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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-12) and Species C (Figs 5-18) in the reply filed on 11/07/2025 is acknowledged.
Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/07/2025.
Further, although the applicant indicated that claims 1-12 are all directed towards Species C in their response, the examiner has noted that claims 6-8 are, in fact, directed to unelected species. Claims 6-8 detail nailing or gluing the lateral walls. The elected species does not include adhesive on the lateral walls, rather there is adhesive on the cuffs, to which the lateral walls attach via pin. The elected species may be said to include holes in the lateral walls (those that define the passageways); however, the holes do not allow for use to nail the walls to the horse hoof, as they are filled by the pin and oriented relatively perpendicular to the hoof. Rather, these claims are clearly associated with Figures 1-4 in the specification. This being said, claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/07/2025.
In regard to the requirement of election between Species A-C in the restriction requirement dated 03/17/2025, based on the state of the art uncovered during examination on the merits, the provisional election of species portion of the restriction requirement has been reconsidered and is hereby modified. Particularly, the state of the art has revealed that Species B is not patentably distinct from Species A, and, as such, species B is hereby incorporated into species A. As it stands, the present species exist:
Species A (Figs 1-4)
Species C – elected – (Figs 5-18)
Given the applicant has provisionally elected Species C, and the election requirement between Species A and C remains, no claims are rejoined at this time.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/08/2025 is being considered in part by the examiner.
37 CFR 1.98(a)(2) requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Foreign patent documents No. 6, 8, and 15 have been struck-through and not considered, as legible copies of the patents with translation have not been found in the file wrapper.
37 CFR 1.98 (b)(4) requires that each foreign patent or published foreign patent application be identified by the publication date indicated on the patent or published application. The IDS lists EM 0150223250001 (foreign reference no. 11) as having a publication date of 2012-02-05, however this is inconsistent with the document provided, which, seems to provide the publication date as 05/25/2023 (which would disqualify the publication as prior art). Due to this inconsistency, this reference is struck-through and not considered.
The examiner notes that the following foreign patents/publications have been found in the file wrapper but have not been cited on the IDS, and are therefore not being considered: WO 95/22252, EP 2409565, DE 69939594, DE 3731905.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5: “wherein the lateral walls includes define a plurality of holes” should read –wherein the lateral walls includes a plurality of holes—or –wherein the lateral walls define a plurality of holes--.
Appropriate correction is required.
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.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “collar-shaped” in claim 10 is a relative term which renders the claim indefinite. The term “collar-shaped” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how the applicant is limiting their invention by using the term ‘collar-shaped’, must the periphery be closed/open? Circular? Must the platform have an interior opening? Have a flat portion in the back like in their drawings? The metes and the bounds of the claim is unclear.
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) 1-5 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ford (US 20140231101 A1), hereinafter referred to as Ford.
Regarding claim 1:
Ford discloses a shoe comprising:
a platform (horseshoe 12, Fig 1) having a proximal end (see annotated Fig 1 below), a distal end (see annotated Fig 1 below), an interior opening (open center 20, Fig 1) therebetween, and an outer circumference (periphery of horseshoe 12, Fig 1), wherein the platform is shaped to receive the sole of a horse hoof (see Fig 7);
the platform having a first lateral wall extending from the outer circumference, the first lateral wall having a distal cutout and a proximal cutout, and a second lateral wall extending from the outer circumference, the second lateral wall having a distal cutout and a proximal cutout (see annotated Fig 1 below), wherein the first and second lateral walls are configured for adhesion to a horse hoof wall (see Fig 7), and the cutouts permit growth and flexibility of a horse hoof (functional language: inherently capable of permitting growth and flexibility).
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Regarding claim 2:
Ford discloses the limitations of claim 1 above and further discloses wherein the platform and lateral walls are formed from urethane (¶0041).
Regarding claim 3:
Ford discloses the limitations of claim 1 above and further discloses wherein the platform and the lateral walls are integrally molded (¶0041).
Regarding claim 4:
Ford discloses the limitations of claim 1 above and further discloses wherein the platform and lateral walls are joined with a heat-welded union (under BRI, this is taught by integrally molding per ¶0041, given molding would require heat to weld the thermoplastic particles of each structure together; however, more importantly, this is a product-by-process claim, and the resulting structure of a heat-welded union would be substantially the same as that of integrally molding, so the limitation is taught – see MPEP 2113)
Regarding claim 5:
Ford discloses the limitations of claim 1 above and further discloses wherein the lateral walls includes define a plurality of holes (see annotated Fig 1 below).
