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 were received on 4/10/2026. These drawings are approved
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 fails to further define the claimed shoe system inasmuch as it is directed to the “drawstring” which has only previously only functionally recited in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 1-14 are 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.
In claim 1, line 2, “top portion” lacks proper antecedent basis and is therefore unclear and indefinite.
In claim 1, line 5, “the top end” lacks proper antecedent basis and is therefore unclear and indefinite.
In claim 1, lines 5-6, the phrase “the bottom end” lacks proper antecedent basis and is therefore unclear and indefinite.
In claim 3, the phrase “all open regions” lack proper antecedent basis and therefore is unclear and indefinite.
Regarding claim 6, it is not clear how this claim further limits the claims system inasmuch as claim 6 appears to be further defining the “drawstring” which has only been previously functionally recited in claim 1.
In claim 11, line 2, “top portion” lacks proper antecedent basis and is therefore unclear and indefinite.
In claim 11, lines 2-3, the phrase “a cinch groove at the heel that is at least partially overhung” is unclear and indefinite since it is not clear what structure this would encompass. Is it the groove or the heel that is partially overhung? And from what is it being partially overhung.
In claims 12 and 13, the phrase “the detachable sole attachments” lacks proper antecedent basis since previously in claim 11 only “one or more detachable sole attachments” has been recited. Therefore, it is not clear if applicant is claiming one or more than one attachments.
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), and a cinch groove (recess 16); 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)). With regard to the language “when a drawstring at the bottom end of the detachable shroud is pulled, twisted or tightened”, this language is functional and therefore the drawstring has not been positively recited and the shoe system as recited by Mascotte has all the structure as claimed and is inherently capable of having the detachable shroud cinched at the cinch groove in the shoe when a drawstring at the bottom end of the detachable shroud is pulled, twisted or tightened.
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, it doesn’t further define the claims shoe system.
Claim(s) 11-13, as understood, 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; plus plurality of openings 48); a heel (insole 16 with vertical strips 17,18), and a cinch groove at the heel (e.g. recess 18 represents the groove in the heel) that is at least partially overhung (see figure 4 showing the heel and the cinch groove of Bauer extending outward from the side portion of the shoe upper and therefore are overhung as claimed); and
one or more detachable sole attachments (outersole 26) that attach to one or more recesses (grooves 22 which receive protrusions 36) on a bottom of the shoe.
Regarding claim 12, the multi-functional shoe system of claim 11, wherein the detachable sole attachments include one or more protrusions (36, 36) 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.
Claim 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bauer ‘650.
Inasmuch, as if applicant is claiming more than one detachable sole attachments (claims 12 recites “the detachable sole attachments” but only previously recites “one or more” and therefore the scope of the claim is not clear), the examiner takes official notice that it is old and conventional in the art to have plural sole attachments (e.g. two sole attachments, one over the heel region of the sole and one over the forefoot region of the shoe). 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 (see the rejection above for details) with the one detachable sole attachments having two detachable sole attachments provide separate attachment for the heel and the forefoot regions of the shoe.
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.
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mascotte ‘491 in view of US 2007/0130797 (Seamans).
Mascotte teaches a shoe system as claimed (see the rejection above for details) except for the shoe comprising an open heel region with a back strap. Seamans teaches a shoe (100) comprising an open heel region with a back strap (120). 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 Mascotte to substitute the shoe with a shoe having an open heel region and back strap, as taught by Seamans, to provide a different style of shoe, one that is more casual.
Allowable Subject Matter
Claims 7-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, by the addition of suitable specific language, and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 4/10/2026 have been fully considered but they are not persuasive.
Applicant argues that Mascotte covering member (18) does not have a drawstring at the bottom end.
In response, as noted in above, the drawstring is not being positively recited but is only functionally recited. See above for further details.
Applicant argues that the recess (18) of Bauer is not a “cinch groove” because the recess is half of a snap-fit bead and recess locking mechanism.
In response, just because the recess is half of a locking mechanism doesn’t negate the fact that the recess (18) has the same structure as the claimed “groove” and therefore teaches the limitation as claimed.
Applicant argues the grooves (22) on the bottom are not recesses as claimed because the grooves are part of a tongue and groove interlocking features between abutting surface.
In response, just because the groove is part of a tongue and groove interlocking features between abutting surface doesn’t negate the fact that the groove (22) has the same structure as the claimed “one or more recesses on a bottom of the shoe” and therefore teaches the limitation as claimed.
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.
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
Prosecution Insights