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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 (In applicant’s Application Data Sheet: applicant indicates this a continuation of prior application 16/985908 filed on 8/5/2020; however upon reviewing the application it should have been filed as a “Continuation-in-part”).
This application repeats a substantial portion of prior Application No. 16/985908, filed 8/5/2020, and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Opening Remarks
The claims are not generic inasmuch as they are all directed to the footguard (610) and footwear assembly as shown in new figures 25-32 (this figures are new as compared to the parent application 16/985908.
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.
Claims 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3006086 (Bird) in view of US 3271888 (Graham).
Regarding claims 14-18, Bird discloses a foot guard and shoe assembly, comprising:
a footwear (11; see figures 1-2 ) having front portion and a rear portion and a metatarsal region, and
a foot guard (shoe guard 10) including
a cover (guard 10 includes a pocket body defining a pocket (flexible envelope 14 made from an upper leather cover 15 and a lower leather cover 16)],
an impact pad positioned in the cover (cushion pad 13 made of sponge-like shock absorbing material with rigid plate 12 is contained within envelope formed by layers 15,16).
Bird lacks teaching a first band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear, and a second band attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band.
Graham teaches a first elastic band (32, 42) attached to the cover defining a first opening receiving the rear portion of the footwear, and a second opening receiving the front portion of the footwear to secure the attachment device on the metatarsal region of the footwear, and a second band (resilient biasing strap 50; see col. 2, lines 41-44) attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band (see figure 3 showing the strap extending in a downward direction).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the foot guard and cleated shoe assembly as taught by Bird with a first band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear, and a second band attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band, as taught by Graham, to facilitate holding the impact pad in positioned on the shoe. This dual band arrangement replaces the strap (17) and buckle arrangement (18) taught by Bird so as to facilitate securing the impact pad in place and additional such an arrangement would facilitate attaching to a shoe without laces.
With regard to claim 15, see figure 1 of Bird and Graham showing a low-top shoe. These shoes are lower than high boots and therefore have a low-top structure as claimed. Moreover, the shoe guard could be placed on any type of footwear.
Regarding claims 16-18, both straps as taught by Graham have ends which are removably coupled at first and second locations. See figure 3 which shows the first location is positioned forward of the second location. With regard to claim 18, see figure 2 showing the second location “about halfway between the top and bottom of the footwear”.
Claims 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3006086 (Bird) in view of US 3812606 (Merola).
Regarding claims 14-18, Bird discloses a foot guard and shoe assembly, comprising:
a footwear (11; see figures 1-2 ) having front portion and a rear portion and a metatarsal region, and
a foot guard (shoe guard 10) including
a cover (guard 10 includes a pocket body defining a pocket (flexible envelope 14 made from an upper leather cover 15 and a lower leather cover 16)],
an impact pad positioned in the cover (cushion pad 13 made of sponge-like shock absorbing material with rigid plate 12 is contained within envelope formed by layers 15,16).
Bird lacks teaching a first band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear, and a second band attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band.
Merola teaches a first elastic band (straps 15 extending under the shoe) attached to the cover (10) defining a first opening receiving the rear portion of the footwear, and a second opening receiving the front portion of the footwear to secure the attachment device on the metatarsal region of the footwear, and a second band (elastic ankle strap 30) attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band (see figure 3 showing the strap (30) extending in a downward direction).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the foot guard and cleated shoe assembly as taught by Bird with a first band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear, and a second band attached to the cover and extending around the rear portion of the footwear, the second band extending in a downward direction from the rear portion of the footwear toward the first band, as taught by Merola, to facilitate holding the impact pad in positioned on the shoe. This dual band arrangement replaces the strap (17) and buckle arrangement (18) taught by Bird so as to facilitate securing the impact pad in place and additional such an arrangement would facilitate attaching to a shoe without laces.
With regard to claim 15, see figure 1 of Bird and Merola showing a low-top shoe. These shoes are lower than high boots and therefore have a low-top structure as claimed. Moreover, the foot guard could be placed on any type of footwear.
