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 .
Drawings
The drawings are objected to because they are black and white photographs and/or grayscale drawings. Black and white photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. Photographs or photomicrograph printed on sensitized paper are acceptable as drawings, in lieu of India ink drawings, as are photographic images submitted via EFS-Web, to illustrate inventions which are incapable of being accurately or adequately depicted by India ink drawings, e.g., electrophoresis gels, blots, (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, metallurgical microstructures, textile fabrics, grain structures and, in a design patent application, ornamental effects. The photographs or photomicrographs must show the invention more clearly than they can be done by India ink drawings and otherwise comply with the rules concerning such drawings. Black and white photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). There is no requirement for a petition or petition fee, and only one set of photographs is required. See 37 CFR 1.84(b)(1). To be acceptable, such photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. If several photographs are used to make one sheet of drawings, the photographs must be contained on a single sheet.
On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: In claims 1 and 11, “cinch groove extends around an entirety of the heel”, and in claims 15-16, “the cinch groove has an oval shape with a u-shaped cross-sectional profile” is lacking support and antecedent basis for this terminology. However, both of the phrases appear to be new matter (see the rejection below). The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1 and 11, “cinch groove extends around an entirety of the heel”, and in claims 15-16, “the cinch groove has an oval shape with a u-shaped cross-sectional profile” are new matter. Applicant argues there is support in figures 1-5 and 7 but after reviewing these figures and the specification there is no support. The cinch groove (101) is only shown on the sides and the back of the heel and not the front of the heel. Therefore, the language “extends around an entirety of the heel” is not accurate. With respect to the groove being U-shaped there is not support for this in the disclosure. From the figures, the examiner was assuming the groove came to more of a point, e.g. like a V-shape but this is not even clear. Therefore, since there is at least a couple of possibilities (U-shaped and V-shaped) this would be evidence that this is also new matter.
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 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 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.
Claim(s) 1 and 3-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5337491 (Mascotte).
Regarding claims 1 and 3-6, Mascotte discloses a multi-functional shoe system, comprising: a shoe (10) having one or more openings on its top portion (see opening on the top portion for the user’s foot entry), a heel (sole 12), and a cinch groove (recess 16); wherein the cinch groove extends around an entirety of the heel (see col. 2, lines 10-13); a detachable shroud (covering member 18) that covers at least a portion of the shoe; the detachable shroud being open at the top end and at least partially open at the bottom end (member 18 has an opening at top and bottom as claimed); and the opening of the detachable shroud at the bottom end being configured to be cinched at the cinch groove in the shoe (O-ring member 22 is cinched in the groove (16)).
Regarding claim 3, at least see figures 1-2.
Regarding claims 4-5, the Velcro strap member (26) has an end which is detachable from the patch (28) on the shroud (covering member (18)). The strap member (26) inherently functions as a handle.
Regarding claim 6, the O-ring member (28) is string-like shaped and therefore is inherently a drawstring.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4267650 (Bauer).
Regarding claims 11-13, Bauer disclosed a multi-functional shoe system (i.e. shoe with removable outsole), comprising: a shoe (sports shoe) having openings on its top portion (opening for foot entry); a heel (insole 16 with vertical strips 17,18)), and a cinch groove (e.g. recess 18); wherein the cinch groove extends around an entirety of the heel (see figure 2 showing the recess 18 extend around the entirety of the insole 16); and one or more detachable sole attachments (outersole 26) that attach to the shoe.
Regarding claim 12. The multi-functional shoe system of claim 11, wherein the detachable sole attachments attach to one or more recesses in the shoe (see grooves 22).
Regarding claim 13. The multi-functional shoe system of claim 11, wherein the detachable sole attachments include recesses (recess above or below beads 30) that attach to one or more protrusions (projection above or below recesses 20) in the shoe.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bauer ‘650 in view of US 2002/0133974 (Bartolini).
Bauer teaches a shoe system as claimed (see the rejection above for details) except for the detachable sole attachment having one or more straps. Bartolini teaches a detachable sole (anti ice/snow bottom) having straps (3). 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 shoe system as taught by Bauer with the detachable sole having one or more straps, as taught by Bartolini, to further secure the detachable sole to the shoe when the user encounters very rugged terrain and further prevent the sole from falling off accidentally.
Response to Arguments
Applicant's arguments filed 9/18/2025 have been fully considered but they are not persuasive.
Applicant argues the cinch groove which extends around an entirety of the heel is not taught by Mascotte, Bauer, Mayhew and Brockman.
In response, see the Mascotte and Bauer rejection above wherein these features/limitations are taught.
With regard to Mayhew and Brockman the cinch groove in these reference do not extend around an entirety of the heel and therefore have been withdrawn. However, as noted above such limitations is new matter. If limitations removed then this art could be reapplied.
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.
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.
With regard to the shroud having only an opening for the heel, there is plenty of prior art that teach such structure, e.g. US 2012/0324766, US 2447284, US 2013/0263468, US 3034231, US 3087760 and US 9635900, among others.
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 on Monday-Thursday 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. 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 Patent Examiner
Art Unit 3732
Tel: (571) 272-4556