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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16 and 20 in the reply filed on 13 May 2026 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claims 6-7, 11 and 13 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.
Regarding claim 6, there is no prior recitation of the sub-shells being assembled for placement in a mold. Accordingly, there is insufficient antecedent basis for “the assembled sub-shells”.
Regarding claim 7, the language “inserting a tridimensional boot shape” is confusing. A shape is not a physical object which can be inserted. Accordingly, it is unclear what is being inserted.
Regarding claim 11, a reinforcement sub-shell is not recited in parent claim 1. Accordingly, there is insufficient antecedent basis for “the shaped reinforcement sub-shell”.
Regarding claim 13, it is confusing to indicate the sole portion is in contact with the first ankle portion. The sole portion only appears in contact with the heel and side portions as seen in Applicant’s Figure 1. The ankle portion is above the sole portion.
Claim Rejections - 35 USC § 102
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 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goldsmith (US 2005/0116379 A1).
Regarding claim 20, Goldsmith teaches a method of manufacturing a non-lasted skate boot shell (paragraph 16), the method comprising placing layers against a mold surface of a female mold as part of the molding process (paragraphs 263 and 274), the layers defining a heel portion, an ankle portion, and side portions of the skate boot shell (Figures 27-38), the layers being thermoformable (paragraphs 263, 274, 291, 305 and 310); applying pressure to the layers against the mold surface of the female mold using an inflatable bladder (paragraphs 263, 274, 291, 305 and 310); and curing the layers into a shape of the skate boot shell (paragraphs 263, 274, 291, 305 and 310).
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 1-4, 7-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Koyess (US 2010/0156058 A1) in view of Johnson (US 2014/0237738 A1).
Regarding claim 1, Koyess teaches a method of manufacturing a skate boot shell (Abstract), the method comprising shaping a tridimensional outer sub-shell 120 to define a first heel portion, a first ankle portion connected to the first heel portion, and two opposed first side portions extending from the first heel and ankle portions (Figure 2; paragraphs 14, 50-51, 77 and 79); shaping a tridimensional inner sub-shell 122 to define a second heel portion, a second ankle portion connected to the second heel portion, and two opposed second side portions extending from the second heel and ankle portions, the inner sub-shell having an outer surface complementary to an inner surface of the outer sub-shell (Figure 2; paragraphs 14, 27, 50-51, 77 and 79); and bonding the shaped sub-shells together through lamination, the lamination being performed after the outer and inner sub-shells are shaped, the lamination being performed with the inner sub-shell in the outer sub-shell and with the outer surface of the inner sub-shell in alignment with the inner surface of the outer sub-shell (paragraphs 26-27, 40-43, 51, 54-57 and 83).
Koyess differs from claim 1 in that:
i. Koyess does not teach the lamination includes applying one or both of heat on the sub-shells and pressure on one of the inner and outer sub-shells toward the other of the inner and outer sub-shells, the other of the inner and outer sub-shells resting against a mold surface.
(i) Koyess teaches lamination by heat fusion or adhesive bonding (paragraphs 26, 51 and 83). In related art, Johnson teaches that footwear components may be suitably fusion joined with heat and pressure applied to the components, pressure applied toward one component with the other component resting against a mold surface (Figures 9-11; paragraphs 24-25, 41-42 and 59). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in Koyess because one having ordinary skill in the art would have been motivated to join the sub-shells in a known suitable manner of heat fusing components, as suggested by Johnson.
Regarding claim 2-3, Koyess teaches the outer sub-shell is shaped from a first material and the inner sub-shell is shaped from a second material different from the first material. Koyess also teaches the first material is more rigid (i.e. has greater stiffness) than the second material (paragraphs 15, 17, 20-21 and 25).
Regarding claim 4, Koyess teaches the claimed steps of shaping separately and inserting before lamination (paragraphs 27, 40-43 and 51).
Regarding claim 7, while not recited by Koyess, Johnson suggests inserting a tridimensional boot shape within an inner sub-layer, the boot shape defining the mold surface complementary to an inner surface of the inner sub-layer, and applying pressure with an inflatable bladder surrounding the components to be joined to provide the above noted pressure for joining (Figures 8-11; paragraphs 24-25, 48 and 59-60). Naturally, the inner molding surface suggested by Johnson must be inserted into the inner sub-shell when applied to joining the sub-shell layers of Koyess, in order to provide the illustrated inner surface against which the inflatable bladder applies pressure when the joined components are therebetween. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Koyess because one having ordinary skill in the art would have been motivated as above to join the sub-shells in a known suitable manner of heat fusing components, as suggested by Johnson.
Regarding claim 8, Koyess clearly teaches this additional limitation (Figure 2).
