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 .
DETAILED ACTION
Response to Amendment
Applicant’s amendment filed September 9, 2025 has been received, Claims 1-2, 5-17, 19-20, and 22 are currently pending.
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.
1. Claims 9 and 20 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.
Claim 9 recites “an intermediate segment of the elastic band is connected to or penetrates the tongue”. The claim limitation is indefinite as Claim 1 previously recites a first end permanently affixed to a portion of the shoe and a second end being connected to the second portion of the tongue. If the second end of the elastic band is connected to the tongue, then it is wholly unclear how an intermediate segment of the elastic band is connected to or penetrates the tongue, since the end is already attached to the tongue in Claim 1. Claim 9 is rejected as best understood by examiner.
Claim 20 recites “wherein between the vamp side portion and an interior lining of the upper, the elastic band is entirely embedded along a portion of the elastic band extending from a location adjacent to the position limiting component to an end of the elastic band located on the vamp side portion”. The claim limitation is indefinite as it is unclear how the elastic band is between the vamp side portion and an interior lining, while also extending from a location adjacent to the position limiting component, since the lining IS the position limiting component. Claim 20 is rejected as best understood by examiner.
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 (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 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.
2. Claim(s) 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koo (US 2019/0274393).
Regarding Claim 19, Koo discloses a shoe upper (15), comprising: a vamp having a vamp toe portion (i.e. toe portion of 15; para.34), a vamp side portion (18), and a vamp heel portion (17) connected to the vamp side portion; a tongue (22) including a first portion (i.e. toe end of 22) affixed to the vamp toe portion and a second portion (i.e. rear end of 22) spaced from the vamp toe portion; an elastic band (66) configured to connect the second portion of the tongue to the vamp side portion (as seen in Fig.5 & 6), wherein the vamp side portion includes a position limiting component (67) on an inner surface of the vamp side portion (as seen in Fig.5 & 6), and at least a portion of the elastic band is disposed between the position limiting component and the inner surface of the vamp side portion such that the second portion of the tongue is held in limiting mating with the position limiting component under tension of the elastic band (para.38; as seen in Fig.5 & 6); and wherein the elastic band is not externally exposed along a portion of the elastic band extending from a location adjacent to the position limiting component (67) to an end of the elastic band located on the vamp side (i.e. 66 where 18 meets 12)(as seen in Fig.5 & 6; 66 between 67 and where 18 meets 12 is not externally exposed as it is entirely within the upper void and not visible from the outside of the shoe).
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 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.
3. Claim(s) 1-2, 5-9, 20, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koo (US 2019/0274393) in view of Bulit (FR 2,510,878 A1).
Regarding Claim 1, Koo discloses a shoe upper (15) by comprising: a vamp having a vamp toe portion (i.e. toe portion of 15; para.34) and a first vamp side portion (18) that are connected to each other (as evidenced by Fig.13), an inner surface of the first vamp side portion being provided with a first position limiting component (i.e. 67 on 18); a tongue (22) having a first portion (i.e. toe end of 22) and a second portion (i.e. rear end of 22) that are oppositely disposed (as seen in Fig.5), the first portion of the tongue being affixed to the vamp toe portion (as evidenced by Fig.13); a first elastic band (66) having a first end (i.e. 66 at 18 and/or 12) and a second end (i.e. 66 at 22); the first end being located adjacent to the first vamp side portion and the first end being permanently affixed to a portion of the shoe other than the tongue (para.38); the first elastic band configured to connect the second portion of the tongue with the first vamp side portion (para.38; as seen in Fig.5 & 6), at least part of the first elastic band being located between the first position limiting component and the inner surface of the first vamp side portion (as seen in Fig.5-7), and the second portion of the tongue being in limiting mating with the first position limiting component under action of the first elastic band (para.38); the second end being connected to the second portion of the tongue (as seen in Fig.5 & 6); the first elastic band configured to elongate and to stretch through the first position limiting component between the first end and the second end when the tongue is separated from the first position limiting component (para.38; i.e. elastic is known to elongate and stretch); the first position limiting component comprising an interior lining layer (i.e. 67 is an interior lining layer in that it is interior to, and lining, the upper layer) and an opening (i.e. top opening in 67 as seen in Fig.7); the first elastic band extending through the opening, continuing between the interior lining layer and the inner surface of the first vamp side portion (as seen in Fig.5-7), and terminating at the first end located at one of a sole (12; para.38) or between the interior lining layer and the inner surface of the first vamp side portion (as seen in Fig.5-7); and a side edge of the second portion of the tongue (22) is in close proximity to the opening under the action of the first elastic band (66)(as seen in Fig.5). Koo does not explicitly disclose the side edge of the second portion of the tongue abuts against the opening under the action of the first elastic band. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the elastic band of Koo such that the side edge of the second portion of the tongue abuts against the opening, in order to provide the desired level of fit, securing the shoe to a user’s foot in a comfortable manner. Further, such a modification would have involved a mere change in the size of a component and a change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.
