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 .
Response to Amendment
The amendments filed with the written response received on January 13, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1 and 11 have been amended; claims 9 and 19 are canceled; and claims 12-15 and 17-18 are withdrawn from further consideration. Accordingly, claims 1-8 and 10-18 are pending in this application, with an action on the merits to follow regarding claims 1-8, 10-11, and 16.
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 and 11 (and claims 2-8, 10, and 16 at least for depending from a rejected claim) 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 1 is indefinite as it recites, “wherein the guide rail comprises one or more unimpeded ends comprising the first end and the second end, and wherein each unimpeded end of the guide rail comprises a rail portion end of the rail portion that is spaced apart from the upper by the attachment portion such that one or both of the first carriage and the second carriage can be removed from and installed on the guide rail via the rail portion end.” First, it is unclear how many unimpeded ends the guide rail can have, as this relates to whether or not there is support for more than two. Further it is unclear if “each unimpeded end” is referring to the first end and the second end. In addition, as the claim recites, “each unimpeded end of the guide rail comprises a rail portion end”, it is unclear how an end can have an end. In totality, so many ends are recited that confusion is created as to what end is being referred to and how many ends are needed to read on the claim. Examiner respectfully suggests instead of adding a large limitation at the end of the claim, to revisit the entire claim and amend the limitations where the structures, like the guide rail, are originally recited.
Claim 11 is indefinite as it recites, “wherein each of the first slider and the second slider is removably coupled to the track such that each of the first slider and the second slider can be separated from the track without damaging the article of footwear, wherein the track comprises a rail portion and an attachment portion, wherein the first slider and the second slider are disposed on the rail portion, wherein the attachment portion extends from the rail portion along a full length of the rail portion and is coupled to the upper, wherein the track comprises one or more unimpeded ends, wherein each unimpeded end of the track comprises a track end that is spaced apart from the upper by the attachment portion such that one or both of the first slider and the second slider can be removed from and installed on the track via the track end.” First, as the claim recites that the each of the sliders can be removably coupled and separated from the track without damaging the footwear, but also one or both can be installed on the track via the track end, it is unclear if the installing is referring to the removably coupled and separated or to different functions. Further, as the limitation recites, “wherein the track comprises one or more unimpeded ends” but the claim previously recites, “a track comprising a first end, a second end”, it is unclear if the one ore more unimpeded ends is referring the one of the first end or second end, or is/are in addition to the first end and second end. As many ends are recited, confusion is created as to what end is being referred to and how many ends are needed to read on the claim. Examiner respectfully suggests instead of adding a large limitation at the end of the claim, to revisit the entire claim and amend the limitations where the structures, like the track, are originally recited.
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.
Claim(s) 1-5, 8, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dombrow (US 2020/0205522) in view Haouari (US 2012/0110870).