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Regarding claim 9:
Ford discloses the limitations of claim 1 above and further discloses wherein the proximal end of the shoe is formed from a shaveable material (¶0041 – urethane, as the applicant’s invention).
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buchanan (US 20160044907), hereinafter referred to as Buchanan, as best understood in light of the 112(b) issues addressed above.
Regarding claim 10:
Buchanan discloses a shoe (overshoe 1, Fig 2) comprising:
a platform having a collar-shaped periphery (base plate 2, Fig 2), a proximal end (rear end portion - that closer to rear folding portion 6, Fig 2), and a distal end (front end portion – that opposite rear folding portion 6, Fig 2), wherein the platform is shaped to receive the sole and heel of a horse hoof (see Fig 1);
a lateral wall connected to a peripheral portion of the platform (see annotated Fig 1 below, and Fig 2 for connection) the lateral wall comprising a superior end and an inferior end opposite of the superior end, the inferior end being connected to the platform (see Fig 2), the superior end having a plurality of projections (see annotated Fig 2 below) defining a first passageway (passage through which securing member 24 passes, through loop formations 22);
a cuff having a plurality of sloped projections (see annotated Fig 2 below) defining a second passageway (passage through which securing member 24 passes, through loop formations 22), the cuff projections being interconnected with the lateral wall projections (by securing member 24, see Fig 1); and
a pin is inserted through the first and second passageways, thereby laterally interlocking the cuff and the lateral wall (elongate securing member 24, Fig 1).
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Claim(s) 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by over Stuebbe (DE 3406733 A1), hereinafter referred to as Stuebbe.
Regarding claim 11:
Stuebbe discloses a shoe (hoof shoe with fourth embodiment connection type, shown in Fig 6) comprising:
a platform (base of shoe, including plastic sole body 5) having a proximal end (rear edge of shoe), a distal end (front edge of shoe) and a skirt therebetween, the skirt forming a segmented arch and defining a void (per ¶0025, and as can be seen in the cross-sectional figures, the shoe base has a horseshoe shape; the skirt is considered the inner peripheral wall of the horseshoe shape, and the void is the space formed between the legs of the arch/horseshoe), wherein the platform is shaped to receive the sole and heel of a horse hoof (see hoof 1, Fig 2);
a first lateral wall having a proximal portion and a distal portion, the first lateral wall being connected to a peripheral portion of the platform (the first lateral wall is the portion of plastic sole body 5 which extends upwards per ¶0029, with tabs 26, Fig 6, on the left side/leg of the shoe; proximal and distal portions are the portions of the wall closer to the proximal/distal sides of the shoe, respectively), the first lateral wall comprising:
an elongate proximal cutout in the proximal portion and an elongate distal cutout in the distal portion (see annotated Fig 6 below), wherein the cutouts are configured to receive portions of a horse hoof and permit expansion and contraction of such a horse hoof (functional language, capable of functioning as such);
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a superior end and an inferior end opposite of the superior end, the inferior end being connected to the platform (see Figs 1 and 6; ¶0046), the superior end having a plurality of projections (projections are tabs 26, Fig 6, those on the left side) defining a first passageway (first passageway is route through holes in the tabs of the first lateral wall, through which cord 28 is threaded, Fig 6)
a second lateral wall having a proximal portion and a distal portion, the second lateral wall being connected to a peripheral portion of the platform (the second lateral wall is the portion of the plastic sole body 5 which extends upwards per ¶0029, with tabs 26, Fig 6, on the right side/leg of the shoe; proximal and distal portions are the portions of the wall closer to the proximal/distal sides of the shoe, respectively), the second lateral wall comprising:
an elongate proximal cutout in the proximal portion and an elongate proximal cutout in the distal portion (see annotated Fig 6 below), wherein the cutouts are configured to receive portions of a horse hoof and permit expansion and contraction of such a horse hoof (functional language, capable of functioning as such);
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a superior end and an inferior end opposite of the superior end, the inferior end being connected to the platform (see Figs 1 and 6; ¶0046), the superior end having a plurality of projections (projections are tabs 26, Fig 6, those on the right side) defining a second passageway (first passageway is route through holes in the tabs of the second lateral wall, through which cord 28 is threaded, Fig 6).
