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 .
Drawings
The drawings were received on 11/20/2025. These drawings are acceptable.
Claim Rejections - 35 USC § 112
Claims 8 and 24 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.
In claim 8, the phrase “that tread” should be changed to “a tread” to properly introduce the limitation in the claim.
4. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 22, fails to further limit the subject matter of claim 21. Claim 22 is purely functional and refers back to functional language recited in claim 21. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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) 1,4,8,13-15,17,21 and 23-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2006/0212997 (Blanchard).
Regarding claims 1,4,8,13-15,17,21 and 23-25, Blanchard discloses a single-use scentless and odorless boot cover (covering 10) for placing over a user’s boot (see ¶0019, lines 3-7) to prevent scent from the boot from being left on the ground as the user walks, the boot cover comprising:
a tubular body (body 12) having an open entrance end (16,18) and a closed toe end (14), wherein the tubular body is configured such that it can receive the boot and sized such that it can completely cover a shaft of the boot, the tubular body further comprises:
a foot section (foot section or lower section of body 12; see figure 1) comprising the closed toe end;
a shaft section (shaft section of body 12; see figures 1 and 4); the shaft section at an angle with respect to the foot section (see figure 1); and
an ankle section (section of the body between the shaft and the foot sections, corresponding to the ankle of the user’s foot) between and connected to each of the foot section and the shaft section, such that additional internal space is provided such that the boot can more easily move from the shaft section to the foot section (the covering as taught above is inherently capable of performing this function especially for a user’s boot which is substantially smaller than the covering);
wherein the tubular body is comprised of a material that is scentless and odorless (at least see ¶0026).
Regarding claim 4, see “rounded first end 14” in ¶0019.
Regarding claim 8, the material is thin and made out of stretchable rubber latex material (see ¶0023) and therefore inherently capable of so that the boot’s tread can be felt through the material.
Regarding claim 13, at least see figure 4, wherein the tubular body is configured to be round such that the tubular body can easily receive the boot.
Regarding claim 14, the material is made out of stretchable rubber latex material (see ¶0023) and therefore is flexible enough such that the tubular body can easily receive the boot.
Regarding claim 15, see ¶0026 which teaches the material of the covering is sterilized.
Regarding claim 17, see ¶0023.
With regard to all the functional claim language and statements of intended use, they do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the reference device has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
Regarding claims 21 and 23, Blanchard discloses a single-use scentless and odorless boot cover (covering 10) for placing over a user’s boot (see ¶0019, lines 3-7) to prevent scent from the boot from being left on the ground as the user walks, the boot cover comprising:
a tubular body (body 12) having an open entrance end (16,18) and a closed toe end (14), and a shaft section (shaft section of body 12; see figures 1 and 4);
wherein the tubular body is comprised of a material that is scentless and odorless (at least see ¶0026).
With regard to the functional language (e.g. wherein the tubular body is configured such that it can receive the boot and sized such that it can completely cover a shaft of the boot, wherein a length of a shaft section of the tubular body is configured to be greater than a length of the shaft of the boot such that the shaft section can cover an outer surface of the shaft of the boot in its entirety and fold over and inside of the shaft of the boot), the boot as taught by Blanchard has all the structure as claimed and is made out of flexible material and therefore is inherently capable of performing all of the functional language as claimed.
With regard to claim 23, Blanchard teaches:
a foot section (foot section or lower section of body 12; see figure 1) comprising the closed toe end;
a shaft section (shaft section of body 12; see figures 1 and 4); the shaft section at an angle with respect to the foot section (see figure 1); and
an ankle section (section of the body between the shaft and the foot sections, corresponding to the ankle of the user’s foot) between and connected to each of the foot section and the shaft section, such that additional internal space is provided such that the boot can more easily move from the shaft section to the foot section (the covering as taught above is inherently capable of performing this function especially for a user’s boot which is substantially smaller than the covering).
With regard to claims 24-25, Blanchard discloses a single-use scentless and odorless boot cover (covering 10) for placing over a user’s boot (see ¶0019, lines 3-7) to prevent scent from the boot from being left on the ground as the user walks, the boot cover comprising:
a tubular body (body 12) having an open entrance end (16,18) and a closed toe end (14), wherein the tubular body is configured such that it can receive the boot and sized such that it can completely cover a shaft of the boot,
wherein the tubular body is comprised of a material that is scentless and odorless (at least see ¶0026).
wherein a thickness of the material is thin enough such that a tread of the boot can be felt through the material (the material taught by Blanchard is thin and made out of stretchable rubber latex material (see ¶0023) and therefore inherently capable of performing the functional language as claimed).
With regard to claim 25, Blanchard teaches the boot cover having:
a foot section (foot section or lower section of body 12; see figure 1) comprising the closed toe end;
a shaft section (shaft section of body 12; see figures 1 and 4); the shaft section at an angle with respect to the foot section (see figure 1); and
an ankle section (section of the body between the shaft and the foot sections, corresponding to the ankle of the user’s foot) between and connected to each of the foot section and the shaft section, such that additional internal space is provided such that the boot can more easily move from the shaft section to the foot section (the covering as taught above is inherently capable of performing this function especially for a user’s boot which is substantially smaller than the covering).
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 1,4,8 and 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3017705 (Peters) in view of Blanchard ‘997.