Regarding claims 1 and 10, Dombrow discloses an article of footwear (100, Fig. 2) comprising: a sole structure (110); an upper (105) coupled to the sole structure (as shown in Fig. 2), wherein the upper comprises a lateral side portion (135), a medial side portion (130), a toe portion (foremost portion of 120a), and a heel portion (120c); and a closure mechanism (115/170) disposed on and coupled to the upper (as shown in Fig. 2) and spaced apart from the sole structure (as shown in Fig. 2), wherein the closure mechanism comprises: a guide rail (1140) comprising a first end (see annotated Fig. 2), a second end (not shown but in same location on the medial side of the shoe, disclosed in para. 0034 where 1140 extends continuously from forefoot 120a on medial side 130, around heel 120c, and to forefoot 120a on lateral side 135), and an intermediate portion disposed between the first end and the second end (area of 1140 in 120c, see annotated Fig. 2), wherein the first end of the guide rail is disposed on the lateral side portion of the upper, wherein the second end of the guide rail is disposed on the medial side portion of the upper, and wherein the intermediate portion of the guide rail extends from the lateral side portion of the upper, around the heel portion of the upper, and to the medial side portion of the upper (as disclosed in para. 0034 where 1140 extends continuously from forefoot 120a on medial side 130, around heel 120c, and to forefoot 120a on lateral side 135); a first carriage (145A on lateral side) movably coupled to the guide rail (see para. 0028) and disposed on the lateral side portion of the upper (see Fig. 2), wherein the first carriage is movable along the guide rail from the lateral side portion of the upper to the medial side portion of the upper (as the guide rail extends around the rear of the upper from the lateral side to the medial side, 145a is therefore capable of being moved from one side to the other; Examiner notes para. 0046 of Dombrow states, “In alternative embodiments, a plurality of stops can be located along a guide element at one or both of the medial and lateral sides. For example, in the embodiment illustrated in FIG. 2, a plurality of stops 160 are disposed along the guide element 1140.” Further, para. 0044 states, “Each guide element 140, 1140, 2140 may also include stops 160 disposed at selected locations along the length of the travel path.” As such, it is possible for the embodiment of Fig. 2 to not include stops); a second carriage (145a on medial side, not shown in Fig. 2, but understood from Fig. 1B) movably coupled to the guide rail (see para. 0028) and disposed on the medial side portion of the upper (as understood from Fig. 1B), wherein the second carriage is movable along the guide rail from the medial side portion to the lateral side portion (as the guide rail extends around the rear of the upper from the lateral side to the medial side, 145a is therefore capable of being moved from one side to the other; Examiner notes para. 0046 of Dombrow states, “In alternative embodiments, a plurality of stops can be located along a guide element at one or both of the medial and lateral sides. For example, in the embodiment illustrated in FIG. 2, a plurality of stops 160 are disposed along the guide element 1140.” Further, para. 0044 states, “Each guide element 140, 1140, 2140 may also include stops 160 disposed at selected locations along the length of the travel path.” As such, it is possible for the embodiment of Fig. 2 to not include stops), and wherein the second carriage is movable relative to the first carriage (as disclosed in para. 0028, both carriages are independently movable along the guide rail and therefore are movable relative to each other); and a connecting member (170; Examiner notes “connecting member” has been interpreted under 35 USC 112(f) and is disclosed as a strap 122, see para. 0045 and therefore lace 170 of Dombrow can be considered at least a functional equivalent as it connects the carriages) extending from the first carriage to the second carriage (as understood from Fig. 2 and para. 0038); and wherein the guide rail comprises one or more ends comprising the first end and the second end (as explained above); wherein the guide rail comprises a rail portion (as cylindrical guide rail can be considered a rail portion), wherein the first carriage and the second carriage are disposed on the rail portion (as seen in Fig. 2), and wherein each end of the guide rail comprises a rail portion end of the rail portion (as the 1st and 2nd ends are at the ends of the rail portion).
While Dombrow discloses the fabric sheath of the guide rail can be secured to the upper in any suitable manner, the embodiment of Fig. 2 of Dombrow does not expressly disclose wherein the guide rail comprises an attachment portion, wherein the attachment portion extends from the rail portion along a full length of the rail portion and is coupled to the upper, wherein the first end and the second end are unimpeded ends, and wherein each unimpeded end of the guide rail comprises a rail portion end of the rail portion that is spaced apart from the upper by the attachment portion such that one or both of the first carriage and the second carriage can be removed from and installed on the guide rail via the rail portion end [claim 1] and wherein the first carriage and the second carriage each comprise an opening and a notch, wherein the opening is configured to receive the rail portion of the guide rail, and wherein the notch is configured to allow the attachment portion of the guide rail to pass therethrough [claim 10].
