DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election of Invention I (claims 1-13) and Species I (Figures 2-7) is acknowledged. Election was made without traverse in the reply filed December 29, 2025. Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) for being drawn to a nonelected invention.
Claim Objections
Claim 13 is objected to because of the following informalities: Claim 13, line 1 recites “wherein preset tightened state,” which should be amended to recite “wherein the preset tightened state” for purposes of proper antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Pub No. 2009/0272007 Beers et al. in view of US Pub No. 2013/0104429 Torres.
To claim 1, Beers discloses an article of footwear (100) (see all Figures; paras. 0078-0178), comprising:
an upper portion (102) including a lace (122) (para. 0086) to adjust fit of the upper portion against a foot (see for example Figures 1-13; paras. 0079-0092), the lace being adjustable between a plurality of positions based at least in part on manipulation of an effective length of the lace (see for example Figures 1-13; 0102-0105);
a lower portion (104) including a mid-sole and an out-sole (see Figures 1-3; para. 0081);
a motor (1230) configured to manipulate the effective length of the lace (see Figures 12-13; paras. 0115-0116); and
an electronic control unit (1650), operatively coupled to the motor (see Figures 16-17; paras. 0142-0143, 0156), configured to cause the motor to transition the lace between and among a plurality of preset positions (see for example Figures 17-21; paras. 0153-0161), the plurality of preset positions including a preset tightened state (see Figure 19; para. 0158; fully tightened configuration of lace 122), a preset loosened state (see Figure 17; para. 0152; fully loosened configuration of lace 122), and a plurality of discrete transitory states (see for example Figures 17-21; paras. 0153-0161; lace 122 is capable of being transitioned between a plurality of discrete transitory states to accommodate feet of different users).
Beers does not explicitly disclose an article of footwear wherein the electronic control unit is configured to cause the motor to transition the lace between and among a plurality of discrete transitory states that are predetermined discrete transitory states.
However, Torres teaches an article of footwear (10 or 36) (see all Figures; paras.0040-0072) comprising an electronic control unit (24) configured to cause a motor (M1-M4) to transition a lace (18 or 38) (para. 0017) between and among a plurality of preset positions including a plurality of predetermined discrete transitory states (paras. 0046-0067; article of footwear 10 or 36 is capable of transitioning lace 18 or 38 between and among a variety of different states that are preset by the user and stored by memory 24a based on desired fit characteristics of the user).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to configure the article of footwear of Beers to be capable of transitioning the lace between and among a plurality of predetermined discrete transitory states as taught by Torres because Torres teaches that this configuration is known in the art and allows a user to tighten the footwear to a preprogrammed, comfortable level of tightness (para. 0007).
To claim 2, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches an article of footwear wherein the electronic control unit is configured to switch among the plurality of preset positions based on interaction with a control device (26 of Torres) (see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 3, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches an article of footwear further comprising the control device (see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 4, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches an article of footwear wherein the control device is configured to generate an output based on a touch of the control device by a user (see Figures 1-3 and paras. 0043, 0046-0067 of Torres; via buttons of Torres).
To claim 5, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches an article of footwear wherein the electronic control unit is further configured to transition among the plurality of transitory states to incrementally increase or decrease the effective length of the lace (see for example Figures 17-21 and paras. 0153-0161 of Beers; see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 6, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches an article of footwear wherein a decrease of the effective length of the lace corresponds to a tightening of the lace and an increase of the effective length of the lace corresponds to a loosening of the lace (see for example Figures 17-21 and paras. 0153-0161 of Beers; see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 7, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches an article of footwear wherein the preset tightened state corresponds to a state including a shortest effective lace length and the preset loosened state corresponds to a state including a longest effective lace length (see especially Figures 17 and 19 and paras. 0152 and 0158 of Beers).
To claim 8, Beers discloses system (see all Figures; paras. 0078-0178), comprising:
an upper portion (102) including a lace (122) (para. 0086) to adjust fit of the upper portion against a foot (see for example Figures 1-13; paras. 0079-0092), the lace being adjustable between a plurality of positions based at least in part on manipulation of an effective length of the lace (see for example Figures 1-13; 0102-0105);
a lower portion (104) including a mid-sole and an out-sole (see Figures 1-3; para. 0081);
a motor (1230) configured to manipulate the effective length of the lace (see Figures 12-13; paras. 0115-0116); and
an electronic control unit (1650), operatively coupled to the motor (see Figures 16-17; paras. 0142-0143, 0156), configured to cause the motor to transition the lace between and among a plurality of preset positions (see for example Figures 17-21; paras. 0153-0161), the plurality of preset positions including a preset tightened state (see Figure 19; para. 0158; fully tightened configuration of lace 122), a preset loosened state (see Figure 17; para. 0152; fully loosened configuration of lace 122), and a plurality of discrete transitory states (see for example Figures 17-21; paras. 0153-0161; lace 122 is capable of being transitioned between a plurality of discrete transitory states to accommodate feet of different users).
