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 .
Claim Objections
Claims 10 are objected to because of the following informalities:
“a plurality of sensory node elements node elements” in Claim 10 should read “a plurality of sensory node elements”
“the first sensory node element” in Claim 11 should read “a first sensory node element” as a first sensory node element has not yet been explicitly recited
“the first recess” in Claim 11 should read “a first recess” as a first recess has not yet been explicitly recited
“the second recess” in Claim 13 should read “a second recess” as a second recess has not yet been explicitly recited
Appropriate correction is required.
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 11 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 11 recites “wherein the first sensory node element can tilt about a first central axis of the first recess” which fails to further limit Claim 1, from which Claim 11 ultimately depends. Claim 1 recites “wherein each sensory node element of the plurality of sensory node elements sensory node element can tilt about the central axis of its respective recess,” which clearly includes the first sensory node element, the first central axis, and the first recess. 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 § 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.
Claim(s) 1-5 and 9-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Banik (US 2009/0113757).
Regarding Claim 1, Banik teaches an article of footwear (10) comprising: an upper (20) comprising an interior void (see annotated Fig.), wherein the interior void is partially defined by a foot-receiving layer (24); a sole structure (see annotated Fig.) coupled to the upper (annotated fig. 1 shows the sole structure coupled to the upper (20)) and comprising a plurality of recesses (40) , wherein each recess of the plurality of recesses comprises a central axis (fig. 3 shows the recesses (40), each recess being circular and therein comprising a central axis); and a plurality of sensory node elements (50), wherein each sensory node element of the plurality of sensory node elements is disposed within a respective recess of the plurality of recesses and is attached to the foot receiving layer of the upper (fig. 6 shows each sensory node element (50) disposed within a respective recess of the plurality of recesses and being attached to the foot receiving layer (24); paragraph [0024] teaches “The footbed 24 can be secured to the bottom of the upper and/or the midsole as desired”), wherein each sensory node element of the plurality of sensory node elements sensory node element can tilt about the central axis of its respective recess (fig. 6 shows each sensory node element (50) receiving a force, therein the sensory node elements are clearly capable of movement and tilting about the central axis of the respective recess (40)).
Regarding Claim 2, Banik teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Banik further teaches wherein the foot-receiving layer (24) is a sockliner (figs. 4 and 5 show the foot-receiving layer (24) being a sockliner; paragraph [0023] teaches “an internal footbed 24 or sock liner”).
Regarding Claim 3, Banik teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Banik further teaches wherein the foot-receiving layer (24) is a strobel sock (figs. 4 and 5 show the foot-receiving layer (24) being a strobel sock in that it is attached to the upper (20); paragraph [0024] teaches “The footbed 24 can be secured to the bottom of the upper”).
Regarding Claim 4, Banik teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Banik further teaches wherein the foot-receiving layer (24) is an insole (figs. 4 and 5 show the foot-receiving layer (24) being an insole; paragraph [0023] teaches “an internal footbed 24,” wherein an internal footbed is considered as equivalent to an insole).
Regarding Claim 5, Banik teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Banik further teaches wherein the foot-receiving layer (24) comprises a stretchable material such that the plurality of sensory node elements can move relative to the sole structure under the weight of a user (paragraph [0024] teaches “The footbed can be constructed from ethyl vinyl acetate (EVA) foam, or any other suitable cushioning material. The rigidity and the flexibility of the EVA foam can be varied as desired,” wherein EVA foam is a stretchable material that would clearly function to allow the sensory node elements (50) to move relative to the sole under the weight of the user).
Regarding Claim 9, Banik teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above. Banik further teaches wherein each sensory node element (50) of the plurality of sensory node elements has a bottom end (see annotated Fig.) configured to contact a ground surface and a top end (see annotated Fig.) disposed opposite the bottom end, and wherein the top end of at least one sensory node element of the plurality of sensory node elements has a smaller diameter than the bottom end of the at least one sensory node element (annotated figs. 4 and 5 show the bottom ends having a larger diameter than the opposite top ends of the sensory node element).
