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 .
This is in response to Applicant’s amendment in which claims 1-3 and 7 have been amended, claim 18 has been added, and claims 1-18 remain pending.
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.
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Claims 1, 2, and 5-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,071,352. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent, as seen in the table below.
Regarding claim 8, the claims do not disclose the specific order of the steps of placing the band on the threaded pin shackle and aligning the arm openings with the attachment portions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the band on the threaded pin shackle prior to aligning the arm openings with the attachment portions in order to allow the band to be more easily attached to the threaded pin shackles before they are connected to the shoe, providing more space for maneuvering and attaching the two elements.
Regarding claims 9-14, the claims do not disclose the specific order of the steps of passing the pin through the openings and the shoe attachment portion and rotating the pin to secure the threads, and connecting the band end to threaded pin shackle body. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pass the pin through the openings and the shoe attachment portion and rotate the pin to secure the threads, after connecting the band end to threaded pin shackle body in order to allow the band to be attached to the shoe before the threaded pin shackle is closed.
17/385548 Claims
US 11,071,352 Claims
1
1, 8
2
1, 8
5
1, 8
6
1, 8
7
1, 8
8
obvious, as discussed above
9-18
obvious, as discussed above
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 5-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canto Cano (ES 1 069 969 U), herein Canto, in view of Walchle et al. (US 2012/0159987), herein Walchle.
Regarding claim 1, Canto discloses a method for shoe ornamentation of a loafer type shoe (Fig. 3) having two attachment portions (2), the loafer type shoe having a side wall and a top wall with an outer surface, the top wall being connected to the side wall, wherein the top wall has attachment portions on the outer surface thereof comprising attachment loops (2) at spaced apart locations on the loafer type shoe top wall outer surface, the method comprising: a) attaching a first connector (1) to one of the two attachment portions of the shoe located on the shoe top wall outer surface; b) attaching a second connector (1) to the other of the two attachment portions of the shoe located on the top wall outer surface; c) placing a band (6) having a first end and a second end on the first connector and on the second connector, wherein the band first end is connected on the first connector and wherein the band second end is connected on the second connector (page 3, lines 3-25; Fig. 1-3).
Canto does not disclose that the connector is a threaded pin shackle having a removable pin. Walchle teaches a connector which releasably secures two elements together. The connector is a threaded pin shackle having a pair of arms, each arm having an opening (apertures 20, 22) therein at least one of the openings is threaded, the threaded pin shackle having a removable pin (pin 24) with a threaded end (threaded portion 28) having threads; wherein the threaded pin shackle is attached by aligning the arm openings on opposite sides of an attachment portion (looped end 11 or tongue 80) and passing the pin through one of the first threaded pin shackle arm openings and through the attachment portion and into the other one of the first threaded pin shackle arm openings, and rotating the pin to secure the threads to the at least one threaded opening of the first threaded pin shackle arm openings. Rotating the threaded pin shackle pin to secure the threads to the at least one threaded opening of the threaded pin shackle arm openings forms a closed structure with the threaded pin shackle pin and the threaded pin shackle arms, and a band end (11) is secured to the closed structure formed by the threaded pin shackle pin and the threaded pin shackle arms (paragraphs 0031-0034; Fig. 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a connector with a securing element in the form of a threaded pin shackle and removable pin, as taught by Walchle, to the shoe ornamenting device of Canto as this would be a simple substitution of one type of releasable attachment mechanism for another, with the predictable result of providing a more secure closed attachment which will prevent unwanted detachment from the shoe attachment portions.
Regarding claim 2, Walchle teaches that rotating the pin to secure the threads to the at least one threaded opening of the first threaded pin shackle arm openings is done in a first rotation direction, and wherein rotating the pin to secure the threads to the at least one threaded opening of the second threaded pin shackle is done in the first rotation direction; wherein arm openings each the pin is rotated in the first rotation direction to secure the threads to a respective one of the pin shackle arm openings of a respective one of the threaded pin shackles; removing the pins from each of the respective the first threaded pin shackle and the second threaded pin shackle by rotating each pin in a direction opposite of the first rotation direction (paragraph 0034; Fig. 1-4).
Canto discloses providing multiple bands which are interchangeable (page 3, lines 18-19; Fig. 1, 3), and that the band is removable from the connector (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove the band from the first threaded pin shackle and from the second threaded pin shackle; and repeat steps c), d), e), f) , and g) to connect a band on the first threaded pin shackle and on the second threaded pin shackle, in order to provide a different band with a different aesthetic appeal to the shoe of the combination of Canto and Walchle.
