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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/17/2026 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “tapered thickness” of the tongue foam piece in claim 18 and “an uniform thickness” in claim 25 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
Claims 8 and 10-13 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.
In the last paragraph of claim 8, “the first end portion” [of the tongue] (two occurrences) lack proper antecedent basis and is therefore unclear and indefinite.
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(s) 17 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 7316082 (Portillo).
Regarding claims 17 and 19, Portillo discloses an article of footwear, comprising:
a first end portion (heel end of footwear);
a second end portion (toe end of footwear) opposite the first end portion;
an upper (portion of the footwear above the shoe sole) including a medial side, a lateral side opposite the medial side, and
an intermediate portion (the portion of the footwear containing the tongue 1) between the medial side and the lateral side;
a tongue (1 or top layer 2 of tongue) disposed in the intermediate portion and extending between the first end portion and the second end portion; and
a tongue foam piece has a tapered width [foam padding 7 (see figures 1-3 and col. 2, lines 7-11) disposed in the top most sector 3 closest to the first end portion of the footwear], disposed entirely within a top half of the tongue, the tongue foam piece being spaced apart from outer edges of the tongue (foam padding 7 disposed in the sector closest to the top of the tongue and is less than half a length of the tongue; see figures 1 and 2 showing the spacing from the outer edges of the tongue); and
a fastening system includes laces (hook and loop type fasteners 9,10 are shown but also teaches other closing systems such as laces; see col. 2, lines 23-26 and column 3, lines 12-17) wherein the laces are coupled to the medial side and lateral side of the upper, wherein the laces are configured to be tightened and tied at the second end portion of the tongue to secure the article of footwear to a foot of the user,
wherein the tongue foam piece (pad 7 is located under tongue (2)) is disposed on an underside of the tongue opposite the laces such that the tongue foam piece is configured to contact a foot of a wearer.
Regarding claim 19, see figure 1 of Portillo showing the pad (7) in the top sector (3) tapering as claimed.
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 1-5,23 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 7316082 (Portillo) in view of US 2016/0374432 (Park).
Regarding claims 1-5,23 and 25, Portillo discloses an article of footwear (safety footwear), comprising:
a first end portion (heel end of footwear);
a second end portion (toe end of footwear) opposite the first end portion;
an upper (portion of the footwear above the shoe sole) including a medial side, a lateral side opposite the medial side, and
an intermediate portion (the portion of the footwear containing the tongue 1) between the medial side and the lateral side;
a fastening system (hook and loop type fasteners 9,10 are shown but also teaches other closing systems such as laces; see col. 2, lines 23-26 and column 3, lines 12-17) coupled to the medial side and lateral side of the upper, the fastening system configured to tighten the article of footwear around a foot of a wearer;
a tongue (1 or top layer 2 of tongue) disposed in the intermediate portion and extending between the first end portion and the second end portion; and
a tongue foam piece [resistant sheet 6 and foam padding 7 (see figures 1-3 and col. 2, lines 7-11) disposed in the top most sector 3 closest to the first end portion of the footwear], wherein a length of the tongue foam piece is less than half a length of the tongue (sheet 6 and foam padding 7 disposed in the sector closest to the top of the tongue and is less than half a length of the tongue) and the tongue foam piece is contained entirely within an upper half of the tongue nearer an opening of the upper (sheet (6) and foam padding (7) is disposed in the sector (3) closest to the top of the tongue and the sector (3) is less than half a length of the tongue).
Portillo lacks teaching the tongue foam piece disposed under the fastening system. Although as noted in the rejection above, Portillo teaches other closing systems such as laces can be used; see col. 2, lines 23-26 and column 3, lines 12-17. Therefore, Portillo just lacks teaching the tongue foam piece disposed under the fastening system (e.g. laces).
Park teaches a safety shoe with the fastening system being shoe laces to prevent shoes from coming off; see ¶0003.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify provide the laces as taught by Portillo to have shoelaces extending up to the shoe opening of the shoe as shown in figure 1 of Park, to prevent the shoes (article of footwear) from coming off. The shoelaces extend from near the top of the shoe and therefore the tongue foam piece of the article of footwear as taught above would be disposed under the fastening system (i.e. shoelaces).
