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 .
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.
Claim 25 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 25 the phrase “wherein a rearmost portion of the heel element is closer to a rearmost portion of the upper when the lace is received in the first positions than when the lace is received in the second positions” is confusing, vague, and indefinite because it is not clear what “first positions” and “second positions” applicant is referring to. These phrases lack proper antecedent basis, the only previously recited similar language refers to a first position and a second position on the heel element and if these phrases are intended to refer to these positions the phrase is confusing.
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, 3, 6, 7, 9, 10, 12, 13, and 16-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Itskowitz (11602199).
Itskowitz shows A shoe, comprising:
an upper (31) having a heel portion; and
a heel element (312) at least partially overlapping with at least a part of the upper (see figures 13 and 14), wherein:
the heel element (312) is configured to envelop at least a part of a heel of a wearer of the shoe,
the heel element (312) is arranged inside of the upper (see figures 13 and 14),
the heel element (312) is movable with respect to the upper in a longitudinal direction of
the shoe, the longitudinal direction extending away from a heel of the shoe (since the element 312 is not directly attached to the upper (31), pulling laces (310) would inherently pull heel element 312 forward away from the heel portion of the upper), and
the heel element (312) comprises an inward facing surface and an opposing outward facing surface, wherein a majority of the outward facing surface is not connected to the heel
portion of the upper such that a void is formed between the outward facing surface of the
heel element and the heel portion of the upper (see figures 13 and 14 and since elements 312 and 31 are not directly attached/connected element 312 when pulled by laces 310 would inherently move forward and form a void between the upper and heel element),
wherein a final lacing point of the upper is disposed closer to a sole of the shoe than an
eyelet of the heel element configured to receive a lace of the shoe (see figures below) as claimed.
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In reference to claim 3, the shoe is divided into a medial side and lateral side by a longitudinal axis running in the center and the heel element 312 is shown as extending onto both side of the longitudinal axis and therefore overlaps the upper at a lateral and medial side.
In reference to claims 6 and 7, the edges of the heel element eyelet as noted above in marked up figure can be considered a “rim portion” inasmuch as applicant has claimed and defined such and the “rim portion” connects to the laces (310) which connect to the remaining part of the shoe, specifically the “upper” (see column 7 lines 15-20).
In reference to claim 9, see column 8 lines 7-10 which suggests cotton and polyester.
In reference to claim 10 see figures 13 and 14.
In reference to claims 12 and 13, see column 8 lines 7-10 which suggests foam.
In reference to claims 16 and 17, the heel element has eyelets on both sides/ends of heel element 312.
In reference to claims 18 and 19, the lace (310) passes from a first eyelet on the medial side of the upper through the eyelets of the heel element (312) to the final lacing point of the upper on the lateral side of the upper eyelet as shown in figures 13 and 14.
In reference to claim 20, the eyelets are shown as punch holes.
In reference to claim 21, element 310 can be considered to be a “flap” inasmuch as applicant has claimed and defined such.
In reference to claim 22, element 310 can be considered to be a “lace” and by pulling on the lace the heel element is configured to move in the longitudinal direction as claimed.
In reference to claim 23, heel element 312 is not directly attached to the upper 31 and therefore is freely movable due to the flexibility of lace 310 and can slide and pivot.
In reference to claim 24 Itskowitz shows, A shoe, comprising:
an upper (31); and
a heel element (312) at least partially overlapping with at least a part of the upper, wherein:
the heel element is configured to envelop at least a part of a heel of a wearer of the shoe (see figures 13 and 14),
the heel element (312) is coupled to a lace (310) of the shoe,
the heel element (312) is movable with respect to the upper in a longitudinal direction of
the shoe, the longitudinal direction extending away from a heel of the shoe, and an outward facing surface of the heel element is configured to move within the upper in the longitudinal direction when a wearer of the shoe pulls on the lace shoe (since the element 312 is not directly attached to the upper (31), pulling laces (310) would inherently pull heel element 312 forward away from the heel portion of the upper),
wherein a rearmost portion of the heel element defines at least a portion of an outer most surface of the shoe (since element 312 is shown as the topmost portion extending slightly above the collar of the upper, the topmost portion of element 312 is considered to be an outermost surface of the shoe) as claimed.
In reference to claim 25, Itskowitz shows A shoe, comprising:
an upper (31) having a heel portion; and
a heel element (312) at least partially overlapping with at least a part of the upper, wherein:
the heel element is configured to envelop at least a part of a heel of a wearer of the shoe (see figures 13 and 14),
the heel element is arranged inside of the upper (see figures 13 and 14),
the heel element is movable with respect to the upper in a longitudinal direction of
the shoe, the longitudinal direction extending away from a heel of the shoe (since the element 312 is not directly attached to the upper (31), pulling laces (310) would inherently pull heel element 312 forward away from the heel portion of the upper) ,
the heel element comprises an inward facing surface and an opposing outward facing
surface, wherein a majority of the outward facing surface is not connected to the heel
portion of the upper such that a void is formed between the outward facing surface of the
heel element and the heel portion of the upper (see figures 13 and 14 and since elements 312 and 31 are not directly attached/connected element 312 when pulled by laces 310 would inherently move forward and form a void between the upper and heel element),
the heel element (312) is coupled to a lace (310) of the shoe, and
the heel element (312) is configured to receive a lace (310) of the shoe at a first and second
position on each of a lateral and medial side of the heel element (see above marked up figure),
wherein a rearmost portion of the heel element is closer to a rearmost portion of the upper when the lace is received in the first positions (when 310 is loose) than when the lace is received in the second positions (when lace 310 is tightened) as claimed.
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) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Itskowitz.
Itskowitz shows a shoe substantially as claimed as noted above except for the exact material for the upper. Official notice is taken that the use of mesh as a material for uppers is well known and conventional. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use mesh, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 8 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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/MARIE D BAYS/Primary Examiner, Art Unit 3732