Koo does not disclose the opening formed in the interior lining layer. However, Bulit teaches a shoe upper (as seen in Fig.4) having an interior lining layer (9) with an opening (16) formed in the interior lining layer (as seen in Fig.5); an elastic band (13) extending through the opening, continuing between the interior lining layer and the inner surface of the first vamp side portion, and terminating at a first end (at 15) located between the interior lining layer and the inner surface of the first vamp side portion (as seen in Fig.5; para.7).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the interior lining layer of Koo to fully line the interior of the shoe upper and have an opening formed in the lining layer, as taught by Bulit, in order to provide a comfortable layer surrounding a user’s foot that delivers warmth.
Regarding Claim 2, Modified Koo discloses a shoe upper according to claim 1, wherein the first end (i.e. 66 at 18) of the first elastic band (66) is located between the first position limiting component (67) and the inner surface of the first vamp side portion (18)(as seen in Fig.5 & 6).
Regarding Claim 5, Koo discloses a shoe upper according to claim 1, wherein the second end (i.e. 66 at 22) of the first elastic band (66) is stitched to a first side edge of the second portion of the tongue (22)(para.38).
Regarding Claim 6, Koo discloses a shoe upper according to claim 1, further comprising a second elastic band (66), a second position limiting component (67), the first position limiting component (i.e. 67 on 18) being located on the first vamp side portion, the second position limiting component (i.e. 67 on 20) being located on a second vamp side portion (20), and the tongue (22) is engaged in limiting mating with the first and second position limiting components under the action of the first and second elastic bands, respectively (para.38; as seen in Fig.5 & 6).
Regarding Claim 7, Koo discloses a shoe upper according to claim 6, wherein the second elastic band has a third end (i.e. 66 at 20) and a fourth end (i.e. 66 at 22), at least part of the second elastic band is located between the second position limiting component and an inner surface of the second vamp side portion (as seen in Fig.5 & 6), the third end is connected to the second vamp side portion, and the fourth end is connected to the second portion of the tongue (para.38; as seen in Fig.5 & 6).
Regarding Claim 8, Modified Koo discloses a shoe upper according to claim 7, wherein the first vamp side portion (18) and the first position limiting component (i.e. 67 on 18) comprise a first interior lining layer (i.e. 67 is an interior lining layer in that it is interior to, and lining, the upper layer & Koo as modified by Bulit) and a first opening formed in the first interior lining layer (as modified by Bulit), the second vamp side portion (20) and the second position limiting component (i.e. 67 on 20) comprise a second interior lining layer (i.e. 67 is an interior lining layer in that it is interior to, and lining, the upper layer & Koo as modified by Bulit) and a second opening formed in the second interior lining layer (as modified by Bulit), wherein the first interior lining layer is located on the inner surface of the first vamp side portion, and the second interior lining layer is located on the inner surface of the second vamp side portion (as seen in Fig.5 & 6), wherein the first end passes through the first opening and extends to at least somewhere between the first interior lining layer and the inner surface of the first vamp side portion, and the third passes through the second opening and extends to at least somewhere between the second interior lining layer and the inner surface of the second vamp side portion (Koo: para.38; as seen in Fig.5 & 6 and Bulit: as seen in Fig.5).
Regarding Claim 9, insofar as is definite, Koo discloses a shoe upper according to claim 1, wherein an intermediate segment of the elastic band is connected to or penetrates the tongue (para.38; as seen in Fig.6).
