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 .
Response to Amendment
The amendments filed on 07/30/2025 have been entered. Claims 1-11 remain pending in the application, with Claims 7 and 11 being withdrawn and Claims 1, 3, 4, 6, 8, and 10 being newly amended. Applicant’s amendments to the Claims have overcome each and every objection previously set forth in the Non-final Office Action mailed 01/30/2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Phillips (US 2011/0203141).
Regarding Claim 1, Phillips teaches a fashionable footwear accessory device (1) for use with a shoelace (9) passed through the eyelets of an article of footwear (10), in such a manner that when mounted to said article of footwear, said fashionable footwear accessory device resembles an animated character, fictional or real in nature, having ears, and being mounted on top of said article of footwear (fig. 3 shows the device (1) mounted on an article of footwear with a shoe lace. Examiner notes that the device (1) is considered as having the appearance of an animated character with ears, as any type of inanimate object can be an animated character, and as a shoelace is extended through the device which could clearly form ears), said fashionable footwear accessory device comprises: a flexible patterned material piece (see annotated Fig.) (annotated fig. 1 shows the piece being patterned as it has a particular shape and the piece clearly being flexible as it is capable of folding as shown in fig. 4); two spaced-apart pairs of pre-formed holes (8) in said flexible patterned material piece (Annotated figs. 1 and 2 show the two pairs of spaced apart pre-formed holes (8) formed in the flexible patterned material piece), and a shoelace (9) for passing through said two spaced-apart pairs of pre-formed holes so that when said shoelace is weaved through said two spaced apart pairs of pre-formed holes in said flexible patterned material piece and tied together a pair of spaced-apart ear loops are formed providing an appearance of the animated character's ears (fig. 5 shows the shoelace (9) being weaved through the holes of the flexible patterned material piece. Examiner notes that this limitation is considered to be functional, and therein as the shoe laces extend through the holes and are tied together to form loops, the face of the animated character can be considered as completed with the shoelace forming the animated character’s ears when weaved through the pairs of pre-formed holes).
Regarding Claim 4, Phillips teaches a fashionable footwear accessory device (1) for use with a shoelace (9) passed through the eyelets of an article of footwear (10), in such a manner that when mounted to said article of footwear, said fashionable footwear accessory device resembles an animated character, fictional or real in nature, that is mounted on top of said article of footwear (fig. 3 shows the device (1) mounted on an article of footwear with a shoe lace. Examiner notes that the device (1) is considered as having the appearance of an animated character, as any type of inanimate object can be an animated character), said fashionable footwear accessory device comprises: a flexible patterned material piece (see annotated Fig.) (annotated fig. 1 shows the piece being patterned as it has a particular shape and the piece clearly being flexible as it is capable of folding as shown in fig. 4) having two spaced-apart pairs of pre-formed holes (8) in said flexible patterned material piece (Annotated figs. 1 and 2 show the two pairs of spaced apart pre-formed holes (8) formed in the flexible patterned material pieces), a shoelace (9) for passing through said two spaced-apart pairs of pre-formed holes (fig. 3 shows the shoelace (9) passed through the pairs of pre-formed holes); and a pair of pre-formed slit-apertures (14) in said flexible patterned material piece through which said shoelace is passing for forming the animated character's nose portion (annotated fig. 1 shows a pair of pre-formed slit-apertures (14) in the flexible pattern piece, which the shoelace can clearly be passed through to form a nose portion); wherein the face of the animated character is completed when said shoelace is weaved (i) through said two spaced-apart pairs of pre-formed holes in said flexible patterned material piece and tied together so as to form a pair of spaced-apart ear loops providing an appearance of the animated character's ears and ii) through said pair of pre- formed slit-apertures in said flexible patterned material so as to form a structure providing an appearance of the animated character's nose portion. (fig. 5 shows the shoelace (9) being weaved through the holes of the flexible patterned material piece forming a pair of spaced apart ear loops. While the figs. do not show the shoelace is being weaved through the slit-apertures, Examiner notes that this limitation is considered to be functional, and therein as the shoe laces extend through the holes and are tied together to form loops, and further that the shoelace is capable of extending through the slit-apertures, the face of the animated character can be considered as completed with the shoelace forming then appearance of the animated character’s ears and nose, as the slit apertures are positioned below and centrally between the openings, as is the traditional relationship between ears and a nose).
