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 Rejections - 35 USC § 112
Claims 5-6 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.
In claims 5-6, the phrase “pad has a perimeter that is keystone-shaped.” is unclear and indefinite. The shape of a “keystone” is not known. Moreover, a keystone is typically a central stone at the summit of an arch and there is no such structure shown in any of the drawings. Applicant argues Merian-Webster Dictionary defines keystone as “the wedge shaped piece at the crown of an arch”; according to this definition then claims 5-6 would be inaccurate. See the figure below which appears to be the shape applicant is trying to claim. This shape is not the same as the footguard shown in the current application.
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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.
Claims 1,2,3,5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3006086 (Bird) in view of US 1259689 (Waterman) and US 3812606 (Merola).
Regarding claims 1-3,5 and 7, Bird discloses a foot guard and shoe assembly, comprising:
a shoe (11; see figures 1-2 ) having a lower side having a front portion and a rear portion and a metatarsal region, and
a foot guard (shoe guard 10) including
a pocket body defining a pocket [guard 10 includes a pocket body defining a pocket (flexible envelope 14 made from an upper leather cover 15 and a lower leather cover 16)],
an elastic impact pad positioned in the cover (cushion pad 13 made of sponge-like shock absorbing material with rigid plate 12 is contained within envelope formed by layers 15,16).
Bird lacks teaching
The shoe being “a cleated shoe” (claim 1); and
a first band attached to pocket body defining a first opening receiving the rear portion of the lower side of the shoe and a second opening receiving the front portion of the lower side of the shoe to secure the impact pad on the metatarsal region of the shoe, wherein the at least one band including a first band having a first end permanently coupled to the pocket body, a middle portion, and a second end removably coupled to at least one of the pocket body and the middle portion (claim 1).
Waterman teaches a shoe having cleats (7,8,10,15) in the front portion and rear portion of the shoe.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the shoe as taught by Bird with the cleats on the lower side, with the cleats at the front portion and rear portion, as taught by Waterman, to provide additional traction for the shoe.
Merola teaches a first elastic band (straps 15 extending under the shoe) attached to the body (10) defining a first opening receiving the rear portion of the footwear, and a second opening receiving the front portion of the footwear to secure the attachment device on the metatarsal region of the footwear.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the foot guard and cleated shoe assembly as taught by Bird with a first band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear. The additional band arrangement (18) taught by Bird will further facilitate securing the impact pad in place and additional could be used by itself since such an arrangement would facilitate attaching to a shoe without laces.
Regarding claim 3, the pocket as taught by Bird has a tapered end (13a) to form a closed state after the impact pad (12,13) is received in the pocket; see figure 4 of Bird.
Regarding claim 5, as understood, see figure 5 of Bird showing a shaped similar to applicants impact pad and therefore as understood shows a keystone curved shape.
Claims 12,14,15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3006086 (Bird) in view of US 1259689 (Waterman) and US 3812606 (Merola).
Regarding claims 12,14,15 and 18, Bird discloses a foot guard and shoe assembly, comprising:
a shoe (11; see figures 1-2 ) having a lower side having and a metatarsal region, and
a foot guard (shoe guard 10) including a cover (guard 10 includes a pocket body defining a pocket (flexible envelope 14 made from an upper leather cover 15 and a lower leather cover 16)], and
an elastic impact pad positioned in the cover (cushion pad 13 made of sponge-like shock absorbing material with rigid plate 12 is contained within envelope formed by layers 15,16) and secured t the shoe to position the elastic pad over the metatarsal region of the shoe (see figure 1).
Bird lacks teaching
The shoe being “a cleated shoe” (claim 12);
at least one band attached to cover, the at least one band including a first band having a first end permanently coupled to the cover, a middle portion, and a second end removably coupled to at least one of the cover and body the middle portion (claim 12); and
another band extend around a heel of the shoe (claim 14).
