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 .
Response to Amendment
The amendments filed with the written response received on June 30, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1-6, 9, 11 and 12 have been amended, and claims 10 and 13-18 are withdrawn from further consideration. Accordingly, claims 1-18 are pending in this application, with an action on the merits to follow regarding claims 1-9, 11 and 12.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 12: “shoe including the upper” should recite “shoe adapted to include the upper”
See 35 U.S.C. 112(b) rejection in a subsequent section for further information
Claim 1, line 19: “the respective linear members” should recite “the respective at least one linear member”
Claim 1, line 22: the phrase “the upper is configured such that” should be added before “when the exposed second portion”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1 (and claims 2-9, 11 and 12 at least due to dependency from claim 1) 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.
Regarding claim 1, Applicant recites “the linear members are each adapted to extend across an instep portion of a shoe including the upper”. The preamble of the claims is directed to just “an upper”, and this claim language appears to indicate that the upper is included by a shoe, which renders the metes and bounds unclear as to whether a shoe is required, since a shoe is recited as including the upper. Correction is required. Examiner suggests (as mentioned above in the Claim Objection section) “the linear members are each adapted to extend across an instep portion of a shoe adapted to include the upper”, as best as can be understood.
Further regarding claim 1, Applicant recites “when the exposed second portion of the at least one of the linear members is pulled, tension is applied to the other linear members, the base member, and the upper”. This language appears to differentiate the other linear members, the base member and the upper from one another, which is confusing because the preamble of the claim is “an upper”, which would be understood to include all the structural features in the body of the claim, which includes the other linear members and the base member. Correction is required. The language will be interpreted as best as can be understood when applying any prior art thereagainst.
Regarding claim 12, Applicant recites the limitation “the gap” which lacks antecedent basis (i.e. claim 6, from which claim 12 depends, previously positively recited “a gap”, but this limitation was deleted from claim 6 in the amendment). Correction is required.
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 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.
Claims 1-9, 11 and 12, as best as can be understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sokolowski et al. (hereinafter “Sokolowski”) (US 2008/0110049).
Regarding independent claim 1, Sokolowski discloses an upper (#30; Figs. 1-7 embodiment in Sokolowski) comprising: a cloth base member including at least one layer (medial textile element #50, lateral textile element #40 and central textile element #60 form at least one layer for the upper as a base member; a textile is a cloth”, absent further structural distinguishing limitations in the claim as to what constitutes the cloth); and a plurality of linear members disposed independently of each other (lace elements #33 are a plurality of linear members that are disposed independent of one another), wherein each of the linear members includes: a first portion disposed in at least one end portion of the linear member along a length direction and fixed to the at least one layer (see annotated Fig. 4B below, which identifies a representative lace element #33 (i.e. linear member) as having a first portion disposed in two end portions along a length direction of the lace element; lace element #33 is fixed to the layer (#50/40) through channels #44/54 in the base layer; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); and a second portion disposed in a portion of the linear member other than the first portion and not directly fixed to the at least one layer (see annotated Fig. 4B below; the lace elements #33 are not rigidly/directly affixed to the layer (i.e. they sit within channels #44/54 formed in the layer), second portion is in a portion of the lace element that is not the first portion, as identified), a part or all of the second portion of at least one of the linear members is exposed to an outside of the base member (loops #35 are exposed; Examiner notes that the term "part" is very broad and merely means "a portion, division, piece, or segment of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), the linear members are each adapted to extend across an instep portion of a shoe including the upper, from one of a medial foot side and a lateral foot side of the upper to the other of the medial foot side and the lateral foot side of the upper (lace elements #33 have a part that extends across the instep portion from the medial side #50 to the lateral side #40, wherein the extension across the instep is beneath the foot-receiving cavity of the upper and above the sole #20), the at least one end portion of each of the plurality of linear members includes two end portions (as shown in annotated Fig. 4B below, there are two end portions identified for each of the lace elements #33 (i.e. linear members)), the first portion of at least one of the linear members is disposed in at least both end portions of the respective linear members (as shown in annotated Fig. 4B below, the first portion exists in both of the identified end portions), the second portion of at least one of the linear members is exposed to the outside of the base member (as shown in annotated Fig. 4B below, the loop part of the second portion is exposed to the exterior of the footwear), and when the exposed second portion of the at least one of the linear members is pulled, tension is applied to the other linear members, the base member, and the upper (the upper is at least capable of performing this function; if a force acts on the central textile element #60 directed from inside of the foot-receiving cavity outwardly towards the exterior of the shoe (such as a user’s foot being inserted which is larger than the at-rest size of the cavity), then at least some amount of tension would be simultaneously applied to all of the lace elements #33 and the base member (both being part of the upper)).