Regarding claims 16-18, both straps as taught by Merola have ends which are removably coupled at first and second locations as claimed; at least see col. 3, lines 13-24 and 38-50. See figure 3 which shows the first location is positioned forward of the second location. With regard to claim 18, see figure 2 showing the second location “about halfway between the top and bottom of the footwear”.
Claims 1,2,4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8959801 (Siragusa) in view of US 7523567 (McClelland).
Regarding claims 1,2,4 and 7, Siragusa teaches a foot guard and footwear assembly (protector 20 and skate), comprising:
a footwear (skate) having a front portion and a rear portion and a metatarsal region, and a foot guard (20) including
a cover (21,22,23),
an impact pad positioned in the cover (insert strips 37-1,37-2,37-3,37-4; the strips are inherently plates; and each of these strip has a resilient insert 38 (e.g. see 38-2 shown in figure 7),
the impact pad including a primary pad (e.g. 37-2) and secondary pad (e.g. 37-1) integrally connected to the primary pad at a joint (e.g. edge 35-2), the primary pad being positioned rearward on the footwear relative to the secondary pad.
Siragusa lacks teaching at least one band attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear. The band (61) taught by Siragusa wraps around the rear of the footwear (see figure 10 and NOT underneath the footwear defining a first and second opening as claimed.
McClelland teaches a protective cover (cover 30) for a skate wherein the protector includes an additional band (52) extending underneath the footwear and therefore teaching at least one band (52) attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear. Two straps will provide a more secure attachment; see col. 5, lines 27-30 of McClelland.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the foot guard and footwear assembly as taught by Siragusa with at least one band (52) attached to the cover defining a first opening receiving the rear portion of the footwear and a second opening receiving the front portion of the footwear to secure the impact pad on the metatarsal region of the footwear, as taught by McClelland, to facilitate securing the cover to the footwear.
Regarding claim 4, Siragusa teaches the plates (strips 37-1, etc.) are sandwiched between layers 30,31 and an addition resilient layer 38 is also provided (see col. 5, line 65 to col. 6, line 5). The examiner takes official notice that constructing resilient layers out of foam is old and conventional in the art. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the resilient additional layer out of foam, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. The claimed material merely amounts to a matter of engineering design choice and thus does not serve to patentable distinguish the claimed invention over the prior art. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific material solves any particular problem and/or yields any unexpected results. With regard to the plates positioned between a first and second foam layer, it would appear to be an obvious design choice to provide the plates to be sandwiched between first and second foam layers as claimed inasmuch as a number of layers would appear to be suitable depending on the individual wearer and the activity for be used for. That is, these parameters are recognized in the art to be a variable that is result effective. Generally, it is considered to have been obvious to develop workable or even optimum ranges for such variables. For example, see In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Since the applicant has not demonstrated or even alleged that these specifically claimed parameters for the pivoting spine produces unexpected results, it is our conclusion that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum parameters for the pivoting spine and thereby arrive at the specific variables claimed by the applicant.
Regarding claim 7, along the longitudinal axis the joint (edge 35-2 has a very small height) as compared to longitudinal length of the flexible tip (i.e. the tip of the instep protection pad 21) formed forward of the secondary pad; see figure 7).
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 2 and 1, respectively above, and further in view of US 5581912 (Adams).
Adams teaches a footwear saddle which has the rear end having a concave edge (24) to prevent the saddle from digging into the wearer; see figure 3 and col. 2, lines 39-41. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the rear end of the first plate and the rear end of the impact pad to be concave, as taught by Adams, to prevent the cover from digging into the wearer.
Claims 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 3006086 (Bird) in view of US 3271888 (Graham) and US 1567714 (Dessau).
Regarding claims 8-13, Bird discloses a foot guard and shoe assembly, comprising:
a footwear (11; see figures 1-2 ) having front portion and a rear portion and a metatarsal region, and
a foot guard (shoe guard 10) including
a cover (guard 10 includes a pocket body defining a pocket (flexible envelope 14 made from an upper leather cover 15 and a lower leather cover 16)],
an impact pad positioned in the cover (cushion pad 13 made of sponge-like shock absorbing material with rigid plate 12 is contained within envelope formed by layers 15,16).