Regarding Claim 8, Phillips teaches a fashionable footwear accessory device (1) for use with a shoelace (9) passed through the eyelets of an article of footwear (10), in such a manner that when mounted to said article of footwear, said fashionable footwear accessory device resembles an animated character, fictional or real in nature, having ears and a mouth portion, and being is mounted on top of said article of footwear (fig. 3 shows the device (1) mounted on an article of footwear with a shoe lace. Examiner notes that the device (1) is considered as having the appearance of an animated character, as any type of inanimate object can be an animated character), said fashionable footwear accessory device comprises: a flexible patterned material piece (see annotated Fig.); two spaced-apart pairs of pre-formed holes (8) in said flexible patterned material piece (Annotated figs. 1 and 2 show the two pairs of spaced apart pre-formed holes (8)); a shoelace (9) for passing through said two spaced apart pairs of pre-formed holes for forming an animated character's ears (fig. 5 shows the shoelace being passed through the holes (8) and clearly being capable of forming an animated character’s ears), and a pair of preformed slit-apertures (14) in said flexible patterned material piece for forming the animated character's mouth portion (annotated fig. 1 shows a pair of pre-formed slit-apertures (14)); wherein the face of the animated character is completed when said shoelace is weaved through said two spaced apart pairs of pre formed holes in said flexible patterned material piece and tied together so as to form a pair of spaced apart loops proving an appearance of the animated character's ears and through said pair of pre- formed slit-apertures in said flexible patterned material so as to form a structure providing an appearance of the animated character's mouth portion (fig. 5 shows the shoelace being weaved through the holes of the flexible patterned material piece and forming a pair of spaced apart loops that can be considered as ear loops. While the figs. do not show the shoelace being weaved through the slit-apertures, Examiner notes that this limitation is considered to be functional, and therein as the shoe laces extend through the holes and are tied together to form loops, and further as the shoelace is capable of extending through the slit-apertures, the face of the animated character can be considered as completed with the shoelace forming the animated character’s ears and mouth portion, as the slit apertures are positioned below and centrally between the openings, as is the traditional relationship between ears and a mouth).
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Claim Rejections - 35 USC § 103
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) 2, 5, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phillips (US 2011/0203141) in view of Rowland et al. (US 5209000).
Regarding Claim 2, Phillips teaches all of the limitations of the fashionable footwear accessory device of Claim 1, as discussed in the rejections above.
Phillips does not teach wherein said flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal.
Attention is drawn to Rowland et al. which teaches an analogous attachment for an article of footwear. Rowland et al. teaches a fashionable footwear accessory device (10) for use with a shoelace (14) passed through the eyelets of an article of footwear (12), in such a manner that when mounted to said article of footwear, said fashionable footwear accessory device resembles an animated character, fictional or real in nature, that is mounted on top of said article of footwear (fig. 1 shows the device (10) mounted on an article of footwear (12) with a shoe lace (14). Examiner notes that the device (10) is considered as having the appearance of an animated character, as any type of inanimate object can be an animated character), said fashionable footwear accessory device comprises: a flexible patterned material piece (22) (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”; the material piece is considered as being patterned as it includes indicia (32)) having a pair of pre-formed holes (30) for forming an animated character's ears (fig. 2 shows the material piece (22) having a pair of preformed holes), wherein the face of the animated character is completed when said shoelace is weaved through the holes of said flexible patterned material piece and tied together to form an appearance of the animated character's ears (fig. 1 shows the shoelace (14) being weaved through the holes (30) of the flexible patterned material piece (22). Examiner notes that this limitation is considered to be functional, and therein as the shoe laces extend through the holes and can then be tied together to form loops, the face of the animated character can be considered as completed with the shoelace forming the animated character’s ears). Rowland et al. further teaches wherein said flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Phillips to include the teachings of Rowland et al. such that the flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal so as to allow the material piece to be completely flexible as well as durable during use (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”), especially as Rowland et al. is silent with regards to the specific material of the material piece. Further in support of this conclusion of obviousness, Examiner notes that it has been held that when the only difference between the prior art and the claimed invention is the provision of a specific material recognized in the art as being suitable for the intended use of the claimed component a finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
Regarding Claim 5, Phillips teaches all of the limitations of the fashionable footwear accessory device of Claim 4, as discussed in the rejections above.
