DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is in response to Applicant’s amendment in which claims 1, 2, 4, 6, and 15 have been amended, claims 3, 5, 7, 10, 12, and 14 have been canceled, and claims 1-2, 4, 6, 9, 11, 13, 15, and 17-19 remain pending.
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 1, 2, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,458,101. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4, 6, 9, 11, 13, and 19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Richter (DE 196 11 797 A1) in view of Paintin et al. (US 2009/0217552), herein Paintin.
Regarding claim 1, Richter discloses a rapid-entry shoe comprising: a sole portion and an upper (Fig. 1); a rapid-entry structure (1) coupled to the upper and disposed at a rear portion of the rapid-entry shoe and extending from the sole portion continuously from a medial side portion of the sole portion, around a rear portion of the sole portion, and to a lateral side portion of the sole portion (Fig. 6), the rapid-entry structure comprising a base portion (Fig. 6) extending from the sole portion and an elevated portion (1), the elevated portion of the rapid-entry structure extending to the topline of the rapid-entry shoe (Fig. 1); wherein expansion or deformation of the flexible element enlarges a foot opening of the rapid-entry shoe, and wherein contraction of the flexible element reduces the foot opening of the rapid-entry shoe (Fig. 1); wherein the base portion of the rapid-entry structure is configured to provide resistance against the rear portion of the rapid-entry shoe from one or more of collapsing downward, flexing rearward and pivoting rearward (Fig. 6); wherein the base portion of the rapid-entry structure extends from the sole at a position rearward relative to a heel of a user when the heel is positioned in the rapid-entry shoe (Fig. 1, 6).
Richter discloses that the upper is flexible (Fig. 1), but does not disclose a distinct flexible element disposed at a side portion of the rapid-entry shoe. Paintin teaches a rapid-entry shoe comprising: an upper (506) forming a first portion of a topline and comprising a flexible element (552) disposed at a side portion of the shoe, the flexible element extending to and forming a second portion of the topline aligned with the first portion of the topline. Expansion of the flexible element enlarges a foot opening, and contraction of the flexible element reduces the foot opening of the shoe. The flexible element is configured to enable a portion of the upper of the rapid-entry shoe to flex and/or pivot relative to the sole portion (paragraph 0052; Fig. 5). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a flexible element at a side portion, as taught by Paintin, to the upper of Richter, in order to provide improved stretchability and elastic rebound at the sides of the heel portion, allowing the heel to fully open, and helping to bias the upper back to the closed position.
Regarding claim 2, Richter discloses that the rapid-entry structure comprises a heel loop (1), wherein the base portion of the rapid-entry structure comprises a body having a first end and a second end, the first end coupled to or extending from the medial side of the sole portion of the rapid-entry shoe and the second end coupled to or extending from the lateral side of the sole portion of the rapid-entry shoe (Fig. 2, 6).
Regarding claim 4, Richter discloses that the rapid-entry structure defines a space for expansion (space between elevated portion and base, which can expand and contract with the concertina folds; Fig. 6).
Regarding claim 6, Richter discloses a rapid-entry shoe comprising: a sole portion and an upper (Fig. 1); a rapid-entry structure (1) disposed at a rear portion of the rapid-entry shoe and extending from the sole portion continuously from a medial side portion of the sole portion, around a rear portion of the sole portion, and to a lateral side portion of the sole portion, the rapid-entry structure comprising a body portion (Fig. 6) extending from the sole portion and at least partially extending between the sole portion and an elevated portion (1); wherein the rapid-entry structure comprises a heel loop (1), wherein the body portion of the rapid-entry structure comprises a first end, a second end, and a central portion therebetween, the first end coupled to or extending from the medial side of the sole portion of the rapid-entry shoe, the second end coupled to or extending from the lateral side of the sole portion of the rapid-entry shoe opposite the medial side, and the central portion extending from the sole at a rear portion between the medial side portion and the lateral side portion (Fig. 6), wherein the heel loop extends from the body portion of the rapid-entry structure (as point A; Fig. 6).
Richter discloses that the upper is flexible (Fig. 1), but does not disclose a distinct flexible element disposed at a side portion of the rapid-entry shoe. Paintin teaches a rapid-entry shoe comprising: an upper (506) forming a first portion of a topline and comprising a flexible element (552) disposed at a side portion of the shoe, the flexible element extending to and forming a second portion of the topline aligned with the first portion of the topline. Expansion of the flexible element enlarges a foot opening, and contraction of the flexible element reduces the foot opening of the shoe. The flexible element is configured to enable a portion of the upper of the rapid-entry shoe to flex and/or pivot relative to the sole portion (paragraph 0052; Fig. 5). It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a flexible element at a side portion, as taught by Paintin, to the upper of Richter, in order to provide improved stretchability and elastic rebound at the sides of the heel portion, allowing the heel to fully open, and helping to bias the upper back to the closed position.
Regarding claim 9, Richter discloses that the rapid-entry structure defines a space for expansion (space between elevated portion and base, which can expand and contract with the concertina folds; Fig. 6).
Regarding claim 11, Richter discloses that the rapid-entry structure is covered by the upper (Fig. 1).
Regarding claim 13, Richter discloses that the base portion extends from the sole portion at side and rearward positions (Fig. 6).
Regarding claim 19, Richter discloses that at least a portion (portion of concertina folds; Fig. 6) of the rapid-entry structure defines an "S-shaped" profile.
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Allowable Subject Matter
Claims 15 and 17-18 are allowed.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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