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
Response to Amendment
Applicant’s amendment filed May 11, 2023 has been received, Claims 1-4 are currently pending, with Claims 1-2 remaining withdrawn from prosecution at this time.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
2. Claims 3-4 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Asam (GB 527,235 A) in view of Meibock (US 2004/0168357).
Regarding Claim 3, Asam discloses a piece of footwear, comprising: footwear having a heel portion and a spaced apart forefoot portion (as seen in Fig.1); a continuous sole member extending along a lower portion of the footwear from the heel portion to the forefoot portion (as seen in Fig.1); and 17Attorney Docket SMI.00020a substantially flexible midfoot portion (1,6) disposed inside of the footwear and suspended above the sole member such that no portion of the midfoot portion contacts the sole member (as seen in Fig.2 & 3); wherein no portion of the midfoot portion extends into or contacts the heel or forefoot portions (as seen in Fig.2 & 3); wherein the midfoot portion (1,6) is adapted to receive a wearer's midfoot portion such that the midfoot portion envelopes an entire circumference of the wearer's midfoot portion (as seen in Fig.2); wherein the midfoot portion is adapted to be tightened around the entire circumference of the wearer's midfoot portion by manipulation of fasteners (3 & shoelace) connected to the midfoot portion so as to conform the midfoot portion around the entire circumference of the wearer's midfoot portion (as seen in Fig.1 & 2; Pg.1, lines 47-58); wherein the midfoot portion is adapted to prevent the wearer's midfoot portion from contacting the sole member when the wearer's midfoot portion is received therein (Pg.1, lines 60-62). Asam does not disclose the footwear being an ice skate boot that has an ice skate blade member fastened to the heel portion and the forefoot portion. However, Meibock teaches an article of footwear which is an ice skate boot with varying rigidities for support (Abstract), the ice skate boot having a continuous sole member (302,306) with an ice skate blade (1120) fastened to heel and forefoot portions (as seen in Fig.12).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the footwear of Asam to be an ice skate boot having a skate blade, as taught by Meibock, in order to provide footwear having enhanced support for the wearer’s needs when using the footwear and a skate blade to easily glide across a surface for the user’s desired sport. It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed (i.e. an ice skate boot) does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). It is noted that the crux of the present invention is a midfoot portion suspending the midfoot of a user above the sole, which is wholly taught by Asam, merely including such a midfoot suspension system in another type of footwear such as an ice skate boot amounts to nothing more than the intended use of the footwear.
Regarding Claim 4, Asam discloses a piece of footwear, consisting of: footwear having a heel portion and a spaced apart forefoot portion (as seen in Fig.1); a continuous sole member extending along a lower portion of the footwear from the heel portion to the forefoot portion (as seen in Fig.1); and a substantially flexible midfoot portion (1,6) disposed inside of the footwear and suspended above the sole member (as seen in Fig.2 & 3); wherein no portion of the midfoot portion contacts the sole member and no part of the midfoot portion extends into or contacts the heel or forefoot portions (as seen in Fig.2 & 3); wherein the midfoot portion is adapted to receive a wearer's midfoot portion such that the midfoot portion envelopes an entire circumference of the wearer's midfoot portion (as seen in Fig.2); wherein the midfoot portion is adapted to be tightened around the entire circumference of the wearer's midfoot portion by manipulation of fasteners (3 & shoelace) connected to the midfoot portion so as to conform the midfoot portion around the entire circumference of the wearer's midfoot portion (as seen in Fig.1 & 2; Pg.1, lines 47-58); wherein the midfoot portion is adapted to prevent the wearer's midfoot portion from contacting the sole member when the wearer's midfoot portion is received therein (Pg.1, lines 60-62). Asam does not disclose the footwear being an ice skate boot that has an ice skate blade member fastened to the heel portion and the forefoot portion. However, Meibock teaches an article of footwear which is an ice skate boot with varying rigidities for support (Abstract), the ice skate boot having a continuous sole member (302,306) with an ice skate blade (1120) fastened to heel and forefoot portions (as seen in Fig.12).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the footwear of Asam to be an ice skate boot having a skate blade, as taught by Meibock, in order to provide footwear having enhanced support for the wearer’s needs when using the footwear and a skate blade to easily glide across a surface for the user’s desired sport. It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed (i.e. an ice skate boot) does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). It is noted that the crux of the present invention is a midfoot portion suspending the midfoot of a user above the sole, which is wholly taught by Asam, merely including such a midfoot suspension system in another type of footwear such as an ice skate boot amounts to nothing more than the intended use of the footwear.
Response to Arguments
Applicant's arguments filed May 11, 2023 have been fully considered but they are not persuasive.
2. Applicant’s Remarks: Applicant submits that one of ordinary skill in the art would not look to Asam for guidance on adapting an ice skating boot, as Asam is completely silent thereon and only discloses his invention in the context of a shoe. Applicant asserts that Asam relies on a heel band connected to the midfoot band, and such a feature is excluded from the claimed invention.
Examiner’s Response: Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant appears to argue that Asam is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Asam is both in the field of Applicant’s endeavor (i.e. footwear), and is reasonably pertinent to the particular problem with which the applicant was concerned (i.e. midfoot support), in order to be relied upon as a basis for rejection of the claimed invention. Further, Asam details the heel band as being optional on Page 1, lines 47-66 (i.e. “If it is desired…”). Therefore, the heel band is not required, nor was it used in the rejection as being part of the midfoot portion. For these reasons, Applicant’s argument is not found persuasive.
3. Applicant’s Remarks: Applicant asserts The entirety of the disclosure of Meibock is devoted to providing a skate boot comprised of materials that are relatively rigid about a heel portion of the skate boot and relatively less rigid in proximity to an ankle portion of a wearer, presumably for the comfort of the wearer. Additionally, there does not appear to be any discussion of the issue of providing adequate arch support in the skate boot or a system therefor as presently claimed. Accordingly, there is no motivation to combine the disclosures of Asam and Meibock to arrive at the claimed invention.
Examiner’s Response: Applicant’s arguments are moot as Meibock was merely used to teach a skate boot and blade. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732