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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 10-11, could read “the opposite second side of the collar”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-7, 13-14, 19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6, recites the limitation “a third collar fastener mounted on the opposite second side of the collar and spaced apart from the opposite second collar fastener”, renders the claim indefinite because it is so confusing, because the second collar fastener is already mounted to the opposite second side; it is unclear which figure encompassed by such limitation. If the second and the third collar fasteners are mounted on the same side or opposite side of the ankle portion? For the purpose of examination and as best understood the limitation is interpreted to as “a third collar fastener mounted on the collar of the footwear article.”
Claim 7, 13, recites “a footprint of the second fastener pad is aligned with a medial portion of a footprint of the first fastener pad, and a footprint of the third fastener pad is aligned with a lateral portion of the footprint of the first fastener pad”, renders the claim indefinite because it is so confusing; whether it means “a footprint of the second fastener pad is mounted on the lateral side of the footwear is aligned with the first fastener pad is mounted on the medial side of the footwear, and a footprint of the third fastener pad is mounted on the medial side of the footwear is aligned with a lateral side of the footwear of the second fastener pad”? For the purpose of examination and as best understood the limitation is interpreted to as “a footprint of the second fastener pad is mounted on the lateral side of the footwear is aligned with the first fastener pad is mounted on the medial side of the footwear, and a footprint of the third fastener pad is mounted on the medial side of the footwear is aligned with a lateral side of the footwear of the second fastener pad”.
Claim 19, recites “wherein: a first strap fastener is mounted on the first substantially inextensible portion and is configured to connect to the collar, and a second strap fastener is mounted on the second substantially inextensible portion and is configured to connect to the collar”, renders the claim indefinite because it is unclear a first strap fastener and a second strap fastener are new fasteners or it is the strap having a first strap fastener and a second strap fastener?
Claim 7 is dependent of claim 6 and is likewise indefinite.
Claim 14 is dependent of claim 13 and is likewise indefinite.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1, 9-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cook (7094213).
Regarding claim 1, Cook discloses an article of footwear (fig.1) comprising: a sole (fig.1 shown a sole attached to an upper, and an ankle portion at 12); an upper connected to the sole and including a hindfoot portion and a collar (at 12) extending from the hindfoot portion, the collar configured for movement between a first position in which a first side of the collar is an exterior side of the upper (material portion of element 12 disposed on the lateral side of the footwear), and a second position in which an opposite second side of the collar is the exterior side of the upper (material portion of element 12 disposed on the medial side of the footwear, which lower than the material portion of element 12 disposed on the lateral side of the footwear, and see the annotated fig.8A below); a first collar fastener including a first fastener pad (material portion of element 12 disposed on the lateral side of the footwear) mounted to the first side of the collar; a second collar fastener including a second fastener pad mounted to the second side of the collar (material portion of element 12 disposed on the medial side of the footwear); and a strap (70, fig.9) extending from the upper, the strap including a strap fastener (60), wherein in the first position of the collar, the first fastener pad is configured to connect to the strap fastener, and wherein in the second position of the collar, the second fastener pad is configured to connect to the strap fastener (fig.1, col.2, lines 63-col.3, lines 14).
Regarding claim 9, Cook discloses the article of footwear as claimed in claim 1, wherein: the strap fastener is a first strap fastener (52) positioned at a first end of the strap, the strap further includes a second strap fastener (52, fig.9) positioned at an opposite second end of the strap, the first collar fastener (the material portion 12 disposed on the lateral and medial side of the ankle of the footwear, fig.1) includes a lateral portion on a lateral side of the collar and a medial portion on a medial side of the collar, the second collar fastener includes a lateral portion on the lateral side of the collar and a medial portion on the medial side of the collar (fig.1), in the first position of the collar, the lateral portion of the first collar fastener is configured to connect to the first strap fastener (fig.1), and the medial portion of the first collar fastener is configured to connect to the second strap fastener, and in the second position of the collar, the lateral portion of the second collar fastener is configured to connect to the first strap fastener, and the medial portion of the second collar fastener is configured to connect to the second strap fastener (fig.1, col.2, lines 63-col.3, lines 14).
Regarding claim 10, Cook discloses an article of footwear (fig.1) comprising: a sole; an upper connected to the sole (fig.1) and including a hindfoot portion and a collar (at 12, fig.1) extending from the hindfoot portion, the collar configured for movement between (i) an upright position in which a first side of the collar is an exterior side, and (ii) a lowered position in which an opposite second side of the collar is the exterior side (see the annotated fig.8A below); at least one first collar fastener including a first fastener pad (12, fig.1,3) mounted to the first side of the collar; at least one second collar fastener including a second fastener pad (12, fig.1,3) mounted to the second side of the collar; and a strap (70, fig.9) connected to the upper and configured to connect to one of the at least one first collar fastener (fig.1) and the at least one second collar fastener based on a selected position of the collar (fig.1).