Regarding Claim 20, Koo discloses a shoe upper (15), comprising: a vamp having a vamp toe portion (i.e. toe portion of 15; para.34), a vamp side portion (18), and a vamp heel portion (17) connected to the vamp side portion; a tongue (22) including a first portion (i.e. toe end of 22) affixed to the vamp toe portion and a second portion (i.e. rear end of 22) spaced from the vamp toe portion (as seen in Fig.5); an elastic band (66) configured to connect the second portion of the tongue to the vamp side portion (para.38), wherein the vamp side portion includes a position limiting component (67) on its inner surface, and at least a portion of the elastic band is disposed between the position limiting component and the inner surface of the vamp side portion such that the second portion of the tongue is held in limiting mating with the position limiting component under tension of the elastic band (para.38; as seen in Fig.5 & 6); and wherein between the vamp side portion and an interior lining of the upper (i.e. 67 is an interior lining, inasmuch as has been claimed by Applicant), the elastic band extends from a location adjacent to the position limiting component (67) to an end of the elastic band located on the vamp side portion (i.e. 66 where 18 & 12 meet)(as seen in Fig.5-7). Koo does not disclose and wherein between the vamp side portion and an interior lining of the upper, the elastic band is entirely embedded along a portion of the elastic band extending from a location adjacent to the position limiting component to an end of the elastic band located on the vamp side portion. However, Bulit teaches a shoe upper (as seen in Fig.4) having an interior lining layer (9) with an opening (16) formed in the interior lining layer (as seen in Fig.5); an elastic band (13) is entirely embedded along a portion of the elastic band extending from a location (at 16) adjacent to the position limiting component to an end (15) of the elastic band located on a vamp side portion (as seen in Fig.5; para.7).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the interior lining layer of Koo to fully line the interior of the shoe upper and have an opening formed in the lining layer, as taught by Bulit, in order to provide a comfortable layer surrounding a user’s foot that delivers warmth. When in combination, Koo and Built teach the elastic band is entirely embedded along a portion of the elastic band extending from a location adjacent to the position limiting component to an end of the elastic band located on the vamp side portion.
4. Claim(s) 10-14 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koo (US 2019/0274393) and Bulit (FR 2,510,878 A1), in view of Bar (US 2023/0035573).
Regarding Claim 10, Koo and Bulit disclose the invention substantially as claimed above. Koo discloses a shoe upper according to claim 1, wherein a vamp heel portion (17) is connected to the vamp side portion. Koo does not disclose a heel support member is disposed at the vamp heel portion, and wherein the heel support member is configured to be a rigid structure or at least part of the heel support member is configured to be a flexible structure. However, Bar teaches a shoe upper (12) having a heel support member (22) is disposed at the vamp heel portion (14), and wherein the heel support member is configured to be a rigid structure or at least part of the heel support member is configured to be a flexible structure (para.67; as seen in Fig.3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the vamp heel portion of Koo to include a heel support member, as taught by Bar, in order to provide additional protection and support to a user’s heel, while facilitating forward sliding of a user's foot into the shoe when the foot enters the shoe.
Regarding Claim 11, When in combination, Koo and Bar teach a shoe upper according to claim 10, wherein the heel support member (Bar: 22) comprises a first support portion (Bar: portion of 21) and a second support portion (Bar: i.e. 22 below 21) located at the bottom end of the first support portion (Bar: as seen in Fig.3), wherein at least part of the second support portion protrudes outwards (Bar: i.e. outward heel curvature of 22) and is configured for surrounding the back of the heel of a user, and the first support portion inclines outwards from bottom to top and away from a shoe opening (Bar: 13; para.66, as seen in Fig.3).
Regarding Claim 12, When in combination, Koo and Bar teach a shoe upper according to claim 11, wherein the first support portion (Bar: portion of 21) has a first configuration (i.e. unloaded) and a second configuration (i.e. loaded under a user’s foot weight), wherein when the foot of the user inserts into the vamp, the first support portion is deformed from the first configuration to the second configuration under the load of the foot, and the height of at least part of the first support portion is reduced (Bar: para.67; i.e. an elastic 21 would deform/bend downward under a user’s weight), and wherein after removing the load of the foot, the first support portion is restored from the second configuration to the first configuration (Bar: as seen in Fig.3).
