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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 5th, 2025, has been entered.
Response to Arguments
Applicant's arguments in view of the amendments filed November 5th, 2025, have been fully considered but they are not persuasive.
Applicant amends claim 1 and argues the prior art of record fails to teach or suggest all the limitations of amended claim 1. Examiner respectfully disagrees. Labonté discloses a method of making a skate boot for a skate ([0008]), the method comprising determining a desired property ([0104-0105, 0110-0111]; a property of the shell 30, such as stiffness or density, is configured by selection of the polymeric material) of a material of a body of the skate boot ([0104-0105]; materials of the shell 30). While Labonté discloses a desired property of the material of the body of the skate boot is configured by selection of the polymeric material ([0104-0105, 0110-0111]), Labonté does not explicitly disclose the determining of the desired property comprises computing proportions of the constituents to impart the desired property to the material of the body of the skate boot. However, Pruitt teaches a method of reaction injection molding ([0012]) with a molding apparatus (Fig. 7; [0178]; molding assembly 700) comprising processing a desired property of a material of a part to compute proportions of the constituents to impart the desired property to the material of the part ([0046, 0119]; properties of the finished parts can be varied by blending amounts of each different polyol as directed by the control or processing circuit that provide the part fabrication instructions, wherein the user can input planned runs with identified molds, and the control or processing circuitry associated with the machine can generate the amount of reactant material needed to fabricate those runs). Pruitt further teaches controlling the proportions of respective ones of the constituents ([0114]; the mixing ratios of reactants are controlled) to impart the desired property ([0046, 0114]; a property of the finished part can be varied by selection of reactant materials and mixing ratio) to a molded article ([0046]; the molded finished part). From these teachings of Pruitt one of ordinary skill in the art can recognize that modifying Labonté with these teachings would allow a user to input a desired boot with a desired property and control or processing circuits associated with the injection molding machine can generate the amount and ratios of the reactant materials required to impart the desired property as instructions and control the injection molding process according to those instructions. As such, Labonté, in view of these teachings of Pruitt, provides the cumulative limitations of amended claim 1.
Applicant argues that it would not have been obvious to one of ordinary skill in the art to combine Labonté and Pruitt without improper hindsight. Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See MPEP 2145 (X). The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See MPEP 2143.01. In this case, from the teachings of Labonté and Pruitt, one of ordinary skill in the art would recognize that the combination would allow for precise control of the proportions of respective ones of the constituents (Pruitt [0114]) and therefore allow precise control of the desired property for the material of the body of the skate boot. The courts have held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. See MPEP 2144 (II). The precise control of the proportions would result in a more efficient reaction injection molding process for the skate boots by reducing material waste. Furthermore, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." See MPEP 2145 (II).
Claim Interpretation
Claim 1 recites the limitation “a desired property of a material” in line 5. Specification pages 54 and 56 provide an example of the desired property being a desired stiffness or rigidity of an obtained polymer. Under broadest reasonable interpretation this limitation will be interpreted as any physical and/or chemical property of a material.
Claims 1 and 27 recites the limitation “respective ones of the constituents” in lines 6 and 4 respectively. Per specification pages 54-56, this limitation is understood to be a selection of constituents from the group of “constituents that are different”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-16, 18, 19, 22-25 and 174 are rejected under 35 U.S.C. 103 as being unpatentable over Labonté et al. (US 20190045879 A1; hereafter Labonté), in view of Pruitt et al. (US 20180065286 A1; hereafter Pruitt).
Regarding claim 1, Labonté discloses a method of making a skate boot for a skate ([0008]), the skate boot being configured to receive a foot of a user ([0008]; the skate boot defining a cavity to receive a foot of a user), the method comprising:
- providing a molding apparatus ([0008, 0011]; providing injection molding apparatus) for receiving constituents that are different (Fig. 22; [0140]; molding apparatus receives two or more constituents of a given polymeric material);
- determining a desired property ([0104-0105, 0110-0111]; a property of the shell 30, such as stiffness or density, is configured by selection of the polymeric material) of a material of a body of the skate boot ([0104-0105]; materials of the shell 30);
- injecting respective ones of the constituents ([0139-0140]; injecting two or more constituents of a given polymeric material) to produce the material of the body of the skate boot.
While Labonté discloses a desired property of the material of the body of the skate boot is configured by selection of the polymeric material ([0104-0105, 0110-0111]), Labonté does not explicitly disclose the molding apparatus comprises a plurality of ports for receiving constituents that are different, the determining of the desired property comprises processing to compute proportions of the constituents to impart the desired property to the material of the body of the skate boot and controlling proportions of the respective ones of the constituents to impart the desired property to the material of the body of the skate boot.
