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 § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 13 18, 60, and 62 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Labonte (US 2021/0206130 A1).
Regarding claim 1, Labonte discloses a method of manufacturing a portion of a boot shell for an ice skate (abstract), the method comprising: preparing a monolithic (see figure 2, 96/36) , two-dimensional pattern of the boot shell (30); positioning the monolithic, two-dimensional pattern into a three-dimensional preform of the boot shell (figures 81-82); installing the three-dimensional preform in a mold; and consolidating the three-dimensional preform in the mold (154) to produce the portion of the boot shell [0011-0012, 0018].
Regarding claim 2, Labonte discloses wherein the portion of the boot shell comprises a mating component therefor [0239].
Regarding claim 13, Both Labonte and the instant specification teach the fiber material used in the skates are carbon fibers and/or fiberglass fibers (Labonte [0194] and specification [005]). Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions. Further, Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977).
Regarding claim 18, Labonte teaches wherein installing the three-dimensional preform in the mold comprises: placing an inner mold portion within the three-dimensional preform; and placing the inner mold portion and the three-dimensional preform in an outer mold portion (figures 3a and 3b, 24 is the inner shell and 22 is the outer shell).
Regarding claim 60, Labonte teaches where the inner mold portion comprises at least one of a last [0157], wherein the inner mold portion comprises indicators (links [0177]) configured to at least one of receive the three-dimensional preform and further comprising placing the inner mold portion within the three-dimensional preforms based on the indicators [0177-0178].
Regarding claim 62, Labonte teaches wherein consolidating the three-dimensional preform in the mold comprises applying at least one of heat or pressure (cured [0148]).
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.
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1), as applied to claim 13.
Regarding claim 58, Labonte teaches wherein the non-orthotropic structural material comprises multiple distinct layers joined into monolithic, two dimensional patterns, (see figures 17-19). Although Labonte does not explicitly disclose asymmetric, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized an asymmetric material given the limited number of options: symmetric or asymmetric. MPEP 2144.04 states obvious to try is a prima facie evidence of obvious when choosing from a finite number of identified, predictable solutions. "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Claim(s) 3, 6-8, and 54-57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1), as applied to claim 1, in view of Cruikshank et al (US 2014/0250733 A1).
Regarding claims 3 and 6, Labonte discloses wherein preparing the monolithic, two- dimensional pattern comprises tailored fiber placement comprising placing a plurality of fibers at discrete locations of the monolithic, two-dimensional pattern [0251, 0192- 0194, 0198]. Although Labonte does not explicitly disclose the fibers being oriented in two or more different predetermined orientations wherein, in an ankle portion of the boot shell, the fibers are oriented horizontally or substantially horizontally to provide lateral support to an ankle of a wearer and, in a lower boot portion of the boot shell, the fibers are oriented vertically or substantially vertically to provide lateral stiffness to a foot of the wearer; in an outsole of the boot shell, the fibers are oriented in a plus or minus 45-degree hatch pattern to provide torsional stiffness, analogous skate art, Cruikshank et al, discloses, orienting the fiber angle in a given layer based on the required stiffness property and the skate size [0012, 0023]. Hence the fiber orientation and angle are result effective variable. This result effect variable would determine if the fibers are horizontal or vertical and the angle best suited for the desired properties. Therefore, MPEP 2144.05 states In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. 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 the fibers being oriented in two or more different predetermined orientations, in an outsole of the boot shell, the fibers are oriented in a plus or minus 45-degree hatch pattern to provide torsional stiffness as taught by Cruikshank et al, into the method taught by Labonte depending on the shoe size and desired stiffness required by the wearer.
Regarding claim 7, Labonte discloses placing a material sheet at a discrete location of the monolithic, two-dimensional pattern [0194-0195]; and placing a plurality of fibers at discrete locations of the monolithic, two-dimensional pattern, wherein the plurality of fibers couple the material sheet to the monolithic, two- dimensional pattern [0195].
Regarding claim 8, Labonte discloses wherein the tailored fiber placement comprises placing a plurality of fibers at discrete locations of the monolithic, two-dimensional pattern, the fibers being added to provide a greater thickness in two or more different predetermined orientations [0138, 0141-0142].
Regarding claims 54-57, Labonte does not explicitly disclose fibers are added to provide a greater thickness in an ankle portion of the boot shell to provide one or more of greater lateral stiffness or ankle protection; wherein the fibers are added to provide a greater thickness in a heel portion of the boot shell to provide one or more of greater stiffness or greater reinforcement to a highly stressed area of the boot shell; wherein the fibers are added to provide a greater thickness about a forefoot portion of a peripheral edge of an outsole of the boot shell to provide additional reinforcement; wherein the fibers are added to provide a greater thickness about a heel portion of a peripheral edge of an outsole of the boot shell to provide additional reinforcement. However, it is conventionally known to vary thickness in areas that need the most support. Further, Labonte discloses thickness in various locations based on the curvature of the heal portions and curvature of the medial side portion [0173]. MPEP 2144.04 states "A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007). 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 provided greater thickness in the ankle or heel portion based on design needs and comfort of the person wearing the skate.
Claim(s) 15 and 59 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1), as applied to claim 1, and in view of Lefebvre et al (US 2014/0252736 A1).
