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 .
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) 11,13,14 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2407556 (Kleven).
Regarding claims 11,13,14 and 19-20, Kleven discloses A system for securing pre-fabricated components of footwear, the system comprising:
a pre-fabricated upper (11) having a series of loops along a portion of a peripheral surface of the first pre-fabricated upper (prongs 13 (see figure 3) to form loops as shown in figure 2),
a second pre-fabricated outsole (10) having a series of corresponding features configured to receive the series of loops, the features having openings or slots (12), the features being disposed along at least a portion of a peripheral surface of the pre-fabricated outsole; and a lace (L) configured to secure the series of loops in the series of corresponding features such as to secure the first pre-fabricated upper to the pre-fabricated outsole, wherein the lace is configured to pass through openings of the series of loops of the pre-fabricated upper when the series of loops are received through the series of corresponding features of the pre-fabricated outsole (see figures 1-2).
Regarding claim 13, see figure 4 showing the series of corresponding features of the pre-fabricated outsole are configured to have gaps between individual features of the series of corresponding features to provide flexibility when the footwear is worn (i.e. the gaps inherently provide flexibility to the footwear).
Regarding claim 14, see figures 4 showing the pre-fabricated upper comprises an upper portion and a lower portion, wherein the series of loops are disposed along a portion of a periphery of the lower portion of the pre-fabricated upper.
Regarding clam 19, the lace is inherently flexible, see figure 1-2 showing the lace flexing to extending through the components of the footwear as claimed.
Regarding claim 20, see col. 2, lines 40-44 teaching the lace is a plurality of flexible laces.
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 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kleven ‘556.
Kleven teaches a system as claimed (see the rejection above) except for the loops are formed from a from fabric, leather or woven polymer materials, or any combination thereof.
The examiner takes official notice that it is old and conventional to form the footwear uppers out of at least one of the materials listed. 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 system as taught by Kleven with the upper being made out of at least one of the material listed and/or any other suitable material to provide the footwear upper with conventional features well known in the art.
Allowable Subject Matter
Claims 21,23 and 25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 2/17/2025 have been fully considered but they are not persuasive.
Applicant argues Kleven is fundamentally incomparable to applicant’s and presents several argument which are MOOT inasmuch as these features are not claimed. For example, the following is NOT claimed “There is no loop passing through a slot”; “no removable lace-based retention”; “applicant’s inventive concept does not use tables, folding, or stitching for attachment” ; loops that pass through a slot in the outsole and are then locked externally by a separate linear lace; and “a different attachment method (folding and fastening back; not external locking)”. Applicant presents argument which appear to be with regard to the method of assembling the system together which is not being examined. The method of assembling maybe different from applicant’s but it is the system which is being claimed and the method of assembly if properly incorporated in the product claim would carry much less weight. The claims being examined are the system (i.e. A system) and applicant’s arguments should be directed to what is being claimed.
Applicant argues Kleven fails to teach a loop and argues the examiner incorrectly equates the “prongs 13” which function as tabs with applicant’s claimed “loops”.
In response, the second end of the prongs (13) loop back to the first end and are joined together as shown in figure 2 and described in col. 2, lines 18-34, and therefore are clearly loops. Moreover, the loops (102a) of applicant’s are similarly formed. See figure 2, showing the loop being formed by one end folded back on to itself and attached by what appears to be stitching (see the dash lines in figure 2).
Applicant argues the lacing (L) of Kleven does not “secure the series of loops (102a) in the series of corresponding features (i.e. the slot/opening 104b)” as recited in claim 11.
In response, the loops (as shown in figure 2 of Kleven) are secured in the feature (i.e. the slot 12) by the lace (L). If the lace (L) was cut or removed the prongs (13) forming the loop would not longer be properly secured to the outsole. In fact the loop would unfold and the prongs (13) would eventually slip out of the slot.
Applicant’s arguments with regard to Gill (see the last four lines on page 9) where convincing and therefore this rejection has been withdrawn.
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.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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.
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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