However, the embodiment of Figs. 5, 6a, and 6B of Dombrow teaches wherein the guide rail (2140) comprises a rail portion (500) and an attachment portion (505), wherein the first carriage and the second carriage (carriages 2145F) are disposed on the rail portion (see para. 0039), and wherein the attachment portion extends from the rail portion (as seen in Fig. 5) and is coupled to the upper (as the guide rail 2140 is coupled to the upper at least in some way such as disclosed in para. 0032, then the attachment portion is coupled to the upper at least indirectly); wherein the first carriage and the second carriage each comprise an opening (620) and a notch (625), wherein the opening is configured to receive the rail portion of the guide rail, and wherein the notch is configured to allow the attachment portion of the guide rail to pass therethrough (as disclosed in para. 0039).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the guide rail and carriage arrangement of Fig. 2 of Dombrow for the guide rail and carriage arrange of Figs. 5, 6a, and 6b of Dombrow so the guide rail has rail portion and attachment portion and the carriages have an opening and notch in the closure mechanism as a simple substitution of one well known construction arrangement for another in order to yield the predictable result of facilitating “securing and movement of carriage members along the guide elements so as to selectively control positioning of the guide elements when cinching a lacing element through the guide elements” (para. 0036 of Dombrow). See MPEP 2143 B.
When used in combination, as an attachment portion was added to the existing guide rail to attach the rail portion to the upper, then the attachment portion extends from the rail portion along a full length of the rail portion and is coupled to the upper.
The modified footwear of Dombrow does not expressly disclose wherein each end is an unimpeded end, and wherein the rail portion end of the rail portion is spaced apart from the upper by the attachment portion such that one or both of the first carriage and the second carriage can be removed from and installed on the guide rail via the rail portion end.
Haouari teaches a sliding footwear closing system wherein each end (16B) of the guide rail (combination of 6A/6B) are unimpeded (see Fig. 6) and are also rail portion ends (as 6A/6B are rails), and wherein one or both of the first carriage and the second carriage (100A and 100B) can be removed from and installed on the guide rail via the rail portion end (see paras. 0052, 0099, and 0108).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the ends of the guide rail to be unimpeded such that each of the carriages of Dombrow can be removed or installed on from each of the unimpeded ends as taught by Haouari so that the user can change “deteriorated/damaged” carriages (see para. 0108 of Haouari) or even changes to different colors or styles of carriages for aesthetic purposes.
When used in combination, as the rail portion is secured to the upper by the attachment portion and the rail portion ends are unimpeded, then rail portion ends are spaced apart from the upper (i.e. not directly attached to the upper) by the attachment portion (as the attachment portion is attached to the upper and to the rail portion) such that one or both of the first carriage and the second carriage can be removed from and installed on the guide rail via the rail portion end, as best as the claim can be interpreted by Examiner given the 35 USC 112(b) rejections above.
Regarding claim 2, the modified footwear of Dombrow discloses wherein the first end of the guide rail and/or the second end of the guide rail are disposed on a forefoot region (120A) of the article of footwear (as disclosed in para. 0034, the guide rail 1140 extends to 120A on both sides of the footwear).
Regarding claim 3, the modified footwear of Dombrow discloses wherein either or both of the first carriage and the second carriage are removable from the guide rail via the first end of the guide rail while the guide rail remains coupled to the upper (as the carriages are movable along the guide and have been modified to be removable from the ends of the guide rail by Haouari, then the carriages are capable of being removed from the guide rail while the rest of the guide rail remains coupled to the upper).
Regarding claim 4, the modified footwear of Dombrow discloses wherein either or both of the first carriage and the second carriage are removable from the guide rail via the second end of the guide rail while the guide rail remains coupled to the upper as the carriages are movable along the guide and have been modified to be removable from the ends of the guide rail by Haouari, then the carriages are capable of being removed from the guide rail while the rest of the guide rail remains coupled to the upper).
Regarding claim 5, the modified footwear of Dombrow discloses wherein the first carriage and the second carriage are removable from the guide rail via the first end of the guide rail and the second end of the guide rail while the guide rail remains coupled to the upper (as the carriages are movable along the guide and have been modified to be removable from the ends of the guide rail by Haouari, then the carriages are capable of being removed from the guide rail while the rest of the guide rail remains coupled to the upper).
Regarding claim 8, the modified footwear of Dombrow discloses wherein the guide rail is continuous from the first end to the second end (as disclosed in para. 0034).