However, Pruitt teaches a method of reaction injection molding ([0012]) with a molding apparatus (Fig. 7; [0178]; molding assembly 700) comprising a plurality of ports ([0105, 0178]; plural reactant materials tank engagement and fluid connection ports) for receiving constituents that are different ([0046, 0105, 0178]; ports receive different reactant materials from the different tanks). Pruitt further teaches processing a desired property of a material of a part to compute proportions of the constituents to impart the desired property to the material of the part ([0046, 0119]; properties of the finished parts can be varied by blending amounts of each different polyol as directed by the control or processing circuit that provide the part fabrication instructions, wherein the user can input planned runs with identified molds, and the control or processing circuitry associated with the machine can generate the amount of reactant material needed to fabricate those runs) and controlling proportions of respective ones of the constituents ([0114]; the mixing ratios of reactants are controlled) to impart a desired property ([0046, 0114]; a property of the finished part can be varied by selection of reactant materials and mixing ratio) to a molded article ([0046]; the molded finished part).
Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide the molding apparatus comprises a plurality of ports for receiving constituents that are different, the determining of the desired property comprises processing to compute proportions of the constituents to impart the desired property to the material of the body of the skate boot and controlling proportions of the respective ones of the constituents to impart the desired property to the material of the body of the skate boot. Doing so would allow for precise control of the proportions of respective ones of the constituents (Pruitt [0114]) and therefore allow precise control of the desired property for the material of the body of the skate boot. The courts have held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. See MPEP 2144 (II). The precise control of the proportions would result in a more efficient reaction injection molding process for the skate boots by reducing material waste.
Regarding claim 5, modified Labonté discloses the method of claim 1, wherein the material of the body of the skate boot is a polyurethane (Labonté [0102]).
Regarding claim 6, modified Labonté discloses the method of claim 5, wherein the polyurethane of the body of the skate boot is a polyurethane foam (Labonté [0103]; PU foam).
Regarding claim 7, modified Labonté discloses the method of claim 5, wherein the constituents include an isocyanate (Labonté [0140]; isocyanate), a first polyol (Labonté [0140]; one polyol from the group of “polyols”), and a second polyol (Labonté [0140]; another polyol from the group of “polyols”).
Modified Labonté does not explicitly disclose the second polyol is different from the first polyol.
However, Pruitt teaches a method of reaction injection molding ([0012]) a polyurethane composition ([0043-0044]; polyurethane) comprising constituents of an isocyanate ([0046]; isocyanate), a first polyol ([0046]; a first polyol from the group of different polyols) and a second polyol different from the first polyol ([0046]; a second polyol from the group of different polyols).
Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide the second polyol is different from the first polyol. Doing so would allow for the manufacture of a greater variety of skate boots with a greater variety of desired properties.
Regarding claim 8, modified Labonté discloses the method of claim 7, wherein Pruitt further teaches the respective ones of the constituents include the isocyanate ([0046]; isocyanate), the first polyol ([0046]; a first polyol from the group of different polyols) and the second polyol ([0046]; a second polyol from the group of different polyols). Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide the respective ones of the constituents include the isocyanate, the first polyol and the second polyol. Doing so would allow for the manufacture of a greater variety of skate boots with a greater variety of desired properties.
Regarding claim 9, modified Labonté discloses the method of claim 8, wherein Pruitt further teaches a proportion of the first polyol is different from a proportion of the second polyol ([0114]; ratios of reactant materials can be in a range from about 1:1 to about 1:1000, therefore the proportion of the first polyol reactant can be different from the proportion of the second polyol reactant). Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide a proportion of the first polyol is different from a proportion of the second polyol. Doing so would allow for the manufacture of a greater variety of skate boots with a greater variety of desired properties.
Regarding claim 10, modified Labonté discloses the method of claim 7, wherein Pruitt further teaches the respective ones of the constituents include the isocyanate and the first polyol but not the second polyol ([0046]; polyol can comprise a single type of polyol, therefore there would be no second polyol). Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide the respective ones of the constituents include the isocyanate and the first polyol but not the second polyol. Doing so would allow for the manufacture of a greater variety of skate boots with a greater variety of desired properties.
Regarding claim 11, modified Labonté discloses the method of claim 1, wherein the desired property of the material of the body of the skate boot is stiffness (Labonté [0110]; stiffness) of the material of the body of the skate boot.
