,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 .
Status of the Claims
This action is in response to the applicant’s filing on October 09, 2024 and April 10, 2026. Claims 1-34, 50-54 and 81 are pending, and claims 30-34, 51-54 & 81 are withdrawn. Claims 1-29 & 50 are examined based on the election/restriction filed April 10, 2026 and claims 35-49 and 55-80 and 82-85 have been cancelled. Therefore claims 1-29 & 50 have been examined below.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 09,2024, September 16, 2025, and April 10, 206 has/have been considered by the Examiner.
Election/Restrictions
Applicant's election with traverse of Invention I drawn to claims 1 to 29 and claim 50 drawn to a product that is the skate boot having a body, an ankle portion, a tendon guard with an over molding process. The traversal is on the ground(s) that the Examiner has failed to establish that a search of the complete application would be an undue burden as required by MPEP 803. MPEP 803 states: "[i]f the search and examination of an entire application can be made without serious burden, the examiner must examine it on the merits, even though it includes claims to independent or distinct inventions." It is Applicants' position that the Examiner
has failed to establish that a search of the entire application constitutes an undue burden. Examiner respectfully disagrees as provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
• Group 1, claim(s) 1 - 29, drawn to a product that is the skate boot having a body, an
ankle portion, a tendon guard with an over-molding process.
• Group 2, claim(s) 30 - 34, drawn to a product that is the skate boot having a body, an
ankle portion, a toe portion, a reinforcement to a toe portion, with an injection molding
process.
• Group 3, claim(s) 51 - 54 & 81 drawn to a sleeve for thermoforming a skate boot of a
skate on a foot of a user, the skate boot comprising a cavity configured to receive the
user's foot, the sleeve comprising: - a covering configured to cover at least part of the
skate boot; and - a fastening system configured to fasten the covering to the skate boot
and support the skate boot while the skate boot is being thermoformed with the user's foot in the skate boot.
The requirement is still deemed proper and is therefore made FINAL.
Specification – Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The applicant is reminded that the abstract should be on a separate sheet without including any drawing or other information (publication classification , PCT Inventors etc.).
Appropriate correction is required.
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 “wherein the anchor of the tendon guard extends forwardly and reaches the lacing system” must be shown or the feature(s) canceled from the claims 6. No new matter should be entered.
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 “wherein the anchor of the tendon guard engages and is affixed to the lacing system” must be shown or the feature(s) canceled from the claim 7. No new matter should be entered.
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 “an anchor extending forwardly and overmolded by each of the medial ankle portion and the lateral ankle portion of the body of the skate boot” must be shown or the feature(s) canceled from the claims 27. No new matter should be entered.
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 tendon guard comprises an anchor extending forwardly, engaging and affixed to the lacing system” must be shown or the feature(s) canceled from the claim 28. No new matter should be entered.
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 “an anchor extending forwardly, engaging and affixed to each of the medial lacing member and the lateral lacing member” must be shown or the feature(s) canceled from the claim 29. 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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-5, 17-18, 25-26, 50 are rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 2021/0401109 A1 to Ivan LABONTE, (herein after "Labonte”).
As to Claim 1, Labonte discloses a skate boot (skate boot 22; Labonte) for a skate (skate 10; figs. 1 & 3; Labonte), the skate boot (skate boot 22; Labonte) being configured to receive a foot (11) of a user (Paragraph 0154; Labonte) and comprising: a body (body 30; Labonte) comprising a medial side portion (66) configured to face a medial side (66) of the user's foot (11), a lateral side portion (68) configured to face a lateral side of the user's foot (11), an ankle portion (ankle portion 64, 74, 76, 82; Labonte) configured to receive an ankle of the user (Paragraph 0145; Labonte), and a heel portion (heel portion 62; Labonte) configured to receive a heel of the user's foot (Paragraph 0145; Labonte); and a tendon guard (tendon guard 35; Labonte)(Paragraph 0453; Labonte ~ regarding overmolding) configured to face an Achilles tendon of the user and extending upwardly from the body (30) of the skate boot (22) (Paragraphs 0145 & 0251; Labonte); wherein: the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) is overmolded onto the tendon guard (tendon guard 35; Labonte)(Paragraph 0453-0455; Labonte ~ regarding overmolding); and the tendon guard (tendon guard 35; Labonte) but fails to disclose comprises an anchor extending forwardly and overmolded by the ankle portion of the body of the skate boot.