Waterman teaches a shoe having cleats (7,8,10,15) in the front portion and rear portion of the shoe.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the shoe as taught by Bird with the cleats on the lower side, with the cleats at the front portion and rear portion, as taught by Waterman, to provide additional traction for the shoe.
Merola teaches a first elastic band (straps 15 extending under the shoe) attached to the cover (10) defining a first opening receiving the rear portion of the footwear, and a second opening receiving the front portion of the footwear to secure the attachment device on the metatarsal region of the footwear, and a second band (elastic ankle strap 30) attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band (see figure 3 showing the strap (30) extending in a downward direction).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the foot guard and cleated shoe assembly as taught by Bird with a first band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear, and a second band attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band, as taught by Merola, to facilitate holding the impact pad in positioned on the shoe. This dual band arrangement replaces the strap (17) and buckle arrangement (18) taught by Bird so as to facilitate securing the impact pad in place and additional such an arrangement would facilitate attaching to a shoe without laces.
Terminal Disclaimer
The terminal disclaimer filed 9/24/2025 is not approved for the following reasons:
The person who signed the terminal disclaimer (only for application filed on or after 9/16/2012) is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
The person who signed the terminal disclaimer (only for application filed on or after 9/16/2012) has failed to state in what capacity it was signed on behalf of the juristic entity, and the person who signed it has not been established as being authorized to act on behalf of the juristic entity.
The party identified in the terminal disclaimer (only for application filed on or after 9/16/2012) is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3,5,7,9-12,14,15 and 18-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Application 18/600964 in view of Waterman ‘689. Patent Application ‘964 claims a footguard and shoe (footwear) assembly as claimed except for the footwear/shoe to be a cleated shoe. Waterman teaches a shoe having cleats (7,8,10,15) in the front portion and rear portion of the shoe. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed assembly as claimed by US Patent Application ‘964 with the cleats shoe/footwear, as taught by Waterman, to provide additional traction for the shoe.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Upon filing a proper terminal disclaimer, claims 9-11 and 19-21 would be allowable claims.
Response to Arguments
Applicant's arguments filed 9/24/2025 have been fully considered but they are not persuasive.
112 rejection
Applicant argues that applicant can be their own lexicographer…so long as any special meaning assigned to a term is clearly set forth in the specification.
In response, Applicant is apparently invoking his rights as an inventor to be his own lexicographer, arguing that he defined (Keystone-shaped) in the specification in a way that requires specific limitations to be read into the term. Although a patentee may be his own lexicographer, the patent specification must support his asserted definition. Applicant did not explicitly define terms anywhere in the specification in ways that support his current assertions. Moreover, the term “Keystone” is not even part of the specification. The text does not implicitly suggest that the words should be interpreted to convey the restricted interpretation that he now asserts. Additional, from applicant’s arguments this term doesn’t accurately describe the shape of the elastic instep pad. See the rejection above wherein the examiner addresses further argument from applicant. Finally, concludes the scope of the expression “Keystone-shaped” is still not clear. See the figure below which shows other examples of Keystone and note all of them have a different perimeter.
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Words in a claim must be given their plan meaning unless applicant has provided a clear definition in the specification. Normally, no term may be given a meaning repugnant to the usual meaning of the term, but applicant may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings. Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990).
Rejection #1 and Rejection #2 (103: Bird in view of Waterman and Merola)
Applicant argues (in summary) it would go against common sense for PHOSITA to consider a protective attachment for a work shoe (Bird); a lumberman shoe with cleats (Waterman); and a foot shield attachment for a shoe; as analogous art under the “relevant field of endeavor test.” Applicant states their field of endeavor is directed to foot guards that have an application in American football.