Regarding Claim 13, When in combination, Koo and Bar teach a shoe upper according to claim 11, wherein the first support portion (Bar: portion of 21) has a first configuration (i.e. unloaded ) and a second configuration (i.e. loaded under a user’s foot weight), wherein when the foot of the user inserts into the vamp, the first support portion is deformed from the first configuration to the second configuration under the load of the foot, and an inclination angle of the first support portion with respect to a vertical line becomes larger as an uppermost region of the first support portion moves rearward (Bar: para.67; i.e. an elastic 21 would deform/bend downward under a user’s weight), and wherein after removing the load of the foot, the first support portion is restored from the second configuration to the first configuration (Bar: as seen in Fig.3).
Regarding Claim 14, When in combination, Koo and Bar teach a shoe upper according to claim 11, wherein an uppermost region of the first support portion (Bar: portion of 21) has a first position in the first configuration (i.e. unloaded) and a second position in the second configuration (i.e. loaded under a user’s foot weight), the second position being farther away from the vamp toe portion in a longitudinal direction than the first position (Bar: para.67; i.e. an elastic 21 would deform/bend outward and downward under a user’s weight).
Regarding Claim 22, Bar further teaches a shoe upper according to claim 10, wherein a vertical cross-sectional shape of a rearmost portion of the heel support member (22) is an S-wave (as seen in Fig.3).
5. Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koo (US 2019/0274393), Bulit (FR 2,510,878 A1), and Bar (US 2023/0035573), in view of Shin (US 2022/0240625).
Regarding Claim 15, Koo, Bulit, and Bar disclose the invention substantially as claimed above. Modified Koo does not explicitly disclose wherein the second support portion comprises a middle region and two side regions, and when in the second configuration, the two side regions move outward to increase the distance between the two sides of the vamp side portion. However, Shin teaches a shoe having a heel support member (121) wherein a second support portion comprises a middle region (back wall of 121) and two side regions (left and right walls of 121)(as seen in Fig.10), and when in a second configuration (i.e. loaded under a user’s foot weight), the two side regions move outward to increase the distance between the two sides of the vamp side portion (i.e. when a user is inserting their foot into the heel of a shoe, the sides of the heel would move outward to some degree, in order to facilitate entry of the foot).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the heel support member of modified Koo to have a middle region and two side regions, as taught by Shin, in order to provide a heel support member that supports and protects the heel of a user on all sides.
Regarding Claims 16 and 17, Koo, Bulit, and Bar disclose the invention substantially as claimed above. Modified Koo does not disclose a flexible foam component disposed on the heel support member, wherein when a user's foot inserts into the vamp, the flexible foam component is compressed, and the flexible foam component exerts pressure on the user's ankle; wherein the flexible component extends along at least a part of the inner of the vamp from both side edges of the upper part of the heel support member, to form a side section of the flexible component. However, Shin teaches a shoe having a heel support member (121) having a flexible foam component (122; para.91) disposed on the heel support member (as seen in Fig.10 & 11), wherein when a user's foot inserts into the vamp, the flexible foam component is compressed, and the flexible foam component exerts pressure on the user's ankle (para.91); wherein the flexible component extends along at least a part of the inner of the vamp from both side edges of the upper part of the heel support member, to form a side section of the flexible component (as seen in Fig.10 & 11).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the heel support component of modified Koo to include a flexible foam component, as taught by Shin, in order to provide a comfortable surface for a user’s foot to rest on, that prevents abrading and/or blistering of a user’s heel.
Response to Arguments
Applicant's arguments filed September 9, 2025 have been fully considered but they are not persuasive.
Applicant asserts the 35 U.S.C. 112(b) should be withdrawn as a non-limiting example consistent with Claim 9 is an elastic band having a second end attached to a medial portion of the tongue, an intermediate segment that extends through (i.e., penetrates) the tongue toward the lateral side, and a first end that is attached to the lateral side of the shoe.
Examiner respectfully disagrees as such an “example” is not disclosed in Applicant’s original disclosure. Applicant discloses two arrangements: 1) one band with ends attached at the medial and lateral sides of the footwear and an intermediate portion of the band extending through the tongue; or 2) two separate bands, one on each side of the footwear, having one end attached to an edge of the tongue and another end attached at the respective side of the upper, i.e. the intermediate portion of the band being disposed on the respective side of the upper and not the tongue. Therefore, the 35 U.S.C. 112(b) is maintained at this time.
In view of Applicant's amendment, the search has been updated, newly modified grounds of rejection and new prior art has been identified and applied. Applicant's arguments have been considered but, as they are drawn solely to the newly amended limitations, are moot in view of the new ground(s) of rejection.
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 MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm 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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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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