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 .
The amendment filed on August 28, 2025 has been considered.
Specification
The disclosure is objected to because of the following informalities:
The US Application 17/832,986 (paragraph 0001) is now abandoned.
After “receive coil 208” (paragraph 0019, line 5), should insert -- , --.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “wearer” (claims 2, 9, 16), “orthotic insert” (claims 2, 9, 16), “article of footwear comprising a wireless transceiver” (claims 2, 9, 16), “adaptive component coupled to a processor circuit” (claims 2, 9, 16) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 15 and 18 are objected to because of the following informalities:
claims 15 and 18, “are” (line 1) should be – is --.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 15-17 of U.S. Patent No. 11,350,692 (to Andon et al.) in view of Case, Jr. (US 2009/0284368) and Walker et al. (US 2017/0265582).
Andon et al. (‘692) claims:
Regarding claims 9 and 16, a processor-implemented method (claim 11), comprising:
prompting, on a user interface, a wearer to put on an article of footwear (claim 11, lines 4-5), the article of footwear including:
a wireless transceiver (claim 11, lines 5-6)
an adaptive component configured to be adjusted to one of a plurality of configurations based on a command received from a processor (claim 11, lines 8-11);
receiving a signal from the article of footwear indicating that the article of footwear has been placed on the foot of a wearer (claim 11, lines 12-15);
accessing (claim 11, lines 31-32), in an electronic data storage, one of a plurality of configurations of a user profile based on a user selection received via the user interface (claim 15); and
transmitting to the wireless transceiver of the article of footwear the one of the plurality of configurations as selected to a processor circuit of the article of footwear (claim 11, lines 26-27, 29-30) to cause the adaptive component to adjust (claim 11, lines 9-11, 29-32);
wherein, upon receiving the one of the plurality of configurations, the processor circuit causes the adaptive component to be configured according to the one of the plurality of configurations (claim 11, lines 29-32).
Andon et al. (‘692) does not claim an opening configured to admit a foot of a wearer and an orthotic insert.
Case, Jr. discloses an opening configured to admit a foot of a wearer, while.
Walker et al. discloses an orthotic insert (paragraph 0154, lines 11-12) for changing a dielectric characteristic of the footwear, paragraph 0154, lines 11-13).
Regarding claim 20, the motorized lacing system comprises a motor, a spool, and an encoder configured to determine a rotational position of the spool, and wherein the each of the plurality of configurations describes an encoder setting corresponding to a desired degree of tension on the lace (claim 17/16/15).
Regarding claim 20, the motorized lacing system comprises a motor, a spool, and an encoder configured to determine a rotational position of the spool, and wherein the each of the plurality of configurations describes an encoder setting corresponding to a desired degree of tension on the lace (claim 17/16/15).
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 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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. (US 2009/0284368) in view of Walker et al. (US 2017/0265582) and Gadiyak et al. (US 2004/0225532).
Regarding claim 2, Case, Jr. discloses a system (Fig. 1), comprising:
an article of footwear (102), comprising:
an opening (opening of 102) configured to admit a foot of a wearer (paragraph 0022, line 9),
a wireless transceiver (104a, Fig. 3; Fig. 1);
a processor circuit (202) operatively coupled to the wireless transceiver (Fig. 3); and
an adaptive component (210; 210 can be adapted, paragraph 0044, line 19), operatively coupled to the processor circuit (Figs. 2), configured to be adjusted to one of a plurality of configurations (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21) based on a command received from the processor circuit (processing system controls 210, Fig. 2A); and
wherein the plurality of configurations are part of a user profile (paragraph 0049, lines 9-14) stored in an electronic data storage (310), wherein the user profile further comprises a database to store multiple records (paragraph 0066, lines 14-20).
Case, Jr. does not disclose
an orthotic insert;
wherein at least one of the plurality of configurations is based on a presence of the orthotic insert in the opening and at least one of the plurality of configurations is based on a lack of the orthotic insert in the opening.
Walker et al. discloses
an orthotic insert (paragraph 0154, lines 11-12);
wherein at least one of the plurality of configurations is based on a presence of the orthotic insert in the opening and at least one of the plurality of configurations is based on a lack of the orthotic insert in the opening (an orthotic insert (e.g., insole) in footwear can change a dielectric characteristic of the footwear, paragraph 0154, lines 11-13).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with an orthotic insert as disclosed by Walker et al. for the purpose of defining one of the plurality of configurations.
