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 § 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 1-4,6,7,9-15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2003/0190442 (Campbell).
Regarding claims 1-4,6,7,9-15 and 17, Campbell discloses a shoe cover (20) configured to be worn on a shoe of a user for bowling on a bowling surface (shoe cover 20 is inherently capable of being used for bowling), the shoe cover comprising:
a sole portion (i.e. sole portion of cover (20) which extends under the foot of the user) which configured to slide on the bowling surface;
a first gripping portion (heel portion of slip-resistant members (44) which extend under the heel of the user) disposed beneath a heel of the user when the shoe cover is worn on the shoe of the user, and
a second gripping portion (ball portion of slip-resistant members (44) which extend under the ball of the user) disposed beneath a ball of the user's foot when the shoe cover is worn on the shoe of the user, wherein the first gripping portion and the second gripping portion are disposed on the sole portion and configured to create traction against the bowling surface; and
an upper portion (upper portion of shoe cover extending upward from the sole portion) comprising an opening configured to receive a sole of the shoe, wherein the upper portion is stretchable to surround at least a portion of the sole (upper portion has strips of elastic material; see ¶0041).
Campbell teaches a shoe cover as claimed (see the rejection above) except for:
the first gripping portion has a thickness of at least 1 mm and the second gripping portion has have a thickness of at least 1 mm. (claim 1).
the upper portion is stretchable to surround at least 2.5 cm of the sole of the shoe. (claim 3).
a width of the first gripping portion is greater than 1 mm and a width of the second gripping portion is greater than 1 mm. (claim 17).
the first gripping portion and the second gripping portion comprise non-slip silicone (claim 14).
Regarding the limitations lacking in claims 1,3 and 17, the size of the upper portion and the width & thickness of the first gripping portion and the second gripping portions of the shoe covers as taught by Campbell is not disclosed. However, it would appear to be an obvious design choice to construct the size of the upper portion and the width & thickness of the first gripping portion and the second gripping portions of the shoe covers as taught by Campbell with the measurement and/or dimensions as defined in claims 1,3 and 17 inasmuch as a number of different measurements/dimensions would appear to be suitable depending on the size of the individual wearer and the activity to be used for. That is, these parameters are recognized in the art to be a variable that is result effective. Generally, it is considered to have been obvious to develop workable or even optimum ranges for such variables. For example, see In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Since the applicant has not demonstrated or even alleged that these specifically claimed dimensions for the shoe cover produce any unexpected results, it is concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum dimensions for the shoe covers as taught by Campbell and thereby arrive at the dimensions as claimed by the applicant.
Regarding claim 14, the examiner takes office that it is old and conventional in the art to construct sole portions of shoe covers out of cotton. Therefore, It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct at least the sole portion of shoe cover as taught above out of cotton, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. The claimed material merely amounts to a matter of engineering design choice and thus does not serve to patentable distinguish the claimed invention over the prior art. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific material solves any particular problem and/or yields any unexpected results.
Regarding claims 2,4,6 and 10, see ¶0041.
Regarding claim 7, see marked-up figure 1 below showing a width of a heel region (H) of the upper portion is greater than a width of a toe region (T) of the upper portion.
PNG
media_image1.png
328
454
media_image1.png
Greyscale
Regarding claim 9, the shoe cover has the structure as claimed and will inherently not cover an upper portion of a shoe wherein the upper portion extends higher than the height of the shoe cover.
Regarding claim 10, as noted in the rejection above: upper portion has strips of elastic material; see ¶0041.
Regarding claims 11 and 13, see ¶0035 which teaches the polymer fabric of the shoe cover which extends in the upper and sole portions is made out of a fabric including nylon.
Regarding claim 15, see ¶0042.
All of the functional claim language and statements of intended use do not make an otherwise unpatentable claim patentable. The prior art as taught by Campbell has all the structure as claimed, as noted above, and therefore is inherently capable of performing all of the functional language as claimed.
Claims 1,9,19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 8789297 (Doyle) in view of D476468 (Reynolds) and US 2013/0047463 (Menezes).
Regarding claims 1,9,19 and 21, Doyle discloses a shoe cover (disposable shoe cover 100) configured to be worn on a shoe of a user for bowling on a bowling surface (at least see the title and abstract), the shoe cover comprising:
a sole portion (i.e. sole 500 (300,400)) configured to slide on the bowling surface;
a first gripping portion (sole portion 100 made out of non-skid material to provide traction) disposed beneath a heel of the user when the shoe cover is worn on the shoe of the user, and
an upper portion (e.g. upper) comprising an opening configured to receive a sole of the shoe, wherein the upper portion is stretchable to surround at least a portion of the sole (the upper portion has pleats 104 and an elastic retainer 200).