Regarding claim 11, Dombrow discloses an article of footwear (100, Fig. 2) comprising: a sole structure (110); an upper (105) coupled to the sole structure (as shown in Fig. 2), wherein the upper comprises a lateral side portion (135), a medial side portion (130), a toe portion (foremost portion of 120a), and a heel portion (120c); and a closure mechanism (115/170) disposed on and coupled to the upper (as shown in Fig. 2) and spaced apart from the sole structure (as shown in Fig. 2), wherein the closure mechanism comprises: a track (1140) comprising a first end (see annotated Fig. 2), a second end (not shown but in same location on the medial side of the shoe, disclosed in para. 0034 where 1140 extends continuously from forefoot 120a on medial side 130, around heel 120c, and to forefoot 120a on lateral side 135), and an intermediate portion disposed between the first end and the second end (area of 1140 in 120c, see annotated Fig. 2), wherein the first end of the track is disposed on the lateral side portion of the upper, wherein the second end of the track is disposed on the medial side portion of the upper, and wherein the intermediate portion of the track extends from the lateral side portion of the upper, around the heel portion of the upper, and to the medial side portion of the upper (as disclosed in para. 0034 where 1140 extends continuously from forefoot 120a on medial side 130, around heel 120c, and to forefoot 120a on lateral side 135); a first slider (145A on lateral side) and disposed on the lateral side portion of the upper (see Fig. 2), wherein the first slider is movable along the track to adjust a fit of the article of footwear (as the track extends around the rear of the upper from the lateral side to the medial side, 145a is therefore capable of being moved from one side to the other); a second slider (145a on medial side, not shown in Fig. 2, but understood from Fig. 1B) and disposed on the medial side portion of the upper (as understood from Fig. 1B), wherein the second slider is movable along the track to adjust the fit of the article of footwear (as the track extends around the rear of the upper from the lateral side to the medial side, 145a is therefore capable of being moved from one side to the other; Examiner notes para. 0046 of Dombrow states, “In alternative embodiments, a plurality of stops can be located along a guide element at one or both of the medial and lateral sides. For example, in the embodiment illustrated in FIG. 2, a plurality of stops 160 are disposed along the guide element 1140.” Further, para. 0044 states, “Each guide element 140, 1140, 2140 may also include stops 160 disposed at selected locations along the length of the travel path.” As such, it is possible for the embodiment of Fig. 2 to not include stops); and a connecting member (170; Examiner notes “connecting member” has been interpreted under 35 USC 112(f) and is disclosed as a strap 122, see para. 0045 and therefore lace 170 of Dombrow can be considered at least a functional equivalent as it connects the sliders) extending from the first slider to the second slider (as understood from Fig. 2 and para. 0038), where the first slider and the second slider are independently movable along the track relative to one another (as disclosed in para. 0028, both carriages/sliders are independently movable along the guide rail/track and therefore are movable relative to each other), wherein the track comprises a rail portion (as cylindrical rail that creates the track can be considered a rail portion), wherein the first and second slider are disposed on the rail portion (as seen in Fig. 2), and wherein the track comprises one or more ends (as the 1st and 2nd ends explained above are at the ends of the track).
While Dombrow discloses the fabric sheath of the track can be secured to the upper in any suitable manner, the embodiment of Fig. 2 of Dombrow does not expressly disclose wherein each of the first slider and the second slider is removably coupled to the track such that each of the first slider and the second slider can be separated from the track without damaging the article of footwear, wherein the track comprises an attachment portion, wherein the attachment portion extends from the rail portion along a full length of the rail portion and is coupled to the upper, wherein the one or more ends of the track are unimpeded ends, and wherein each unimpeded end of the track comprises a track end that is spaced apart from the upper by the attachment portion such that one or both of the first slider and the second slider can be removed from and installed on the track via the track end.