Case, Jr. further does not disclose each record comprising one plurality of configurations associated with a particular article of footwear.
Gadiyak et al. discloses each record comprising one plurality of configurations (shoe recommendations, paragraph 0129, line 14) associated with a particular article of footwear (paragraph 0129, lines 21-29).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with each record comprising one plurality of configurations as disclosed by Gadiyak et al. for the purpose of grouping the record by a particular article of footwear (paragraph 0129, lines 27-29).
Regarding claim 3, Case, Jr. does not disclose the processor circuit is configured to calibrate the at least one of the plurality of configurations based on the presence of the orthotic insert in the opening.
Walker et al. discloses a processor circuit is configured to calibrate the at least one of the plurality of configurations based on the presence of the orthotic insert in the opening (processor circuit 320 can optionally be configured to calibrate the foot presence sensor 310 when a baseline or reference characteristic changes, such as when an insole is changed, paragraph 0154, lines 13-16).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with an orthotic insert (e.g., insole) as disclosed by Walker et al. for the purpose of calibrating the at least one of the plurality of configurations based on the orthotic insert.
Regarding claim 4, Case, Jr. does not disclose the adaptive component is a motorized lacing system, and wherein each of the plurality of configurations describes a degree of tension on a lace induced by the motorized lacing system.
Walker et al. discloses an adaptive component is a motorized lacing system (paragraph 0008, Fig. 3), and wherein each of the plurality of configurations describes a degree of tension on a lace induced by the motorized lacing system (the footwear can be configured to tighten or adjust a tension characteristic using the drive mechanism 340, paragraph 0123, lines 3-4).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with a motorized lacing system as disclosed by Walker et al. for the purpose of inducing a degree of tension on a lace.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Walker et al. and Gadiyak et al. as applied to claims 1-4 above, and further in view of Schneider (US 2017/0272008) and Schneider (US 2020/0281319).
Regarding claim 5, Case, Jr. as modified by Walker et al. and Gadiyak et al. does not disclose the motorized lacing system comprises a motor, a spool, and an encoder configured to determine a rotational position of the spool, and wherein the each of the plurality of configurations describes an encoder setting corresponding to a desired degree of tension on the lace.
Schneider (‘008) discloses a motorized lacing system comprises a motor (paragraph 0038, lines 4-8), a spool (paragraph 0038, lines 4-9), and an encoder (paragraph 0038, lines 4-8) configured to determine a rotational position of the spool (paragraph 0041, lines 8-10), and
Schneider (‘319) discloses each of the plurality of configurations describes an encoder setting corresponding to a desired degree of tension on the lace (the processor circuit … receive information from … the encoder, and can be further configured to issue commands to the drive mechanism, such as to tighten or loosen the footwear, paragraph 0089).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. as modified with a motorized lacing system including an encoder and an encoder setting as disclosed by Schneider (‘008) and Schneider (‘319) for the purposes of determining a rotational position of the spool and providing a desired degree of tension on the lace.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Walker et al. and Gadiyak et al. as applied to claims 1-4 above, and further in view of Schneider (US 2020/0281319).
Regarding claim 6, Case, Jr. as modified by Walker et al. and Gadiyak et al. does not disclose a user interface configured to prompt a user, via the user interface, to manually adjust the degree of tension on the lace based on a user input from the user; and
wherein the processor circuit is configured to update the one of the plurality of configurations based on the degree of tension as manually adjusted.
Schneider (’319) discloses a user interface configured to prompt a user, via the user interface, to manually adjust the degree of tension on the lace based on a user input from the user (claim 4); and
wherein the processor circuit is configured to update the one of the plurality of configurations based on the degree of tension as manually adjusted (claim 4, lines 1-2).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. as modified with a user interface as disclosed by Schneider (‘319) for the purpose of adjusting the degree of tension on the lace and tighten or loosen the footwear.
Regarding claim 7, Case, Jr. as modified by Walker et al., Gadiyak et al., and Schneider (‘319) does not disclose the user interface is further configured to prompt the user to indicate the presence or absence of the orthotic insert in the opening.