Regarding claims 2-5 and 23, see figures 1-3 of Portillo. Regarding claims 4-5, Figure 1 best shows the tongue foam piece tapering in width as claimed. Regarding claim 2, the tongue foam piece (6,7) is disposed under the tongue (layer 2 of tongue).
Regarding claim 25, the tongue (see figures 1-3 of Portillo) includes only a single tongue foam piece (pieces 6,7 together form a single piece located in top most sector 3 of tongue) which has a tapered shape (see figure 1) and a uniform thickness (piece 6,7 as shown in figure 2 has a uniform thickness). Moreover, see the last rejection below which has been provided as a back-up rejection to claim 25.
Claims 8,10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 7316082 (Portillo) in view of US 2016/0374432 (Park) and US 2244031 (Teehan).
Regarding claims 8,10 and 11, Portillo discloses an article of footwear (safety footwear), comprising:
a first end portion (heel end of footwear);
a second end portion (toe end of footwear) opposite the first end portion;
an upper (portion of the footwear above the shoe sole) including a medial side, a lateral side opposite the medial side, and an intermediate portion (the portion of the footwear containing the tongue 1) between the medial side and the lateral side;
a fastening system (hook and loop type fasteners 9,10 are shown but also teaches other closing systems such as laces; see col. 2, lines 23-26 and column 3, lines 12-17) coupled to the medial side and lateral side of the upper, the fastening system configured to tighten the article of footwear around a foot of a wearer; where in the fastening system is at least one of a zipper, lace or hook and loop mechanism (e.g. 9,10 and laces as noted above);
a tongue foam piece has a tapered shape [foam padding 7 (see figures 1-3 and col. 2, lines 7-11) disposed in the top most sector 3 closest to the first end portion of the footwear] that tapers from its first end to its second end, and the tongue foam piece is disposed entirely along a top half of the tongue (foam padding 7 disposed in the sector closest to the top of the tongue and is less than half a length of the tongue).
Portillo lacks teaching:
The tongue foam piece continuously tapering from one end to the other end.
The tongue foam piece under the fastening system. The fastening system (9,10) is disposed over the middle sector (3) but not the top sector (3). Although as noted in the rejection above, Portillo teaches other closing systems such as laces can be used; see col. 2, lines 23-26 and column 3, lines 12-17. Therefore, Portillo just lacks teaching the tongue foam piece disposed under the fastening system (e.g. laces).
Regarding the second bullet above, Park teaches a safety shoe with the fastening system being shoe laces to prevent shoes from coming off; see ¶0003.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify provide the laces as taught by Portillo to have shoelaces extending up to the shoe opening of the shoe as shown in figure 1 of Park, to prevent the shoes (article of footwear) from coming off. The shoelaces extend from near the top of the shoe and therefore the tongue foam piece of the article of footwear as taught above would be disposed under the fastening system (i.e. shoelaces).
Regarding the first bullet, Teehan teaches an article of footwear wherein the piece (42,44) disposed under the tongue (16), both (42,44;16) continuously tapering from its one end to the other end, see figure 6.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by the combination above with the tongue and the tongue foam piece, to continuously taper from one end to the other end, as taught by Teehan, to provide the article of footwear with a more uniform shape.
Claims 1-6,8,10-12,17-19 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 7941944 (Cagliari) in view of US 2003/0154627 (Hirayama) and US 2010/0018082 (Stokes).
Regarding claims 1-6 and 22-23, Cagliari discloses an article of footwear (sports boot liner 10), comprising: a first end portion (the rear or heel end of footwear); a second end portion opposite the first end portion (the front or toe end of footwear);
an upper (upper part of footwear; see figure 2) including a medial side, a lateral side opposite the medial side, and an intermediate portion between the medial side and the lateral side;
a tongue (1) disposed in the intermediate portion and extending between the first end portion and the second end portion; and
a tongue piece [comfort element 5 made from a strong material having a combination of properties of shock-absorption and adhesive for example a polyurethane or silicone gel, a low hardness rubber, thermoplastic elastomer-type material or any material that has the properties suitable (at least see col. 2, line 34 to col. 3, line 2)], wherein a length of the tongue foam piece is less than half a length of the tongue (see figure 1 and col. 3, lines 3-10) which teaches the comfort element extends over at most the top upper half of the tongue) and the tongue foam piece (5) is contained entirely within an upper half of the tongue nearer an opening of the upper (see figure 1 showing piece 5 contained entirely in the upper half of the tongue (1)).