However, the embodiment of Figs. 5, 6a, and 6B of Dombrow teaches wherein the track (2140) comprises a rail portion (500) and an attachment portion (505), wherein the first slider and the second slider (carriages 2145F) are disposed on the rail portion (see para. 0039), and wherein the attachment portion extends from the rail portion (as seen in Fig. 5) and is coupled to the upper (as the track 2140 is coupled to the upper at least in some way such as disclosed in para. 0032, then the attachment portion is coupled to the upper at least indirectly); wherein the first carriage and the second carriage each comprise an opening (620) and a notch (625).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the track configuration of Fig. 2 of Dombrow for the track configuration of Fig. 5 of Dombrow as a simple substitution of one well known construction arrangement for another in order to yield the predictable result of facilitating “securing and movement of carriage members along the guide elements so as to selectively control positioning of the guide elements when cinching a lacing element through the guide elements” (para. 0036 of Dombrow). See MPEP 2143 B.
When used in combination, as an attachment portion was added to the existing track to attach the rail portion to the upper, then the attachment portion extends from the rail portion along a full length of the rail portion and is coupled to the upper.
The modified footwear of Dombrow does not expressly disclose wherein each of the first slider and the second slider is removably coupled to the track such that each of the first slider and the second slider can be separated from the track without damaging the article of footwear, and wherein each end of the track is an unimpeded end, each unimpeded end of the track is spaced apart from the upper by the attachment portion such that one or both of the first slider and the second slider can be removed from and installed on the track via the track end.
Haouari teaches a sliding footwear closing system wherein each of the first slider (100A) and the second slider (100B) is removably coupled to the track (6A/6B) such that each of the first slider and the second slider can be separated from the track without damaging the article of footwear (see Figs. 1, 6, and 11 and paras. 0052, 0099, and 0108), and wherein each end (16B) of the track (combination of 6A/6B) are unimpeded (see Fig. 6) and wherein one or both of the first slider and the second slider (100A and 100B) can be removed from and installed on the guide rail via the rail portion end (see paras. 0052, 0099, and 0108).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the ends of the track unimpeded and allow the sliders to removably coupled to the track of the modified footwear of Dombrow without damaging the footwear as taught by Haouari so that the user can change “deteriorated/damaged” carriages (see para. 0108 of Haouari) or even changes to different colors or styles of carriages for aesthetic purposes.
When used in combination, as the rail portion is secured to the upper by the attachment portion and track ends are unimpeded, then the track eds are spaced apart from the upper (i.e. not directly attached to the upper) by the attachment portion (as the attachment portion is attached to the upper and to the rail portion) such that one or both of the first slider and the second slider can be removed from and installed on the track via the track end, as best as the claim can be interpreted by Examiner given the 35 USC 112(b) rejections above.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Dombrow and Haouari, as applied to claim 1 above, and further in view of Bahl (US 6088936).
Regarding claims 6-7, the modified footwear of Dombrow discloses all the limitations of claim 1 above, but does not expressly disclose wherein the first end of the guide rail is disposed closer to the sole structure in an inferior/superior direction than the intermediate portion of the guide rail extending around the heel portion of the upper [claim 6] and wherein the second end of the guide rail is disposed closer to the sole structure in an/the inferior/superior direction than the intermediate portion of the guide rail extending around the heel portion of the upper [claim 7].
Bahl teaches footwear with a closure mechanism wherein the guide (20/21/22/32) in the forefoot region (guide 20 and 21) is disposed closer to the sole structure(13) in an inferior/superior direction (vertical direction) than the intermediate portion of the guide (portion 32) extending around the heel portion (31) of the upper (as seen Fig. 3) (as can be seen in Fig. 3, the guide is closer to the sole in the forefoot area than it is in the heel area).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to move the intermediate portion of the guide rail further upward on the heel portion so that the ends of the guide rail are closer to the sole in the forefoot area than in the heel area of the modified footwear of Dombrow, as taught by Bahl, “in order to provide increased support to the ankles of the wearer” (col. 4, lines 50-52 of Bahl) as when increasing tension on the connecting member of Dombrow would pull the heel portion of the upper closer to ankle of the wearer.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Dombrow and Haouari. as applied to claim 11 above, and further in view of Lederer (DE 1941025).