Gadiyak et al. discloses a user interface is further configured to prompt the user to indicate the presence or absence of the orthotic insert in the opening (paragraph 0095, lines 4-8) for creating recommendation for running shoe report (Fig. 3).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. as modified with a user interface to indicate the presence or absence of the orthotic insert in the opening as disclosed by Gadiyak et al. for the purpose of creating recommendation for running shoe report.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. (US 2009/0284368) in view of Spencer-Harper et al. (US 9,606,647) and Walker et al. (US 2017/0265582).
Regarding claim 9, Case, Jr. discloses a processor-implemented method (Fig. 1), comprising:
an article of footwear (102) including:
a wireless transceiver (104a, Fig. 3; Fig. 1);
an adaptive component (210; 210 can be adapted, paragraph 0044, line
19) configured to be adjusted to one of a plurality of configurations based on a command received from a processor (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21); and
an opening (opening of 102) configured to admit a foot of a wearer (paragraph 0022, line 9),
accessing (via 302), in an electronic data storage (304), one of a plurality of configurations of a user profile based on a user selection received via the user interface (one of ordinary in the art would know that the settings are saved/entered in 304, Fig. 3, the settings are used to control functions of system/components, paragraph 0049, lines 9-12, the settings are accessed to control functions of system/components); and
transmitting to the wireless transceiver of the article of footwear the one of the plurality of configurations (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21, processing system 202 controls activator 210, Fig. 3); and
upon receiving the one of the plurality of configurations, configuring, via the processor circuit the adaptive component (processing system 202 controls activator 210, Fig. 3) according to the one of the plurality of configurations (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21).
Case, Jr. does not disclose prompting, on a user interface, a wearer to put on an article of footwear.
Spencer-Harper et al. discloses prompting, on a user interface, a wearer to put on an article of footwear (column 5, lines 57-59), and reciting a signal from the article of footwear indicating that the article of footwear has been placed on the foot of a wearer (column 5, line 59) for detecting movement of the wearer in a physical environment (column 5, lines 53-54, 57-59).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with prompting, on a user interface, a wearer to put on an article of footwear and indicating that the article of footwear has been placed on the foot of a wearer as disclosed by Spencer-Harper et al. for the purpose of detecting movement of the wearer in a physical environment.
Case, Jr. does not disclose an orthotic insert.
Walker et al. discloses an orthotic insert (paragraph 0154, lines 11-12) for changing a dielectric characteristic of the footwear, paragraph 0154, lines 11-13).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with an orthotic insert as disclosed by Walker et al. for the purpose of changing a dielectric characteristic of the footwear.
Regarding claim 10, Case, Jr. does not disclose the claimed invention. In particular, Walker et al. discloses the claim limitation as discussed above with regard to claim 3.
Regarding claim 11, Case, Jr. does not disclose the claimed invention. In particular, Walker et al. discloses the claim limitation as discussed above with regard to claim 4.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al. and Walker et al. as applied to claims 9-11 above, and further in view of Schneider (‘008) and Schneider (‘319).
Regarding claim 12, Case, Jr. as modified by Spencer-Harper et al., Walker et al.
does not disclose the claimed invention. In particular, Schneide (‘008) and Schneider (‘319) disclose the claim limitation as discussed above with regard to claim 5.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al., Walker et al., Schneide (‘008) and Schneider (‘319) as applied to claims 9-12 above, and further in view of Schneider (‘319).
Regarding claim 13, Case, Jr. as modified by Spencer-Harper et al., Walker et al., Schneide (‘008) and Schneider (‘319) does not disclose the claimed invention. In particular, Schneider (‘319) discloses the claim limitation as discussed above with regard to claim 6.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al., Walker et al., Schneide (‘008) and Schneider (‘319) as applied to claims 9-13 above, and further in view of Gadiyak et al. (US 2004/0225532).
Regarding claims 14, Case, Jr. as modified by Spencer-Harper et al., Walker et al., Schneide (‘008), Schneider (‘319), does not disclose the claimed invention. In particular, Gadiyak et al. discloses the claim limitation as discussed above with regard to claim 7.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al. and Walker et al. as applied to claims 9-11 above, and further in view of Gadiyak et al..
Regarding claim 15, Case, Jr. as modified by Spencer-Harper et al., Walker et al., does not disclose the claimed invention. In particular, Gadiyak et al. disclose the claim limitation as discussed above with regard to claim 2.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. (US 2009/0284368) in view of Spencer-Harper et al. (US 9,606,647).
