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 .
This is in response to Applicant’s amendment in which claims 1, 22, 23, and 31 have been amended, claims 3 and 5 have been canceled, claims 1-2, 6-26, 28-29, and 31 remain pending, and claims 13-15 and 28-29 are withdrawn from consideration.
Claim Objections
Claims 21 and 31 are objected to because of the following informalities:
Claim 21 recites the limitations “a plurality of ribs” in lines 1-2. It appears that these are the same as the “series of interconnected ribs” previously recited in claim 16. The claim limitations should use consistent terminology, and clearly show antecedent basis.
Claim 31 recites the limitation “central portion of base” in line 11. It appears that this limitation should read --central portion of the base--.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 6-12, 16-26, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,638,810. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1-2, 6-12, 16-26, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-11 of U.S. Patent No. 10,973,279. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claims 1-2, 6-12, 16-26, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,918,071. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed structure of the present invention may be wholly derived from the claimed subject matter of the patent.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 7-12, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beers et al. (US 2018/0110292), herein Beers.
Regarding claim 1, Beers discloses a rapid-entry shoe comprising: a base (2632); an upper (38) coupled to the base and including a rear portion, a forward portion, a medial portion, and a lateral portion, the rear portion including a lower portion and an upper portion (Fig. 61), the upper defining a shoe opening (39); and a heel portion (2710) positioned at the rear portion and including a compressible structure (2790) and a stabilizer (2714) that is separate and coupled to the compressible structure, the heel portion being moveable between an open position (Fig. 62A) and a closed position (Fig. 62B), wherein the shoe opening is expanded when the heel portion is in the open position, wherein, when a downward force is applied to the heel portion, the heel portion is configured to transition toward the open position and the compressible structure is configured to compress downward toward a compressed configuration, wherein the compressible structure is configured to bias the heel portion toward the closed position, wherein the compressible structure is positioned at the rear portion of the upper and is defined at least partially by a plurality of linear segments ( side portions of 2792, which have linear upper and lower edges; Fig. 64) interconnected by curved segments (rear portions of 2792 which curve around the rear of the shoe) at which adjacent linear segments converge, wherein the compressible structure extends from the lower portion of the rear portion of the upper toward the upper portion of the rear portion of the upper, wherein the stabilizer extends from the base at the medial side portion to the base at the lateral side portion across at least a portion of the rear portion of the upper, wherein the stabilizer is configured to limit inward deflection or buckling of the heel portion (paragraphs 0233-0243; Fig. 61-67).
Regarding claim 2, Beers discloses that the stabilizer extends across the rear portion of the upper at a position above the compressible structure (Fig. 62A).
Regarding claim 7, Beers discloses that the stabilizer is coupled to the upper (Fig. 61).
Regarding claim 8, Beers discloses that the stabilizer includes a stiff material (paragraphs 0238, 0240).
Regarding claim 9, Beers discloses that the compressible structure includes a material that is capable of being reversibly compressed such that the compressible structure recoils back up after the downward force is no longer being applied (paragraph 0236).
Regarding claim 10, Beers discloses that the compressible structure is made from one of a polymer material, a metallic material, or a composite material (paragraph 0236).
Regarding claim 11, Beers discloses that the compressible structure extends continuously from the base portion to the stabilizer portion along the rear portion of the upper such that the compressible structure is coupled to the base at a rearwardmost portion of the heel portion (Fig. 61).
Regarding claim 12, Beers discloses that the compressible structure defines continuous shape extending from the base upward at a rearwardmost portion of the heel portion, wherein the shape includes a zig-zag (Fig. 67; wherein the protrusions 2792A may extend from the slats in a zig-zag shape).