Phillips does not teach wherein said flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal.
Attention is drawn to Rowland et al. which teaches an analogous attachment for an article of footwear. Rowland et al. teaches a fashionable footwear accessory device (10) for use with a shoelace (14) passed through the eyelets of an article of footwear (12), in such a manner that when mounted to said article of footwear, said fashionable footwear accessory device resembles an animated character, fictional or real in nature, that is mounted on top of said article of footwear (fig. 1 shows the device (10) mounted on an article of footwear (12) with a shoe lace (14). Examiner notes that the device (10) is considered as having the appearance of an animated character, as any type of inanimate object can be an animated character), said fashionable footwear accessory device comprises: a flexible patterned material piece (22) (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”; the material piece is considered as being patterned as it includes indicia (32)) having a pair of pre-formed holes (30) for forming an animated character's ears (fig. 2 shows the material piece (22) having a pair of preformed holes), wherein the face of the animated character is completed when said shoelace is weaved through the holes of said flexible patterned material piece and tied together to form an appearance of the animated character's ears (fig. 1 shows the shoelace (14) being weaved through the holes (30) of the flexible patterned material piece (22). Examiner notes that this limitation is considered to be functional, and therein as the shoe laces extend through the holes and can then be tied together to form loops, the face of the animated character can be considered as completed with the shoelace forming the animated character’s ears). Rowland et al. further teaches wherein said flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Phillips to include the teachings of Rowland et al. such that the flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal so as to allow the material piece to be completely flexible as well as durable during use (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”), especially as Rowland et al. is silent with regards to the specific material of the material piece. Further in support of this conclusion of obviousness, Examiner notes that it has been held that when the only difference between the prior art and the claimed invention is the provision of a specific material recognized in the art as being suitable for the intended use of the claimed component a finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
Regarding Claim 9, Phillips teaches all of the limitations of the fashionable footwear accessory device of Claim 8, as discussed in the rejections above.
Phillips does not teach wherein said flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal.
Attention is drawn to Rowland et al. which teaches an analogous attachment for an article of footwear. Rowland et al. teaches a fashionable footwear accessory device (10) for use with a shoelace (14) passed through the eyelets of an article of footwear (12), in such a manner that when mounted to said article of footwear, said fashionable footwear accessory device resembles an animated character, fictional or real in nature, that is mounted on top of said article of footwear (fig. 1 shows the device (10) mounted on an article of footwear (12) with a shoe lace (14). Examiner notes that the device (10) is considered as having the appearance of an animated character, as any type of inanimate object can be an animated character), said fashionable footwear accessory device comprises: a flexible patterned material piece (22) (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”; the material piece is considered as being patterned as it includes indicia (32)) having a pair of pre-formed holes (30) for forming an animated character's ears (fig. 2 shows the material piece (22) having a pair of preformed holes), wherein the face of the animated character is completed when said shoelace is weaved through the holes of said flexible patterned material piece and tied together to form an appearance of the animated character's ears (fig. 1 shows the shoelace (14) being weaved through the holes (30) of the flexible patterned material piece (22). Examiner notes that this limitation is considered to be functional, and therein as the shoe laces extend through the holes and can then be tied together to form loops, the face of the animated character can be considered as completed with the shoelace forming the animated character’s ears). Rowland et al. further teaches wherein said flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Phillips to include the teachings of Rowland et al. such that the flexible patterned material piece comprises a patterned piece of material selected from the group consisting of leather, plastic, cardboard, and metal so as to allow the material piece to be completely flexible as well as durable during use (col. 2 ll. 18-19, “The plate 22 can be fabricated out of plastic, leather, cloth or any other flexible materials”), especially as Rowland et al. is silent with regards to the specific material of the material piece. Further in support of this conclusion of obviousness, Examiner notes that it has been held that when the only difference between the prior art and the claimed invention is the provision of a specific material recognized in the art as being suitable for the intended use of the claimed component a finding of prima facie obviousness is appropriate (see MPEP § 2144.07).