A different embodiment of Labonte discloses comprising an anchor (portion 744; Labonte or Figure 186) extending forwardly (Figure 186; Labonte) and overmolded by the ankle portion (ankle portion 64, 74, 76, 82; Labonte) of the body (30) of the skate boot (Paragraphs 0145 & 0417, 0453; Labonte ~ regarding overmolding).
Therefore, based on Labonte teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Labonte’s tendon guard to include comprises an anchor extending forwardly and overmolded by the ankle portion of the body of the skate boot, as doing so would provide enhanced comfort and proper fit for the wearer.
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As to Claim 2, Labonte discloses the skate boot of claim 1, wherein: the ankle portion (ankle portion 64, 74, 76, 82; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) comprises a medial ankle portion (medial side portion 74; Labonte) configured to face a medial side of the user's ankle and a lateral ankle portion (lateral side portion 76; Labonte) configured to face a lateral side of the user's ankle (Paragraph 0145 and Figure 70; Labonte); and the anchor (portion 744; Labonte or Figure 186) of the tendon guard (tendon guard 35; Labonte) extends forwardly and is overmolded by at least one of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte)(Paragraphs 0021, 0145, 0417-0418, 0421 and Figures 70, 0186; Labonte).
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As to Claim 3, Labonte discloses the skate boot of claim 2, wherein the anchor (portion 744; Labonte or Figure 186) of the tendon guard (tendon guard 35; Labonte) extends forwardly and is overmolded by each of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Paragraphs 0021, 0145, 0417-0418, 0421 and Figures 3,70, 0186; Labonte).
As to Claim 4, Labonte discloses the skate boot of claim 2, wherein: the medial ankle portion (medial side portion 74; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) comprises a medial depression (medial depression 78; Labonte) for receiving a medial malleolus of the user's ankle (Paragraph 0145; Labonte); the lateral ankle portion (lateral side portion 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) comprises a lateral depression (lateral depression 80; Labonte) for receiving a lateral malleolus of the user's ankle (Paragraph 0145; Labonte) (Paragraphs 0145, 0417-0418, 0421 and Figures 3, 70, 0186; Labonte); and the anchor (portion 744; Labonte or Figure 186) of the tendon guard (tendon guard 35; Labonte) extends above at least one of the tendon guard (tendon guard 35; Labonte) medial depression (medial depression 78; Labonte) and the lateral depression (lateral depression 80; Labonte) of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Figures 3, 186; Labonte) and extends forwardly to overlap the at least one of the tendon guard (tendon guard 35; Labonte) medial depression (medial depression 78; Labonte) and the lateral depression (lateral depression 80; Labonte) of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) in a longitudinal direction of the skate boot (skate boot 22; Labonte) (Paragraphs 0145, 0417-0418, 0421 and Figures 3, 70, 0186; Labonte).
As to Claim 5, Labonte discloses the skate boot of claim 4, wherein the anchor (portion 744; Labonte or Figure 186) of the tendon guard (tendon guard 35; Labonte) extends above each of the tendon guard medial depression (medial depression 78; Labonte) and the lateral depression (lateral depression 80; Labonte) of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Figures 3, 186; Labonte) and extends forwardly to overlap each of the tendon guard (tendon guard 35; Labonte) medial depression (medial depression 78; Labonte) and the lateral depression (lateral depression 80; Labonte) of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) in the longitudinal direction of the skate boot (skate boot 22; Labonte) (Paragraphs 0145, 0417-0418, 0421 and Figures 3, 70, 0186; Labonte).