Regarding claim 16, Case, Jr. discloses a processor-implemented method (Fig. 1), comprising an article of footwear includes:
a wireless transceiver (104a, Fig. 3; Fig. 1);
an adaptive component (210; 210 can be adapted, paragraph 0044, line
19) configured to be adjusted to one of a plurality of configurations based on a command received from a processor (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21); and
an opening (opening of 102) configured to admit a foot of a wearer
(paragraph 0022, line 9),
accessing (via 302), in an electronic data storage (304), one of a plurality of configurations of a user profile based on a user selection received via the user interface (one of ordinary in the art would know that the settings are saved/entered in 304, Fig. 3, the settings are used to control functions of system/components, paragraph 0049, lines 9-12, the settings are accessed to control functions of system/components); and
transmitting to the wireless transceiver of the article of footwear the one of the plurality of configurations (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21, processing system 202 controls activator 210, Fig. 3); and
upon receiving the one of the plurality of configurations, configuring, via the processor circuit the adaptive component (processing system 202 controls activator 210, Fig. 3) according to the one of the plurality of configurations (210 may be programmed and adapted such that at least some minimum threshold amount of force must be applied to the article of footwear 102, paragraph 0044, lines 17-21).
Case, Jr. does not disclose a user interface.
Spencer-Harper et al. discloses a user interface (column 5, lines 57-59) and receiving a signal from an article of footwear indicating that the article of footwear has been placed on a foot of a wearer (column 5, line 59) for detecting movement of the wearer in a physical environment (column 5, lines 53-54, 57-59).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Case, Jr. with a user interface and receiving an indication that the article of footwear has been placed on the foot of a wearer as disclosed by Spencer-Harper et al. for the purpose of detecting movement of the wearer in a physical environment.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al. as applied to claim 16 above, and further in view of Walker et al..
Regarding claim 17, Case, Jr. as modified by Spencer-Harper et al. does not disclose the claimed invention. In particular, Walker et al. discloses the claim limitation as discussed above with regard to claim 3.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al. and Walker et al. as applied to claim 16 and 17 above, and further in view of Gadiyak et al..
Regarding claim 18, Case, Jr. as modified by Spencer-Harper et al., Walker et al. does not disclose the claimed invention. In particular, Gadiyak et al. discloses the claim limitation as discussed above with regard to claim 2.
Regarding claim 19, Case, Jr. as modified by Spencer-Harper et al., Walker et al. does not disclose the claimed invention. In particular, Walker et al. discloses the claim limitation as discussed above with regard to claim 4.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Case, Jr. in view of Spencer-Harper et al., Walker et al., and Gadiyak et al. as applied to claims 16-19 above, and further in view of Schneide (‘008) and Schneider (‘319).
Regarding claim 20, Case, Jr. as modified by Spencer-Harper et al., Walker et al., and Gadiyak et al. does not disclose the claimed invention. In particular, Schneide (‘008) and Schneider (‘319) disclose the claim limitation as discussed above with regard to claim 5.
Regarding claim 21, Case, Jr. as modified by Spencer-Harper et al., Walker et al., and Gadiyak et al. does not disclose the claimed invention. In particular, Schneider (‘319) discloses the claim limitation as discussed above with regard to claim 6.
Response to Arguments
Applicant's arguments filed on August 28, 2025 have been fully considered.
Applicant’s arguments and amendments with respect to the objections to the specification have been fully considered and are persuasive. The objections to the specification have been withdrawn.
With respect to the drawing objections, Applicants argue “the "wearer" and the "orthotic insert" are of necessity claimed inferentially and are not essential to the operation of the processor circuit in the context of which the "wearer" and "orthotic insert" are recited. Consequently, the "wearer" and "orthotic insert" are not a "feature of the invention specified in the claims" under 37 CFR 1.83(a) and is not required to be shown in the figures.”
Examiner’s position is that pursuant to 37 CFR 1.83(a), the drawings must show
every feature of the invention specified in the claims. The "wearer" and "orthotic
insert" are specified in the claims (see claims 2, 9, 16) and must be shown.
