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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 5/21/26, with respect to the rejection(s) of claim(s) 19-22 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 U.S.C. 103.
Examiner notes that the indefiniteness set forth 112(b) rejections have been satisfied in the Remarks through clear reference to the specification. These rejections are withdrawn.
Applicant’s remarks directed toward the rejections under Pollack, U.S. patent 10,499,709, Durrell, U.S. Patent 11,375,774 are traversed. The amended limitation “attached” is very broad and does not adequately represent the structures set forth in the remarks. Furthermore, the prior meets this limitation (see rejection set forth below).
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.
Claim(s) 1-4, 6-7, 10-13, 15-16 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pollack, U.S. Patent 10,499,709 in view of Durrell, U.S. Patent 11,375,774.
Regarding Claim 1, insofar as the claim is understood, Pollack teaches:
A strip of woven material (400) having:
a longitudinal length (fig. 4A); and
a lateral width (fig. 4A);
the strip of woven material being folded to form a bottom end and a loop opposite the bottom end (see fig. 4C) within which the lace or tension member is disposed, the strip of woven material defining a center portion (see 404, 408, see 112 rejection above) and two end portions (see 402/406, see folded tails in fig. 4C, see 112 rejection above) along the lateral width with the two end portions being disposed on opposite sides of the center portion.
**Examiner’s Note: Examiner notes that the Pollack embodiment 400 is interpreted to teach woven material because embodiment 102/108 teaches woven material and the embodiment 400 shares this construction with embodiments 102/108108 (see Col 7, Lns 15-20 and see Col 7, Ln55 – Col 8, Ln 14 and see Col 8, Lns 26-37).
Pollack does not explicitly teach:
Wherein the bottom end is attached together to form or define a pre-curve in the guide such that prior to tensioning or application of any load to the guide via the lace or tension member, an upper end of the loop defines a curve that mimics or replicates a natural curve of the guide under load.
Durrell teaches a lace tension member comprising:
An element (123) wherein the bottom end is attached together (see below) to form or define a pre-curve in the guide such that prior to tensioning or application of any load to the guide via the lace or tension member, an upper end of the loop defines a curve that mimics or replicates a natural curve of the guide under load (see Col 5, Lns 45-49, see figs. 3-5). Note that element 123 is formed into a single element and is therefore considered “attached”.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Pollack with a pre-curved section as taught by Durrell because that would provide “enhanced durability”, as evidenced by Durrell, (see Col 5, Lns 40-57).
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Regarding Claim 2, in the instant combination, Pollack teaches:
The center portion is formed of a different material (see 408, see Col 9, Lns 20-25) than the two end portions such that the two end portions are more flexible than the center portion (see Fig. 4C, see ends beyond line 412) and such that the center portion has sufficient strength to resist compression along the lateral width of the guide (see Fig. 4C where the center with 408 is not collapsed) and thereby prevent the guide from bunching when the lace or tension member is tensioned (see Col 8, Lns 15-25, note connection between elements 108 and 408).
**Examiner's Note: Examiner notes that the above claim contains the claim language “thereby prevent the…member is tensioned”, which does not constitute a recitation of positively claimed structural elements, but a recitation of function which the claimed device must be capable. The prior art of Pollack-Durrell, is interpreted as capable of these functions. See MPEP 2111.04 [R-3], see Ex Parte Marsham, 2 USPQ2d 1647 (1987).
Regarding Claim 3, in the instant combination, Pollack teaches:
Wherein the center portion is formed of a thicker and firmer material in comparison with the two end portions (see fig. 4C, element 408 which is clearly thicker than the end portions and further note that element 400 can be made of the same material throughout, aside from 408, see Col 8, Lns 15-25, therefore adding a thicket material would necessarily make the center portion firmer).
Regarding Claim 4, in the instant combination, Pollack teaches:
Wherein the center portion and two end portions are formed or woven together such that the strip of woven material is a solitary or single fabric material (Col 7, Lns 55-65 and note connection and similarities between elements 108 and 408).
Regarding Claim 6, the prior arts are silent with regard to the specific range of relative widths of the center portion and two end portions. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Pollack-Durrell with the claimed relative widths because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see MPEP 2144.05 [R-5] and applicant has not provided any criticality to the claimed relative widths nor has applicant stated any specific problem solved by or unforeseen result stemming from the use of the claimed relative widths.