As to Claim 17, Labonte discloses the skate boot of claim 1, wherein: the medial side portion (66), the lateral side portion (68), the ankle portion (ankle portion 64, 74, 76, 82; Labonte), and the heel portion (heel portion 62; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) are injection molded with one another (Pages 103, Lines 517 and Page 115, Lines 25-31; Labonte); and the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) includes a plurality of injection-molded layers (85 l -85L; Labonte) that are injection molded with one another (Pages 103, Lines 517 and Page 115, Lines 25-31; Labonte).
As to Claim 18, Labonte discloses the skate boot of claim 17, wherein respective ones of the injection- molded layers (85 l -85L; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) are overmolded onto the tendon guard (tendon guard 35; Labonte)(Pages 111- Lines 21-31 and Page 120- Lines 20-25; Labonte).
As to Claim 25, Labonte discloses the skate boot of claim 1, wherein a material of the tendon guard (tendon guard 35; Labonte) is different from a material (734) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Paragraph 0419; Labonte ~ regarding wherein a material of the tendon guard is different from a material of the body of the skate boot).
As to Claim 26, Labonte discloses the skate boot of claim 25, wherein the material of the tendon guard (tendon guard 35; Labonte) is less stiff than the material (734) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Paragraph 0419; Labonte).
As to Claim 27, Labonte discloses a skate boot (skate boot 22; Labonte) for a skate (skate 10; figs. 1 & 3; Labonte), the skate boot (skate boot 22; Labonte) being configured to receive a foot (11) of a user and comprising: a body (body 30; Labonte) comprising a medial side portion (66) configured to face a medial side (66) of the user's foot (11),
a lateral side portion (68) configured to face a lateral side of the user's foot (11),
an ankle portion (ankle portion 64, 74, 76, 82; Labonte) configured to receive an ankle of the user (Paragraph 0145; Labonte), and a heel portion (heel portion 62; Labonte) configured to receive a heel of the user's foot (Paragraph 0145; Labonte); and a tendon guard (tendon guard 35; Labonte) configured to face an Achilles tendon of the user and extending upwardly from the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Paragraphs 0145 & 0251; Labonte); wherein: the ankle portion (ankle portion 64, 74, 76, 82; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) comprises a medial ankle portion (ankle portion 64, 74, 76, 82; Labonte) configured to face a medial side of the user's ankle and a lateral ankle portion (74,76; Labonte) configured to face a lateral side of the user's ankle (Paragraph 0145; Labonte); the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) is overmolded onto the tendon guard (tendon guard 35; Labonte)(Paragraphs 0145 & 0453-0455; Labonte ~ regarding overmolding); and the tendon guard (tendon guard 35; Labonte) but fail to disclose comprising an anchor extending forwardly and overmolded by each of the medial ankle portion and the lateral ankle portion of the body of the skate boot.
A different embodiment of Labonte discloses comprising an anchor (portion 744; Labonte or Figure 186) extending forwardly (Figure 186; Labonte) and overmolded by each of the medial ankle portion and the lateral ankle portion (medial ankle portion and the lateral ankle portion 74 & 76; Labonte) of the body (body 30; Labonte) of the skate boot (skate boot 22; Labonte) (Paragraphs 0417, 0453; Labonte ~ regarding overmolding).
Therefore, based on Labonte teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Labonte’s tendon guard to include comprising an anchor extending forwardly and overmolded by each of the medial ankle portion and the lateral ankle portion of the body of the skate boot, as doing so would provide enhanced comfort and proper fit for the wearer.
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As to Claim 50, Labonte discloses a skate (skate 10; figs. 1 & 3; Labonte) comprising the skate boot (skate boot 22; Labonte) of any one of claim 1.
Claims 19-24 are rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 2021/0401109 A1 to Ivan LABONTE, (herein after "Labonte”) as to claim 1 above and further in view of World Internation Patent Publication No. WO 2021/237365 A1 to Ivan LABONTE, (herein after "WO Labonte”).