Regarding claim 3, Canto discloses providing multiple bands which are interchangeable (page 3, lines 18-19; Fig. 1, 3), and that the band is removable from the connector (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove the band from the first threaded pin shackle and from the second threaded pin shackle; and repeat steps c), d), e), f) and g) to connect a band on the first threaded pin shackle and on the second threaded pin shackle, in order to provide a different band with a different aesthetic appeal to the shoe of the combination of Canto and Walchle.
Regarding claims 5 and 6, Canto discloses that the band is a unitary structure, and each of the band first end and the band second end has a loop (Fig. 1), and wherein the band first end is connected on the first threaded pin shackle by securing the band first end loop to the first threaded pin shackle, and wherein the band second end is connected on the second threaded pin shackle by securing the band second end loop to the second threaded pin shackle (Fig. 3).
Regarding claim 7, Walchle teaches that the threaded pin shackle arms connect to form a generally u-shaped body (Fig. 2), wherein placing the band on the threaded pin shackle comprises connecting the band end on the threaded pin shackle body (Fig. 1), rotating the threaded pin shackle pin to secure the threads to the at least one threaded opening of the threaded pin shackle arm openings forms the closed structure with the threaded pin shackle pin, the threaded pin shackle arms and the threaded pin shackle generally u-shaped body, and the band end (11) is secured to the closed structure formed by the threaded pin shackle pin, the threaded pin shackle arms and the threaded pin shackle generally u-shaped body (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the band first and second ends on the first and second threaded pin shackle bodies as there are a finite number of identified, predictable orientations (band ends placed on the body or placed on the pin), and it would have been obvious to try placing the band ends on the threaded pin shackle bodies.
Regarding claim 8, the combination of Canto and Walchle does not disclose the specific order of the steps of placing the band on the threaded pin shackle and aligning the arm openings with the attachment portions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the band on the threaded pin shackle prior to aligning the arm openings with the attachment portions in order to allow the band to be more easily attached to the threaded pin shackles before they are connected to the shoe, providing more space for maneuvering and attaching the two elements.
Regarding claims 9-14, the combination of Canto and Walchle does not disclose the specific order of the steps of passing the pin through the openings and the shoe attachment portion and rotating the pin to secure the threads, and connecting the band end to threaded pin shackle body. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to pass the pin through the openings and the shoe attachment portion and rotate the pin to secure the threads, after connecting the band end to threaded pin shackle body in order to allow the band to be attached to the shoe before the threaded pin shackle is closed.
Regarding claim 15, Canto and Walchle teach forming a closure that secures together in a closed arrangement, at a first attachment point on the shoe top wall outer surface, the first band end, the first pin shackle body, the first pin, and one of the shoe attachment loops on the top wall outer surface of the shoe, and at a second attachment point on the shoe top wall outer surface, the second band end, the second pin shackle body, the second pin, and the other of the shoe attachment loops on the top wall outer surface of the shoe (wherein Walchle clearly teaches a closed arrangement connection).
Regarding claims 16 and 17, Walchle teaches that each pin is manually connectable and releasable from its respective first pin shackle or second pin shackle (wherein an identical shackle pin connection is used at each connection point).
Regarding claim 18, Walchle teaches that the band first end is secured on the first threaded pin shackle generally u-shaped body and is positioned spaced apart from the first pin and the first attachment loop, and wherein the band second end is secured on the second threaded pin shackle generally u-shaped body and is positioned spaced apart from the second pin and the second attachment loop (Fig. 1).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canto and Walchle, as applied to claims 1-3, further in view of Messier (US 7,819,721).
Regarding claim 4, Canto and Walchle do not disclose that one of the bands is a different color. Messier teaches a shoe having multiple interchangeable bands (13), and that at least one of the bands includes a color that is different than another of the at least two bands (column 5, lines 3-4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the bands of Canto different colors, as taught by Messier, in order to vary the aesthetic appeal of the shoe, providing different options to the user.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Applicant argues that Canto teaches hiding the connector out of view, and therefore there is no teaching or suggestion to provide an article that would not fit the purposes of Canto. However, Canto does not teach hiding the connector (hook 1), but rather teaches that “the housings for receiving the hooks go easily unnoticed.” In other words the housings (2) are what is ‘hidden from view,’ especially when no strap at all is worn. This element of Canto (hidden housings) is not affected by the type of connector, and therefore there is no teaching against the combination with Walchle.
Applicant argues that Canto provides an open C-shaped structure and does not disclose or teach a closed structure. 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). Walchle clearly teaches a closed structure with a threaded pin shackle pin, threaded pin shackle arms, and threaded pin shackle u-shaped body.
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 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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732