Regarding Claim 7, in the instant combination, Pollack teaches angles of the pre-curve, but is silent with regard to the specific range being between 40° and 80°. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Pollack-Durrell with the claimed angle range because it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see MPEP 2144.05 [R-5]) and applicant has not provided any criticality to the claimed angle range nor has applicant stated any specific problem solved by or unforeseen result stemming from the use of the claimed angle range nor provided any other criticality to the claimed dimension.
Regarding Claims 10-13, see rejections of Claims 1-4 above which teach the limitations of these claims.
Regarding Claims 15-16, see rejections of Claims 6-7 above which teach the limitations of these claims.
Regarding Claims 19-22, Examiner notes that these claims are considered to be product-by-process claims due to the limitations “…providing a strip of material…“, “…folding the strip of material…”, “…inserting a tool…”, and “…attaching or coupling a bottom end of the loop together…”. “Even though product-by-process claims are limited by and defined by the process, the patentability of the product does not depend on its method of production. Determination of patentability is based on the product itself. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 227 USPQ 964, 966. See MPEP 2113.
Claim(s) 5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pollack-Durrell as applied to claim 1 above, and further in view of Aceves Tinajero, U.S. Patent 10,907,282.
Regarding Claim 5, Pollack-Durrell does not teach:
Wherein the guide does not include any materials positioned on or coupled with an inner surface of the loop such that the lace or tension member directly contacts an inner surface of the strip of woven material.
Aceves Tinajero teaches:
A guide (232) does not include any materials positioned on or coupled with an inner surface of the loop (monofilament or multi-filament yarns) such that the lace or tension member directly contacts an inner surface of the strip of material (see figs. 3-5).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Pollack-Durrell with the teachings of Aceves Tinajero such that that guide of Pollack-Durrell would not include any materials positioned on or coupled with an inner surface of the loop such that the lace or tension member directly contacts an inner surface of the strip of woven material because Pollack-Durrell teaches the preferred use of woven materials (see rejection of Claim 1) and also teach a desire to reduce manufacturing costs and/or increase manufacturability (Pollack, Col 8, Ln 54 – Col 9, Ln 2) and providing the materials of Aceves Tinajero which do not require element 408 or the manufacturing step of adding element 408 and would therefore reduce the manufacturing costs and increase manufacturability, as set forth as desirable in the instant combination through Pollack.
Regarding Claim 14, see rejections of Claim 5 above which teach the limitations of these claims in light of the rejection of Claim 10 above.
Claim(s) 8 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pollack-Durrell as applied to claim 1 above, and further in view of Klein, U.S. Patent 11,596,205.
Regarding Claim 8, Pollack-Durrell does not teach:
Wherein the guide further comprises a shim that is positioned within the loop to aid in maintaining the loop in an open configuration.
Klein teaches a lace system with:
A guide (26, 28A, B) further comprises a shim (18) that is positioned within a loop to aid in maintaining the loop in an open configuration.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide Pollack-Durrell with a suitable shim, as taught by Klein, because that would provide greater friction protection (see Col 5, Lns 11-36) for the guide by covering a greater surface area and the shim would also help maintain the loop configuration if the strip material loses its pre-curve over time.
Regarding Claim 17, see rejections of Claim 8 above which teach the limitations of these claims in light of the rejection of Claim 10 above.
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pollack-Durrell as applied to claims 1 and 8 above, and further in view of Worswick, U.S. Patent 10,640,920.
Regarding Claim 9, Pollack-Durrell does not teach:
Wherein the shim is positioned within the loop so that the shim does not contact the lace or tension member when the lace or tension member is under tension.
Worswick teaches:
A shim (see below) is positioned within a loop so that the shim would not contact a lace or tension member when the lace or tension member is under tension.
It would have been obvious to one of ordinary skill in the art to provide the shim of Pollack-Durrell with the size and shape of the shim of Worswick because that would reduce the volume of the shim which would reduce weight which is desirable in athletic footwear because saving weight in footwear saves energy for the user/wearer which can improve athletic performance.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J SULLIVAN whose telephone number is (571)270-5218. The examiner can normally be reached IFP, Typically M-Th, 8:00-6:00, regular Fr availability.
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/MATTHEW J SULLIVAN/Examiner, Art Unit 3677
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