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 1-15 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 pre-AIA the applicant regards as the invention.
In claim 1, lines 7-8, the phrase “the heel gussets” should be changed to “the one or more heel gussets” since “the heel gussets” lack proper antecedent basis and therefore is indefinite.
In claim 1, the phrase “to maintain proper heel hold” is unclear and indefinite. There is no support for the “heel’. Is applicant referring to the user’s heel? Also, it is not clear what applicant means by “proper heel hold”. What structure would this entail?
In claim 3, the “elastic material” lacks proper introduction to the claims and is therefore indefinite. It would appear this should be “an elastic material”.
In claim 4, the phrase “the heel tongue and tongue are coupled to the footwear by one or more gussets” is unclear and indefinite. The “one or more gussets” of the “heel tongue” have already been introduced in claim 1. This language appear to be a double recitation of the heel tongue’s “one or more gussets” previously defined in claim 1. Note, the “one or more gussets” of the tongue (117) has not been previously claimed so any amendment/correction to the claim should also reflect this.
Claim Rejections - 35 USC § 102
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 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) 1-5,9 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2178885 (Buff).
Regarding claims 1-5,9 and 10, Buff teaches an article of footwear (e.g. see figure 6 showing a double closure) comprising:
a tongue (front tongue 37; see figure 6) coupled adjacent a vamp and between a first quarter and a second quarter, wherein the tongue extends upward between a first side and a second side of a collar shaft arranged around a top of portion of the footwear (see figure 6 showing the double closure from above and see figures 4-5 which better show a side view of the article of footwear)
a heel cap (the area of the footwear below the rear closure; best seen in figure 4); and
a heel tongue (rear tongue 38; see figure 6) stretchingly coupled by one or more heel gussets (i.e. one of the elastic strip portion 33) to the footwear above the heel cap between a first back side and a second back side of the collar shaft (i.e. the elastic strip portions 33 permit the stretchingly coupled to the footwear), wherein the heel gussets allow the heel cap to maintain proper heel hold while expanding as a user applies foot pressure into the footwear (i.e. the one elastic strip portion allows allow the heel cap to maintain proper heel hold while expanding).
Regarding claim 2, the heel tongue (38) is coupled to the footwear by one or more gussets (i.e. one of the elastic strip portion 33).
Regarding claim 3, see the other elastic strip portion (33) which represent an elastic material coupled adjacent to the heel tongue (38).
Regarding claim 4, see elastic strip portions 33 (inherently elastic gussets) found on at least one side of the tongues 37,38.
Regarding claim 5, the one or more gussets (i.e. 33) are made out of elastic material and therefore comprise “stretch material” as claimed.
With regard to claims 9 and 10, see yokes (21,21) which serve as a pull loop to facilitate entry and exit of a foot into the footwear.
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 1,2,5,7,11,12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2444428 (Carrier) in view of US 4217706 (Vartanian) and/or US 3574958 (Martuch).
Regarding claims 1,2,5,7,11,12 and 13, Carrier teaches an article of footwear (e.g. see figures 1-4 showing a double closure at the front and rear of the shoe) comprising:
a tongue (flexible layer 7) coupled adjacent a vamp and between a first quarter and a second quarter, wherein the tongue extends upward between a first side and a second side of a collar shaft arranged around a top of portion of the footwear (see figures 1-4),
a heel cap (the area of the footwear below the rear closure; best seen in figures 1-2); and
a heel tongue (flexible layer 8) coupled to the footwear above the heel cap between a first back side and a second back side of the collar shaft.
Carrier lacks teaching:
The heel tongue stretchingly coupled by one or more heel gussets to the footwear (claim 1).
Martuch and Vartanian teach the tongues of the footwear being stetchably coupled to the footwear via the expandable gussets (see gussets 450,451 taught by Martuch and see the expandable gussets (41,42,47,48) taught by Vartanian).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the footwear as taught by Carrier, with the tongues (i.e. front and heel tongues) having expandable gussets, as taught by either Martuch and/or Vartanian, to permit the tongues to stretchingly couple to the footwear to permit foot entry and exit and moreover, provide a more watertight closure of the footwear. With regard to “wherein the heel gussets allow the heel cap to maintain proper heel hold while expanding as a user applies foot pressure into the footwear” in claim 1, the expandable gussets allow the heel cap to maintain proper heel hold while expanding. The term “stretch” is defined as “to become longer or wider, or to pull something so that is becomes longer or wider” according to Essential American English Dictionary.
Regarding claim 2, the heel tongue (8) is coupled to the footwear by one or more gussets (i.e. one or more of the expandable gussets as taught above).
Regarding claim 5, as understood, see the raised eyelets best shown in figure 3 of Carrier (i.e. the hook type eyelets about part 4).
Regarding claim 7, see col. 1, lines 15-19, col. 2, lines 21-22 and col. 3, lines 3-5 of Carrier.
Regarding claims 11-13, see the laces extending through the plurality of eyestays as shown in figure 1 of Carrier.
Claim 1,2,6,11,12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3228122 (Ludwig) in view of US 4217706 (Vartanian) and/or US 3574958 (Martuch).
