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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 3, the phrase “the body” should be replaced by --a body--.
Appropriate correction is required.
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.
Claims 1-9 and 11-13 are 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.
Claims 3 appears to reclaim the tapered holes previously described in claim 1. Amendment is required to clear up unclear antecedent basis of these features. As currently constructed, it is unclear if these are new holes or the same holes from claim 1.
Claims 1-9 and 11 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 1 is narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only (See last 4 lines of claim 1). Note the format of the claims in the patent(s) cited.
Claim 12 recites the limitation "cavities" in line 18. There is insufficient antecedent basis for this limitation in the claim.
The remaining claims not explicitly mentioned herein depend from the claims mentioned above and inherit the issues under 112.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-9 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2020/0146399) in view of Lombardi (US 2016/0037846) and Gunther (US 8,991,018).
Regarding claim 1, Lee discloses an apparatus comprising:
the body (12), the aforementioned body having a cuboid-like shape (Fig. 1 as shown), and three functional holes (28, 30, 32) comprising a first tapered through hole and a second tapered through hole that both extrude through its front and back faces (Figs. 3 and 4 as shown);
the first and second tapered through holes (28, 30) having a differential entryway size that are circular in shape (Figs. 3 and 4 as shown), wherein the entryway for receiving a shoelace aglet along with the connected shoelace is greater in diameter than the interior of both the first and second through holes (Figs. 3 and 4 as shown), thereby enabling adaptive gripping forces to act upon both of them (the profile of hole shown in Fig. 4 is capable of dynamic gripping); and a third tapered hole (32);
[the body designed to secure a tied shoelace bow knot by allowing the free ends of the tied shoelace bow knot to enter from the body’s back face and pass through the first and second tapered through holes and be tied into an additional anchoring knot upon exit from the front face of the body, wherein the anchoring knot prevents the free shoelace ends from swaying during movement, which would otherwise cause a tied shoelace bow to come unraveled during wear. The anchoring knot’s tightness may vary based on the wearer’s preference, which due to the body’s flexible properties, enables it to proportionally deform inward toward the tied shoelace bow knot and reform to its original shape upon the anchoring knot’s release] (the bracketed phrase appears to be functional language. The prior art as shown is capable of performing in this manner.).
Lee fails to disclose the body made entirely from elastomeric material such as rubber, thermoplastic polyurethane (TPU), or thermoplastic elastomer (TPE), the body possessing complete elastomeric properties enabling bending, expanding, and elongating in response to deforming forces before returning to its original shape; such that each through hole may expand to accommodate different shoelace diameters and aglet diameters upon insertion, and dynamically contract around an inserted shoelace.
Lombardi teaches a device using rubber (Paragraph 17 lines 5-7).
From this teaching of Lombardi, it would have been obvious to one of ordinary skill before the effective filing date of the invention to use a rubber for the material of the body of Lee. Rubber or equivalent elastic material would allow the apertures to expand/deform to allow the use of the device for multiple lace sizes and types and provide sufficient gripping. 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.
Lee further fails to disclose rounded edges.
Gunther teaches a device with rounded edges (Fig. 1 as shown) and a cored-out bottom portion (Fig. 1 shows a concave bottom side).
From this teaching of Gunther, it would have been obvious to one of ordinary skill before the effective filing date of the invention to include rounded/chamfered edges and a concave face to the foot/shoe facing side. Rounded edges and a concave face would enhance comfort against the foot and usability of the device when inserting and tying laces.
Lee further fails to disclose wherein the third hole is blind and cored into its top face that extends partially through the height of the article; the body designed to accommodate the insertion and removal of external inserts that possess tips which are partially conical in shape and have variably formed ends that may be flat, spherical, angled, truncated, hollowed, or pointed through the tapered blind hole cored into its top face, wherein the tapered blind hole is designed to expand beyond its original size to allow for a press/compression fit for the insertion of external inserts whose partially conical tips may possess a variable maximum diameter which may be securely joined or adhered to decorative/ornamental charms such that the body may act as a charm connector.
Shai teaches a hole provided on the top face of an article (Fig. 3 shows a hole provided on a top surface for insertion of the conical section 8).
From this teaching of Shai, it would have been obvious to one of ordinary skill before the effective filing date of the invention to include a top mounted hole to secure free ends of the lace or to attach accessory charms.
Regarding claim 2, Lee further discloses wherein, when formed using an injection mold, the cored-out bottom portion is hollowed and comprises at least four cavities configured to prevent issues associated with excessive wall thickness, such as material shrinkage and sink marks due to uneven cooling during the injection molding process, and at least one additional circular cavity that is positioned on the article’s bottom face to serve as a locating point for an ejector sleeve to facilitate the removal of the article from a mold once manufacturing is complete (the features claimed herein appear to only be required conditionally if and when the device is injection molded, said features are not otherwise required).
