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 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.
Claim 35 is 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. The “upper clad” is not shown in the shown in the figures and is only vaguely described in paragraph 0021 and therefore the disclosure fails to adequately describe and shown the upper clad to enable one skilled in the relevant art, at the time the application was filed, had possession of the claimed invention. It is suggested this be deleted since it doesn’t appear possible to claim.
Claim 35 is 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 35, the phrase “with substantially the remainder of the upper clad or covered in a flexible material with lower extensibility than the extensible material of the upper” is not understood. The clad is not shown or adequately disclosed and therefore it is not understood how this language further defines the football shoe/boot.
Allowable Subject Matter
Claims 1,2,6-9,13-15,17-18,20-24 and 33-34 are allowed.
Response to Arguments
Applicant's arguments filed 7/10/2025 have been fully considered but they are not persuasive.
With regard to the remaining rejection of claim 35, applicant presented arguments on pages 8-10 but these arguments where not found to be convincing.
The only support for “the upper chad” is found in ¶0021 reproduced below.
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¶0021 contains similar language as is found in claim 35 and applicant’s response doesn’t add any clarity to the issues. Applicant argues these features are supported in paras. 0105,0106,0117,0118 and Figures 7A, 7B,9A and 9B. However, there is not mention of the “upper chad” in these paras. and it still not clear what part of the upper is the upper chad. The alternative language “or” also adds further confusion. Figures 7A,7B are directed to a species non-elected but even a review of figures 7A,7B and applicant’s remarks do not add clarity to the issues.
A call was placed to Mr. James Hooper on March 17, 2026 to delete and or amend claim 35 in order to allow the application but didn’t result in resolving the remaining issues. As noted above, the only support for “the upper chad” is found in ¶0021.
In view of the allowable subject matter as indicated above, applicant’s remaining arguments are moot.
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.
THIS ACTION IS MADE FINAL. 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