Cagliari lacks teaching:
a fastening system coupled to the medial side and lateral side of the upper, the fastening system configured to tighten the article of footwear around a foot of a wearer; (claim 1)
the tongue foam piece disposed under the fastening system (claim 1)
The tongue piece being made out of foam (claim 1) and at least one of polyurethane foam or a thermoplastic polyurethane foam (claim 6);
Regarding the first bullet, Hirayama teaches an article of footwear (boot liner 10) having a fastening system (see lace (L)) coupled to the medial side and lateral side of the upper (see figure 1), the fastening system configured to tighten the article of footwear around a foot of a wearer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of footwear as taught by Cagliari with a fastening system (i.e. laces) coupled to the medial side and lateral side of the upper, the fastening system configured to tighten the article of footwear around a foot of a wearer, as taught by Hirayama, to facilitate attaching the article of footwear to the wearer’s foot. Regarding the second bullet, since the article of footwear as taught by the combination above has laces, the tongue piece is disposed under the fastening system (i.e. lace). Regarding the tongue piece being foam see bullet three below.
Regarding the third bullet, Stokes teaches a core piece composed of polyurethane foam cushion that is attached by adhesive to the interior of the footwear to provide cushioning, wherein the material conforms to the wearer’s foot and is attached, via adhesive, to the wearer (at least see the abstract, ¶0008,0017,0022 and claims 1-6). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the tongue piece as taught by the combination above to be made with polyurethane foam, in view of the teaching of Stokes, and moreover since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. The claimed material merely amounts to a matter of engineering design choice and thus does not serve to patentable distinguish the claimed invention over the prior art. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific material solves any particular problem and/or yields any unexpected results.
Regarding claims 2-5 and 23; see figures 1-2 of Cagliari.
Regarding claim 22, see col. 2, lines 54-55 of Cagliari: “between 3 and 10 mm”.
Regarding claims 8 and 10-12, as understood, Cagliari discloses an article of footwear (sports boot liner 10), comprising: a first end portion (the rear or heel end of footwear); a second end portion opposite the first end portion (the front or toe end of footwear);
an upper (upper part of footwear; see figure 2) including a medial side, a lateral side opposite the medial side, and an intermediate portion between the medial side and the lateral side;
a tongue (1) disposed in the intermediate portion and extending between the first end portion and the second end portion; and
a tongue piece [comfort element 5 made from a strong material having a combination of properties of shock-absorption and adhesive for example a polyurethane or silicone gel, a low hardness rubber, thermoplastic elastomer-type material or any material that has the properties suitable (at least see col. 2, line 34 to col. 3, line 2)], wherein the tongue piece has a tapered shape (see figure 1) that continuously tapers from a widest edge located adjacent the first end portion of the tongue to a narrowest edge located apart from the first end portion of the tongue (see figure 1 showing the continuous taper), and the tongue foam piece is disposed entirely along a top half of the tongue (at least see figure 1 and col. 3, lines 3-10)
Cagliari lacks teaching:
a fastening system coupled to the medial side and lateral side of the upper, wherein the fastening system comprises a fastening system is at least one of a zipper, a lace, or a hook and loop mechanism (claim 8);
the tongue foam piece disposed under the fastening system (claim 8)
The tongue piece being made out of foam (claim 8) and at least one of polyurethane foam or a thermoplastic polyurethane foam (claim 12);
Regarding the first bullet, Hirayama teaches an article of footwear (boot liner 10) having a fastening system including laces (L), wherein the laces are coupled to the medial side and lateral side of the upper, wherein the laces are configured to be tightened and tied at the second end portion of the tongue to secure the article of footwear to a foot of a user (see figure 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of footwear as taught by Cagliari with a fastening system including laces, wherein the laces are coupled to the medial side and lateral side of the upper, wherein the laces are configured to be tightened and tied at the second end portion of the tongue to secure the article of footwear to a foot of a user, as taught by Hirayama, to facilitate attaching the article of footwear to the wearer’s foot. Regarding the second bullet, since the article of footwear as taught by the combination above has laces, the tongue piece is disposed under the fastening system (i.e. lace). Regarding the tongue piece being foam see bullet three below.
