated by the specific requirements of a given application.
Claims 29, 40 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (U.S. PG Publication No. 2015/0096203) in view of Wersland (U.S. Patent No. 10,357,425).
Brown does not disclose the switch 62 is further configured to transition between operating modes of the motors, wherein the operating modes comprises at least one of different speeds of vibration and different patterns of vibration.
Wersland discloses a therapeutic massage having a switch 104 that increases the speed of the motor 106 to increase the speed of the vibration to change the level of massage (Col 6, lines 5-20).
It would have been obvious to one of ordinary skill in the art to adapt a switch to change the speed of vibration as taught by Wersland because the market place reflects the reality that using a switch to increase or reduce speed of a vibration motor is commonplace and the switch as claimed would result from the application of the prior knowledge or known massaging articles as demonstrated by Brown in a predictable manner. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Walker (U.S. PG Publication No. 2023/0218035) and Chiu (U.S. PG Publication No. 2008/0005936) disclose footwear with vibrating motors disposed within the soles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J MAY/Primary Examiner, Art Unit 2875