DETAILED ACTION
Claims 1-3, 5, 8-13, 15 are pending. Claims 1, 5, 8, 11, and 13 are amended. Claims 4, 6, 7, and 14 are cancelled.
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
This office action is responsive to the amendment filed on October 14, 2025. As directed by the amendment: claims 1, 5, 8, 11, and 13 have been amended, claims 4, 6, 7, and 14 have been cancelled. Thus, claims 1-3, 5, 8-13, 15 are presently pending in this application.
Applicant’s amendment to the specification has overcome the objection to the abstract.
Applicant’s amendment to the claims has overcome some of the 35 USC §112(b) rejections and introduced others.
Applicant’s amendment to the claims has not overcome the 35 USC §102(a)(1) and §103 rejections.
Response to Arguments
Applicant's arguments filed October 14, 2025 have been fully considered but they are not persuasive.
Applicant argues that the Non-Final Office Action contended that the apertures 31 and 31’ were the recesses as claimed in previous claim 6, however the rejection points to the space between the keys 32a-c as corresponding to a recess, not the aperture 31. The argument regarding prior claim 7, now in independent claim 1, rests on the aperture being considered the recess, which it is not. Thus these arguments are non-persuasive.
Applicant next argues that the opening of Mandon is a recess and such a recess is a square and not a circle. The examiner relies on Vaccari for the shape and structure of the recess, which was in previous claim 14 but now in claim 13. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Claim 11 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 pre-AIA the applicant regards as the invention.
Claim 11 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 pre-AIA the applicant regards as the invention.
Claim 11 recites that the cuff attachment part is rotatable relative to the foot shell part. As described in the specification, the foot shell part 111 is secured to the foot shell 103 (para. 0047). As shown in Figs. 7A-7C the cuff attachment part 109 extends through the rear of the foot shell part. This must be done before the foot shell part is sewn. The specification recites “The notch-shaped recesses 127 positively engage corresponding portions of the foot shell part and additionally prevent unintentional rotation of the cuff attachment part 109” (para. 0043). Then the specification recites that “By means of the rotating tool, the cuff attachment part 109 can be brought into the correct position. As a result, the cylinder portion 123 can be brought into one of the positions 1 to 6, depending on the type of cuff to be attached, and fixed there.” (para. 0045). Because the cuff attachment part 109 is “trapped” by the foot shell part, it is unclear how the cuff attachment part can be “rotatable” except prior to being installed on the footwear. That is, the specification explicitly recites that the cuff attachment part is prevented from rotating, but also states that a rotating tool can rotate the attachment part. These two statements appear to directly contradict one another. The specification does not explain how the cuff part is able to be rotated. For purposes of examination, the examiner is interpreting the claims as referring to the ability of the position to be changed prior to installation.
Claim 13 recites “a foot shell” in the preamble as an intended use limitation (“for adjusting”). The body of the claim then recites “connectable to a foot shell”. It is thus unclear if the adjustment device is for adjusting an attachment position relative to a first foot shell, but that the foot shell part is connectable to a second foot shell. For purposes of examination the examiner is interpreting “a foot shell” as “the foot shell”.
Claim 13 recites “the foot shell part”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if there is an omission of a previously recited element or if “the” should be changed to “a”.
The dependent claims inherit(s) the deficiency by nature of dependency.
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) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanderson et al. (US 20140215856).
Regarding claim 1, Sanderson describes a sports shoe (boot 10), comprising:
a foot shell (heel plate 12) for a foot portion (for a portion of the foot); and
an adjustment device (see annotated Fig. 2, adjustment device include portion of the foot shell that is molded into the foot shell and bushing 35) for adjusting an attachment position of a cuff (lower leg plate 14) to the foot shell (12)
wherein the adjustment device comprises a foot shell part (see annotated Fig. 5) and a cuff attachment part (35) which is lockable at several positions of the foot shell part (matingly engaged with heel plate components, para. 0049, could be rotated and locked in place at different keys);
wherein the foot shell part comprises a recess for inserting the cuff attachment part (see annotated Fig. 3);
wherein the circumference of the recess is composed of several circular arcs (see annotated Fig. 5 below, includes multiple circular arcs that are connected).
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Regarding claim 2, Sanderson describes the sports shoe according to claim 1, wherein the adjustment device is arranged in the ankle joint area of the foot shell (see Fig. 1, is at the ankle joint area).
Regarding claim 3, Sanderson describes the sports shoe according to claim 1, wherein the adjustment device is arranged on an outer side of the foot shell (see annotated Fig. 5 below).
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Regarding claim 5, Sanderson describes the sports shoe according to claim 4, wherein the foot shell part is formed by a circular disk (outline of the keys 32c forms a circle, furthermore aperture 31 is a circle).
Regarding claim 8, Sanderson describes the sports shoe according to claim 6, wherein the cuff attachment part comprises a projection (shank 37 and flutes 35a-c) for positive engagement in the recess of the foot shell part (extends through the opening 31 and into the recesses, see Fig. 4).
Regarding claim 9, Sanderson describes the sports shoe according to claim 8, wherein the projection comprises a protruding cylinder portion (37) for attaching the cuff.
Regarding claim 10, Sanderson describes the sports shoe according to claim 9, wherein the protruding cylinder portion comprises a thread (inner thread of shaft, para. 0047) for screwing in a fastening screw.
Regarding claim 11, Sanderson describes the sports shoe according to one of claim 4, wherein the cuff attachment part is rotatable relative to the foot shell part (is rotatable when the threads of the shaft are undone, see para. 0051 describing that the stud when attached prevents the bushing from being able to move, however, when unattached the bushing can move and thus a user could rotate the bushing as desired).
Regarding claim 12, Sanderson describes the sports shoe according to claim 10, wherein the cuff attachment part comprises a central recess (opening in shaft 37) for inserting a rotating tool (fully capable of permitting a rotating tool to enter).
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 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 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 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mandon et al. (US 20170280818) in view of Vaccari (US 4177827).
Regarding claim 13, Mandon describes an adjustment device(surface 37, opening 31, ring 10) a for adjusting an attachment position of a cuff (20) to a foot shell (shell 30) of a sports shoe, the adjustment device comprising: a foot shell part (37, 31) which is connectable to a foot shell or is integrated in the foot shell; and
a cuff attachment part (10) which is lockable at several positions with the foot shell part and to which the cuff can be attached (can be rotated and locked in place, for example, Figs. 9a-9c).
wherein the foot shell part comprises a recess for inserting the cuff attachment part, the circumference of which is composed of several circular arcs.
In related art for attachment devices Vaccari describes the foot shell part (7) comprises a recess (slots 9) for inserting the cuff attachment part (6, 8), the circumference of which is composed of several circular arcs (are arcs, see Fig. 2 below).
It would have been obvious to a person having ordinary skill in the art prior to the time of filing the instant application to modify the shape of the recess to include arcs as disclosed in Vaccari as such a substitution is a matter of design choice resulting in predictable results. That is, changing the shape of the indent as described in Mandon to be a different shape that restricts movement. For example, Mandon describes that different shapes (para. 0030) may be utilized but merely should be locking shapes which the shape of Vaccari satisfies.
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Regarding claim 15, Mandon describes the adjustment device according to claim 13, wherein the cuff attachment part is rotatable relative to the foot shell part before being fixed (can be removed and rotated, and then secured).
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK J LYNCH whose telephone number is (571)272-1145. The examiner can normally be reached on M-Th, Alt F: 8:00 AM-5:00 PM ET.
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, Clint Ostrup can be reached on 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732