Regarding claim 3, the combination device of Lee, Lombardi and Gunther further discloses wherein two out of the three functional holes comprise a first tapered through hole and a second tapered through hole that both extrude all the way through the body’s front and back faces (Figs. 3 and 4 of Lee as shown), configured for pulling free ends of shoelaces through in an aglet-first direction one by one such that each lace and aglet tip are retained individually through the first and second tapered through hole, respectively, to be tied in an additional anchoring knot to secure the invention in place (the device as shown in Figs. 1-4 of Lee can be used in this manner), and the tapered blind hole that extends partially through the height of the article and is configured for connecting external inserts of a partially conical shape which may be joined or adhered to decorative/ornamental charms into its top face where the elastomeric properties of the manufactured article and tapered blind hole compress and conform to the shape of any inserted object (the combination device using the material of Lombardi would have the hole behave in this manner).
Regarding claim 4, Lee further discloses wherein the body is integrally formed as a single piece, with no draft angles being incorporated on the top and bottom faces to keep the top face flat for the balanced insertion of external objects that are joined or adhered to decorative/ornamental charms and to accommodate the ejector sleeve and creation of cavities that partially hollow out the article’s bottom face (Figs. 1-4 as shown).
Lee fails to disclose draft angles are incorporated on the front and back faces, side walls, and all extrusions to prevent manufacturing issues associated with elastomeric injection molding, such as excessive friction, structural instability, or misalignment during mold release.
It would have been obvious to one of ordinary skill before the effective filing date of the invention of the claimed invention to provide draft angles since it was known in the art to provide draft angles to optimize efficacy during injection molding and it appears the device would perform equally well without the use of draft angles.
Regarding claims 5 and 6, Lee discloses the invention except for wherein the elastomeric material selected possesses a low shore hardness, ideally within the range of 20A to 40A on the Shore A hardness (durometer) scale to exhibit soft/flexible physical characteristics such that the article may bend, expand, and elongate in response to deforming forces either imposed upon through a user’s touch, physical activity, or other external forces, and return to its original shape once such forces are removed; wherein the elastomeric material's low shore hardness contributes to the article's flexibility, allowing for easy manipulation during the insertion and removal of decorative/ornamental charms that are joined or adhered to inserts, such as those that possess tips which are partially conical in shape, wherein the elastomeric properties of the article and the geometric compatibility between the tapered blind hole and the partially conical insert enable the insert to slide in with minimal resistance, temporarily deforming the surrounding material, and then securely conforming to and gripping the inserted object due to the material’s elastic recovery upon insertion and removal. It would have been obvious to one of ordinary skill before the effective filing date of the invention to select the material within the hardness range for its desired flexible characteristics since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 7, the combination device of Lee, Lombardi and Gunther further discloses wherein decorative/ornamental charms may be inserted or replaced either before or after mounting the article to lace-up footwear, wherein the article is mounted to shoelaces via an anchoring knot tied at the front face of the body, and wherein the tapered blind hole and the first and second tapered through holes are spaced apart at a predetermined distance such that the tapered blind hole remains accessible while the article is secured in place, allowing for the insertion and removal of external inserts with partially conical tips without requiring detachment of the article from the shoelaces, wherein the elastomeric properties of the article allow the tapered blind hole to expand beyond its original diameter to accommodate the external insert while maintaining sufficient retention forces to secure it in place (the device can be used in this manner).
Regarding claim 8, the combination device of Lee, Lombardi and Gunther further discloses wherein its rounded edges are designed to minimize discomfort or irritation to the wearer and prevent damage to surrounding footwear material, wherein the rounded edges and the article’s soft elastomeric material properties collectively serve as an additional safety feature to reduce the risk of injury in cases where an individual accidentally steps on or falls onto the article, and wherein the rounded edges, in combination with the soft elastomeric material, allow the article to fully deform and absorb impact forces upon contact, and thus reducing the likelihood of potential harm to both individuals and surrounding footwear surfaces, while also providing an ergonomic benefit by making the article more comfortable to handle when being held or carried (the combination device’s rounded edges and materials would perform in the claimed manner).
Regarding claim 9, the combination device of Lee, Lombardi and Gunther further discloses wherein the body is designed with a secure press/compression fit for the insertion of decorative/ornamental charms, wherein the tapered blind hole expands beyond its original diameter upon insertion of an external insert, such as one possessing a partially conical tip, and conforms around the inserted object due to the body’s elastomeric properties, ensuring stability during wear and limiting the chances of unintended detachment, wherein the retention level can be further increased based on the tightness of the anchoring knot tied at the front face, as the body is capable of proportionally deforming inward toward the tied shoelace bow knot, applying additional compressive forces onto the inserted object to further enhance the grip of the tapered blind hole (the combination device’s material would perform in the claimed manner).
Regarding claim 11, the combination device of Lee, Lombardi and Gunther further discloses wherein the knot retainer is specifically designed to provide secure retention of tied shoelace knots during activities such as walking, running, hiking, cycling, and/or various other athletic and daily movements, ensuring the wearer's shoelaces remain securely tied, wherein the article is secured in place by an additional anchoring knot tied at the front face that prevents the free ends of the shoelaces from swaying unrestricted, and wherein the tightness of the anchoring knot enables the body to deform inward proportionally toward the shoelace bow knot, compacting the bow knot into a denser form and increasing its resistance to loosening over time (the combination device would perform in the claimed manner).