Regarding claim 12, modified Labonté discloses the method of claim 11, wherein the stiffness of the material of the body of the skate boot is a modulus of elasticity (Labonté [0110]; modulus of elasticity) of the material of the body of the skate boot.
Regarding claim 13, modified Labonté discloses the method of claim 1, wherein: the material of the body of the skate boot is a first material of the body of the skate boot (Labonté [0104-0105]; polymeric material to a first subshell of shell 30) forming at least part of a first layer of the body of the skate boot (Labonté [0101]; a first subshell is a layer of shell 30); the respective ones of the constituents are first respective ones of the constituents (Labonté [0139-0140]; two or more constituents of a given polymeric material for the first subshell); and the method further comprises injecting second respective ones of the constituents (Labonté [0139-0140]; two or more constituents of a given polymeric material for a second subshell) to produce a second material of the body of the skate boot (Labonté [0104-0105]; polymeric material to a second subshell of shell 30) that forms at least part of a second layer of the body of the skate boot (Labonté [0101]; the second subshell is a second layer of shell 30).
Regarding claim 14, modified Labonté discloses the method of claim 13, wherein the first layer of the body of the skate boot is disposed outwardly of the second layer of the body of the skate boot (Labonté [0112]; subshells can be interior and exterior, such that the first subshell can be disposed outwardly of the second subshell).
Regarding claim 15, modified Labonté discloses the method of claim 14, wherein the first layer of the body of the skate boot is an outermost layer of the body of the skate boot (Labonté [0112]; the first subshell can be the exterior subshell and therefore disposed as the outermost layer of shell 30).
Regarding claim 16, modified Labonté discloses the method of claim 15, wherein the outermost layer of the body of the skate boot is clear (Labonté [0138]; exterior subshell may be clear).
Regarding claim 18, modified Labonté discloses the method of claim 13, comprising:
- determining a desired property of the second material of the body of the skate boot (Labonté [0104-0105, 0110-0111]; a property of a second subshell of the shell 30, such as stiffness or density, is configured by selection of the polymeric material for the second subshell).
While Labonté discloses a desired property of the second material of the body of the skate boot is configured by selection of the polymeric material ([0104-0105, 0110-0111]), Labonté does not explicitly disclose the determining of the desired property comprises processing to compute proportions of the constituents to impart the desired property to the second material of the body of the skate boot and controlling the proportions of the second respective ones of the constituents to impart the desired property of the second material to the second material of the body of the skate boot.
However, as established in the rejection of claim 1, Pruitt teaches a method of reaction injection molding ([0012]) with a molding apparatus (Fig. 7; [0178]; molding assembly 700) comprising a plurality of ports ([0105, 0178]; plural reactant materials tank engagement and fluid connection ports) for receiving constituents that are different ([0046, 0105, 0178]; ports receive different reactant materials from the different tanks). Pruitt further teaches processing a desired property of a material of a part to compute proportions of the constituents to impart the desired property to the material of the part ([0046, 0119]; properties of the finished parts can be varied by blending amounts of each different polyol as directed by the control or processing circuit that provide the part fabrication instructions, wherein the user can input planned runs with identified molds, and the control or processing circuitry associated with the machine can generate the amount of reactant material needed to fabricate those runs) and controlling proportions of respective ones of the constituents ([0114]; the mixing ratios of reactants are controlled) to impart a desired property ([0046, 0114]; a property of the finished part can be varied by selection of reactant materials and mixing ratio) to a molded article ([0046]; the molded finished part).
Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide the determining of the desired property comprises processing to compute proportions of the constituents to impart the desired property to the second material of the body of the skate boot and controlling the proportions of the second respective ones of the constituents to impart the desired property of the second material to the second material of the body of the skate boot. Doing so would allow for precise control of the proportions of respective ones of the constituents (Pruitt [0114]) and therefore allow precise control of the desired property for the material of the body of the skate boot. The courts have held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. See MPEP 2144 (II). The precise control of the proportions would result in a more efficient reaction injection molding process for the skate boots by reducing material waste.
Regarding claim 19, modified Labonté discloses the method of claim 18, wherein the desired property of the second material of the body of the skate boot is different from the desired property of the first material of the body of the skate boot (Labonté [0106]; the polymeric material of a first subshell may have a different stiffness than the polymeric material of a second subshell).