Claim(s) 3, 6, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Phillips (US 2011/0203141) in view of Reis (US 20210378362).
Regarding Claim 3, Phillips teaches all of the limitations of the fashionable footwear accessory device of Claim 1, as discussed in the rejections above.
Phillips does not teach wherein said shoelace is patterned in a three color pattern along its length, and where a middle color section is provided for the nose portion of the animated character displayed by the device when assembled, and color patterned end portions provide coloring for the ears formed by the device when shoelace tying operations are completed.
Attention is drawn to Reis, which is an analogous shoelace for an article of footwear. Reis teaches a shoelace (22) patterned in three color patterned along its length (paragraph [0020] teaches “Each of the equal length regions 30A1-30A8, 30B1-30B8 has a different color, pattern or indicia from its immediately adjacent equal length regions as shown in FIGS. 1-3, as does the longer regions 30A9, 30B9 at the end of each lace. There may be as many as eight different colors, patterns or indicia for each pair of equal length regions (e.g., red 30A1 and 30B1, 30A2 and 30B2, etc.), or just two different colors, patterns or indicia for each pair, so long as no adjacent pairs are the same color, pattern or indicia,” therein the shoelace can clearly be patterned in a three color pattern along its length), where a middle color section (26) is provided for the nose portion of the animated character displayed by a device when assembled (fig. 2 shows the middle color section (26). Examiner notes the limitation “provided for the nose portion of the animated character displayed by the device when assembled” is functional, and as the shoelace has a middle color it could clearly perform the function of providing the nose portion of an animated character), and color patterned end portions (30B8, 30A8) provide coloring for the ear loops formed by the device when shoe lace tying operations are completed (fig. 2 shows the color patterned end portions (30B8, 30A8). Examiner notes the limitation “provide coloring for the ear loops formed by the device when shoe lace tying operations are completed” is functional, and as the shoelace has an end portion color it could clearly perform the function of providing the coloring for ear portions of an animated character).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Phillips to include the teachings of Reis such that the shoelace is a shoelace patterned in three color patterned along its length, where a middle color section is provided for the nose portion of the animated character displayed by the device when assembled, and color patterned end portions provide coloring for the ear loops formed by the device when shoe lace tying operations are completed so as to provide visual interest to the shoe lace, therein improving the aesthetic appeal of the shoelace.
Regarding Claim 6, Phillips teaches all of the limitations of the fashionable footwear accessory device of Claim 4, as discussed in the rejections above.
Phillips does not teach wherein said shoelace is patterned in a three color pattern along its length, where a middle color section is provided for the nose portion of the animated character displayed by the device when assembled, and color patterned end portions provide coloring for the ears formed by the device when shoelace tying operations are completed.
Attention is drawn to Reis, which is an analogous shoelace for an article of footwear. Reis teaches a shoelace (22) patterned in three color patterned along its length (paragraph [0020] teaches “Each of the equal length regions 30A1-30A8, 30B1-30B8 has a different color, pattern or indicia from its immediately adjacent equal length regions as shown in FIGS. 1-3, as does the longer regions 30A9, 30B9 at the end of each lace. There may be as many as eight different colors, patterns or indicia for each pair of equal length regions (e.g., red 30A1 and 30B1, 30A2 and 30B2, etc.), or just two different colors, patterns or indicia for each pair, so long as no adjacent pairs are the same color, pattern or indicia,” therein the shoelace can clearly be patterned in a three color pattern along its length), where a middle color section (26) is provided for the nose portion of the animated character displayed by a device when assembled (fig. 2 shows the middle color section (26). Examiner notes the limitation “provided for the nose portion of the animated character displayed by the device when assembled” is functional, and as the shoelace has a middle color it could clearly perform the function of providing the nose portion of an animated character), and color patterned end portions (30B8, 30A8) provide coloring for the ear loops formed by the device when shoe lace tying operations are completed (fig. 2 shows the color patterned end portions (30B8, 30A8). Examiner notes the limitation “provide coloring for the ear loops formed by the device when shoe lace tying operations are completed” is functional, and as the shoelace has an end portion color it could clearly perform the function of providing the coloring for ear portions of an animated character).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Phillips to include the teachings of Reis such that the shoelace is a shoelace patterned in three color patterned along its length, where a middle color section is provided for the nose portion of the animated character displayed by the device when assembled, and color patterned end portions provide coloring for the ear loops formed by the device when shoe lace tying operations are completed so as to provide visual interest to the shoe lace, therein improving the aesthetic appeal of the shoelace.