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Regarding claim 2, Sokolowski discloses that a part of the second portion of each of the linear members is exposed to the outside of the base member, and the exposed parts of the second portions are proximal to each other (see Fig. 3; loops #35 (part of the second portions) are exposed to the outside of the base member of the upper (i.e. medial and lateral textiles #50/40) and are “proximal” to one another at least to some degree, absent further distinguishing limitations in the claim regarding what constitutes “proximal”).
Regarding claim 3, Sokolowski discloses that, in a planar view, a perpendicular line along a front-rear direction of the upper passing through the center of a foot width direction of the upper serves as a shoe center axis, the linear members are disposed symmetrically with respect to the shoe center axis (see Fig. 3).
Regarding claim 4, Sokolowski discloses that parts of the second portions of the linear members other than the exposed parts are dispersed from each other (see Figs. 1-3; all lace elements #33 have the above-identified second portions (see annotated Fig. 4B above), which include unexposed “parts” beneath channel material #44/54 that are dispersed from one another, in that they are not joined together directly).
Regarding claim 5, Sokolowski discloses that the at least one layer is one layer, and the second portions of the linear members are exposed on a surface of the one layer (there is one layer present (either of #40 or #50 is one layer) and the loops #35 of the lace elements #33 are exposed on a surface thereof; Examiner notes that the claim does not prohibit additional layers to the “one layer” from being present in the “at least one layer” giving importance to the open-ended “comprising” transitional phrase used in independent claim 1).
Regarding claim 6, Sokolowski discloses that the at least one layer includes a first layer and a second layer spaced from the first layer (medial channels #54 and lateral channels #44 are defined by two layers that are formed via flat knitting (¶ 0010, 0035, 0043, 0044, 0048); the space within the two layers that define the channels is a spacing), and the second portions of the linear members are positioned between the first layer and the second layer (see annotated Fig. 4B above, which shows that at least part of the second portions are positioned within the channels, which is between the first and second layers).
Regarding claim 7, Sokolowski discloses that the second portions of the linear members each include a linear portion extending linearly (the identified second portions of the lace elements #33 (see Fig. 4B above) include at least one arbitrary linear portion that extends linearly; see annotated partial view of Fig. 3 below).
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Regarding claim 8, Sokolowski discloses that a curved path extending in a curved shape is disposed between the first layer and the second layer, and the second portions of the linear members each include a curved portion passing through the curved path (see annotated Fig. 4B above; each lace element has a curved shape from the perspective when viewing the cross-section of the shoe upper).
Regarding claim 9, Sokolowski discloses that a hole is disposed in at least one of the first layer and the second layer to expose the second portion of at least one of the linear members to an outside of the at least one layer (the top exit point of the channels #54/44 represents a hole in at least one of the first and second layers; the loops #35 are exposed through the top of the channels).
Regarding claim 11, Sokolowski discloses that the hole is adapted to be disposed in the instep portion of the shoe (see Fig. 3, which shows the loops (and their accompanying top holes of their channels) in an arbitrary instep portion of the shoe).
Regarding claim 12, Sokolowski discloses that an opening communicating with the gap between the first layer and the second layer is disposed in an outer edge of the base member to expose the second portion of at least one of the linear members to an outside of the at least one layer (the top exit point of the channels #54/44 represents an opening in between the first and second layers in an outer edge of the base member; the loops #35 are exposed through the openings).
Response to Arguments
Applicant's arguments filed with their June 30, 2026 response have been fully considered but they are not persuasive.
Applicant argues that Sokolowski’s lace elements 33 do not extend across an instep portion of its upper from the lateral to the medial side, and that they instead extend only partly on one of the lateral and medial sides of its upper, further stating that, due to this and other recited features, pulling on one of the linear members 21 results in tension being applied as claimed to the other linear members 21, base member 20 and upper 2. Examiner notes that while the claim has been amended to recite “the linear members are each adapted to extend across an instep portion of a shoe including the upper, from one of a medial foot side and a lateral foot side of the upper to the other of the medial foot side and the lateral foot side of the upper” (emphasis added), the language is still broad enough to be anticipated by Sokolowski because Sokolowski’s lace elements do extend across the instep portion of the shoe beneath the foot receiving cavity and above the sole (i.e. central section #36 belongs to the lace elements #33 (¶ 0039 and 0055 of Sokolowski)). Also, the functional language of “when the exposed second portion of the at least one of the linear members is pulled, tension is applied to the other linear members, the base member, and the upper”, as best as can be understood, is met since Sokolowski’s overall structure enables a simultaneous tension to be applied to all of the lace elements (see the example given in the 35 U.S.C. 102(a)(1) updated grounds of rejection above).
Accordingly, the claims are still deemed broad enough to be anticipated by Sokolowski, absent further distinguishing structural limitations being incorporated therein.
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 JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732
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