Beers does not explicitly disclose a system wherein the electronic control unit is configured to cause the motor to transition the lace between and among a plurality of discrete transitory states that are predetermined discrete transitory states.
However, Torres teaches a system (see all Figures; paras.0040-0072) comprising an electronic control unit (24) configured to cause a motor (M1-M4) to transition a lace (18 or 38) (0017) between and among a plurality of preset positions including a plurality of predetermined discrete transitory states (paras. 0046-0067; article of footwear 10 or 36 is capable of transitioning lace 18 or 38 between and among a variety of different states that are preset by the user and stored by memory 24a based on desired fit characteristics of the user).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to configure the system of Beers to be capable of transitioning the lace between and among a plurality of predetermined discrete transitory states as taught by Torres because Torres teaches that this configuration is known in the art and allows a user to tighten the footwear to a preprogrammed, comfortable level of tightness (para. 0007).
To claim 9, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches a system further comprising a control device (26 of Torres), wherein the electronic control unit is configured to switch among the plurality of preset positions based on interaction with the control device (see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 10, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches a system wherein the control device is configured to generate an output based on a touch of the control device by a user (see Figures 1-3 and paras. 0043, 0046-0067 of Torres; via buttons of Torres).
To claim 11, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches a system wherein the electronic control unit is further configured to transition among the plurality of transitory states to incrementally increase or decrease the effective length of the lace (see for example Figures 17-21 and paras. 0153-0161 of Beers; see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 12, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches a system wherein a decrease of the effective length of the lace corresponds to a tightening of the lace and an increase of the effective length of the lace corresponds to a loosening of the lace (see for example Figures 17-21 and paras. 0153-0161 of Beers; see Figures 1-3 and paras. 0043, 0046-0067 of Torres).
To claim 13, the modified invention of Beers (i.e., Beers in view of Torres, as detailed above) further teaches a system wherein the preset tightened state corresponds to a fully tightened state and the preset loosened state corresponds to a fully loosened state (see especially Figures 17 and 19 and paras. 0152 and 0158 of Beers).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,000,099.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite footwear/systems comprising substantially the same elements including footwear having a lace/tensioning system and a motor, the lace/tensioning system and the motor being controlled by a control device configured to transition the lace/tensioning system between differing preset levels of tension/tightness.
PRESENT APPLICATION
USPN 11,000,099
CLAIMS
1
1,12-13,15,21
2
2,18,23
3
2,18,23
4
2,18,23
5
3-4
6
3-4
7
1,12-13,15,21
8
1,12-13,15,21
9
2,18,23
10
2,18,23
11
1,12-13,15,21
12
3-4
13
1,12-13,15,21
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,044,968.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite footwear/systems/methods comprising substantially the same elements including an upper portion, a lower portion with a mid-sole and an out-sole, and a lace configured to be transitioned between preset tensions/states via a motor and control unit.
PRESENT APPLICATION
USPN 11,044,968
CLAIMS
1
1-2,4-5,7,11-12,14-15
2
1,4-5,11,14-15
3
1,4-5,11,14-15
4
1,4-5,11,14-15
5
5-7,15-17
6
5-7,15-17
7
5-7,15-17
8
1-2,4-5,7,11-12,14-15
9
1,4-5,11,14-15
10
1,4-5,11,14-15
11
5-7,15-17
12
5-7,15-17
13
5-7,15-17
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,998,086.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite footwear/systems/methods comprising substantially the same elements including an upper portion, a lower portion with a mid-sole and an out-sole, a lace, a motor, and an electronic control unit operatively coupled to the motor and the lace to transition between and among a plurality of preset positions including a preset tightened state, a preset loosened state, and a plurality of predetermined discrete transitory states.
PRESENT APPLICATION
USPN 11,998,086
CLAIMS
1
1,8,14
2
2-4,9-10,15-17
3
2-4,9-10,15-17
4
2-4,9-10,15-17
5
5-6,11-12,18-20
6
5-6,11-12,18-20
7
5-6,11-12,18-20
8
1,8,14
9
2-4,9-10,15-17
10
2-4,9-10,15-17
11
5-6,11-12,18-20
12
5-6,11-12,18-20
13
5-6,11-12,18-20
Conclusion
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/F Griffin Hall/Primary Examiner, Art Unit 3732
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