Regarding Claim 10, Banik teaches an article of footwear (10) comprising: a plurality of sensory node elements (50), including a first sensory node element (53), the first sensory node element having a first bottom end (see annotated Fig.) configured to contact a ground surface and a first top end (see annotated Fig.) disposed opposite the first bottom end (annotated fig. 4 shows a first sensory node element having a first bottom end configured to contact a ground surface and an opposite first top end); and a carrier member (30) including a plurality of recesses (40) configured for receiving the plurality of sensory node elements (fig. 3 shows the carrier member (30) including a plurality of recesses (40) each configured to receive a sensory node element (50)), wherein the plurality of recesses includes a first recess (44) corresponding with the first top end of the first sensory node element (annotated fig. 4 shows the first recess corresponding with the first top end of the first sensory node element); and an inner foot-receiving layer (24), wherein the plurality of sensory node elements is attached to the inner foot-receiving layer (figs. 4 and 5 shows each sensory node element (50) being attached to the foot receiving layer (24); paragraph [0024] teaches “The footbed 24 can be secured to the bottom of the upper and/or the midsole as desired”).
Regarding Claim 11, Banik teaches all of the limitations of the article of footwear of Claim 9, as discussed in the rejections above. Banik further teaches wherein the first sensory node element can tilt about a first central axis of the first recess (fig. 6 shows the first sensory node element receiving a force, therein the first sensory node element is clearly capable of movement and tilting about the first central axis of the first recess (40)).
Regarding Claim 12, Banik teaches all of the limitations of the article of footwear of Claim 10, as discussed in the rejections above. Banik further teaches wherein a second sensory node element (56) can tilt about a second central axis of a second recess (42) (fig. 6 shows the second sensory node element receiving a force, therein the second sensory node element is clearly capable of movement and tilting about the second central axis of the second recess (40)).
Regarding Claim 13, Banik teaches all of the limitations of the article of footwear of Claim 11, as discussed in the rejections above. Banik further teaches wherein the first recess (44) is spaced apart from a second recess (42) (annotated fig. 6 shows the first (44) and second (46) recesses being spaced apart from one another).
Regarding Claim 14, Banik teaches all of the limitations of the article of footwear of Claim 9, as discussed in the rejections above. Banik further teaches wherein the inner foot-receiving layer(24) is an insole (figs. 4 and 5 show the foot-receiving layer (24) being an insole; paragraph [0023] teaches “an internal footbed 24,” wherein an internal footbed is considered as equivalent to an insole).
Regarding Claim 15, Banik teaches all of the limitations of the article of footwear of Claim 9, as discussed in the rejections above. Banik further teaches wherein the article of footwear includes an upper (10), and wherein the inner foot-receiving layer (24) is part of the upper (paragraph [0024] teaches “The footbed 24 can be secured to the bottom of the upper,” therein the inner foot receiving later is clearly a part of the upper).
Regarding Claim 16, Banik teaches all of the limitations of the article of footwear of Claim 9, as discussed in the rejections above. Banik further teaches wherein: the inner foot-receiving layer is a flexible layer (paragraph [0024] teaches “The footbed can be constructed from ethyl vinyl acetate (EVA) foam, or any other suitable cushioning material. The rigidity and the flexibility of the EVA foam can be varied as desired,” wherein EVA foam is a flexible material) and the first sensory node element is movable between a first configuration and a second configuration, in the first configuration, the first top end of the first sensory node element is disposed a first distance from an inner surface of the carrier member, and in the second configuration, the first top end of the first sensory node element is disposed a second distance from the inner surface of the carrier member, the second distance being greater than the first distance (annotated fig. 4 shows the first sensory node in the first configuration, the first top end of the first sensory node being flush with the inner surface of the carrier member (30), the second configuration is not shown, but would clearly be capable of occurring when a force is applied to the first sensory node, causing the sensory node to buckle, disposing the first top end a second, greater distance from the inner surface, as compared to the first distance).
