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 .
Status of Claims
This Office Action is in response to the amendment filed 12/1/25. As directed by the amendment, claim 1 has been amended, claims 2-10 have been cancelled, claim 1 is pending in this application.
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 examinationunder 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of theprevious Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on12/1/25 has been entered.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 103 AIA
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 of this title, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Thompson GB 2517148 A (herein after Thompson) in view of Tankson US 7814685 B1 (herein after Tankson) and Kilgore US 20200297076 (herein after Kilgore), and Lee KR 101826077 B1 (herein after Lee).
Regarding claim 1, Thompson discloses a shoe (3) comprising: a sole (as seen in annotated Figure 1); and an upper (as seen in annotated Figure 1), the upper comprising a single structure that integrates a rear part (as seen in annotated Figure 1), a medial part (as seen in annotated Figure 1), a lateral part (as seen in annotated Figure 1) and a front part (as seen in annotated Figure 1) in the single structure and which defines a shoe opening for receiving an object into an interior of the shoe (Abstract, as seen in annotated Figure 1); whereby the rear part facilitates the sliding of the foot forward into the shoe when the user's foot enters the shoe (Abstract, as seen in annotated Figure 1).
[AltContent: textbox (The rear part facilitates the sliding of the foot forward into the shoe when the user's foot enters the shoe.)][AltContent: textbox (A lateral part.)][AltContent: textbox (An upper.)][AltContent: textbox (Shape opening)][AltContent: arrow]
[AltContent: arrow][AltContent: arrow][AltContent: textbox (A shoe. )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The upper comprising a single structure that integrates a rear part.)][AltContent: textbox (A front part in the single structure and which defines a shoe opening for receiving an object into an interior of the shoe.)][AltContent: textbox (A sole.)]
PNG
media_image1.png
411
727
media_image1.png
Greyscale
[AltContent: textbox (A medial part.)][AltContent: textbox (Figure 1)]
However, Thompson is silent to a support element comprising: a top wing, a lower wing, a medial wing and a lateral wing, and wherein the support element is attached to the top portion of an outer surface of the rear part, horizontally centered on the rear part, the lower wing extends toward the sole, the lateral wing extends toward the lateral part and the medial wing extends toward the medial part; the top wing being curved away from the shoe opening the bottom wing curved diagonally backward.
Tankson discloses a support element (7, as seen in annotated Figures 1 and 2) comprising: a top wing (3a, as seen in annotated Figures 1 and 2), a lower wing (8, as seen in annotated Figures 1 and 2), a medial wing (4, as seen in annotated Figures 1 and 2) and a lateral wing (4, as seen in annotated Figures 1 and 2), and wherein the support element is attached to the top portion of an outer surface of the rear part (as seen in annotated Figures 1 and 2), horizontally centered on the rear part (as seen in annotated Figures 1 and 2), the lower wing extends toward the sole (as seen in annotated Figures 1 and 2), the lateral wing extends toward the lateral part and the medial wing extends toward the medial part (as seen in annotated Figures 1 and 2); the top wing being curved away from the shoe opening the bottom wing curved diagonally backward (as seen in annotated Figures 1 and 2).
[AltContent: textbox (A medial wing.)][AltContent: textbox (The support element is attached to the top portion of an outer surface of the rear part.)][AltContent: textbox (The top wing being curved away from the shoe opening the bottom wing curved diagonally backward. )][AltContent: textbox (The lateral wing extends toward the lateral part and the medial wing extends toward the medial part. )]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The support element horizontally centered on the rear part.)][AltContent: textbox (A top wing.)][AltContent: arrow][AltContent: arrow][AltContent: textbox (A lower wing. )][AltContent: arrow][AltContent: textbox (The lower wing extends toward the sole.)][AltContent: arrow][AltContent: textbox (A lateral wing.)]
PNG
media_image2.png
365
692
media_image2.png
Greyscale
PNG
media_image3.png
489
453
media_image3.png
Greyscale
Thompson is analogous art to the claimed invention as it relates to slip in shoes. Tankson is analogous art to the claimed invention in that it provides a support element attached to the top rear portion of the footwear.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the footwear of Thompson, to include a support element at the rear of the footwear adjacent the footwear opening, as taught by Tankson in order to provide stability to the foot. The modification of the footwear would be a simple modification to obtain predictable results, better holding the heel in position and supporting the footwear during donning and doffing.
However, Thompson and Tankson are silent to the upper being fabricated, at least in part, from an elastic material, and at least one of the medial part, lateral part and front part being at least partially fabricated from an elastic material, the elastic material adapted to allow the shoe opening to expand, whereby when the object is forced into the shoe opening, the force of the object causes the elastic material to expand such that the shoe opening is adapted to provide enough space for the object to enter the shoe, and whereby once the object enters the shoe, the elastic material is adapted to contract and reduce the size of the shoe opening to secure the object inside the shoe.
Kilgore discloses the upper (42) being fabricated, at least in part, from an elastic material (paragraph 0085 – the upper being made of a 4 way stretch nylon fabric). and at least one of the medial part (as seen in annotated Figures 15 and 16), lateral part and front part (as seen in annotated Figures 15 and 16) being at least partially fabricated from an elastic material (paragraph 0085 of Kilgore– the upper being made of a 4 way stretch nylon fabric), the elastic material adapted to allow the shoe opening to expand (paragraphs 0085 and 0094 of Kilgore), whereby when the object is forced into the shoe opening (paragraphs 0085 and 0094 of Kilgore), the force of the object causes the elastic material to expand such that the shoe opening is adapted to provide enough space for the object to enter the shoe (paragraphs 0085 and 0094 of Kilgore), and whereby once the object enters the shoe (paragraphs 0085 and 0094 of Kilgore), the elastic material is adapted to contract and reduce the size of the shoe opening to secure the object inside the shoe (as seen in Figures 15 and 16, paragraphs 0085 and 0094 of Kilgore).