Regarding claims 1,2,6,11,12 and 13, Ludwig teaches an article of footwear (e.g. see figures 1-4 showing a double closure at the front and rear of the outer boot 10) comprising:
a tongue (19) coupled adjacent a vamp and between a first quarter and a second quarter, wherein the tongue extends upward between a first side and a second side of a collar shaft arranged around a top of portion of the footwear (see figures 1-2),
a heel cap (the area of the footwear below the rear closure; best seen in figure 1); and
a heel tongue (not labeled but extends between lacing apertures 17) coupled to the footwear above the heel cap between a first back side and a second back side of the collar shaft.
Ludwig lacks teaching:
The heel tongue stretchingly coupled by one or more heel gussets to the footwear (claim 1); via a gusset (claim 2);
Martuch and Vartanian teach the tongues of the footwear being stetchably coupled to the footwear via the expandable gussets (see gussets 450,451 taught by Martuch and see the expandable gussets (41,42,47,48) taught by Vartanian).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the footwear as taught by Ludwig, with the tongues (i.e. front and heel tongues) having expandable gussets, as taught by either Martuch and/or Vartanian, to permit the tongues to stretchingly couple to the footwear to permit foot entry and exit and moreover, provide a more watertight closure of the footwear.
Regarding claim 6, see col. 1, lines 55-56 of Ludwig, which states “The outer boot is absolutely impermeable to moister” and is therefore at least a portion of the footwear is made out of waterproof material.
Regarding claims 11-13, see lacing apertures 16-17 and at least col. 2, lines 27-29 of Ludwig.
Claim(s) 3,4 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1-2 above, and further in view of US 366095 (Haven).
The prior art (see the 103 rejections above) lacks teaching:
• The gusset of the heel tongue and the front tongue being elastic material.
Haven teaches a laced boot/shoe having elastic gussets (elastic sections b,c) on both sides of the tongue (g) to cause the top of the boot to neatly fit or closely hug the ankle (see page 1, col. 1, lines 7-17).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the footwear as taught by the combinations above with the gussets of the tongues being elastic, as taught by Haven, to cause the top of the footwear to neatly fit or closely hug the ankle.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the reference(s) as applied to claim 12 above, and further in view of US 2006/0168785 (Kraft).
Kraft teaches shoelaces can be elastic or non-elastic and therefore stretchy or non-stretching material. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shoe laces of the footwear as taught above with the shoe laces being one of a stretchy material or a non-stretchy material, as taught by Kraft, to facilitate tightening the footwear.
Claim(s) 8 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the reference(s) as applied to claim 1 above, and further in view of official notice.
The examiner takes official notice that these features in claims 8 and 14-15 are old and conventional in the art. 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 article of footwear as taught by above with a padded cuff and lining comprising one of a waterproof membrane and a fabric layer as claimed to provide the footwear with conventional features well known in the art to keep the user’s feet warm and dry. Applicant has contested the official notice and now has become admitted prior art.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but they are not persuasive.
Applicant argues “Buff merely discloses front and rear longitudinal zippers for dividing the leg portion into two parts with adjustable gussets spaced apart between front and rear members. Buff fails to teach or suggest a heel tongue specifically stretchingly coupled above a heel cap by one or more heel gussets in the manner claimed. Moreover, Buff does not disclose heel gussets that allow the heel cap to maintain proper heel hold while expanding as a user applies foot pressure into the footwear.”
In response, the heel tongue has at least one or more gussets (33) coupled thereto and therefore permit the heel tongue to be stretchingly coupled in the manner as claim. The heel cap as shown by Buff wraps would around the heel of the user and therefore would maintain proper heel hold as claimed.
Applicant argues “Carrier and Ludwig both disclose footwear with front and rear closures, but neither teaches or suggests a heel tongue stretchingly coupled by heel gussets as claimed. Vartanian discloses a boot for a walking cast with expandable gussets, but these gussets serve a fundamentally different purpose than the claimed invention.”
In response, as noted in the rejection above, Martuch and Vartanian teach the tongues of the footwear being stetchably coupled to the footwear via the expandable gussets (see gussets 450,451 taught by Martuch and see the expandable gussets (41,42,47,48) taught by Vartanian). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the footwear as taught by Carrier or Ludwig, with the tongues (i.e. front and heel tongues) having expandable gussets, as taught by either Martuch and/or Vartanian, to permit the tongues to stretchingly couple to the footwear to permit foot entry and exit and moreover, provide a more watertight closure of the footwear. With regard to “wherein the heel gussets allow the heel cap to maintain proper heel hold while expanding as a user applies foot pressure into the footwear” in claim 1, the expandable gussets allow the heel cap to maintain proper heel hold while expanding. With respect to “stretchably coupled”, stretch is defined as “to become longer or wider, or to pull something so that is becomes longer or wider” according to Essential American English Dictionary.
Applicant argues “Vartanian's gussets are designed to accommodate a walking cast, not to maintain heel hold while allowing foot entry as in the claimed invention” and “Martuch discloses a wading shoe with a quick release fastener, but does not teach or suggest heel gussets that expand for foot entry while maintaining heel hold.”
In response, Vartanian and Martuch are being used as a teaching of footwear with tongues, wherein the tongues are stretchable coupled to the footwear via the expandable gussets (see the rejections above) and therefore are analogous art and their combination, as noted in the rejections, above are proper including proper motivation to combine.
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.
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.
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.
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 on Monday-Thursday 8AM-6PM.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556