Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 18 March 2026 has been entered.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-9 and 11-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Vazin (US 6,473,944) in view of Schaefer (US 2,084,412).
Regarding claim 1, Vazin discloses an apparatus comprising:
a body member (1) including:
a series of through openings formed in said body member, said through openings being arranged in a row substantially along a longitudinal axis of the body member and including:
a first opening (4) for passage of said lace therethrough from said eyelet; and
a second opening (12) located a spaced distance from said first opening for passage of said lace therethrough from said first opening,
an edge extending generally transverse to the longitudinal axis of said body member and located on a side of said second opening generally opposite said first opening for passage of said lace thereover from said second opening in said body member (Fig. 1 as shown); and
Vazin fails to disclose a plurality of teeth for forming an engagement with material of said lace, the plurality of teeth being defined on said edge and extending along said first end of the body adjacent to said second opening.
Schaefer teaches an apparatus comprising a plurality of teeth (9; Fig. 1 shows teeth/corrugations along the edge of a first end of the body. Fig. 2 also shows the full extension of the teeth/corrugations to the outer edge of the device).
From this teaching of Schaefer, it would have been obvious to one of ordinary skill in the art at the time of the invention to include teeth/corrugations along the first edge of the body member to further secure a lacing against an edge thus preventing slippage of the lace. Corrugations would also allow for a user to further grip the lace to apply further tension when securing the lace on a shoe or other application.
Regarding claim 2, Vazin further discloses wherein said series of through openings further include: a third opening (5) located a spaced distance from said first opening on a side opposite said second opening for passage of said lace therethrough from said edge on said body member, said third opening being generally slot-shaped and extending substantially perpendicular to said row in which said openings are arranged (Fig. 1 as shown).
Regarding claim 3, Vazin further discloses wherein said body member comprises: a thin, generally flat body member (Fig. 1 as shown).
Regarding claim 4, Vazin further discloses wherein said body member is formed of a substantially rigid material (Column 5, lines 20-22 list substantially rigid materials).
Regarding claim 5, Vazin further discloses wherein said body member further comprises:
a first end located proximate said second through opening (Fig. 1 as shown); and
a second, opposite end located proximate said third through opening (Fig. 1 as shown);
said first and second ends of said body member each comprising an edge extending substantially perpendicular to said row along which said through openings are arranged (Fig. 1 as shown).
Regarding claim 6, Vazin further discloses wherein said body member comprises: a flat, generally rectangular body member, said row along which said series of through openings is arranged being substantially aligned with a long axis of said rectangular body member (Fig. 1 as shown).
Regarding claim 7, Vazin further discloses wherein said slot-shaped third opening comprises: a generally slot-shaped opening dimensioned to spread said lace into a flattened form therein (Fig. 1 as shown).
Regarding claim 8, Vazin further discloses wherein said first and second through openings each comprise: a generally round opening having a diameter sized to permit said lace to pass substantially freely therethrough (Fig. 1 as shown).
Regarding claim 9, Vazin further discloses wherein said slot-shaped third opening comprises: a narrow, substantially rectangular through opening (Fig. 1 as shown).
Regarding claim 11, Vazin further discloses wherein said second and third openings are spaced outwardly from said first opening by distances sufficient that at least portions of said second and third openings will be positioned beyond a predetermined perimeter of said eyelet when said first opening is aligned coaxially therewith (Fig. 1 as shown).
Regarding claim 12, Vazin discloses an apparatus comprising:
a thin, flat body member (1) having first and second ends (Fig. 1 as shown);
a series of through openings formed in said body member, said series of through openings being arranged in a row substantially along a longitudinal axis of said rectangular body member and comprising:
a first, generally circular through opening (4); and
a second, generally circular through opening (12) located a spaced distance from said first opening and proximate said first end of said rectangular body member.
Vazin fails to disclose a plurality of teeth defined on an edge extending generally transverse to the longitudinal axis along said first end of said body member for forming an engagement with material of said lace that passes through said openings of said body member.
Schaefer teaches an apparatus comprising a plurality of teeth along an edge (9; Fig. 1 shows teeth/corrugations along the edge of a first end of the body).
From this teaching of Schaefer, it would have been obvious to one of ordinary skill in the art at the time of the invention to include teeth/corrugations along the first edge of the body member to further secure a lacing against an edge thus preventing slippage of the lace. Corrugations would also allow for a user to further grip the lace to apply further tension when securing the lace on a shoe or other application.
Regarding claim 13, Vazin further discloses wherein said series of through opening in said body member further comprises: a rectangular slot-shaped through opening (5) located a spaced distance from said middle opening and proximate said second end of said body member and dimensioned to spread said lace into a flattened form therein.
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 1-9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 8, 10, 11 and 13 of U.S. Patent No. 11,464,292. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims only appear to be broader in scope than the scope of the patented claims and the limitations of the instant application appear to be captured by the patented claims.
Response to Arguments
Applicant's arguments filed 19 February 2026 have been fully considered but they are not persuasive. Applicant appears to repeat the arguments regarding the teeth (13) of Schaefer. However, as noted above Schaefer has corrugations (9) that are clearly shown in Figs. 1 and 2 extending to the edge at an end of the body consistent with the language as claimed.
Regarding Applicant’s comments about a Terminal Disclaimer. To this date, no Terminal Disclaimer has been received.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S LEE whose telephone number is (571)270-5735. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.S.L/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677
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