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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 September 2025 has been entered.
Response to Remarks
Applicant's remarks filed 30 June 2025 have been fully considered but they are not persuasive. Examiner appreciates Applicant’s annotations and remarks on several of the references already made of record. However, as these references are not being applied in the current Office Action they will not be addressed specifically.
Applicant has made several remarks regarding the geometry of the device of Lin. Applicant has noted language used in the Lin reference (wing) and structural differences with some of the alternate embodiments shown in Lin. However, when determining if the current application is allowable, the claim language must be interpreted in light of the original disclosure.
Applicant has claimed a structure including an elongated, two hole structure dimensioned for use with shoestrings. As demonstrated above, Lin also discloses an elongated structure with two holes for use with shoes and shoe strings. The additional structures and features included within Lin are not precluded or excluded by the current claim language.
While Lin does not describe the same mode of usage as also included within the claim, Applicant is pursuing allowability of the apparatus itself. The manner of using the apparatus is not at issue currently.
As previously noted, and again repeated herewith, only subject matter originally included at the date of filing can be included in the claims. Any further amendments must be fully supported in the original disclosure. Claim 40 is not allowable and Applicant’s remarks are not persuasive at this time.
Claim Objections
Applicant’s Claim 40 is objected to because of the following informalities:
In line 1, the term “elengated" should be replaced by --elongated--;
In line 8, the term “lenth” should be replaced by --length--;
In lines 9 and 10, the term “mm.” should be replaced by --mm--;
In line 15, the term “were” should be replaced by --where--;
In lines 18 and 21 the term “gose” should be replaced by --goes--;
In line 30 the term “molding” should be replaced by --molding--.
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):
(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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 40 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 40, line 2, Applicant claims the device is 10 mm wide. There does not appear to be original support for this or any particular dimension in the width direction.
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 40 is rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
In claim 40, lines 9-10 it is unclear what is intended by the phrase indicating the drill hole size. This appears to indicate a method of forming the holes such that a drill is used to form the holes. This may be an issue of new matter.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (US 2008/0083134).
Regarding claim 40, Lin discloses a hand holdable elengated plastic shoe tying device (10), with 2 holes (14) the 2 holes are centered from the sides and the center point between the 2 holes is centered from the ends and or to say the 2 hole have criticality in both width and --lenth—direction, [used in a up and down, (top of boot to toe), (heel to toe) vertical, direction; were 2 shoe strings go through 1st hole, (1st aglet with 1st string then 2nd aglet with 2nd string gose through 1st hole tight), makes half loop and put (1st string through 2nd hole, then 2nd aglet with 2nd string also gose through 2nd hole tight) pull both shoe strings to take out half loop’ this forms ligature at bend and makes tight; repeat for second shoe, this uses a total of 2 tying devices 1 for each shoe to replace regular bow knot of 2 regular ties shoes]* this device uses commonly used plastic injection and commonly used molding (The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been patentable weight. MPEP 2113).
Lin fails to disclose the apparatus is made of plastic.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use plastic for the material in Lin since plastic is recognized as durable material that can be produced at low costs. 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.
Lin further fails to disclose 20mm long, 10mm wide, 6,5mm thick the 2 holes have a diameter between 5.9mm and 6.4 mm the distance between 2 holes is between 2.5mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use these claimed ranges to properly fit the dimensions of a shoe and shoelace while allowing easy manipulation. As discussed in MPEP 2144.05 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.
Examiner’s note*: the above (and below) statements in brackets are examples of intended use failing to limit the structure of the claimed invention. The prior art must only be capable of performing said functional recitations to be applicable and in the instant case, the prior art of Lin is indeed capable. Note that it has been held 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. Ex parte Masham, 2 USPQ2d 1647 (1987).
Conclusion
It appears that the applicant in this application is a pro se applicant (an inventor filing the application alone without the benefit of a Patent Attorney or Agent). Applicant may not be aware of the preferred methods of ensuring timely filing of responses to communications from the Office and may wish to consider using the Certificate of Mailing or the Certificate of Transmission procedures outlined below.
CERTIFICATE OF MAILING
To ensure that the Applicant's mailed response is considered timely filed, it is advisable to include a "certificate of mailing" on at least one page (preferably on the first page) of the response. This "certificate" should consist of the following statement:
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: "Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450” on (date).
(Typed or printed name of the person signing this certificate)
(signature)
CERTIFICATE OF TRANSMISSION
Alternatively, if applicant wishes to respond by facsimile rather than by mail, another method to ensure that the Applicant's response is considered timely filed, is to include a "certificate of transmission" on at least one page (preferably on the first page) of the response. This method should be used by foreign applicants without access to the U.S. Postal Service. This "certificate" should consist of the following statement:
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (571) 273-8300 (date).
(Typed or printed name of the person signing this certificate)
(signature)
These "Certificates" may appear anywhere on the page, and may be handwritten or typed. They must be signed, and the date must be the actual date on which it is mailed or transmitted.
For the purpose of calculating extensions of time, the date shown on the certificate will be construed as the date on which the paper was received by the Office, regardless of the date the U.S. Postal Service actually delivers the response, or the fax is “date-stamped” in. In this way, postal or transmission delays do not affect the extension-of-time fee.
In the event that a communication is not received by the Office, applicant's submission of a copy of the previously mailed or transmitted correspondence showing the originally signed Certificate of Mailing or Transmission statement thereon, along with a statement from the person signing the statement which attests to the timely mailing or transmitting of the correspondence, would be sufficient evidence to entitle the applicant to the mailing or transmission date of the correspondence as listed on the Certificate of Mailing or Transmission, respectively.
NOTICE TO APPLICANT: In the case of lost or late responses the use of other “receipt producing” forms of mailing a correspondence to the Patent Office, such as Certified Mail, or a private shipper such as FedEx, WILL NOT result in the applicant getting the benefit of the mailing date on such receipts. These receipts are not considered to be acceptable evidence since there is nothing to “tie-in” the receipt with the particular document allegedly submitted.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S LEE whose telephone number is (571)270-5735. The examiner can normally be reached M-F 9-5.
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, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.S.L/Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677