Regarding claims 11-14, Cook discloses the article of footwear as claimed in claim 10, wherein the collar is an open collar (fig.1,3); wherein: the collar includes a medial collar side and a lateral collar side (fig.8), and the first fastener pad extends from the medial collar side to the lateral collar side (fig.8); wherein: the at least one second collar fastener includes the second fastener pad and a third fastener pad, the second fastener pad is connected to the medial collar side, the third fastener pad is connected to the lateral collar side, and the second fastener pad is spaced apart from the third fastener pad (fig.8 shows the material 12 is made of Velcro material extending and wrap around the ankle portion including a plurality of fastener portions); wherein: a footprint of the second fastener pad is aligned with a medial portion of a footprint of the first fastener pad, and a footprint of the third fastener pad is aligned with a lateral portion of the footprint of the first fastener pad (see fig.1-3).
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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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-8, are rejected under 35 U.S.C. 103 as being unpatentable over Ivany (4621648).
Regarding claim 1, Ivany discloses an article of footwear (fig.1,5,9) comprising: a sole; an upper connected to the sole and including a hindfoot portion (fig.1) and a collar (at 20 or the ankle brace 16, fig.5) extending from the hindfoot portion, the collar configured for movement between (i) a first position in which a first side of the collar is an exterior side of the upper, and (ii) a second position in which an opposite second side of the collar is the exterior side of the upper (fig.5, col.4, lines 22-29 states that the area 20 is made of Velcro pad which is covers the upper portion of the outside surface of brace); a first collar fastener including a first fastener pad (fig.2-5, col.4, lines 22-29 states that the area 20 is made of Velcro pad which is covers the upper portion of the outside surface of brace) mounted to the first side of the collar; a second collar fastener including a second fastener pad mounted to the second side of the collar (fig.2-5, col.4, lines 22-29 states that the area 20 is made of Velcro pad which is covers the upper portion of the outside surface of brace); and a strap (402, 406, 406, 408, col.6, lines 55-65) extending from the upper, the strap including a strap fastener (each strap 402, 406, 406, 408 including Velcro material, col.6, lines 55-68). But, Ivany does not disclose a functional limitation such as wherein in the first position of the collar, the first fastener pad is configured to connect to the strap fastener, and wherein in the second position of the collar, the second fastener pad is configured to connect to the strap fastener. However, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to recognize that footwear of Ivany is configured to perform as the claimed invention, in this case, in a first position, the strap 402 is configured to attach to Velcro 20 on the medial side; and a second position the strap 402 is configured to attach to Velcro 20 on the lateral side of the footwear.
Regarding claim 2, Ivany discloses disclose the article of footwear as claimed in claim 1, wherein: the first position of the collar is an upright position of the collar (fig.1, 5). But does not explicitly disclose the second position of the collar is a lowered position of the collar. However, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to recognize the footwear of article of Ivany is configured to perform as the claimed invention, such modification would be considered a mere design choice involves routine skill in the art, in this case, at first position, as shown as fig.5, and at a second position, the part at 20 is configured to fold down to make to accommodate with length of the user’s ankle.
Regarding claims 3-5, Ivany discloses the article of footwear as claimed in claim 1, wherein the collar is an open collar (fig.9); wherein: the upper defines a throat opening that is partially defined by a throat edge of the upper, an opening of the open collar is partially defined by a collar edge, and in the first position of the collar, an obtuse angle is defined by the collar edge and the throat edge (fig.9); wherein: the collar includes a medial collar side and a lateral collar side (fig.1,9), and the first fastener pad extends from the medial collar side to the lateral collar side (fig.2-3, col.4, lines 22-29 states that the area 20 is made of Velcro pad which is covers the upper portion of the outside surface of brace).
Regarding claim 6, Ivany discloses the article of footwear as claimed in claim 5, further comprising: a third collar fastener (404/406, fig.9) mounted on the collar of the footwear article (see the annotated figured 5A below).
Regarding claim 7, Ivany discloses a footprint of the second fastener pad is mounted on the lateral side of the footwear is aligned with the first fastener pad is mounted on the medial side of the footwear, and a footprint of the third fastener pad is mounted on the medial side of the footwear is aligned with a lateral side of the footwear of the second fastener pad (see the annotated figured below).
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Regarding claim 8, Ivany discloses the article of footwear as claimed in claim 1, wherein: the strap fastener includes a strap fastener pad, and the first and second fastener pads are configured to engage the straps fastener pad (fig.9, col.6, lines 55-col.7, lines18).
Allowable Subject Matter
Claims 16-22 are would be allowable if rewritten in overcome 112(b) rejection above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 TIMOTHY K TRIEU whose telephone number is (571)270-3495. The examiner can normally be reached 8-4.
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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.
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/Timothy K Trieu/Primary Examiner, Art Unit 3732