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 1-6 and 10-11 have been amended, and claims 1-12 remain pending.
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) 1-3, 7, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Forney (US 2016/0263468).
Regarding claim 1, Forney discloses a ski boot comprising a base sole (1) intended to receive a shoe of a skier and a connecting device (7, 9, 41) to the skier’s lower leg, the connecting device comprising a fixing member (4, 5) intended to be attached to the skier’s leg, wherein the ski boot comprises: (a) a lever part (3) fixed by a pivot connection (2) to the base sole, the connecting device being mounted on the lever part and being arranged so that the fixing member is movable in translation and/or rotation opposite the lever part; (b) a connecting rod (6) connected at a first point to the lever part by a first connection and connected at a second point, by a second connection (41) to the sole, the first connection being a pivot connection and the second connection being arranged to allow movement of the second point with respect to the base sole; and (c) a deformable member (spring within damper 6) arranged to exert a force against a movement of the second point with respect to a rest position of the second point (paragraph 0033, 0035, 0042; Fig. 1-2).
Regarding claim 2, Forney discloses that the connection and/or the deformable member is arranged to allow rotation of the lever part between an angle of at least 15 degrees and at least -30 degrees on either side of the rest position (Fig. 1b, 1c).
Regarding claim 3, Forney discloses that the base sole comprises a slide in which the second point of the connecting rod is slidably mounted (Fig. 1).
Regarding claim 7, Forney discloses that the connecting device comprises a holding member (7, 9, 14, 41) of the fixing member, the holding member being connected by a slide connection (paragraph 0042; Fig. 1, 1d).
Regarding claim 8, Forney discloses that the fixing member is connected to the holding member by a pivot connection.
Claim(s) 1-4, 7-9, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gertsch et al. (US 3,753,571), herein Gertsch.
Regarding claim 1, Gertsch discloses a ski boot comprising a base sole (5, 7) intended to receive a shoe of a skier and a connecting device (18, 19, 20) to the skier’s lower leg, the connecting device comprising a fixing member (23) intended to be attached to the skier’s leg, wherein the ski boot comprises: (a) a lever part (15) fixed by a pivot connection to the base sole, the connecting device being mounted on the lever part and being arranged so that the fixing member is movable in translation and/or rotation opposite the lever part; (b) a connecting rod (12, 14) connected at a first point to the lever part by a first connection and connected at a second point, by a second connection (11) to the sole, the first connection being a pivot connection and the second connection being arranged to allow movement of the second point with respect to the base sole (wherein rod members 12 may located within different bores 11 along the length of sole); and (c) a deformable member (13) arranged to exert a force against a movement of the second point with respect to a rest position of the second point (column 3, line 35-column 4, line 64; Fig. 1, 2).
Regarding claim 2, Gertsch discloses that the connection and/or the deformable member is arranged to allow rotation of the lever part between an angle of at least 15 degrees and at least -30 degrees on either side of the rest position (Fig. 1).
Regarding claim 3, Gertsch discloses that the base sole comprises a slide in which the second point of the connecting rod is slidably mounted (wherein rod members 12 may slide within bores 11).
Regarding claim 4, Gertsch discloses that the connecting rod comprises a frame comprising two uprights arranged on either side of the lever part and connected together by a transverse spacer passing in the slide (Fig. 2).
Regarding claim 7, Gertsch discloses that the connecting device comprises a holding member (19, 20, 21) of the fixing member, the holding member being connected by a slide connection (wherein the holding member can slide within the holes of the lever part) (column 4, lines 8-19; Fig. 2).
Regarding claim 8, Gertsch discloses that the fixing member is connected to the holding member by a pivot connection.
Regarding claims 9 and 12, Gertsch discloses that the holding member comprises a hoop provided with two opposing tabs (18), the fixing member being fixed to each of the tabs, and in which the holding member comprises a member (19, 20, 21) for adjusting the spacing of the tabs.
Claim Rejections - 35 USC § 103
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Forney, as applied to claim 1, in view of Kunstadt (US 5,269,079).
Forney does not disclose a gaiter. Kunstadt teaches a ski boot having a gaiter (22) fixed to a sole. The gaiter provides waterproofing and insulation to the ski boot (column 3, line 65-column 4, line 19; Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a gaiter, as taught by Kunstadt, to the boot of Forney in order to provide waterproofing and insulation to the boot, improving the comfort of the wearer in cold and wet conditions.
Allowable Subject Matter
Claims 5, 6, and 11 are 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 09/18/2025 have been fully considered but they are not persuasive.
Applicant argues that the fixing member of Forney is fixed during use, and that the height and canting adjustment are for initial setup, and that the claimed invention allows for movement to prevent friction and improve comfort. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the fixing member being movable in use, allowing for movement to prevent friction and improve comfort) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims merely recite that “the fixing member is movable in translation and/or rotation opposite the lever part,” which Forney clearly discloses.
In response to applicant's argument that the claimed invention allows for movement to prevent friction and improve comfort, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that the damper of Forney is connected via pivots, and do not translate along the lever or the sole, and therefore Forney fails to teach a second connection that allows for the claimed translational movement of the second point. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., translational movement of the second point) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 recites “the second connection being arranged to allow movement of the second point with respect to the other of the base sole and the lever piece.” This does not require translational movement, but merely ‘movement.’
More importantly, Forney does disclose translational movement of the second connection/point (41). As clearly seen in Fig. 1b and 1c, the second connection can move in slidable translational movement with respect to the base sole through the illustrated groove (wherein connection 41 is at the right end of the groove in Fig. 1b, and at the left end of the groove in Fig. 1c).
Applicant argues that the Gertsch connection of the second connection does not provide for a sliding or translational movement of a connection point during use. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., sliding or translational movement of a connection point during use) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 recites “the second connection being arranged to allow movement of the second point with respect to the other of the base sole and the lever piece.” This does not require sliding or translational movement, but merely ‘movement.’ It further does not require movement during use/skiing.
Applicant argues that there “is no teaching, suggestion, or motivation in the cited art to undertake the wholesale redesign of Forney’s fixed connections into the novel sliding system of the present application, and then to add a gaiter.” However, the above rejections do not purport any redesign of the connections of Forney. As discussed above, Forney discloses the invention as claimed, except for a gaiter. Kunstadt merely teaches providing a gaiter in order to provide waterproofing and insulation to the boot, which does not require any redesign or change to the connections of Forney.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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.
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.
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 at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
Prosecution Insights