Regarding the third bullet, Stokes teaches a core piece composed of polyurethane foam cushion that is attached by adhesive to the interior of the footwear to provide cushioning, wherein the material conforms to the wearer’s foot and is attached, via adhesive, to the wearer (at least see the abstract, ¶0008,0017,0022 and claims 1-6). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the tongue piece as taught by the combination above to be made with polyurethane foam, in view of the teaching of Stokes, and moreover since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. The claimed material merely amounts to a matter of engineering design choice and thus does not serve to patentable distinguish the claimed invention over the prior art. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific material solves any particular problem and/or yields any unexpected results.
The tongue foam piece is inherently capable of contacting the wearer. Moreover, Cagliari teaches it making contact with the wearer (at least see the Abstract of Cagliari) and Stokes as noted above also teaches it making contact with the wearer. The adhesive taught by Stokes has a medical-grade adhesive which is approved for contact with the skin, at least see the 2nd part of ¶0017.
Regarding claims 17 and 19, Cagliari discloses an article of footwear (sports boot liner 10), comprising: a first end portion (the rear or heel end of footwear); a second end portion opposite the first end portion (the front or toe end of footwear);
an upper (upper part of footwear; see figure 2) including a medial side, a lateral side opposite the medial side, and an intermediate portion between the medial side and the lateral side;
a tongue (1) disposed in the intermediate portion and extending between the first end portion and the second end portion; and
a tongue piece [comfort element 5 made from a strong material having a combination of properties of shock-absorption and adhesive for example a polyurethane or silicone gel, a low hardness rubber, thermoplastic elastomer-type material or any material that has the properties suitable (at least see col. 2, line 34 to col. 3, line 2)], wherein the tongue piece has a tapered width (see figure 1), disposed entirely with a top half of the tongue, the tongue being spaced apart from outer edges of the tongue; (at least see figure 1 and col. 3, lines 3-10).
Cagliari lacks teaching:
a fastening system including laces, wherein the laces are coupled to the medial side and lateral side of the upper, wherein the laces are configured to be tightened and tied at the second end portion of the tongue to secure the article of footwear to a foot of a user (claim 17);
the tongue foam piece disposed under the fastening system (claim 17)
The tongue piece being made out of foam (claim 17);
Regarding the first bullet, Hirayama teaches an article of footwear (boot liner 10) having a fastening system including laces (L), wherein the laces are coupled to the medial side and lateral side of the upper, wherein the laces are configured to be tightened and tied at the second end portion of the tongue to secure the article of footwear to a foot of a user (see figure 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of footwear as taught by Cagliari with a fastening system including laces, wherein the laces are coupled to the medial side and lateral side of the upper, wherein the laces are configured to be tightened and tied at the second end portion of the tongue to secure the article of footwear to a foot of a user, as taught by Hirayama, to facilitate attaching the article of footwear to the wearer’s foot. Regarding the second bullet, since the article of footwear as taught by the combination above has laces, the tongue piece is disposed under the fastening system (i.e. lace). Regarding the tongue piece being foam see bullet three below.
Regarding the third bullet, Stokes teaches a core piece composed of polyurethane foam cushion that is attached by adhesive to the interior of the footwear to provide cushioning, wherein the material conforms to the wearer’s foot and is attached, via adhesive, to the wearer (at least see the abstract, ¶0008,0017,0022 and claims 1-6). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the tongue piece as taught by the combination above to be made with polyurethane foam, in view of the teaching of Stokes, and moreover since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. The claimed material merely amounts to a matter of engineering design choice and thus does not serve to patentable distinguish the claimed invention over the prior art. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific material solves any particular problem and/or yields any unexpected results.