Regarding Claim 17, Banik teaches all of the limitations of the article of footwear of Claim 15, as discussed in the rejections above. Banik further teaches wherein in the first configuration, the first top end of the first sensory node element is flush with the inner surface of the carrier member (annotated fig. 4 shows the first top end of the first sensory node element being flush with the inner surface of the carrier member).
PNG
media_image1.png
544
792
media_image1.png
Greyscale
PNG
media_image2.png
822
619
media_image2.png
Greyscale
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banik (US 2009/0113757) in view of Kriegel (US 2016/0095378).
Regarding Claim 6, Banik teaches all of the limitations of the article of footwear of Claim 5, as discussed in the rejections above.
Banik does not teach wherein the foot-receiving layer comprises spandex. However, it is known in the art from Kriegel that spandex is suitable for forming a foot receiving layer (paragraph [0011] of Kriegel teaches “The foot bed 12 supports the wearer's foot and includes a flexible covering 18. The flexible covering 18 can be composed of one or a combination of closely woven natural or synthetic fibers or blend of materials including but not limited to solid or patterned cloth woven from cotton, nylon, polyester, rayon, or silk fibers, spandex”).
As such, since the use of plastic is known in the art for this intended use and would only produce the typical results of a flexible foot receiving layer (paragraph [0011] of Kriegel teaches “The foot bed 12 supports the wearer's foot and includes a flexible covering 18. The flexible covering 18 can be composed of one or a combination of closely woven natural or synthetic fibers or blend of materials including but not limited to solid or patterned cloth woven from cotton, nylon, polyester, rayon, or silk fibers, spandex”), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Banik as such. Further, it has been held that when the only difference between the prior art and the claimed invention is the provision of a specific material recognized in the art as being suitable for the intended use of the claimed component a finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banik (US 2009/0113757) in view of Wiener (US 2013/0232818).
Regarding Claim 7, Banik teaches all of the limitations of the article of footwear of Claim 5, as discussed in the rejections above.
Banik does not teach wherein the foot-receiving layer comprises neoprene. However, it is known in the art from Wiener that neoprene is suitable for forming a foot receiving layer (paragraph [0028] of Wiener teaches “A film may optionally be included as part of the insole. The film is desirably an extruded film, PVC, rubbers, neoprene.”).
As such, since the use of plastic is known in the art for this intended use and would only produce the typical results of a flexible foot receiving layer (paragraph [0028] of Wiener teaches “A film may optionally be included as part of the insole. The film is desirably an extruded film, PVC, rubbers, neoprene, or any other film capable of being stretched in the machine direction to impart flexibility in the insole.”), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Banik as such. Further, it has been held that when the only difference between the prior art and the claimed invention is the provision of a specific material recognized in the art as being suitable for the intended use of the claimed component a finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banik (US 2009/0113757) in view of Pierobon (US 2015/0374064)
Regarding Claim 8, Banik teaches all of the limitations of the article of footwear of Claim 1, as discussed in the rejections above.
Banik does not teach wherein the foot-receiving layer comprises a weather-proofing material. However, it is known in the art from Pierobon that a weather proofing material is suitable for forming a foot receiving layer (paragraph [0020] of Pierobon teaches “of insole 5 made of vapor-permeable and waterproof material”).
As such, since the use of plastic is known in the art for this intended use and would only produce the typical results of a foot receiving layer that protects the wearer’s foot from water while allowing the shoe to remain breathable (paragraph [0020] of Pierobon teaches “insole 5 made of vapor-permeable and waterproof material, so as to conveniently form, with the latter, inside shoe 1, a sock or vapor-permeable and waterproof bag, which in use surrounds the foot on all sides.”), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Banik as such. Further, it has been held that when the only difference between the prior art and the claimed invention is the provision of a specific material recognized in the art as being suitable for the intended use of the claimed component a finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEY A SMITH whose telephone number is (571)272-6597. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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.
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.
/HALEY A SMITH/Primary Examiner, Art Unit 3732
Prosecution Insights