Regarding claim 10, Koyess suggests an additional reinforcement material which may be similar to any of the sub-shells, the additional reinforcement may be include rigid plastics, foams, textiles or other materials different from the inner and outer sub-shells, and may be between the inner and outer sub-shells or inside the inner sub-shell (paragraphs 24 and 31). Koyess further indicates additional shaped sub-shells may be adjoined to the first and second sub-shell assembly (paragraph 34). Taken together with the above noted teachings of shaping sub-shells and adjoining by heat fusing or adhesive bonding, these teachings reasonably suggest shaping a tridimensional reinforcement sub-shell from a material different from that of the inner and outer sub-shells, being shaped to have a third heel portion, third ankle portion and third opposed side portions extending from the third heel and ankle portions and bonding the shaped sub-shells together through lamination including bonding the shaped reinforcement sub-shell with at least one of the shaped inner and outer sub-shells. The purpose of such steps is clear from Koyess, i.e. to provide additional reinforcement. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in Koyess because one having ordinary skill in the art would have been motivated to provide additional reinforcement in a manner suggested by the above noted teachings of Koyess.
Claim 11 is satisfied essentially for the reasons provided above. As noted above, Koyess suggests the additional reinforcement may be provided inside the inner sub-shell such that the lamination would naturally join the an outer surface of the reinforcement sub-shell with an inner surface of the inner sub-shell. Koyess clearly suggests alignment of complementary sub-shell adjoining surfaces to avoid undesirable space or movement therebetween (paragraph 27).
Claims 1-6 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Koyess in view of Goldsmith.
Regarding claim 1, Koyess is applied above as in the rejection of claims 1-4, 7-8 and 10-11.
Koyess differs from claim 1 in that:
i. Koyess does not teach the lamination includes applying one or both of heat on the sub-shells and pressure on one of the inner and outer sub-shells toward the other of the inner and outer sub-shells, the other of the inner and outer sub-shells resting against a mold surface.
(i) Koyess teaches lamination by heat fusion or adhesive bonding (paragraphs 26, 51 and 83). In related art, Goldsmith teaches that footwear components may be suitably adhesively joined with heat and pressure applied to the components, and also suggests application of pressure applied toward one component with the other component resting against a mold surface (paragraphs 259, 263, 266, 269-274, 285, 291, 305 and 309-310). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in Koyess because one having ordinary skill in the art would have been motivated to join the sub-shells in a known suitable manner of adhesive bonding components, as suggested by Goldsmith.
Regarding claim 2-3, Koyess teaches the outer sub-shell is shaped from a first material and the inner sub-shell is shaped from a second material different from the first material. Koyess also teaches the first material is more rigid (i.e. has greater stiffness) than the second material (paragraphs 15, 17, 20-21 and 25).
Regarding claim 4, Koyess teaches the claimed steps of shaping separately and inserting before lamination (paragraphs 27, 40-43 and 51).
Regarding claim 5, Koyess teaches application of adhesive prior to insertion of the inner sub-shell into the outer-sub-shell (paragraph 83), which naturally involves interconnecting with the adhesive. Goldsmith, as applied above, suggests subsequently applying the heat and pressure to activate the adhesive for adhesive bonding.
Regarding claim 6, while not recited by Koyess, Goldsmith suggests receiving assembled components withing a female mold defining the mold surface complementary to an outer surface of an outer component and applying pressure with an inflatable bladder received within an inner component to provide the above noted pressure for joining (paragraphs 259, 263, 266, 269-274, 285, 291, 305 and 309-310). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Koyess because one having ordinary skill in the art would have been motivated as above to join the sub-shells in a known suitable manner of adhesive joining components, as suggested by Goldsmith.
Regarding claim 8, Koyess clearly teaches this additional limitation (Figure 2).
Regarding claim 9, Koyess provides sole portion 123 within the inner sub-shell but does not teach doing so before the lamination (paragraph 75; Figure 2). However, Goldsmith suggests suitably inserting a sole portion prior to lamination to integrate the sole portion with additional components during lamination or to provide suitable sole reinforcement (paragraphs 320 and 330). It would have been obvious to one having ordinary skill in the art at the time the application was filed to this limitation in Koyess because one having ordinary skill in the art would have been motivated to suitably integrate the sole portion during lamination or to provide suitable sole reinforcement as suggested by the teachings of Goldsmith.
Regarding claim 10, Koyess suggests an additional reinforcement material which may be similar to any of the sub-shells, the additional reinforcement may be include rigid plastics, foams, textiles or other materials different from the inner and outer sub-shells, and may be between the inner and outer sub-shells or inside the inner sub-shell (paragraphs 24 and 31). Koyess further indicates additional shaped sub-shells may be adjoined to the first and second sub-shell assembly (paragraph 34). Taken together with the above noted teachings of shaping sub-shells and adjoining by heat fusing or adhesive bonding, these teachings reasonably suggest shaping a tridimensional reinforcement sub-shell from a material different from that of the inner and outer sub-shells, being shaped to have a third heel portion, third ankle portion and third opposed side portions extending from the third heel and ankle portions and bonding the shaped sub-shells together through lamination including bonding the shaped reinforcement sub-shell with at least one of the shaped inner and outer sub-shells. The purpose of such steps is clear from Koyess, i.e. to provide additional reinforcement. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in Koyess because one having ordinary skill in the art would have been motivated to provide additional reinforcement in a manner suggested by the above noted teachings of Koyess.