[AltContent: textbox (Front part)]
[AltContent: arrow][AltContent: arrow]
PNG
media_image4.png
401
549
media_image4.png
Greyscale
PNG
media_image5.png
311
426
media_image5.png
Greyscale
[AltContent: textbox (Elastic material upper)]
[AltContent: arrow][AltContent: arrow]
PNG
media_image4.png
401
549
media_image4.png
Greyscale
PNG
media_image5.png
311
426
media_image5.png
Greyscale
Kilgore is analogous art to the claimed invention in that it provides an upper partially made with elastic materials.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the upper of the footwear of Thompson and Tankson by constructing the upper at least in part of an elastic material, as taught by Kilgore in order to form a an upper that is capable of stretching. The modification of upper would be a simple modification to obtain predictable results, footwear that can expand and resume its original shape when the wearer is slipping in to the shoe and stepping out of the shoe.
However, Thompson, Tankson and Kilgore do not specifically disclose support element constructed of a firm material, and above the sole such that the top wing is proximate to the shoe opening.
Lee specifically discloses a support element (50) constructed of a firm material (Claim 1, carbon, iron and titanium being firm materials), and above the sole (10) such that the top wing is proximate to the shoe opening (as seen in annotated Figure 6).
[AltContent: textbox (The top wing of the support element is proximate to the shoe opening.)][AltContent: arrow][AltContent: arrow]
PNG
media_image6.png
346
527
media_image6.png
Greyscale
Figure 6
Lee is analogous art to the claimed invention in that it provides the configuration and location of the support element of footwear.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the support element of Thompson, Tankson and Kilgore being made of a firm material and being positioned at the top of the rear part of the shoe and above the sole, as taught by Lee in order to provide optimal support to the opening of the shoe. The modification of the support element would be a simple modification to obtain predictable results, a support element that supports the foot sufficiently when the wearer steps in to the shoe.
Arguments
Applicant’s arguments have been fully considered. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above.
In response to applicant’s arguments that the external support element is not attached external to only a top portion of the rear part of the shoe, the examiner respectfully disagrees. Applicants claim language is extremely broad. What is restricted by terms like “a top portion” or “rear part of the shoe”, these terms are open to broad interpretation. For example, top portion is any part above the sole, the rear part is any part in the direction of the heal beyond the medial line. Thompsons (as seen in annotated Figure 1) element teaches the limitation as written. The examiner recommends an interview may be helpful to better define the location of the element of the inventive device.
In response to applicant’s arguments that the element of Tankson is a part of the shoes sole and is located on the lateral bottom side of the shoe which is not the same as being attached externally to only the top portion of the rear part of the shoe, the examiner respectfully disagrees. Nowhere does it disclose that the element of Tankson or even Thompson are a part of the shoe sole. Thompson teaches the element is spaced a part from the sole as seen in Figure 1. Tankson is merely used to disclose the shape of the element and it is indeed an exterior element. Applicant’s claim language reads as follows “…a top wing, a lower wing, a medial wing and a lateral wing, and wherein the support element is fixedly attached to the top portion of an outer surface of the rear part, horizontally centered on the rear part and above the sole such that the top wing is proximate to the shoe opening, the lower wing extends toward the sole…”. As written, the claim language merely requires the element to be attached to the top portion, a very broad limitation, which, without further limiting claim language, could be any part above the sole. Additionally, as stated above, the rear part of the shoe, without any further limiting claim language, would be any part in the direction of the heal beyond the medial line. Terms like horizontally centered and proximate to the shoe opening only require the element to wrap symmetrically around the heel and be near the foot opening. The combined references read on the claims as written, as the language is very broad and can be interpreted in many ways.
In response to applicant’s arguments that combined references do not teach the support element includes a medial wing and a lateral wing that extend towards the medial part and lateral part of the upper but, do not extend down to the sole. Tankson Figures 1 and 2 are used to disclose the shape of the element, a medial wing and a lateral wing that extend towards the medial part and lateral part of the upper. Portion 4 of Tanksons wing does not extend to the sole. Applicants claim language does not include consisting of language, but uses comprising language, and as such the element is not prevented from having other portions.
In response to applicant’s arguments that the combined references teach the "center part" and the element curves upward and forward, and diagonally upward. The claim language is as follows: “…the top wing being curved away from the shoe opening; the bottom part wing curved diagonally backward,…” which is taught by Tankson Figures 1 and 2.
In response to applicant’s arguments that the combined references do not teach the element curves backward and diagonally downward relative to the center part. Tankson, as seen in annotated Figures 1 and 2, teaches the element curving backward and diagonally downward relative to the center part.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The element curves backward and diagonally downward relative to the center part.)][AltContent: textbox (The top wing being curved away from the shoe opening; the bottom part wing curved diagonally backward.)][AltContent: arrow]
PNG
media_image3.png
489
453
media_image3.png
Greyscale
PNG
media_image2.png
365
692
media_image2.png
Greyscale
In response to applicant’s arguments regarding Pratt, Pratt is not used in the last rejection.
In response to applicant’s arguments that the combined references do not teach the center part is located between the upper part and the bottom part, namely centered vertically. Again, the applicant is reminded this terminology is very broad and as such can be interpreted in many ways. The limitation the center part is located between “…the upper part and the bottom part, namely centered vertically…” does not exist in the amended claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732