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 Amendment
Applicant’s amendment filed on 9/11/2025 has been received; Claims 1-10 are pending.
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 .
Claims 1-10 are being treated on the merits.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,127,630. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are in regards to similar claim matter even though different term language is used. Also, the current application is broader than the patented invention.
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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Dickerson (USPN 773,719) and Connor (US 2009/0235485).
Regarding Claim 1, Dickerson discloses an apparatus (Figures 1-3) configured to a shoe (A, Figure 1), the shoe having a first shoe flap and a second shoe flap (V, Figures 2, the flaps on either side of the tongue region/slit), wherein individual ones of the shoe flaps (one on each side of the tongue) include an interior side (Figure 1 & 2), individual exterior sides (Figures 1 & 2), and individual sets of one or more shoelace eyelets (Figure 2, one on each side), the apparatus comprising a connector system (C & b, Figures 1-3, Page 1, lines 44-48). Dickenson does not specifically disclose the claimed connector system. However, Connor discloses an intermediate connector (20) including an intermediate plane (32), a first exterior protrusion (34), and a second interior protrusion (24), wherein the intermediate plane is configured to sit on an exterior side of a flap (2), wherein the first exterior protrusion extends from the intermediate plane in the exterior direction to couple with a primary body connector (40) of a primary body (4), the second interior protrusion is configured to extend from the intermediate plane in the interior direction towards the flap to couple with another protrusion (14), an interior connector (12) including an interior plane (Figure 1, plane of 12) and a third protrusion (14), wherein the interior plane is configured to sit on the interior side of the shoe flap and directly below a shoe flap (Figure 1), the third protrusion extending from the interior plane in the exterior direction towards the flap to couple with the second interior protrusion (Figure 1), and wherein, responsive to the first exterior protrusion of the intermediate connector being coupled with the primary body connector of a primary body (Figure 1), and the third protrusion of the interior connector being coupled with the second interior protrusion of the intermediate connector (Figure 1), the primary body is secure to the shoe and the intermediate connector and the interior connector are in a secured configuration (Figure 1). It would have been obvious to one of ordinary skill in the art to modify the connector system of Dickson for the connector system of Connor in order to securely secure a body to a shoe. Also, such modification would be considered a mere choice of a preferred optimum configuration for the connector system as a matter of “obvious to try” as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
Regarding Claim 2, the combination of Dickson and Connor disclose the primary body includes one or more primary body connectors (Dickson, Figures 1-3 & Connor, Figure 1), wherein the one or more primary body connectors are positioned in an arrangement similar to an arrangement of the one or more shoelace eyelets (Dickson, Figures 1-3 & Connor, Figure 1), such that individual ones of the primary body connectors are aligned with individual ones of the one or more shoelace eyelets responsive to the primary body being placed on the exterior surface of the shoe (Dickson, Figures 1-3 & Connor, Figure 1).
Regarding Claim 3, the combination of Dickson and Connor disclose individual ones of the one or more primary body connectors are capable of being detached from the primary body (Dickson, Figures 1-3 & Connor, Figure 1).
Regarding Claim 4, the combination of Dickson and Connor disclose the first exterior protrusion of the intermediate connector forms a shape similar to a shape of an internal cavity formed of the primary body connector (Dickson, Figures 1-3 & Connor, Figure 1), such that the first exterior protrusion is inserted into the internal cavity formed of the primary body connector (Dickson, Figures 1-3 & Connor, Figure 1).
Regarding Claim 5, the combination of Dickson and Connor disclose the second protrusion includes a proximal and distal end to the intermediate plane (Figure 1, 28/26), wherein an internal cavity is formed of the distal end of the second protrusion (Para. 22, hollow boss), wherein the third protrusion of the interior connector forms a shape similar to the shape of the internal cavity of the second protrusion of the intermediate connector (Figure 1); the second protrusion is inserted into the internal cavity of the third protrusion (Figure 1). The combination of Dickson and Connor do not specifically disclose the third protrusion is inserted into the internal cavity of the second protrusion. It, however, would have been obvious to one having ordinary skill in the art before the effective filing date to have the third protrusion is inserted into the internal cavity of the second protrusion, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art.
Regarding Claim 6, the combination of Dickson and Connor disclose the second protrusion of the intermediate connector is coupled with the third protrusion of the interior connector by one or more of a screw-like mechanism, a snapping mechanism, a button mechanism, or a magnet mechanism (Connor, Para. 22-24).
Regarding Claim 7, the combination of Dickson and Connor disclose the shape of the second interior protrusion of the intermediate connector is cylindrical and similar in diameter to the shoelace eyelet (Dickson, Figures 1-3 & Connor, Figure 1).
Regarding Claim 8, the combination of Dickson and Connor disclose the intermediate plane encompasses the intermediate connector (Dickson, Figures 1-3 & Connor, Figure 1), and wherein the interior plane encompasses the interior connector (Dickson, Figures 1-3 & Connor, Figure 1).
Regarding Claim 9, the combination of Dickson and Connor disclose the intermediate plane of the intermediate connector has a diameter that is similar or larger than the diameter of the shoelace eyelet of the shoe flap, such that the intermediate plane is prevented from passing through the shoelace eyelet (Dickson, Figures 1-3 & Connor, Figure 1).
Regarding Claim 10, the combination of Dickson and Connor disclose the interior plane of the interior connector has a diameter similar to or larger than the diameter of the shoelace eyelet of the shoe flap, such that the interior plane is prevented from passing through the shoelace eyelet (Dickson, Figures 1-3 & Connor, Figure 1).
Response to Arguments
Applicant's arguments filed 7/29/2025 have been fully considered but they are not persuasive.
Applicant Remarks: Applicant asserts Connor is non-analogous art and the combination of references is insufficient.
Examiner respectfully disagrees. Claimed invention need not be expressly suggested in any one or all of the references. Rather, the test for obviousness is what the combined teachings of the applied references, taken as a whole, would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) and In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Both inventions area analogous since they are in the field of attaching flaps to each other by using connectors. Therefore, to modify for further customization is a proper. The law does not require that references be combined for the reasons contemplated by the inventor as long as some motivation or suggestion to combine them is provided by the prior art taken as a whole. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHARINE KANE whose telephone number is (571)272-3398. The examiner can normally be reached Mon-Fri 9am-6pm EST.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732