Bird lacks teaching at least one band including a first band having a first end coupled to a first side of the cover, a middle portion, and a second end coupled to a second side of the cover, the second side being opposite of the first side of the cover, the first end of the first band having a split with a first portion of the first end coupled to the first side of the cover at a first location and a second portion of the first end coupled to the first side of the cover at a second location, the second location being rearward of the first location.
Graham teaches at least one band (resilient biasing strap 50; see col. 2, lines 41-44) including a first band having a first end coupled to a first side of the cover, a middle portion (portion of the band 55 which extends under the footwear), and a second end coupled to a second side of the cover, the second side being opposite of the first side of the cover (see figures 1-5). Graham also teaches a second band (32,42) extending around the back of the footwear.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the foot guard and cleated shoe assembly as taught by Bird with bands (32,42,50) including at least a first band having a first end coupled to a first side of the cover, a middle portion, and a second end coupled to a second side of the cover, the second side being opposite of the first side of the cover, as taught by Graham, to facilitate holding the impact pad in positioned on the shoe. This dual band arrangement replaces the strap (17) and buckle arrangement (18) taught by Bird so as to facilitate securing the impact pad in place and additional such an arrangement would facilitate attaching to a shoe without laces.
Dessau teaches a strap/band system for attaching a device to footwear wherein the strap/band (7) can have multiple branches (9; see figure 1) including a split with a first portion of the first end coupled to the first side of the device at first location and a second portion of the first end coupled to the device at a second location (see figure 1), to facilitate distribute the tension and provide a decorate appearance (see page 2, col. 1, lines 19-26). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the footguard and footwear assembly as taught by the combination above with the first band split with a first portion and a second portion including first and second branches, as taught by Dessau, to facilitate distributing the tension and provide a decorate appearance.
Regarding claims 9-13, the first band, first branch and second branch as taught by the combination above for a Y-shape having a triangular shape which is devoid of material between the branches. The band is permanently attached at one side and removably attached at the other side by buckle 52.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 9/29/2025 have been fully considered but they are not persuasive.
Rejection #1 103: Bird in view of Graham & Bird in view of Merola
Applicant argues (in summary) it would go against common sense for PHOSITA to consider a shoe guard for laborers (Bird), shoe attachment for industry workers (Graham), or foot shield for motorcyclists (Merola) as analogous art under the “relevant filed of endeavor test.” Applicant states their field of endeavor is directed to foot guards that have an application in American football.
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. The examiner must determine whether a reference is analogous art to the claimed invention when analyzing the obviousness of the subject matter under examination. When more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. See Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir. 2023). If a reference is not analogous art to the claimed invention, it may not be used in an obviousness rejection under 35 U.S.C. 103. However, there is no analogous art requirement for a reference being applied in an anticipation rejection under 35 U.S.C. 102. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
Examples of analogous art in the mechanical arts include: Stevenson v. Int'l Trade Comm., 612 F.2d 546, 550, 204 USPQ 276, 280 (CCPA 1979) ("In a simple mechanical invention a broad spectrum of prior art must be explored and it is reasonable to permit inquiry into other areas where one of ordinary skill in the art would be aware that similar problems exist."). See also In re Bigio, 381 F.3d 1320, 1325-26, 72 USPQ2d 1209, 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a specific bristle configuration. The Board affirmed the examiner’s rejection of the claims as being obvious in view of prior art patents disclosing toothbrushes. Id. at 1323, 72 USPQ2d at 1210. The appellant disputed that the patent references constituted analogous art. On appeal, the court upheld the Board’s interpretation of the claim term "hair brush" to encompass any brush that may be used for any bodily hair, including facial hair. Id. at 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the "field of endeavor test" for analogous art and determined that the references were within the field of the inventor’s endeavor and hence were analogous art because toothbrushes are structurally similar to small brushes for hair, and a toothbrush could be used to brush facial hair. Id. at 1326, 72 USPQ2d at 1212.
Therefore, the claimed “foot guard and footwear assembly” (Applicant is claiming a combination of a “foot guard” and a “footwear assembly”) encompasses any foot guard and shoe assembly that can be worn/used by a person (i.e. a person’s foot) and therefore since all of the art (Bird, Graham and Merola) includes footwear with a protective/guard it would satisfy the field of endeavor test for analogous art and therefore would be within the field of inventor’s endeavor and hence were analogous art because the footwear are structurally similar.