Regarding claim 22, modified Labonté discloses the method of claim 1, wherein: the body of the skate boot comprises a medial side portion (Labonté [0100]; medial side portion 66) configured to face a medial side of the user's foot (Labonté [0100]; medial side portion 66 faces medial side MS of the player’s foot), a lateral side portion (Labonté [0100]; lateral side portion 68) configured to face a lateral side of the user's foot (Labonté [0100]; lateral side portion 68 faces lateral side LS of the player’s foot), a heel portion (Labonté [0100]; heel portion 62) configured to receive a heel of the user's foot (Labonté [0100]; heel portion 62 receives heel HL of the player), and an ankle portion (Labonté [0100]; ankle portion 64) configured to receive an ankle of the user (Labonté [0100]; ankle portion 64 receives ankle A of the player) that are molded integrally together (Labonté Fig. 3; [0100-0101]; the recited portions are integrally molded as shell 30); and the material of the body of the skate boot constitutes at least part of each of the medial side portion, the lateral side portion, the heel portion, and the ankle portion of the body of the skate boot (Labonté [0100-0101]; the polymeric material of the shell 30 forms the recited portions).
Regarding claim 23, modified Labonté discloses the method of claim 22, wherein: the body of the skate boot comprises a sole portion (Labonté [0100]; sole portion 69) configured to face a plantar surface of the user's foot (Labonté [0100]; sole portion 69 faces plantar surface PS of the player’s foot); the medial side portion, the lateral side portion, the heel portion, the ankle portion, and the sole portion of the body of the skate boot are molded integrally together (Labonté Fig. 3; [0100-0101]; the recited portions are integrally molded as shell 30); and the material of the body of the skate boot constitutes at least part of each of the medial side portion, the lateral side portion, the heel portion, the ankle portion, and the sole portion of the body of the skate boot (Labonté [0100-0101]; the polymeric material of the shell 30 forms the recited portions).
Regarding claim 24, modified Labonté discloses the method of claim 22, wherein: the body of the skate boot comprises a toe portion (Labonté Fig. 3; [0147]; toe cap 32) configured to receive toes of the user's foot; the medial side portion, the lateral side portion, the heel portion, the ankle portion, and the toe portion of the body of the skate boot are molded integrally together (Labonté Fig. 3; [0100-0101, 0147]; claim 37; the recited portions and toe cap 32 are integrally molded as shell 30); and the material of the body of the skate boot constitutes at least part of each of the medial side portion, the lateral side portion, the heel portion, the ankle portion, and the toe portion of the body of the skate boot (Labonté [0100-0101, 0147]; the polymeric material of the shell 30 forms the recited portions).
Regarding claim 25, modified Labonté discloses the method of claim 1, wherein: the skate is an ice skate (Labonté [0094]; ice skate) comprising a blade (Labonté [0095]; blade 26); and the material of the body of the skate boot is also a material of a body of a blade holder (Labonté [0159-0160]; blade holder 24 is integrally molded with shell 30 and can comprise the same materials as the shell 30) extending downwardly from the skate boot (Labonté Fig. 3; blade holder 24 extends downwardly from shell 30) and configured to hold the blade (Labonté [0095]; blade holder 24 holds blade 26).
Regarding claim 174, modified Labonté discloses the method of claim 1, wherein the determining the desired property of the material is based on input from a user indicative of a desired property of the skate boot (Labonté [0126-0128]; inherent to producing a desired shell using a desired polymeric material for the desired skate boot).
Labonté does not explicitly disclose the determining of the desired property comprises processing the desired property of the material further to receiving input from a user indicative of a desired property of the skate boot.
However, Pruitt further teaches processing the desired property of the material further to receiving input from a user indicative of a desired property of the material of the part ([0046, 0119]; properties of the finished parts can be varied by blending amounts of each different polyol as directed by the control or processing circuit that provide the part fabrication instructions, wherein the user can input planned runs with identified molds, and the control or processing circuitry associated with the machine can generate the amount of reactant material needed to fabricate those runs).
Labonté and Pruitt are both considered to be analogous to the claimed invention because they are in the field of reaction injection molding. Therefore, it would have been obvious to the person in the ordinary skill in the art before the effective filing date of the invention to modify Labonté with the teachings of Pruitt to provide the determining of the desired property comprises processing the desired property of the material further to receiving input from a user indicative of a desired property of the skate boot. Doing so would allow for precise control of the proportions of respective ones of the constituents (Pruitt [0114]) and therefore allow precise control of the desired property for the material of the body of the skate boot. The courts have held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. See MPEP 2144 (II). The precise control of the proportions would result in a more efficient reaction injection molding process for the skate boot by reducing material waste.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vipul Malik whose telephone number is (571)272-0976. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached on (571)270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.M./Examiner, Art Unit 1754 /SUSAN D LEONG/ Supervisory Patent Examiner, Art Unit 1754