As to Claim 19, Labonte discloses the skate boot of claim 1, wherein the anchor (portion 744; Labonte or Figure 186) of the tendon guard (tendon guard 35; Labonte) but fail to disclose comprises an interlocking hollow space and the body of the skate boot comprises an interlocking part extending in the interlocking hollow space to interlock the tendon guard and the body of the skate boot.
Labonte teaches skates (Figure 176B; WO Labonte) and discloses comprising an interlocking hollow space (the portion 732 is an interlocking hollow space; WO Labonte) and the body (body 30; WO Labonte) of the skate boot (skate boot 22; WO Labonte) comprises an interlocking part (the portion 732 is an interlocking hollow space; WO Labonte) extending in the interlocking hollow space (Figure 176B; WO Labonte) to interlock the tendon guard (tendon guard 35; Labonte and Figure 177B-177E WO Labonte) and the body (body 30; WO Labonte) of the skate boot (skate boot 22; WO Labonte) (Pages 108-109, Lines 27-31 and 1-15 respectively; WO 2021237365 Labonte teaching "In this example, the portion 732 is an interlocking hollow space and the tendon guard 35 comprises an interlocking part extending in the interlocking hollow space 732 to interlock the tendon guard 35 and the shell 30.")(Figures 176 B, and 177 A-E; Labonte ~ regarding interlocking hollow space).
Therefore, based on WO Labonte’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Labonte’s tendon guard to include comprises an interlocking hollow space and the body of the skate boot comprises an interlocking part extending in the interlocking hollow space to interlock the tendon guard and the body of the skate boot, as doing so would provide enhanced stiffness for enhancing durability and reducing occurrence of breakage of the guard for the wearer.
As to Claim 20, Labonte/ WO Labonte disclose the skate boot of claim 19, wherein the interlocking hollow space (Figure 176B; WO Labonte) includes a hole (Pages 108-109, Lines 27-31 and 1-15 respectively; WO 2021237365 ~regarding the interlocking hollow space including a hole) (Figures 176 B, and 177 A-E; WO Labonte).
As to Claim 21, Labonte/ WO Labonte disclose the skate boot of claim 19, wherein the interlocking hollow space (Figure 176B; WO Labonte) includes a recess (Pages 108-109, Lines 27-31 and 1-15 respectively; WO 2021237365 ~regarding the interlocking hollow space including a recess) (Figures 176 B, and 177 A-E; WO Labonte).
As to Claim 22, Labonte/ WO Labonte disclose the skate boot of claim 19, wherein the interlocking hollow space (Figure 176B; WO Labonte) comprises a plurality of voids (Pages 108-109, Lines 27-31 and 1-15 respectively; WO 2021237365 ~regarding the interlocking hollow space including a voids) (page I 09, line 17 to page 110, line 1; WO Labonte); (Figures 176 B, and 177 A-E; WO Labonte).
As to Claim 23, Labonte/ WO Labonte disclose the skate boot of claim 22, wherein the voids include holes (Pages 108-109, Lines 27-31 and 1-31 respectively; WO Labonte) (page 109, line 17 to page 110, line 1).
As to Claim 24, Labonte/ WO Labonte disclose the skate boot of claim 22, wherein the voids include recesses (page 109, line 17 to page 110, line 1; WO Labonte).
Allowable Subject Matter
Claims 6-16 and 28-29 are allowable over the prior art of record. However, claim 6-7 (and the claims that depend therefrom) and 28-29 are objected to due to drawing objections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and can be found in PTO-892 for submitted herewith. The cited
prior art reference to Gan (US 10406424-B2) is of particular relevance to the
claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AKWOKWO REDHEAD whose telephone number is (571)272-7581. The examiner can normally be reached Monday - Friday7:00 AM to 4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON OSTRUP can be reached at 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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/AKWOKWO OLABISI REDHEAD/Examiner, Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732
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