Claim 11 is satisfied essentially for the reasons provided above. As noted above, Koyess suggests the additional reinforcement may be provided inside the inner sub-shell such that the lamination would naturally join the an outer surface of the reinforcement sub-shell with an inner surface of the inner sub-shell. Koyess clearly suggests alignment of complementary sub-shell adjoining surfaces to avoid undesirable space or movement therebetween (paragraph 27).
Claims 12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Koyess in view of either one of Johnson or Goldsmith, and further in view of Labonte (US 2004/0016150 A1).
Koyess is applied above as in the rejection of claims 1-4, 7-8 and 10-11. Johnson is applied as above in the rejection of claims 1-4, 7-8 and 10-11, or alternatively, Goldsmith is applied as above in the rejection of claims 1-6 and 8-11.
Regarding claims 12 and 14, Koyess does not teach these additional limitations for shaping the outer and inner sub-shells. In related art, Labonte teaches shaping a tridimensional sub-shell by providing at least one layer of a material of the sub-shell in a flat configuration (Figures 1-4; paragraph 52), the material being in a formable state; forming the at least one layer to conform to a second mold surface, the second mold surface being complementary to the heel, ankle and side portions; pressing the at least one layer against the second mold surface while heating the at least one layer; and cooling the sub-shell, the cooled sub-shell retaining its tridimensional shape defining the respective heel, ankle and side portions (paragraphs 55-57). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Koyess because one having ordinary skill in the art would have been motivated to shape the inner and outer sub-shells in a known suitable manner as suggested by Labonte.
Regarding claim 15, Koyess does not teach these additional limitations for shaping the inner and outer sub-shells. However, Labonte suggests co-molding sub-shells by forming a flat member including at least one layer of a first sub-shell material and at least one layer of a second sub-shell material; heating and forming the flat member to conform to a second mold surface, the second mold surface being complementary to the respective heel, ankle and side portions, to define a shaped inner sub-shell located inside a shaped outer sub-shell prior to the lamination (paragraphs 55-57; Figures 1-4). Since the materials are provided in a flat form and are pressed between curved molds, naturally relative movement will occur between the first and second materials because the inner material must bend over a tighter radius of curvature due to its inner position, which would be expected to result in some sliding between the materials to accommodate the different amounts of bending. Moreover, “relative movement” is a very broad term and is satisfied merely by the fact that portions of each material move relative to other portions of each material simply because they are being bent into a new configuration, e.g. the edges of each material become closer due to the bending. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Koyess because one having ordinary skill in the art would have been motivated to suitably and simultaneously shape the sub-shells, as suggested by the teachings of Labonte.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Koyess in view of either one of Johnson or Goldsmith, and further in view of Pirhonen (US 5337432).
Koyess is applied above as in the rejection of claims 1-4, 7-8 and 10-11. Johnson is applied as above in the rejection of claims 1-4, 7-8 and 10-11, or alternatively, Goldsmith is applied as above in the rejection of claims 1-6 and 8-11.
Regarding claim 16, Koyess teaches the outer sub-shell may be made of thermoplastic material (paragraph 21), but does not teach after bonding through lamination, creating a geometrical feature on the out sub-shell by heating and pressing at least one part of the outer sub-shell against a re-shaping mold surface complementary to the geometrical feature, and cooling after re-shaping as claimed so the geometrical feature is retained. In related art, Pirhonen suggests these steps for reshaping a plastic shell of a boot in order to fit the boot to a foot with arbitrary properties to accommodate large numbers of combinations of anatomical differences (column 1, lines 31-37 and 53-68; column 2, lines 1-15 and 58-66; column 3, lines 3-17; Figures 1A-2B). While Pirhonen does not recite cooling, it is clear from Johnson (paragraph 61) or Goldsmith (paragraph 305) that cooling is provided, naturally to stabilize the shaped material since heating is what allows the shaping. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide these additional limitations in the modified method of Koyess because one of ordinary skill in the art would have been motivated to achieve the above noted benefits in accordance with the teachings of Pirhonen and to stabilize with cooling or facilitate bringing the temperature down after heating with cooling as suggested by either one of Johnson or Goldsmith.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9648922 (the ‘922 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims 1-16 is clearly satisfied by a corresponding claim of the ‘922 Patent.
Allowable Subject Matter
Claim 13 has only been rejected over grounds of non-statutory double patenting and 35 USC 112(b). Claim 13 would be allowable if amended to correct the issues of clarity under 35 USC 112(b), rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if a terminal disclaimer is filed.
Regarding claim 13, the closest prior art of record is applied above. In combination with the claimed limitations, the prior art of record does not teach or suggested the additional combined limitations of claim 13.
Conclusion
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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