Regarding Claim 10, Phillips teaches all of the limitations of the fashionable footwear accessory device of Claim 8, as discussed in the rejections above.
Phillips does not teach wherein said shoelace is patterned in a three color pattern along its length, where a middle color section is provided for the nose portion of the animated character displayed by the device when assembled, and color patterned end portions provide coloring for the ears formed by the device when shoelace tying operations are completed.
Attention is drawn to Reis, which is an analogous shoelace for an article of footwear. Reis teaches a shoelace (22) patterned in three color patterned along its length (paragraph [0020] teaches “Each of the equal length regions 30A1-30A8, 30B1-30B8 has a different color, pattern or indicia from its immediately adjacent equal length regions as shown in FIGS. 1-3, as does the longer regions 30A9, 30B9 at the end of each lace. There may be as many as eight different colors, patterns or indicia for each pair of equal length regions (e.g., red 30A1 and 30B1, 30A2 and 30B2, etc.), or just two different colors, patterns or indicia for each pair, so long as no adjacent pairs are the same color, pattern or indicia,” therein the shoelace can clearly be patterned in a three color pattern along its length), where a middle color section (26) is provided for the nose portion of the animated character displayed by a device when assembled (fig. 2 shows the middle color section (26). Examiner notes the limitation “provided for the nose portion of the animated character displayed by the device when assembled” is functional, and as the shoelace has a middle color it could clearly perform the function of providing the nose portion of an animated character), and color patterned end portions (30B8, 30A8) provide coloring for the ear loops formed by the device when shoe lace tying operations are completed (fig. 2 shows the color patterned end portions (30B8, 30A8). Examiner notes the limitation “provide coloring for the ear loops formed by the device when shoe lace tying operations are completed” is functional, and as the shoelace has an end portion color it could clearly perform the function of providing the coloring for ear portions of an animated character).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Phillips to include the teachings of Reis such that the shoelace is a shoelace patterned in three color patterned along its length, where a middle color section is provided for the nose portion of the animated character displayed by the device when assembled, and color patterned end portions provide coloring for the ear loops formed by the device when shoe lace tying operations are completed so as to provide visual interest to the shoe lace, therein improving the aesthetic appeal of the shoelace.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 and 8-10 have been considered but are moot because the new ground of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations.
Regarding independent Claims 1, 4, and 8, Applicant submits that Phillips does not teach all of the claimed limitations. Specifically, Applicant submits that Phillips only teaches one pair of holes. Examiner disagrees, and submits that fig. 4 of Phillips clearly show 4 holes in the flexible patterned material piece, which form 2 pairs of holes, each pair being spaced apart from one another. While when the flexible material is folded as shown in fig. 5 only two holes are shown, this does not mean that there are only two individual, or one pair of holes, instead, fig. 5 clearly shows one hole from each pair of holes.
Regarding Claims 3, 6, and 10, Applicant further submits that Reis does not teach or suggest using a different color section of a shoelace to form particular features of an animated character’s face. Examiner agrees that Reis does not specifically teach using the shoelace for this particular function, however notes that Reis does teach a shoelace with three colors patterned along its length. As Reis teaches the claimed structure of the shoelace, then the claimed function of forming coloring for a nose or mouth portion and the ears.
Examiner respectfully suggested amending the claims to include additional structure of the instant invention to overcome the teachings of Phillips and Reis. As Phillips and Reis teach all of the structure as claimed in the instant claims, the 35 U.S.C. 102 and 35 U.S.C. 103 rejections as set forth above are upheld.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEY A SMITH whose telephone number is (571)272-6597. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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/HALEY A SMITH/Primary Examiner, Art Unit 3732