With regard to the functional language “is configured to contact a foot of a wearer”; the tongue foam piece is inherently capable of contacting the wearer. Moreover, Cagliari teaches it making contact with the wearer (at least see the Abstract of Cagliari) and Stokes as noted above also teaches it making contact with the wearer. The adhesive taught by Stokes has a medical-grade adhesive which is approved for contact with the skin, at least see the 2nd part of ¶0017.
Regarding claim 19, at least see figures 1 of Cagliari.
Claim(s) 7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1 and 8, respectively above, and further in view of US 2012/0115379 (Kim).
The prior art as taught by the combination above teaches the tongue foam piece adhered to the tongue (see col. 3, lines 23-25 of Cagliari) but lacks teaching it being a thin film of hot melt adhesive. Kim teaches an article of footwear wherein the adhesive is a thin film of hot melt adhesive; see paragraph 0011 (thickness of about 0.2 mm) and see paragraph 0018 which teaches that HMA leaves little to no residue in the shoe. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of the article of footwear as taught by the combination above to be a thin film of hot melt adhesive, as taught by Kim, to leave little to no residue in the footwear.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 17 above, and further in view of US 2139858 (Schwartz).
Schwartz teaches the cushioning pad disposed under the tongue has a tapered thickness (see edges 17) to eliminate irritation by preventing any sharp edges (see page 1, lines 21-25. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by the combination above with the tongue foam piece having a tapered thickness, as taught by Schwartz, to eliminate irritation by preventing any sharp edges.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references (Portillo in view of Park) as applied to claim 1 above, and further in view of US 2023/0346081 (Bramani)
Bramani teaches an article of footwear wherein cleats (lugs) can be added to different types of footwear including safety footwear and athletic footwear; at least see ¶0006,0009,0036,0039,0129 and claim 26.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by the combination above with cleats on the bottom surface of the sole (i.e. a cleated athletic shoe), as taught by Bramani, to provide better traction for the wearer.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 1 above, and further in view of US 1309958 (Phillips)
Phillips teaches an article of footwear wherein the piece (pad 12) disposed under the tongue (11), is a single piece with a uniform thickness as shown in figure 1-3.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by the combination above with tongue foam piece, to be formed of a single piece with a uniform thickness, in view of Phillips, to save on cost and construction.
Response to Arguments
Applicant's arguments filed 4/17/2026 have been fully considered but they are not persuasive.
Drawing Objection
With regard to claim 18, applicant argues the tongue foam (910) in figure 10 is a non-limiting example of the tongue foam (910) and argues “the claim recitation ‘tapered thickness’ is understood without illustration and therefore meets the requirement of 37 CFR 1.83.
In response, 37 CFR 1.83(a) reproduced below requires applicant to show every feature of the invention specified in the claims.
37 CFR 1.83(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
Art Rejections
Applicant argues Cagliari does not disclose the comfort element 5 under the fastening system.
In response, the examiner agrees with this argument. However, in the rejection above Cagliari is combined with Hirayama which teaches the fastening system as claimed.
Applicant arguments with regard to Portillo are moot inasmuch as the claims have been amended and additional prior art has been added. Such as Park which teaches a safety shoe with the fastening system being shoe laces to prevent shoes from coming off; see ¶0003. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify provide the laces as taught by Portillo to have shoelaces extending up to the shoe opening of the shoe as shown in figure 1 of Park, to prevent the shoes (article of footwear) from coming off. The shoelaces extend from near the top of the shoe and therefore the tongue foam piece of the article of footwear as taught above would be disposed under the fastening system (i.e. shoelaces). Moreover, there is also Teehan, Teehan teaches an article of footwear wherein the piece (42,44) disposed under the tongue (16), both (42,44;16) continuously tapering from its one end to the other end, see figure 6. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the article of footwear as taught by the combination above with the tongue and the tongue foam piece, to continuously taper from one end to the other end, as taught by Teehan, to provide the article of footwear with a more uniform shape.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, 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, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556
Prosecution Insights