Doyle teaches a shoe cover as claimed (see the rejection above) except for:
the first gripping portion has a thickness of at least 1 mm and the second gripping portion has have a thickness of at least 1 mm; (claim 1).
a second gripping portion disposed beneath a ball of the user's foot when the shoe cover is worn on the shoe of the user, wherein the second gripping portion are disposed on the sole portion and configured to create traction against the bowling surface; (claim 1)
the upper portion having a greater elasticity than the sole portion. (claim 19).
Reynolds teaches a shoe cover wherein the traction gripping portions are disposed in the heel and ball of the user’s foot (see figures 1-3 and the description).
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 shoe cover as taught by Doyle, with a second gripping portion disposed beneath a ball of the user's foot when the shoe cover is worn on the shoe of the user, in view of the teachings of Reynolds, to provide additional traction for the shoe cover. It would be an obvious design choice to provide as much traction on the bottom of the shoe cover as one may find desirable especially for a bowler who slides more than normal or for a user who would be using the shoe cover for other purposes and additional traction is desired
Regarding “the first gripping portion has a thickness of at least 1 mm and the second gripping portion has have a thickness of at least 1 mm”, the thickness of the first gripping portion and the second gripping portions of the shoe covers as taught by the combination above is not disclosed. However, it would appear to be an obvious design choice to construct the thickness of the first gripping portion and the second gripping portions as taught above with a thickness of at least 1 mm. inasmuch as a number of different thicknesses would appear to be suitable depending on the individual characteristic and the activity to be used for. That is, these parameters are recognized in the art to be a variable that is result effective. Generally, it is considered to have been obvious to develop workable or even optimum ranges for such variables. For example, see In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Since the applicant has not demonstrated or even alleged that these specifically claimed thicknesses (i.e. at least 1 mm) produce any unexpected results, it is concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum dimensions for the shoe covers as taught by the combination above and thereby arrive at the dimensions as claimed by the applicant.
Regarding claim 9, see figure 4 of Doyle showing the shoe cover when worn on the shoe of the user and the upper portion does not cover an upper portion of the shoe (see the upper portion of the shoe not covered in figure 4).
Menezes teaches a shoe having an elastic retainer (elastic binding 32) about the opening of the shoe, wherein the upper portion has greater elasticity than the sole portion (i.e. “the woven upper member has a foot receiving opening bordered by an elastic binding which has a greater elasticity than that of the sole”, lines 6-8 of the abstract). 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 elastic retainer (retainer 200 of Doyle) of the shoe cover as combined above with the upper portion having greater elasticity than the sole portion, in view of the teachings of Menezes, to provide greater ease of donning the shoe cover on to the user’s foot.
Regarding claims 1,9,19 and 21, Doyle discloses a shoe cover (disposable shoe cover 100) configured to be worn on a shoe of a user for bowling on a bowling surface (at least see the title and abstract), the shoe cover comprising:
a sole portion (i.e. sole 500 (300,400)) configured to slide on the bowling surface;
a first gripping portion (sole portion 100 made out of non-skid material to provide traction) disposed beneath a heel of the user when the shoe cover is worn on the shoe of the user, and
an upper portion (e.g. upper) comprising an opening configured to receive a sole of the shoe, wherein the upper portion is stretchable to surround at least a portion of the sole (the upper portion has pleats 104 and an elastic retainer 200).
Doyle teaches a shoe cover as claimed (see the rejection above) except for:
a second gripping portion disposed beneath a ball of the user's foot when the shoe cover is worn on the shoe of the user, wherein the second gripping portion are disposed on the sole portion and configured to create traction against the bowling surface;
the upper portion is formed from a relatively more elastic material than the sole portion.
Reynolds teaches a shoe cover wherein the traction gripping portions are disposed in the heel and ball of the user’s foot (see figures 1-3 and the description).
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 shoe cover as taught by Doyle, with a second gripping portion disposed beneath a ball of the user's foot when the shoe cover is worn on the shoe of the user, in view of the teachings of Reynolds, to provide additional traction for the shoe cover. It would be an obvious design choice to provide as much traction on the bottom of the shoe cover as one may find desirable especially for a bowler who slides more than normal or for a user who would be using the shoe cover for other purposes and additional traction is desired.