Applicants further argue “FIG. 2 has been amended to illustrate the wireless transceiver of the article of footwear at reference numeral 209. The motorized lacing system has literal support in the specification and in the figures as reference numeral 100. The specification makes clear that the adaptive component includes various different components including the motorized lacing system, e.g., at paragraphs [0029] and [0030]. As such, the illustration of the motorized lacing system 100 is also an illustration of an adaptive component. The processor circuit is illustrated and specifically labeled in FIG. 2 as filed as reference numeral 204. As such, all grounds for the objection to the drawings have either been cured or explained. Withdrawal of the objections to the drawings is respectfully requested.”
Examiner’s position is that Fig. 2 does not show “article of footwear comprising a wireless transceiver”. Rather, Fig. 2 shows the motorized lacing system 100 comprising a wireless transceiver (209). Further, Fig. 2 does not show an “adaptive component coupled to a processor circuit”. Rather, Fig. 2 shows the adaptive component/ motorized lacing system (100) comprising a processor circuit (204).
Applicant’s arguments and amendments with respect to the remaining drawing objections have been fully considered and are persuasive. The remaining drawing objections have been withdrawn.
Applicant’s arguments and amendments with respect to the claim objections have been fully considered and are persuasive. The claim objections have been withdrawn.
Applicant’s arguments and amendments with respect to the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections under 35 USC 112(b) have been withdrawn.
Applicant’s arguments and amendments with respect to the double patenting objection have been fully considered and are persuasive. The double patenting objection has been withdrawn.
With respect to the nonstatutory double patenting rejections, Applicants request “the rejection of the claims for nonstatutory double patenting be held in abeyance until the claims are in condition for allowance”.
Applicants’ request with respect to the nonstatutory double patenting rejections has been acknowledged. The nonstatutory double patenting rejections are maintained as discussed above until a terminal disclaimer is been filed.
With respect to the rejections under 35 USC 103, Applicants argue claim 2 has been further modified to recite wherein the plurality of configurations is part of a user profile stored in an electronic data storage, wherein the user profile further comprises a database to store multiple records, each record comprising one of the plurality of configurations associated with a particular article of footwear. This specifies that the configurations saved are more than just the name of the shoe but affirmatively relate to how the article of footwear is configured to be worn. This is in contrast to Gadiyak … . Gadiyak discloses that shoes are saved for a user and that the user can go into the user interface and change the name of the shoe, but not that the user can change any further information. Claim 2, as amended, now specifically requires that the configurations relate to the state of the article of footwear and the adaptive component. Consequently, claim 2 is not rejectable over Gadiyak.”
Examiner’s position is that the claim does not recite that the configurations relate to how the article of footwear is configured to be worn or that they are related to the adaptive component. Rather, the claim recites one of the plurality of configurations associated with a particular article of footwear. Gadiyak et al. discloses a plurality of configurations (plural shoe recommendations, paragraph 0129, line 14) associated with a particular article of footwear (shoe recommendations can be searched by user’s last name or by name of the shoe, paragraph 0129, lines 14-15, 27-29).
Applicants further argue the disclosure of Spencer “is not indicative of receiving information that anything has actually been placed on the foot of the wearer. The Office Action appears to assert that because Spencer discloses doing so "for detecting movement of the wearer in a physical environment", but it is not inherent that the detection of movement of the wearer is the same as the detection that an article of footwear has been placed on the foot of a wearer. Spencer does not show, disclose, or suggest that movement of the wearer is inherently information indicative of putting the footwear on, and indeed, would inherently be ambivalent as to whether or not the footwear is on the foot of the wearer. Simply because the shoe is moving about does not mean that the shoe is being worn or has been put on the foot. Consequently, it is respectfully submitted that the interpretation of Spencer is speculative and not supported by the actual disclosure of Spencer.”
Examiner’s position is that Spencer discloses prompting, on a user interface, a wearer to put on an article of footwear (column 5, lines 57-59). Then “[i]nformation may be collected by a centralized device (column 5, line 59). One of ordinary skill in the art would conclude that the information indicates that the device (including specialized shoes) is worn by a user, since the user is prompted to wear the devices. Accordingly, Spencer discloses receiving a signal from the article of footwear indicating that the article of footwear has been placed on the foot of a wearer (column 5, lines 57-59).
Applicant’s remaining arguments have been considered but are traversed in view of the grounds of rejection discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Nghiem whose telephone number is (571) 272-2277. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Schechter can be reached at (571) 272-2302. 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).
/MICHAEL P NGHIEM/Primary Examiner, Art Unit 2857 May 28, 2026
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