With regard to the “foot guards having an application in American football” and applicant’s arguments related to American Football, this language is not in the claims and therefore is moot and more over the prior art (such as the combination of the prior art as applied above) could inherently be used in other activities including American football.
Throughout applicant’s arguments there is comments with regard to American football and the prior art applied in the rejection, however, these arguments are moot inasmuch as none of the prior art applied is claiming footwear for American Football. As noted above the prior art footwear could inherently be used in other activities including American Football.
With regard to applicant’s field of endeavor, applicant invention is with regard to providing a footguard on an article of footwear and therefore this is generally was the direction of Examiner’s search for analogous prior art.
Applicant argues that the straps of Merola would actually lead away from the type of straps used in Applicant’s foot guard since the footguard is not exposed to motorcycle riding or high winds.
In response, the dual band arrangement taught by Merola replaces the strap (17) and buckle arrangement (18) taught by Bird so as to facilitate securing the impact pad in place and additional such an arrangement would facilitate attaching to a shoe without laces. Moreover, if the foot guard and cleated shoe assembly as taught by the combination above was worn while encountering high winds this would provide a more secure attachment.
Applicant argues that PHOSITA would be unlikely to go search for protection from “injury due to objects dropped thereupon [the foot] (Graham) or “footwear upper protectors for cycle riders” (Merola).
In response, applicant is claiming a foot guard for a shoe assembly so this is exactly where the search should be directed (e.g. USPC 36 (Boots, Shoes, and Leggings /72R (Protectors).
Applicant provides a general argument that the office action fails to clearly articulate its reasons for rejection Applicant’s claims for obviousness.
In response, in each of the art combinations applied the examiner has provide motivation to combine.
Rejection #2 103: Siragusa in view of McClelland
Applicant argues (in summary) it would go against common sense for PHOSITA to consider a football protector for hockey players (Siragusa and McCLelland) or antislipping device for boot or shoes (Merola) as analogous art under the “relevant filed of endeavor test.” Applicant states their field of endeavor is directed to foot guards that have an application in American football.
In response there is no rejection of Siragusa in view of McClelland and Merola and therefore these arguments are moot.
There is a rejection of Siragusa in view of McClelland and as noted in applicant argument above these are both football protectors for hockey players and since both of these involve protectors on top of the footwear they would be in applicant’s field of endeavor inasmuch as the gist of applicant’s invention is a foot guard situated on top of an article of footwear. This is an example of where the examiner concentrated his search.
With regard to the “foot guards having an application in American football” and applicant’s arguments related to American Football, this language is not in the claims and therefore is moot and more over the prior art (such as the combination of the prior art as applied above) could inherently be used in other activities including American football.
Throughout applicant’s arguments there is comments with regard to American football and the prior art applied in the rejection, however, these arguments are moot inasmuch as none of the prior art applied is claiming footwear for American Football. As noted above the prior art footwear could inherently be used in other activities including American Football.
With regard to applicant’s field of endeavor, applicant invention is with regard to providing a footguard on an article of footwear and therefore this is generally was the direction of Examiner’s search for analogous prior art.
Applicant provides a general argument that the office action fails to clearly articulate its reasons for rejection Applicant’s claims for obviousness.
In response, in each of the art combinations applied the examiner has provide motivation to combine the references.
Rejection #4 103: further in view of Adams
Applicant argues that the “saddle or shield for footwear” is not analogous art inasmuch as it fails the “relevant field of endeavor test”.
In response, since the footwear saddle/shield involve protectors on top of the footwear they would be in applicant’s field of endeavor inasmuch as the gist of applicant’s invention is a foot guard situated on top of an article of footwear. This is an example of where the examiner concentrated his search.
Rejection #5 103: Bird in view of Graham and Dessau
Applicant argues that these references are not analogous art.
In response, since all of the reference deal with protectors on footwear then they are within applicant’s field of endeavor.
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 Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 5712724888. 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 Examiner, Art Unit 3732