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 .
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.
DETAILED ACTION
This is in response to the claims filed April 10, 2026, in which claims 1-2, 5, 7-19, 21-22, and 24-25 were presented for examination, of which claims 7 and 13-19 were withdrawn by the Applicant, and claims 8-12 and 22 were withdrawn by the Examiner, due to be drawn to a nonelected embodiment, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Species I, Sub-Species A (Fig. 1A-4) in the reply filed on April 10, 2026 is acknowledged. The traversal is on the ground(s) that “Traversal is made on the grounds that the claims identified as part of Species II, III, and IV should be regrouped and examined together.
Examination of the claims identified under Species II, III, and IV together would impose no undue search burden on the Examiner, as the identified claims under Species II, III, and IV are directed to the same type of structural element within the same type of article. A search for prior art relating to foot wrapping members on a skate boot would necessarily encompass features that are common to all those claims. Requiring separate elections among these closely related embodiments would serve no purpose other than to delay prosecution. This is contrary to the goal of compact opposition.” This is not found persuasive because Species IV (Fig. 6A-6C) contains the structure of a “vamping portion” specific to that embodiment, as presented in Applicants Specification filed December 11, 2024 in Par. 0078. This would require a search outside of the CPC and USPC classes that the elected Species falls into, leading to a serious search burden on the Examiner; unless Applicant believes the invention in Fig. 6A-6C is an obvious variant of the elected embodiment.
The restriction requirement set forth in the previous Office Action is maintained
as being proper. However, upon further consideration, Species III encompass subject matter found to be in the elected Species II. As such, Examiner Marin has grouped in the embodiment of Species III (Fig. 5A-5B, claims 1, 5, 21, and 24) with the embodiment presented in Species II.
The requirement is still deemed proper and is therefore made FINAL.
As MPEP 821 Treatment of Claims Held To Be Drawn to Nonelected Inventions states,
Claims found to be drawn to nonelected inventions, including claims drawn to nonelected species or inventions that may be eligible for rejoinder, are treated as indicated in MPEP § 821.01 through § 821.04.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
The following claims are withdrawn from consideration as they are directed to a nonelected invention: Claims 8-12 and 22. See 37 CFR 1.142(b).
These claims are not drawn to the elected invention as required by the restriction, due to including structural limitations that are not found within the elected Species, due to the “vamping structure” being claimed.
Therefore, Examiner has withdrawn claims 8-12 and 22.
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, 2, 5, 21 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over CHAMPAGNE et al. “Champagne” (US PG Pub. 2020/0359734).
Regarding claim 1, Champagne discloses a skate boot (10, Fig. 1-2) comprising:
a rigid boot shell (30) having at least a heel portion (see annotated Fig. 2 below), a sole portion (see annotated Fig. 2 below), and a medial quarter portion (see annotated Fig. 2 below) and a lateral quarter portion (see annotated Fig. 2 below) each extending forward of the heel portion towards a front end of the skate boot (see annotated Fig. 2 below), the medial quarter portion and the lateral quarter portion defining a foot receiving cavity in between them, the foot receiving cavity having a volume for receiving at least a metatarsal region of a wearer's foot (Par. 0045, lines: 1-3, “for receiving…foot” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function. Examiner notes the cavity is shown between sides 27 and 25 in Fig. 1 and 2);
a tongue (34) extending between the medial quarter portion and the lateral quarter portion above the volume (examiner notes as shown in Fig. 1);
a lacing system (47) overlying the tongue (34) and linking the medial quarter portion and the lateral quarter portion (examiner notes as shown in Fig. 1); and
a foot wrapping member (312, Fig. 2) extending from the lateral quarter portion (examiner notes as shown in Fig. 1 and annotated Fig. 2 below).
PNG
media_image1.png
854
1011
media_image1.png
Greyscale
Fig. 1-Examiner Annotated
\
PNG
media_image2.png
506
786
media_image2.png
Greyscale
Fig. 2-Examiner Annotated
Champagne does not explicitly disclose the foot wrapping member movable relative to the rigid boot shell in a downward direction towards the sole portion of the rigid boot shell so as to vary the volume at least from a lateral side of the foot receiving cavity along the metatarsal region of the wearer's foot.
