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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/9/2026 has been entered.
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 1-9 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. Applicant recites “the automatic shoelace tying system is configured to be standalone and not integral to the shoe”.
With regards to the use of negative limitation in the claims: it has been held that [Any negative limitation or exclusionary proviso must have basis in the original disclosure]. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff ’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.
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.
Claims 1, 3, 5, 8 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Beers (US 2009/0272007) in view of Beers1 (US 2020/0054096).
Regarding Claim 1, Beers discloses an automatic shoelace tying system (Figures 1-13) for tying shoelaces of a shoe (Figures 1-11) comprising: a) an enclosure (102) and two, separate, identical attachment fixtures (111, 112, 113,or 114) , wherein the enclosure is a three-dimensional, geometric structure (Figures 1-133) with a plurality of side apertures on opposite sides of the enclosure (Figures 1315 & 1325); b) a DC electric motor (Para. 115), wherein the DC electric motor has a shaft extending from an end of its armature (Para. 120, 1232); c) two, flexible, non-stretching cables (111, 112, 113, 114 & Para. 87), each attached at its center, to a different attachment point along the shaft (Figure 13); d) a rechargeable battery (Para. 117-119); e) two, momentary, push-button, electrical double-pole/single-throw switches (1004) wherein one push-button is a tighten push-button and switch that conveys (Para. 150-151), when pushed, battery power to the DC electric motor, and one push-button is a loosen push-button and switch that conveys (Para. 107-108), when pushed, opposite polarity battery power to the DC electric motor (Para. 108); and f) a battery-charger connection port through which the rechargeable battery may be connected to an external battery charger (Para. 119); wherein the automatic shoelace tying system is configured to attach to eyelets of the shoe (1325 & 2202). Beers1 does not specifically disclose the automatic shoe lace tying system is configured to be standalone and not integral to the shoe. However, Beers1 discloses an automatic shoe lace tying system is configured to be standalone and not integral to the shoe (via housing 412, Para. 43). It would have been obvious to one of ordinary skill in the art before the effective filing date to include a housing, as taught by Beers1, to the shoe of Beers, in order to provide a placement component for the automatic shoe lace tying system
Regarding Claim 3, Beers discloses the DC motor has a cable-tension sensor operative to turn off the motor when a predetermined tension value has been exceeded (Para. 145-150).
Regarding Claim 5, Beers discloses each attachment fixture is a solid, three-dimensional, geometric structure comprising a plurality of attachment apertures along one face and extending through an opposite face (Figure 13).
Regarding claims 8 & 9, if a prior art, in its normal and usual operation, would necessarily describe a device capable of performing the steps of the method or process, then the device claimed will be considered to be inherent by the prior art process or method. When the prior art process or method is the same as a process or method described in the specification for describing the claimed device, it can be assumed the process or method will inherently describe the claimed device capable of performing the different steps of the process or method. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). MPEP 2112.02
Claims 2, 4, 6 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over Beers (US 2009/0272007) in view of Beers1 (US 2020/0054096) in further view of Rushbrook (US 2015/0289594).
Regarding Claim 2, Beers discloses further comprising: g) a wireless-communication subsystem (Para. 152). Beers does not specifically disclose a separate wireless-communication remote-control subsystem. However, Rushbrook discloses using various remote devices for tensioning systems (Para. 138). It would have been obvious to one of ordinary skill in the art before the effective filing date to include remote systems, as taught by Rushbrook, to the tensioning system of Beers, in order to provide control of the tensioning outside of the shoe.
Regarding Claim 4, Beers discloses the DC motor has a cable-tension sensor operative to turn off the motor when a predetermined tension value has been exceeded (Beers, Para. 145-150).
Regarding Claim 6, Beers discloses each attachment fixture is a solid, three-dimensional, geometric structure comprising a plurality of attachment apertures along one face and extending through an opposite face (Beers, Figure 13).
Regarding Claim 7, the combination of Beers and Rushbrook disclose the separate wireless-communication remote-control and wireless-communication subsystem simulate pushing either one or the other momentary, push-button, electrical double-pole/single-throw switches (Beers, Para. 108 & Rushbrook, Para. 138).
Response to Arguments
Applicant’s arguments with respect to the amended claims have been fully considered but are moot in view of the new grounds of rejection as discussed supra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732