Regarding claim 31, Beers discloses a rapid-entry shoe comprising: a base (2622); an upper (1738) coupled to the base and including a rear portion, a forward portion, a medial portion, and a lateral portion, the rear portion including a lower portion and an upper portion, the upper defining a shoe opening (Fig. 42); and a heel portion (3010) including a collapsible structure and a flange (topmost slat 2781), the heel portion being moveable between a closed position and an open position, wherein the shoe opening is expanded when the heel portion is in the open position, wherein the collapsible structure is coupled to the base portion and the rear portion of the upper and is defined by a plurality of interconnected ribs (2781, 3085, 3083), the collapsible structure extending from a central portion of the base at the rear portion of the upper toward a medial side of the rapid-entry shoe and toward a lateral side of the rapid entry shoe, wherein the flange is coupled to and extends above a top edge of the collapsible structure, wherein the flange is coupled to the collapsible structure and includes a stiff material such that the stabilizer provides stiffness (paragraphs 0170, 0177), and wherein the heel portion is configured to collapse toward the open position when a downward force is applied thereto and bias back toward the closed position in an absence of the downward force (paragraphs 0252; Fig. 73).
Claim(s) 1-2 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardimon (US 2,736,110).
Regarding claim 1, Hardimon discloses a rapid-entry shoe comprising: a base (sole, as seen in Fig. 1, 5); an upper (12, 52) coupled to the base and including a rear portion, a forward portion, a medial portion, and a lateral portion, the rear portion including a lower portion and an upper portion, the upper defining a shoe opening; and a heel portion positioned at the rear portion and including a compressible structure (38) and a stabilizer (26, 32, 34) that is separate from and coupled to the compressible structure, the heel portion being moveable between an open position (Fig. 3) and a closed position (Fig. 5), wherein the shoe opening is expanded when the heel portion is in the open position, wherein, when a downward force is applied to the heel portion, the heel portion is configured to transition toward the open position and the compressible structure is configured to compress downward toward a compressed configuration, wherein the compressible structure is configured to bias the heel portion toward the closed position, wherein the compressible structure is positioned at the rear portion of the upper and is defined at least partially by a plurality of linear segments (as seen in Fig. 10 the spring 38 has at least a lower linear segment 40 extending horizontally and an upper linear segment 42 extending diagonally) interconnected by curved segments (curved portion connecting 40 and 42; Fig. 10) at which the adjacent linear segments converge, wherein the compressible structure extends from the lower portion of the rear portion of the upper toward the upper portion of the rear portion of the upper, wherein the stabilizer extends from the base at the medial side portion to the base at the lateral side portion across at least a portion of the rear portion of the upper, wherein the stabilizer is configured to limit inward deflection or buckling of the heel portion (column 2, lines 5-53; Fig. 1-5, 9, 10).
Regarding claim 2, Hardimon discloses that the stabilizer extends across the rear portion of the upper at a position above the compressible structure (Fig. 5).
Regarding claim 6, Hardimon discloses that the stabilizer includes a lateral stabilizer and a medial stabilizer that are separate from each other (arms 32; Fig. 8).
Regarding claim 7, Hardimon discloses that the stabilizer is coupled to the upper (Fig. 5).
Regarding claim 8, Hardimon discloses that the stabilizer includes a stiff material (column 2, lines 22-23).
Regarding claim 9, Hardimon discloses that the compressible structure includes a material that is capable of being reversibly compressed such that the compressible structure recoils back up after the downward force is no longer being applied (column 2, lines 60-61).
Allowable Subject Matter
Claims 16-26 are free of art rejections but are subject to a double patenting rejection.
Response to Arguments
Applicant's arguments filed 07/16/2025 have been fully considered but they are not persuasive.
Applicant argues that the subject matter amended into claim 1 differentiates over Beers and Hardimon for including limitations (the compressible structure defined by a plurality of linear segments interconnected by curved segments at which the adjacent linear segments converge) which are similar to the allowable subject matter in claim 16. However, the added limitations of claim 1 do not include all of the limitations of claim 16: claim 1 lacks any limitations regarding the compressible structure being defined by a series of interconnected ribs.
Applicant’s arguments with respect to claim(s) 31 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732