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 § 112
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
In claim 1, line 4, the phrase “wherein the single body is trapped inside the sole” is unclear and indefinite. As understood the cover covers over the heel and sole of the footwear (3) and is not “inside of the sole”. Moreover, applicant is defining the cover with respect to the sole of the footwear which hasn’t been claimed in combination. When referring to the footwear and or components (e.g. heel) of the footwear applicant should use functional language (e.g. adapted to) to clarify the footwear is not being claimed in combination with the cover.
In claim 1, lines 5-6, the phrase “wherein said inside of the single body includes a heel section including a cavity forming a chamber, a sole section, a periphery that forms an edge” is unclear and indefinite. The “sole section” and the “periphery that forms and edge” are not parts of the inside of the single body (1). Looking at figure 4 of applicant’s application, an inside of the single body includes a chamber (7), and what appear to be another shallowing chamber forward of the heel chamber (7) and has a peripheral edge (4) which surrounds the inside of the single body.
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 1, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable US 2014/0075791 (Smith) in view of one of the following [D389992 (Rask) and/or D353258 (Issler) and/or US 2022/0361626 (Bidal)].
Smith discloses a cover (outsole cover 10) for a footwear comprising:
a single body made of a flexible material (single piece of elastic material (see ¶0032, lines 2-3 and ¶0035) and therefore is flexible) adapted to fit a sole of the footwear, the single body includes an inside side and an external side,
wherein said inside side of the single
wherein the external side of the single body includes an anti-skid surface (see ¶0039 which teaches the lower surface including a wide variety of tread patterns and designs).
Smith lacks teaching the ant-slip surface having a first anti-skid surface includes segments having different shapes and located at a center of the heel section and the sole section of the single body, wherein the first anti-skid surface is surrounding by a second anti-skid surface, wherein the second anti-skid surface is formed by segments of different shapes and irregularly arranged that are arranged around the entire periphery of the external side of the single body.
Rask, Issler and Bidal all disclose the ant-slip surface having a first anti-skid surface includes segments having different shapes and located at a center of the heel section and the sole section of the single body, wherein the first anti-skid surface is surrounding by a second anti-skid surface, wherein the second anti-skid surface is formed by segments of different shapes and irregularly arranged that are arranged around the entire periphery of the external side of the single body. See figures 1-7 of Rask; figures 1-5 of Issler and figure 2 of Bidal.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the anti-skip surfaces of Smith the ant-slip surface having a first anti-skid surface includes segments having different shapes and located at a center of the heel section and the sole section of the single body, wherein the first anti-skid surface is surrounding by a second anti-skid surface, wherein the second anti-skid surface is formed by segments of different shapes and irregularly arranged that are arranged around the entire periphery of the external side of the single body, as taught by Rask and/or Issler and/or Bidal, inasmuch as a number of different patterns can be formed on the anti-skip surface depending on the sport (e.g. golf) being played and/or the activity (e.g. walking) and/or whatever aesthetic design is desired by the wearer.
With regard to all of the functional claim language and statements of intended used throughout the claims (e.g. wherein the single body is trapped inside the sole, wherein the edge is adapted to fit over an edge of seams of the footwear, wherein the single body molds to the sole of the footwear once it is placed over the sole;
wherein the chamber is adapted to receive and trap a heel of the footwear and also acquire the shape of a heel of the footwear), it is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the reference device has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 1 above, and further in view of US 2013/0074363 (Adams).
Adams teaches a detachable shoe protector having a flange (tab 106) at the rear to facilitate donning and doffing of the protector. Also, see ¶0038 which teaches “the tab 106 may comprise a lib, handle, or other means of engaging the fingers of a wearer of the protector”. Moreover, the examiner takes official notice that it is old and conventional to insert a finger in a notch or ring (e.g. a strap, or loop) to remove an item of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protective cover as taught by the combination above with any type of means including a notch (claim 2) and a ring (claim 4) to facilitate donning and doffing of the protective cover. Applicant hasn’t contested the official notice and therefore has become admitted prior art.
Response to Arguments
Applicant's arguments filed 8/7/2025 have been fully considered but they are not persuasive.
Applicant notes the cover of Grasso, Austin and Smith references are flat inside and no not include a chamber to trap a heel of the footwear.
In response, for simplicity, the Examiner has just kept the “Smith” reference. With regard to applicant’s argument it is not clear what applicant is referring to by being flat inside since applicant’s cover also have flat inside surfaces as shown in their figures. Smith is made of elastic material and stretches over the footwear and therefore would trap the entire sole of the footwear, at least see ¶0038 of Smith. Moreover, it has an outer band or edge (22) and an upper inwardly lip portion (26) which would also provide means of trapping a heel of the footwear.
With regard to Rask, Issler and Bidal references the applicant notes that “the examiner is correct in his indication that Rask, Issler and Bidal references teach an anti-slip surfaces” but argues there is “not any technological motivation to combine with Smith since Smith has its own anti-skid surface and the modification would increase manufacturing cost.
In response, see ¶0039 of Smith which teaches which teaches the lower surface including a wide variety of tread patterns and designs. Therefore, Smith contemplates using other tread patterns and designs if so desired. Moreover, see the motivation statement in the rejection above (i.e. inasmuch as a number of different patterns can be formed on the anti-skip surface depending on the sport (e.g. golf) being played and/or the activity (e.g. walking) and/or whatever aesthetic design is desired by the wearer.). Therefore, this is clear motivation to combine these references.
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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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556