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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/14/26 has been entered.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “recognizably ornamental in appearance” as amended into claim 1.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “decoratively viewable” as amended into claim 1.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “non though holes” as amended into claim 1.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “an ornamental peg board pattern arranged over a substantial portion of an outwardly exposed surface of the ornamental member” as amended into claim 1.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “utilitarian device” as provided in claim 13.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “utilitarian device comprises a member of the group consisting of camera, tracker and lighted element” as provided in claim 14.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 11 and the claims that depend therefrom 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.
Regarding claim 1, it is unclear what the metes and bounds are and is structurally required to read on the limitation “the fastening member is recognizably ornamental in appearance”. What may be recognizably ornamental to one person may not be recognizably ornamental to another person. It is unclear what would or would not read on this limitation. The specification fails to define what is required materially or structurally to read on “recognizably ornamental”.
Regarding claim 1, it is unclear what is meant by “decoratively viewable”, it is unclear what this would require structurally or materially of the fastening member. Further, the specification is silent as to what “decoratively viewable” means or is.
Regarding claim 1, it is unclear in lines 13-14 what “non through holes” are referring to. Are these additional non through holes to the previously presented “non through holes”, or are these referring to the previously presented “non through holes”? It is unclear how many non through holes are being required of the claim.
Regarding claim 11, it is unclear what the metes and bounds of “configured utilitarian devices” would be, what devices does this include or exclude? The specification is silent as what “utilitarian devices” would or would not be, therefore the metes and bounds of this limitation are indefinite.
Any remaining claims are rejected depending from a rejected base claim.
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 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(s) 1 and 10-11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over James (US 2005/0005478) in view of Michell (US 6,115,948).
In regard to claim 1, James teaches an wherein an article of wearable clothing or wearable accessory selected from footwear (sneaker/athletic shoe: 10); the article having at least one ornamental member (see figure 5b, insert pad: 52, paragraph 0045) comprising a decorative peg board appearance comprised of holes in an ornamental peg board pattern arranged over a substantial portion of an outwardly exposed surface of the ornamental member (figure 5b, insert pad: 52 with holes/insert channels: 54), the ornamental member being integrated with the article of wearable clothing or wearable accessory on an outwardly visible surface thereof when worn (see figures 5b); and wherein at least one ornamental element (cover pad: 56) is respectively removable attached to at least one ornamental member (52) by removable engagement or the ornamental member fastening member with a fastening element of the ornamental element (see fastening members 58 and 54 and paragraph 0045), which comprises pegs which frictionally engage corresponding holes of the peg board to effect the removable attachment (see figure 5b and paragraph 0045), wherein the holes are recognizable ornamental in appearance and are decoratively viewable with or without an ornamental element removably fastened thereto (see figure 5b and paragraph 0045).
However, James fails to teach the through holes being non-through holes that are recognizable a peg holes.
Mitchell teaches a hole and peg attachment wherein the hole is a non-through hole that is flush with the top surface of the ornamental member and is recognizable as peg hole structure (detailed in annotated figure 7 below).
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It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the hole and peg pattern of James with the flush non through hole peg construction as taught by Mitchell, since the hole structure of James being flush and a non through hole would provide a fastening attachment that does not poke out and catch a garment, sock item, or user when the cover pad is not worn and also provides a more streamlined appearance to the sneaker garment. Here we are taking one well-known fastening structure (James) and replacing it with another well-known fastening structure (Mitchell) to provide a more streamlined fastener on footwear article to attach items.
In regard to claim 10, James teaches wherein the wearable clothing or wearable accessory is an athletic shoe or sneaker, sandal, slipper, shoe and ballerina shoe (sneaker/athletic shoe: 10).
In regard to claims 11 and 14, Mitchell teaches an ornamental element comprising an ornamentally configured utilitarian device of the group consisting of camera's, trackers, and lighted elements (column 4, lines 4-8).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any rejection applied in the prior action of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton T Ostrup can be reached on (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732