Regarding claim 15 and 59, Labonte does not explicitly disclose wherein the monolithic , two dimensional pattern comprises a plurality of tabs; wherein positioning the monolithic, two-dimensional pattern comprises overlapping the tabs about the three-dimensional preform, and further comprising securing the overlapping tabs by at least one of stitching, spot welding, or using an adhesive. However, analogous skate art, Lefebvre et al disclose one or more flexible flanges or tabs 56 may be molded to, or otherwise attached to, one or more regions of the boot form 50. Components of a hockey skate may be attached to the tabs 56 via stitching, adhesive, or another suitable connector. For example, a flexible tab 56 may be molded or otherwise connected to the toe region of the boot form 50 for connection to a tongue of the skate [0033]. 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 incorporated a tab to connect different regions in the skate via stitching, spot welding or using adhesive, as taught by Lefebvre.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1) in view of Malinowski (US10383396 B1) in view of Drake (US2022/0248807 A1).
Regarding claim 29, Labonte teaches a method of manufacturing a portion of a boot shell for an ice skate [abstract], the method comprising: preparing a two-dimensional pattern of the boot shell with fiber reinforcement material [0194]; positioning the two-dimensional pattern onto a hollow, three-dimensional preform of the boot shell comprising a thermoformable material (figures 39-41) , having thermoformable material [0124], installing the three-dimensional preform in a mold [0123]; and consolidating the three-dimensional preform in the mold to produce the portion of the boot shell [0123],
as for the two dimensional pattern, it is inherent the boot would have initially be in the form of 2d flat material that is later folded to be in a 3d form.
Labonte does not explicitly disclose the thermoformable material is rigid at room temperature and has a softening point above 40°C. However, analogous art, Malinowski, discloses heating above the softening point (column 24 lines 19-36). Therefore, it would have been obvious to one ordinary skill in the art to use a thermoformable material that is rigid at room temperature and has softening point above 40 C since it allows the foam to retain the shape of the compression mold (column 24 lines 21-23).
Labonte does not explicitly disclose to include wherein preparing the two-dimensional pattern comprises placing a plurality of fibers at discrete locations of the two-dimensional pattern, the fibers being oriented in two or more different predetermined orientations. Analogous skating art, Drake, discloses placing the fiber polymer in selected orientations depending on the forces required in the boot [0092]. 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 incorporated comprises placing a plurality of fibers at discrete locations of the two-dimensional pattern, the fibers being oriented in two or more different predetermined orientations as taught by Drake, into the method taught by Labonte for the benefit of a precision fit and that is stiff and strong, yet extremely lightweight [0092].
Claim(s) 61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1), as applied to claim 18, and further in view of Goldsmith (US 2005/0116379 A1).
Regarding claim 61, Labonte teaches wherein the inner mold portion comprises an inflatable bladder (membrane 410 reads on inflatable bladder), and wherein consolidating the three-dimensional preform in the mold comprises: inflating the inflatable bladder by injecting a gas or liquid inside the inflatable bladder [0189]. Labonte does not explicitly disclose wherein the inflated bladder is configured to apply pressure onto the three-dimensional preform. However, analogous art, Goldsmith discloses using an inflatable bladder filled with gas or fluid to apply pressure against the mold in order to facilitate or otherwise aid in removal of the three-dimensional e mold from the uncured pre-form and/or the cured pre-form construct [0269]. 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 incorporated an inflatable bladder with liquid or gas in order to aid in the removal of the three dimensional mold.
Claim(s) 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1), in view of Cruikshank et al (US 2014/0250733 A1), as applied to claim 1, and further in view of Bee et al (US 2019/0098958 A1).
Regarding claim 63, Labonte does not explicitly disclose wherein the plurality of fibers at the discrete locations of the monolithic, two-dimensional pattern comprises embroidering the plurality of fibers onto a substrate. However, analogous skate art, Bee, discloses using embroidery to connect the fibers together. 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 incorporated wherein the plurality of fibers at the discrete locations of the monolithic, two-dimensional pattern comprises embroidering the plurality of fibers onto a substrate, as taught by Bee, into the method taught by Labonte based on design needs.
Claim(s) 64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Labonte (US 2021/0206130 A1) in view of Malinowski (US10383396 B1) in view of Drake (US2022/0248807 A1), as applied to claim 29, and further in view of Bee et al (US 2019/0098958 A1).
Regarding claim 64, Labonte does not explicitly disclose wherein the plurality of fibers at the discrete locations of the monolithic, two-dimensional pattern comprises embroidering the plurality of fibers onto a substrate. However, analogous skate art, Bee, discloses using embroidery to connect the fibers together. 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 incorporated wherein the plurality of fibers at the discrete locations of the monolithic, two-dimensional pattern comprises embroidering the plurality of fibers onto a substrate, as taught by Bee, into the method taught by Labonte based on design needs.
Response to Arguments
The 112(b) rejection is withdrawn in light of the amendments.
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive. Applicant argues Labonte does not read on the claims limitations since it does not say a 2 dimensional form. However, it is inherent the boot would have initially be in the form of 2d flat material that is later folded into a 3d form. Therefore, every 3d form has a 2d form that was later fold to give shape to the 3d form. An example of this is another prior art Koyess (US2019/0261730 A1) which depicts a 2d form of the boot in figure 6 and the 3d form in in figure 2.
Further applicant’s claims are broad and does not preclude the molding of the shell or requiring an inner lining to be molded. As for preparing a monolithic two-dimensional pattern of the boot shell, it is clear from the figure that figure 2, a pattern is prepared. Absent a specific definition of prepared, prepared is interpreting as having a pattern of the boot shell and placing it into the mold which is shown in the figures and disclosed in [0011-0012, 0018]. Therefore, the rejection is sustained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Koyess (US2019/0261730 A1)
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 FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754