Regarding claims 1,4,8 and 13-17, Peters discloses a boot cover (boot article 10 which is fitted over an article of footwear) for placing over a user’s boot (inherently the boot cover can be fitted over any type of footwear including a boot), the boot cover comprising:
a tubular body (14,16,18) having an open entrance end (at circular loop 24)) and a closed toe end (closed end of foot portion 14), wherein the tubular body is configured such that it can receive the boot and sized such that it can completely cover a shaft of the boot (article 10 is inherently capable of completely covering the boot shaft), the tubular body further comprising:
a foot section (foot portion 14; see figure 2) comprising the closed toe end;
a shaft section (leg portion 16; see figure 2); the shaft section at an angle with respect to the foot section (see figure 2); and
an ankle section (section of the body between the shaft and the foot sections/portions, corresponding to the ankle of the user’s foot) between and connected to each of the foot section and the shaft section, such that additional internal space is provided such that the boot can more easily move from the shaft section to the foot section (the covering as taught above is inherently performing this function especially for a user’s boot which is substantially smaller than the covering);
Peters lacks teaches the boot cover is make out of a material that is scentless and odorless so as to prevent the scent from the boot being left on the ground as the user walks (claim 1) and the material is sterilized (claim 15).
Blanchard discloses a scentless and odorless boot cover (10) for placing over a user’s boot (see ¶0019) to prevent scent from the boot from being left on the ground as the user hunts (e.g. see ¶0021), wherein the tubular body is comprised of a material that is sterilized, scentless and odorless (at least see ¶0026).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the boot cover as taught by Peters to be made out of a material that is sterilized, scentless and odorless so as to prevent the scent from the boot being left on the ground as the user hunts, as taught by Blanchard, to facilitate the user when hunting.
Regarding claim 8, the tubular portion of the boot cover as taught by the combination above is relatively thin as shown and therefore inherently capable of so that the boot’s tread can be felt through the material.
Regarding claims 13 and 17, at least see col. 2, lines 14-16 of Peters, wherein the tubular body is configured to be round and large enough so that the body can easily receive any type of footwear including a boot.
Regarding claim 14, the material is made out of flexible, thin plastic material (see col. 2, lines 14-16 and figures 1-3 of Peters) and therefore is flexible enough such that the tubular body can easily receive the boot.
Regarding claim 16, figures 1-3 and col. 2, lines 14-16 of Peters. The boot cover as shown in figure 2 is loosely fitted around the wearer’s shoe and the lower portion of the wearer’s leg. To the point that one may not find the boot cover as taught above to not be inelastic, the examiner takes official notice that it is old and conventional in the art to construct boot cover as taught by the combination above out of inelastic material so that the covering provides a loose and comfortable fit. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct the tubular body out of an inelastic material.
Since the boot cover as taught by the combination above has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing all of the functions as claimed.
Claim(s) 6 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over the reference(s) as applied to claims 1 and 21, respectively above, and further in view of US 2017/0035141 (Burden).
Burden teaches securing a cover body (1) to the shoe (3) with one or more clips (hook 4; see figures 1 & 3 and ¶0018-0019). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further provide the boot cover as taught by the combination above with at least one clip to clip the shaft section of the boot cover to the shaft of a boot, in view of the teachings of Burdon, to further to further secure the boot cover. With regard to the functional language (i.e. “the tubular body is configured…fold over and inside of the shaft of the boot” and “to clip the shaft section where that shaft section fold over the shaft of the boot”, the boot cover as taught above is made of foldable, flexible material and is inherently capable of performing the functional language as claimed and with regard to the clip, the clip can be clipped at any location to facilitate securing the boot cover as claimed).
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
35 USC 102 Rejection of Blanchard
Applicant argues figure 4 of Blanchard show a cross-section of the second end which has a continuous diameter and is silent with respect to an additional ankle space that, when compared to a cover without one, provides additional internal space to facilitate donning the cover, as recited in amended claim 1.
In response, a diameter of the boot cover has not been claimed and therefore the diameter being continuous, or elongated or larger at some point is moot since it hasn’t been claimed. Instead, applicant’s claim 1 refers to functional language about additional internal space provided at the ankle section and as noted above this is all functional language which the footwear covering as taught by Blanchard is inherently capable of performing. It is suggested applicant recite structure of the boot covering, specifically with regard to the ankle section (140) as shown in figure 1, instead of relying on functional language to define the covering.
35 USC 103 Rejection of Peters in view of Blanchard
Applicant argues that Peters fails to teach or suggest an ankle section that provides additional internal space to make is easier to “turn” into the boot section, instead the leg portion 16 meets the foot portion 14.
In response, the ankle section of the article taught by Peters is quite large to enable a boot to make the turn, especially if the boot is substantially smaller than the article. See figure 2 of Peters which shows an enlarged bulge in the forward portion of the ankle section.
Burden ‘141
With regard to claim 22, applicant argues Burden’s cover does not fold over the shoe, thus it does not teach and cannot teach attaching “where the shaft section folds over the boot’s shaft” because there is no fold at which it can attached.
In response, Burden is being relied upon as a teaching of securing a cover body (1) to the shoe (3) with one or more clips (hook 4; see figures 1 & 3 and ¶0018-0019). The language recited in claim 22 is purely functional which also is referring to functional language recited in claim 21 (i.e. the tubular body is configured to be greater in length of the shaft of the boot such that the shaft section can cover an outer surface of the shaft of the boot in its entirety and fold over and inside of the shaft of the boot”). As noted in the rejection above, the prior art as taught by the combination has all the structure as claimed and is inherently capable of performing all the functional language as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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.
Applicant's amendment necessitated the new ground(s) of rejection (i.e. new claims 21-25) 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.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556