Regarding claim 16, the modified footwear of Dombrow discloses all the limitations of claim 11, but does not expressly disclose wherein the connecting member is fixedly secured to the first slider and the second slider.
Lederer teaches footwear with a closure mechanism with a track (28) and sliders (50/54) wherein the connecting member (46/56/52) is fixedly secured to the first slider and the second slider (as seen in Fig. 4).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the connecting member of the modified footwear of Dombrow with the connecting member as taught by Lederer in order to allow the user a quicker form of fastening the footwear about the foot while still allowing for fitting to the varying shapes between different feet wearing the same size of footwear.
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Annotated Fig. 2 (Dombrow)
Response to Arguments
Applicant's arguments filed January 13, 2026 have been fully considered but they are not persuasive.
Regarding the 35 USC 103 rejections of 1 and 11, Applicant argues “a person of ordinary skill in the art would not turn to the disclosure of Haouari for corresponding structural features, since the unitary part of Haouari is fundamentally structurally distinct from the several independent carriage members of Dombrow. Accordingly, the proposed modification would change the principle of operation of Dombrow's fastening system, which relies on independently movable carriages that remain coupled to the guide element during adjustment” (Remarks, final para. on p. 11 extending to its conclusion on the top of p. 12). Examiner respectfully disagrees. First, it appears Applicant is arguing that Haouari is nonanalogous art and Examiner notes it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as both Dombrow and Haouari are each drawn to a rail system that attaches to at least one carriage that carries a lace, therefore Dombrow and Haouari are each in the field of the inventor’s endeavor. Further, even though the entire carriage and lace (unitary part 100) of Haouari is removable and the lace may or may not be selectively tightened, the structure of Haouari is not fundamentally different than that of Dombrow as both have rail systems that attached to at least one carriage that attaches to a lace and the system is used to secure the upper on the foot of the wearer, and modifying Dombrow with Haouari is not improper. Further, modifying Dombrow to make the ends of the guide rail unimpeded would not change the principle of operation. Applicant argues “modifying the guide element of Dombrow to allow the carriage members to slide off of unimpeded ends of the guide element would increase the likelihood of one or more carriage members being inadvertently slid off of the guide element. Because this structural feature of Haouari is linked to a functional operation that is fundamentally distinct from that of Dombrow (namely, adjusting the shoe of Haouari via complete removal of the unitary part), Haouari can provide no proper motivation to modify the footwear of Dombrow to include such a feature” (Remarks, first full para. on p. 12). This appears to be a piecemeal analysis of the references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the rejection as laid out above, the entire system of Dombrow has not been replaced with the system of Haouari. Instead, only the ends of the rail portion of Dombrow have been modified to be unimpeded, “so that the user can change “deteriorated/damaged” carriages (see para. 0108 of Haouari) or even changes to different colors or styles of carriages for aesthetic purposes” (see rejection above). As such, Dombrow would still operate in the same manner. Dombrow explains in para. 0030, “the guide rail and each carriage member are configured to cooperate such that each carriage member is retained by a frictional force that maintains the carriage member at a selected position along the guard rail until a sufficient force is applied to the carriage member to overcome the frictional force so as to move the carriage member along the guide rail”. As such, one of ordinary skill in the art would readily understand that a sufficient coefficient of friction is needed since “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton” (see MPEP 2141 and 2143).
Remaining arguments regarding a 35 USC 103 rejection of claims 1 and 11 as unpatentable over Dombrow in view of Haouari have been considered but are moot because the arguments are drawn to newly added limitations do not apply to the current grounds of rejection. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new ground(s) of rejection.
Applicant submits that the dependent claims are patentable based on their dependencies from claims 1 and 11; however, as discussed in the rejection below and in the arguments above, claims 1 and 11 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the dependent claims have been maintained.
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 HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732