In response, In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. The examiner must determine whether a reference is analogous art to the claimed invention when analyzing the obviousness of the subject matter under examination. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023). If a reference is not analogous art to the claimed invention, it may not be used in an obviousness rejection under 35 U.S.C. 103. However, there is no analogous art requirement for a reference being applied in an anticipation rejection under 35 U.S.C. 102. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
Examples of analogous art in the mechanical arts include: Stevenson v. Int'l Trade Comm., 612 F.2d 546, 550, 204 USPQ 276, 280 (CCPA 1979) ("In a simple mechanical invention a broad spectrum of prior art must be explored and it is reasonable to permit inquiry into other areas where one of ordinary skill in the art would be aware that similar problems exist."). See also In re Bigio, 381 F.3d 1320, 1325-26, 72 USPQ2d 1209, 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a specific bristle configuration. The Board affirmed the examiner’s rejection of the claims as being obvious in view of prior art patents disclosing toothbrushes. Id. at 1323, 72 USPQ2d at 1210. The appellant disputed that the patent references constituted analogous art. On appeal, the court upheld the Board’s interpretation of the claim term "hair brush" to encompass any brush that may be used for any bodily hair, including facial hair. Id. at 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the "field of endeavor test" for analogous art and determined that the references were within the field of the inventor’s endeavor and hence were analogous art because toothbrushes are structurally similar to small brushes for hair, and a toothbrush could be used to brush facial hair. Id. at 1326, 72 USPQ2d at 1212.
Therefore, the claimed “foot guard and cleated shoe assembly” (Applicant is claiming a combination of a “foot guard” and a “cleated shoe assembly”) encompasses any foot guard and shoe assembly that can be worn/used by a person (i.e. a person’s foot) and therefore both Bird and Merola which both contain guards/protectors and shoe assemblies) and therefore satisfy the "field of endeavor test" for analogous art and therefore are within the field of the inventor’s endeavor. With regard to the prior art of “Waterman”, this is also a shoe (therefore a shoe assembly) and therefore falls within the field of inventor’s endeavor (i.e. footwear). Moreover, the reference is reasonably pertinent since it is providing a work shoe (i.e. work shoe taught by Bird) with cleats on the bottom of a shoe sole as taught by the work shoe of Waterman (i.e. a lumbermen’s shoe is also a work shoe).
With regard to the “foot guards have an application in American football” and applicant’s arguments related to American football, this language is not in the claims and more over the prior art (such as the combination of the prior art applied above) could inherently be used in other activities including American football.
Throughout applicant’s arguments there is comments with regard to American football and the prior art applied in the rejection, however, these arguments are moot inasmuch as none of the prior art applied is claiming footwear for American Football. As noted above the prior art footwear could inherently be used in other activities including American Football.
With regard to applicant’s field of endeavor, applicant invention is with regard to providing a footguard on an article of footwear and therefore this is generally was the direction of Examiner’s search for analogous prior art.
Applicant argues that the straps of Merola would actually lead away from the type of straps used in Applicant’s foot guard since the footguard is not exposed to motorcycle riding or high winds.
In response, the dual band arrangement taught by Merola replaces the strap (17) and buckle arrangement (18) taught by Bird so as to facilitate securing the impact pad in place and additional such an arrangement would facilitate attaching to a shoe without laces. Moreover, if the foot guard and cleated shoe assembly as taught by the combination above was worn while encountering high winds this would provide a more secure attachment.
Applicant argues that PHOSITA would be unlikely to go search for protection from “injury due to objects dropped thereupon [the foot] (Graham) or “footwear upper protectors for cycle riders” (Merola).
In response, applicant is claiming a foot guard for a shoe assembly so this is exactly where the search should be directed (e.g. USPC 36 (Boots, Shoes, and Leggings /72R (Protectors).
Applicant provides a general argument that the office action fails to clearly articulate its reasons for rejection Applicant’s claims for obviousness.
In response, in each of the art combinations applied the examiner has provide motivation to combine.
The rejection with regard to claims 9-11,19 and 21 have been withdrawn and therefore these argument are now moot.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“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 does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571)272-4556. The examiner can normally be reached Monday-Thursday 8AM-6PM.
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 on 5712724888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/Primary Examiner, Art Unit 3732