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 .
This is in response to Applicant’s amendment in which claims 1, 3-4, 9, 14, 16-19, 23, and 24 have been amended, claims 13, 15, and 22 have been canceled, claims 25-27 have been added, claims 1-12, 14, 16-21, and 23-27 remain pending, and claims 11 and 20-21 are withdrawn from consideration.
Claim Objections
Claim 24 is objected to because of the following informalities: Claim 24 recites the limitation “the comprises at least one recess” in lines 2-3. It appears that this limitation should read --the at least one recess--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There is no support in the original specification for the engaging portion of the upper cover portion or the recess in the outer surface of the upper cover portion to substantially retain its shape when the upper cover portion is disengaged from the base portion. The written description is silent regarding these limitations, and drawings alone are not sufficient to show such structure.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 14 and 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mascotte (US 5,337,491).
Regarding claim 14, Mascotte discloses a shoe assembly comprising: a base portion including a sole (12) and an engaging portion comprising at least one elongated recess (16) formed around at least a portion of a midsole of the base portion; an upper cover portion (18) separately formed from the base portion and including a shoe upper and at least one lower extension (22) extending from a lower edge of the shoe upper; and a sealing assembly (20, loop formed by 22 and surrounding 20) provided on an inner surface of the lower extension of the upper cover portion and forming a protrusion on the inner surface of the lower extension (Fig. 3), wherein the sealing assembly is configured to provide waterproof sealing to an interface between the base portion and the upper cover portion (column 1, lines 42-51; column 2, lines 4-54; Fig. 1-4).
Regarding claim 16, Mascotte discloses that the lower extension of the upper cover portion overlaps with at least a portion of the midsole of the base portion and the sealing assembly is configured to releasably couple with the at least one elongated recess (Fig. 2, 4).
Regarding claim 17, Mascotte discloses that the sealing assembly comprises at least one elongated tube (loop formed by 22) configured to securely fit within the at least one elongated recess of the base portion (Fig. 4).
Regarding claim 18, Mascotte discloses an anchor (12p) formed on the base unit, wherein the sealing assembly is further configured to releasably couple with the engaging portion and to secure the releasable coupling between the sealing assembly and the engaging portion to the anchor (column 2, lines 57-63; Fig. 4).
Regarding claim 19, Mascotte discloses that the sealing assembly is further configured to releasably couple with the engaging portion and to apply a compressive force (wherein the O-ring 20 is elastic) to the releasable coupling between the sealing assembly and the engaging portion (Fig. 3, 4).
Claim(s) 1-10, 12, and 23-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Flottorp (US 4,366,633).
Regarding claim 1, Flottorp discloses a shoe assembly comprising: a base portion (10) including a sole and a first engaging portion (17), the first engaging portion forming at least one recess (space between hooks 17, which is recessed from the top surface of the hooks; Fig. 7) in an outer surface of the base portion; an upper cover portion (11, 30) separately formed from the base portion and including a shoe upper and a second engaging portion (32) comprising at least one projection (Fig. 7) formed on an inner surface of the upper cover portion configured to independently engage with the at least one recess of the first engaging portion to releasably couple the upper cover portion to the base portion; a fastening assembly (22) configured to further secure the releasable coupling between the upper cover portion and the base portion, wherein a force applied by the fastening assembly to the releasable coupling is adjustable (wherein the wire 22 is flexible and may be adjusted), wherein the upper cover portion includes at least one second recess (Fig. 7) formed in an outer surface configured to receive the fastening assembly therein, and wherein the at least one projection of the second engaging portion is configured to engage with the at least one recess of the first engaging portion independently of the fastening assembly (column 2, line 18-column 3, line 24; Fig. 1, 5-7).
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Regarding claim 2, Flottorp discloses that the first engaging portion extends around at least a portion of a midsole of the base portion, and the second engaging portion extends around at least a portion of a lower periphery of the shoe upper (Fig. 1, 5, 7).
Regarding claim 3, Flottorp discloses that the at least one second recess formed in the outer surface of the upper cover portion corresponds in position to the at least one projection (Fig. 7).
Regarding claim 4, Flottorp discloses that the fastening assembly is configured to further secure the engagement between the at least one projection of the second engaging portion and the at least one recess of the first engaging portion by applying a compressive force to the at least one second recess.
Regarding claim 5, Flottorp discloses that the base portion further comprises an anchor (23, 24) for anchoring the fastening assembly to the base portion (Fig. 5).
Regarding claim 6, Flottorp discloses that the anchor is formed on an outsole portion of the sole (wherein the anchor is connected at least indirectly to the outsole).
Regarding claim 7, Flottorp discloses that the fastening assembly comprises at least one cable (22) configured to pass through the at least one second recess so as to apply the compressive force to the at least one second recess and further configured to engage with the anchor.
Regarding claim 8, Flottorp discloses that the fastening assembly further comprises at least one retaining member (21) for retaining the at least one cable within the at least one second recess (Fig. 3, 5).
Regarding claim 9, Flottorp discloses that the fastening assembly comprises at least one cable (22) and at least one retaining member (23, 24) for retaining the at least one cable within the at least one recess, and wherein the at least one retaining member comprises at least one tube configured to fit securely within the at least one second recess, and having an elongated opening for passing the at least one cable therethrough (Fig. 5).
Regarding claim 10, Flottorp discloses an anchor (23, 24) for anchoring the fastening assembly to the base portion (Fig. 5).
Regarding claim 12, Flottorp discloses that the anchor protrudes from a waist portion of an outsole of the base portion (wherein the anchor protrudes upwardly from the outsole portion).
Regarding claim 25, Flottorp discloses that the second engaging portion of the upper cover portion substantially retains its shape when the upper cover portion is disengaged from the base portion (Fig. 7).
Regarding claim 27, Flottorp discloses that the at least one second recess in the outer surface of the upper cover portion substantially retains its shape when the upper cover portion is disengaged from the base portion (Fig. 7).
Regarding claim 23, Flottorp discloses a shoe upper for use in a shoe assembly and configured to releasably engage with a base portion of the shoe assembly, the shoe upper comprising: an upper cover portion (11, 30) separately formed from the base portion and including an upper and an engaging portion (32) configured to engage and independently maintain engagement with the base portion to releasably couple the upper cover portion to the base portion, wherein the engaging portion extends around at least a portion of a lower periphery of the upper and comprises at least one projection formed on an inner surface of the upper cover portion for engaging with the base portion, and wherein the upper cover portion includes at least one recess (Fig. 7) formed in an outer surface forming an elongated channel therein (column 2, line 18-column 3, line 24; Fig. 1, 5-7).
Regarding claim 24, Flottorp discloses that the at least one recess formed in the outer surface of the upper cover portion corresponds in position to the at least one projection (Fig. 7).
Regarding claim 26, Flottorp discloses that the engaging portion of the upper cover portion substantially retains its shape when the upper cover portion is disengaged from the base portion (Fig. 7).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 14, and 23 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