Regarding claim 12, Lee discloses an apparatus comprising:
a knot retainer (12), configured to prevent the loosening of tied shoelace knots by allowing proportional deformation in response to applied forces, wherein the tightness of the anchoring knot tied at the article’s front face directly influences the degree of compression applied to the shoelace bow knot, enabling dynamic compaction to enhance its stability and resistance to loosening (the device shown in Figs. 1-4 can performed in this claimed manner);
a charm connector (12) that allows for the secure attachment of decorative/ornamental charms through the insertion of external inserts possessing tips that are partially conical in shape (the device shown in Figs. 1-4 can perform in this manner);
a first tapered through hole (28) and a second tapered through hole (30), each having differential entryway sizes, wherein the entryway for receiving a shoelace aglet is greater in diameter than the internal through-hole dimensions, to provide adaptive gripping forces (Fig. 3-4 as shown);
at least one tube-like structure that surrounds the lower portion ot the first and second through holes, respectively which reinforces the structural integrity of each through hole;
wherein a tapered hole (32) and the first and second tapered through holes remain structurally independent and do not intersect, merge, or branch into separate channels, ensuring that each hole functions as a distinct cavity (Figs. 3-4 as shown);
wherein the knot retainer and charm connector are part of a single body that enables both functions, the body allows each function to operate independently without interfering with the other (Figs. 3-4 as shown).
Lee fails to disclose the knot retainer and charm connector are made entirely from elastomeric material.
Lombardi teaches a device using an elastomeric material (Paragraph 17, lines 5-7).
From this teaching of Lombardi, it would have been obvious to one of ordinary skill before the effective filing date of the invention to use an elastomeric material for the device to allow the holes expand and contract and provide a secure press/compression fit around inserted fittings and shoelaces. 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.
Lee further fails to disclose wherein the third hole is blind and cored in to the center of the article’s top face.
Shai teaches a hole provided on the top face of an article (Fig. 3 shows a hole provided on a top surface for insertion of the conical section 8).
From this teaching of Shai, it would have been obvious to one of ordinary skill before the effective filing date of the invention to include a top mounted hole to secure free ends of the lace or to attach accessory charms.
Lee further fails to disclose cavities and the presence of surrounding open/cored-out sections on the bottom of the article.
It would have been an obvious matter of design choice to one of ordinary skill before the effective filing date of the invention to provide cavities to the bottom side of Lee as they are provided only for the purpose of forming the device for injection molding. Cavities prevent shrinkage of the device through uneven cooling. The cavities however provide no advantage, purpose or solve a particular problem if the device were formed of a solid material through machining processes or 3d printing additive methods. One of ordinary skill in the art would have expected Applicant’s invention to perform equally well without cavities because without the shrinkage concerns a solid device would exhibit greater strength.
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Form 892.
It appears that the applicant in this application is a pro se applicant (an inventor filing the application alone without the benefit of a Patent Attorney or Agent). Applicant may not be aware of the preferred methods of ensuring timely filing of responses to communications from the Office and may wish to consider using the Certificate of Mailing or the Certificate of Transmission procedures outlined below.
CERTIFICATE OF MAILING
To ensure that the Applicant's mailed response is considered timely filed, it is advisable to include a "certificate of mailing" on at least one page (preferably on the first page) of the response. This "certificate" should consist of the following statement:
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: "Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450” on (date).
(Typed or printed name of the person signing this certificate)
(signature)
CERTIFICATE OF TRANSMISSION
Alternatively, if applicant wishes to respond by facsimile rather than by mail, another method to ensure that the Applicant's response is considered timely filed, is to include a "certificate of transmission" on at least one page (preferably on the first page) of the response. This method should be used by foreign applicants without access to the U.S. Postal Service. This "certificate" should consist of the following statement:
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (571) 273-8300 (date).
(Typed or printed name of the person signing this certificate)
(signature)
These "Certificates" may appear anywhere on the page, and may be handwritten or typed. They must be signed, and the date must be the actual date on which it is mailed or transmitted.
For the purpose of calculating extensions of time, the date shown on the certificate will be construed as the date on which the paper was received by the Office, regardless of the date the U.S. Postal Service actually delivers the response, or the fax is “date-stamped” in. In this way, postal or transmission delays do not affect the extension-of-time fee.
In the event that a communication is not received by the Office, applicant's submission of a copy of the previously mailed or transmitted correspondence showing the originally signed Certificate of Mailing or Transmission statement thereon, along with a statement from the person signing the statement which attests to the timely mailing or transmitting of the correspondence, would be sufficient evidence to entitle the applicant to the mailing or transmission date of the correspondence as listed on the Certificate of Mailing or Transmission, respectively.
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This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted. Please note that the Office also offers initiatives that are available to applicants after the close of prosecution. See https://www.uspto.gov/patents/initiatives/uspto-patent-applications-iniatives-timeline for more information.
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A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S LEE whose telephone number is (571)270-5735. The examiner can normally be reached M-F 9-5.
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/M.S.L/Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677