However, Champagne does disclose the material of the foot wrapping member (312) can be leather (Par. 0059). One of ordinary skill in the art would recognize due to the material of foot wrapping member being of “leather”, it is capable of moving, to a degree, in a downward direction due to tightening forces from the laces, 47, and doing so would result in varying cavity space. Examiner also notes the limitation “movable relative…foot” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the foot wrapping member disclosed by Champagne, would be capable of being moveable, to a degree, due to the material of it and forces from the ski boots tightening mechanism, in order to enhance user fitment when the ski boot is in use.
Regarding claim 2, Champagne discloses the lateral quarter portion has an edge (see annotated Fig. 2 above) extending from a front end of the rigid boot shell, the edge defining a notch (see annotated Fig. 1 above), the foot wrapping member extending in the notch (Examiner notes shell 30 includes a “notch” due to the annotated front end defining a recessed space with respect to the fully assembled ski boot shown in Fig. 1. In Fig. 1, it is shown that foot wrapping member 312 is “extending in the notch” due to extending along the annotated edge of the lateral quarter portion).
Regarding claim 5, Champagne discloses the foot wrapping member is a first foot wrapping member (312), the skate boot including a second foot wrapping member (311) secured to the medial quarter portion (as shown in Fig. 1), the second foot wrapping member movable relative to the rigid boot shell (“movable relative…foot” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function. One of ordinary skill in the art would recognize due to the material of foot wrapping member (312) being of “leather” (Par. 0059), it is capable of moving, to a degree, in a downward direction due to tightening forces from the laces, 47, and doing so would result in varying cavity space).
Regarding claim 21, Champagne discloses the foot wrapping member is a first foot wrapping member (312), the skate boot including a second foot wrapping member (311) secured to the medial quarter portion (as shown in Fig. 1), the second foot wrapping member movable relative to the rigid boot shell (“movable relative…foot” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function. One of ordinary skill in the art would recognize due to the material of foot wrapping member (312) being of “leather” (Par. 0059), it is capable of moving, to a degree, in a downward direction due to tightening forces from the laces, 47, and doing so would result in varying cavity space).
Regarding claim 25, Champagne discloses further comprising a foot wrapping member (312) extending from the lateral quarter portion, in the notch (as shown in Fig. 1, examiner notes In Fig. 1, it is shown that foot wrapping member 312 is “extending in the notch” due to extending along the annotated edge of the lateral quarter portion).
Champagne does not explicitly disclose the foot wrapping member movable relative to the rigid boot shell in a downward direction towards the sole portion of the rigid boot shell so as to vary the volume at least from a lateral side of the foot receiving cavity along the metatarsal region of the wearer's foot.
However, Champagne does disclose the material of the foot wrapping member (312) can be leather (Par. 0059). One of ordinary skill in the art would recognize due to the material of foot wrapping member being of “leather”, it is capable of moving, to a degree, in a downward direction due to tightening forces from the laces, 47, and doing so would result in varying cavity space. Examiner also notes the limitation “movable relative…foot” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the foot wrapping member disclosed by Champagne, would be capable of being moveable, to a degree, due to the material of it and forces from the ski boots tightening mechanism, in order to enhance user fitment when the ski boot is in use.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 24 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Champagne.
Regarding claim 24, Champagne discloses a skate boot (10, Fig. 1 and 2) comprising: a rigid boot shell (30) having at least a heel portion, a sole portion, and medial and lateral quarter portions extending forward of the heel portion towards a front end of the skate boot (see annotated Fig. 1 and 2 for claimed structures), the medial and lateral quarter portions defining a foot receiving cavity in between them, the foot receiving cavity having a volume for receiving at least a metatarsal region of a wearer's foot (Par. 0045, lines: 1-3, “for receiving…foot” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function. Examiner notes the cavity is shown between sides 27 and 25 in Fig. 1 and 2);, the lateral quarter portion having an edge extending from a front end of the rigid boot shell, the edge defining a notch (see annotated Fig. 1 and 2 above, Examiner notes shell 30 includes a “notch” due to the annotated front end defining a recessed space with respect to the fully assembled ski boot shown in Fig. 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, 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, ALISSA TOMPKINS can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
Prosecution Insights