Menezes teaches a shoe having an elastic retainer (elastic binding 32) about the opening of the shoe, wherein the upper portion has greater elasticity than the sole portion (i.e. “the woven upper member has a foot receiving opening bordered by an elastic binding which has a greater elasticity than that of the sole”, lines 6-8 of the abstract) and therefore would is formed from a relatively more elastic material than the sole portion. 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 elastic retainer (retainer 200 of Doyle) of the shoe cover as combined above with the upper portion being formed from a more elastic material than the sole portion, in view of the teachings of Menezes, to provide greater ease of donning the shoe cover on to the user’s foot.
Claims 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over the shoe cover’s as taught in the combinations above, as applied to claim 4, and further in view of [US 2013/0283637 (Wilkenfeld) and/or US 2021/0289850 (Miller)].
Wilkenfeld teaches an elastic band (52) of an article of footwear comprising a strip of silicone to add additional grip (at least see ¶0043). Miller teaches providing on an interior surface of a shoe silicone dots to provide additional grip (at least see ¶0038,0055,00560). 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 shoe cover as taught by the combination above with the elastic region encircling the opening with a non-slip silicone, in view of the teachings of Wilkenfeld and/or Miller, to provide additional grippage on the interior of the shoe cover.
Claims 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over the shoe cover’s as taught in the combinations above, as applied to claim 1, and further in view of [US 2825155 (Hines) and/or US 2009/0235556 (Reid)].
Hines and Reid both teach a shoe cover comprising an antislip region in the heel region of the upper portion (see heel grip 11’ of Hines and protrusions 42 of Reid). 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 heel region of the upper portion of the shoe cover’s as taught above with an antislip region, as taught by Hines and/or Reid, to further keep the shoe from slipping outside of the shoe cover.
Claims 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the shoe cover’s as taught in the combinations above, as applied to claim 1, and further in view of US 2013/0283637 (Wilkenfeld)
Wilkenfeld teaches a foot covering (see figure 11) with the first and second gripping portions (142,142) comprising a non-slip silicone (see ¶0051, lines 9-12). 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 shoe covers as taught by the combinations above with the first and second gripping portions comprising a non-slip silicone, as taught by Wilkenfeld, to facilitate provide a greater grip between the shoe cover and the shoe.
Response to Arguments
Applicant's arguments filed 2/17/2026 have been fully considered but they are not persuasive.
Applicant argues Campbell doesn’t teach the gripping portions having at least 1 mm in thickness and the doesn’t teach a sole portion configured to slide on a bowling surface.
In response, Campbell teaches the sole portion (i.e. sole portion of cover (20) which extends under the foot of the user) and the shoe cover is made out of a variety of materials and fabrics such as woven reusable fabrics and nonwoven disposable fabrics including polymeric fabrics; at least see ¶0028 of Campbell and therefore has characteristics that would enable sliding on a bowling surface. Moreover, what is a bowling surface, this could be a polished wooden surface or a sanding beach surface or anything in between. Applicant hasn’t defined the surface. The sport of bowling can be performed in many surface. With regard to the thickness, as noted in the previous rejection and repeated in the current rejection above, this appears to be an obvious design choice. Since the applicant has not demonstrated or even alleged that these specifically claimed dimensions for the shoe cover produce any unexpected results, it is concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum dimensions for the shoe covers as taught by Campbell and thereby arrive at the dimensions as claimed by the applicant.
In view of applicant amendment to claim 1 (i.e. the combination of claims 1 and 18), the Grasso rejection was withdrawn since it wasn’t previously used to rejection claim 18. In view of removing Grasso this would include the withdraw of claims 5 and 9. This is the reason why a new grounds of rejection was applied to claims 1,5 and 9.
In view of applicant amendment to claim 1 (incorporation claim 18), the rejection of Campbell with regard to claim 19 had to be withdrawn (i.e. the combination of former claims 1,18 and 19 is a new combination of all of these elements not previously presented together before and therefore a new rejection was applied). The incorporation of the thickness (i.e. at least 1 mm thickness of the first and second gripping portions) into claim 1 and the greater elasticity as defined in claim 19 doesn’t appear to be adequately taught by Campbell and therefore a new grounds of rejection was applied to claim 19, including dependent claim 1.
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.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, 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, 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.
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.
/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556