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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 12, 2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
1. Claims 2-11 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ussher (US 2008/0301919) in view of Martin (US 2004/0159017), and in further view of Kim (US 2008/0203144).
Regarding Claim 2, Ussher discloses an article of footwear, comprising: an upper portion (as seen in Fig.1) including an inner layer, an outer layer (para.12, outer upper layer, button cover of 13, knob of 24), and a lace (7a) to adjust a fit of the upper portion against a foot, the lace adjustable between a first position (i.e. loosened) and a second position (i.e. tightened) based at least in part on manipulation of an effective length of the lace (para.12-14), the lace extending into and out of a plurality of channels (18)(as seen in Fig.4), the plurality of channels attached to and extending across a portion of the upper portion (as seen in Fig.2); a lower portion (i.e. sole in Fig.1) including an out-sole (i.e. the sole is an outsole), the lower portion fixedly-attached to the upper portion (as seen in Fig.1); a power source (3), positioned in the lower portion (as seen in Fig.1); a lacing system (2,8), coupled to the power source, including: a lace spool (8) to engage a loop of the lace to enable manipulation of the effective length of the lace through rotation of the lace spool (para.13-14); a motor (2) operatively coupled to the spool (as seen in Fig.2), wherein the motor is configured to rotate the spool (para.13-14); and a control panel (electronics of 13,22), positioned in the upper portion (as seen in Fig.1), configured to enable a user to engage the a control panel by touching the outer layer (i.e. button cover of 13, knob of 24) of the upper portion, the control panel configured to cause the motor to increase or decrease tension on the lace (para.12 & 22). Ussher does not disclose the plurality of lacing guides enclosed by the inner layer and the outer layer of the upper. However, Martin teaches a footwear upper (160), with a lace (166) and a plurality of lacing channels (180,185; para.25) enclosed by an inner layer (164) and an outer layer (168) of the upper (as seen in Fig.3-4B).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the location of the lacing channels of Ussher to be enclosed by an inner layer and an outer layer of the upper, as taught by Martin, in order to provide a secure attachment of the lacing channel to the upper that is also aesthetically pleasing.
Ussher and Martin disclose the invention substantially as claimed above. Ussher does not disclose the lower portion a mid-sole and an out-sole, the lower portion fixedly-attached to the upper portion at the mid-sole. However, Kim teaches a shoe (1) having an upper (54); a lower portion including a mid-sole (56), and an out-sole (53), the lower portion fixedly-attached to the upper portion at the mid-sole (as seen in Fig.1 & 14; para.109-110).
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the sole with an outsole of Ussher to have a midsole, as taught by Kim, in order to provide a sole that delivers enhanced cushioning and support to a user’s foot while wearing the shoe.
Regarding Claim 3, Ussher discloses an article of footwear of claim 2, wherein the lacing system is configured to switch among a plurality of preset positions (i.e. on and off are preset positions, inasmuch as has been claimed by Applicant) based on interaction with the control panel (para.12-14 & 22).
Regarding Claim 4, Ussher discloses an article of footwear of claim 3, wherein the lacing system is further configured to transition (via releasing 13 & 21) among a plurality of transitory states (i.e. varying levels of tightening or loosening between fully tightened and fully loosened) to incrementally increase or decrease the effective length of the lace (para.22-23).
Regarding Claim 5, Ussher discloses an article of footwear of claim 4, wherein a decrease of the effective length of the lace corresponds to a tightening of the lace and an increase of the effective length of the lace corresponds to a loosening of the lace (para.22-23).
Regarding Claim 6, Ussher discloses an article of footwear of claim 5, wherein a preset tightened state (i.e. fully tightened) corresponds to a state including a shortest effective lace length and a preset loosened state (i.e. fully loosened) corresponds to a state including a longest effective lace length (para.22-23).
Regarding Claim 7, Ussher discloses an article of footwear of claim 6, wherein the control panel (electronics of 13,22,24) is configured to increase the tension on the lace based on touching the control panel in a first location (i.e. the location of 13) and decrease the tension on the lace based on touching the control panel in a second location (i.e. the location of 22,24).
Regarding Claim 8, Ussher discloses an article of footwear of claim 7 wherein the control panel (electronics of 13,22) is positioned in a compartment between the outer layer (i.e. outer upper layer, button cover of 13, knob of 24) of the upper and the inner layer (i.e. lining; para.12) of the upper and a touch by the user is imparted to the control panel through the outer layer (as seen in Fig.1 & 5).
Regarding Claim 9, Ussher discloses an article of footwear of claim 8, further comprising a wiring portion (5), wherein the wiring portion further operatively couples the control panel to the power source (para.12).
Regarding Claim 10, Ussher discloses an article of footwear of claim 9, wherein the wiring portion (5) extends through the upper portion and the lower portion (as seen in Fig.1).
Regarding Claim 11, Ussher, Martin, and Kim disclose the invention substantially as claimed above. Ussher does not disclose wherein the control panel further comprises a circuit board operatively coupled to the wiring portion. However, Kim teaches a shoe with a control panel (3) that comprises a circuit board (para.93)
Therefore, it would have been obvious to one having ordinary skill in the art before the invention was made to have modified the control panel of Ussher to have a circuit board, as taught by Kim, in order to provide a control panel that enhances the user’s experience by allowing ease of use to turn on or off the power of, to store measured information, or to transmit the measured information to external devices. When in combination Ussher and Kim teach the circuit board is operatively coupled to the wiring portion.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and newly modified grounds of rejection have been identified and applied. Applicant's arguments have been considered but are moot in view of the newly modified ground(s) of rejection.
Applicant’s argument regarding Martin was addressed on Pg.13 of the Non-Final Rejection filed February 11, 2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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