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 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Stuebbe, as applied to claim 11 above, as best understood in light of the 112(b) issues addressed above.
Regarding claim 10:
Stuebbe discloses a shoe (hoof shoe with fourth embodiment connection type, shown in Fig 6) comprising:
a platform having a collar-shaped periphery, a proximal end, and a distal end, wherein the platform is shaped to receive the sole and heel of a horse hoof (base of shoe, including plastic sole body 5, Fig 2; ¶0025 – horseshoe shape);
a lateral wall connected to a peripheral portion of the platform (portion of plastic sole body 5 which extends upward, per ¶0029, with tabs 26, Fig 6) the lateral wall comprising a superior end and an inferior end opposite of the superior end, the inferior end being connected to the platform (see Figs 2 and 6; ¶0046), the superior end having a plurality of projections (projections are tabs 26, Fig 6) defining a first passageway (passageway is route through holes in tabs, through which cord 28 is threaded, Fig 6);
a cuff having a plurality of sloped projections (see annotated Fig 6 below) defining a second passageway (passageway is route through holes in the projections, through which cord 28 is threaded, Fig 6), the cuff projections being interconnected with the lateral wall projections (see Fig 6); and
a cord is inserted through the first and second passageways, thereby laterally interlocking the cuff and the lateral wall (see cord 28, Fig 6).
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The elected connection embodiment of Stuebbe fails to specifically disclose a pin inserted through the first and second passageways.
However, Stuebbe also contemplates rods as an alternative securement method to a circumferential cord, in relation to another embodiment (¶0044).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided rods to connect the passageways of the cuff and walls of the elected embodiment, as opposed to a cord, as contemplated by Stuebbe, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to provide a more durable connection mechanism, less prone to breaking or being cut accidentally. Further, the equivalence of rods and a cord in their ability to fasten elements together is known in the art, as evidenced by Stuebbe, and the selection of any known equivalents would be within the level of ordinary skill in the art. Moreover, the simple substitution of a rod for a pin would have yielded the predictable results of continued fastening. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 12:
Stuebbe discloses the limitations of claim 11 above and further discloses that the shoe further comprises:
a first cuff (includes adhesive parts 27, Fig 6, on left side/leg of shoe) having a plurality of projections (see annotated Fig 6 below) defining a third passageway (third passageway is route through holes in the projections of the first cuff, through which cord 28 is threaded, Fig 6), the cuff projections interconnecting with the first lateral wall projections (see Fig 6);
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a second cuff (includes adhesive parts 27, Fig 6, on right side/leg of shoe) having a plurality of projections (see annotated Fig 6 below) defining a fourth passageway (fourth passageway is route through holes in the projections of the second cuff, through which cord 28 is threaded, Fig 6), the second cuff projections interconnecting with the second lateral wall projections (see Fig 6);
a cord removably inserted through the first, second, third, and fourth passageways, thereby interlocking the first cuff and the first lateral wall (¶0046).
Stuebbe fails to specifically disclose:
a first pin removably inserted through the first and third passageways, thereby interlocking the first cuff and the first lateral wall; and
a second pin removably inserted through the second and fourth passageways, thereby interlocking the second cuff and the second lateral wall.
However, Stuebbe also contemplates the use of rods as an alternative securement method to a circumferential cord, in relation to another embodiment (¶0044).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided rods to connect the passageways of the cuffs and walls of the elected embodiment, as opposed to a cord, as contemplated by Stuebbe, the result having a reasonable expectation of success. One would have been motivated to make such a modification in order to provide a more durable connection mechanism, less prone to breaking or being cut accidentally. Further, the equivalence of rods and a cord in their ability to fasten elements together is known in the art, as evidenced by Stuebbe, and the selection of any known equivalents would be within the level of ordinary skill in the art. Moreover, the simple substitution of a rod for a pin would have yielded the predictable results of continued fastening. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Those references cited on the attached 892 form, but not cited in the rejections above, exhibit similarities to the present invention, particularly Igrow (DE 102017115690 B3), Kratzig (US 1048180), Barry (US 1131815), Ogbin (US 0691482), and Pereira (ES 2724913 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOK V SCHMID whose telephone number is (571)270-0141. The examiner can normally be reached M-F 8:30-5:30ish.
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, Joshua Huson, can be reached on 571-270-5301. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.V.S./Examiner, Art Unit 3642
/JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642