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 .
Response to Amendment
The amendments filed with the written response received on September 5, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1-2, 4-5, and 9-13 have been amended; and claims 6-8 are canceled. Accordingly, claims 1-5 and 9-13 are pending in this application, with an action on the merits to follow regarding claims 1-5 and 9-13.
Because of the applicant's amendment, the following in the office action filed June 5, 2025, are hereby withdrawn:
Objections to the drawings;
Objections to the claims.
Information Disclosure Statement
The listing of references in the specification (at least on p. 1, line 13) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The use of the term “Velcro®” , which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. For example, Applicant should recite “VELCRO® (hook and loop fastener)”. Examiner notes that each letter in the trademark needs to be capitalized.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-2, 4-5, 9, and 12-13 (and claims 3 and 10-11 at least for depending from a rejected claim) 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 1 is indefinite as it recites, “A removable gaiter for protecting a footwear, the footwear comprising an upper configured to envelop a foot of a user, which is associated with a sole and is provided with eyelets for laces for tying, the removeable gaiter comprising…” First, the claims are drawn to a removable gaiter for protecting footwear, but then recites the footwear comprising and the removable gaiter comprising. Therefore it is unclear what portion is the preamble and if the claims are directed to the gaiter or to the gaiter plus the footwear. Further as the claim recites, “an upper configured to envelop a foot of a user, which is associated with a sole and is provided with eyelets”, it is unclear what is associated with the sole and is provided with eyelets, the footwear, the upper or the foot of the user. For purposes of examination, Examiner has interpreted the limitation to mean, “A removable gaiter for protecting a footwearincluding a sole, and an upper configured to envelop a foot of a user, , the removeable gaiter comprising…” such that footwear is not required as it is part of the preamble and a statement of intended use and not deemed to not impose any structural limitations.
Claim 1 is indefinite as it recites, “grip means disposed on said footwear associated with and protruding laterally from said upper in an area above that of a heel of said sole, wherein said first means for temporary engagement are constituted by two strips, made of hook and loop fastener material, which at a first end are attached to said lower perimeter edge of said lower portion of said gaiter in an area adjacent to a vertical central axis to said gaiter wherein said gaiter is opened on a plane, wherein said grip means are associated with and protrude laterally from said upper of said footwear in an area disposed above the heel of said sole and configured to be disposed under said two strips.” First, it is unclear if “an area disposed above the heel of said sole” is referring to the same area recited in earlier claim 1 as “an area above that of a heel of said sole” or a different area. Further, it is unclear what structure “at a first end” is referring to as it could be the first means, one or both of the two strips, or the hook and loop faster.
Claim 1 is indefinite as it recites, “wherein said grip means are constituted by bands, metallic or made of a resilient material, having a bulging portion and arranged substantially parallel to said sole transversely to said upper at the heel area.” As the claims are drawn to the gaiter and not the footwear, it is unclear what structure is required by the claim. Further, it is unclear how one having ordinary skill in the art can ascertain to any requisite degree how much the bands can deviate from being parallel to the sole and still be considered “substantially parallel”.
Claim 2 is indefinite as it recites, “third means for temporary engagement of lower lateral ends and said lower portion once coupled together.” It is unclear what structure “lower lateral ends” is referring to.
Claim 4 is indefinite as it recites, “wherein said upper portion and said lower portion are made with a same material, configured to be, for each one or separately, partially or completely waterproof.” It is unclear if each portion is the same material, how they can be waterproof “for each one or separately”. In other words, what does “for each one or separately” mean within the context of the claim.
Claim 5 is indefinite as it recites, “wherein, in a condition wherien said gaiter is removed from said footwear, the gaiter is configured to be arranged on a plane that gives the gaiter a substantially frustum shape with curved lateral edges.” First, it is unclear how one of ordinary skill can ascertain to any requisite degree how much the shape of the gaiter can deviate from a frustrum shape and still be considered “substantially frustrum shape”. Further, when the gaiter is arranged on a plane, such as shown in Figs. 8-9, where the lateral edges are curved, it is unclear how the shape is a frustrum shape since a frustrum is a the portion of a cone or pyramid that remains after its top has been cut off by a plane parallel to its base and therefore a three dimensional structure. Further, as claim 1 recites, “wherein said gaiter is opened on a plane”, it is unclear if claim 5 is referring to the same plane or a different plane. For purposes of examination, Examiner has interpreted the limitation to mean that when laid flat, the gaiter is shaped like a truncated triangle with curved lateral edges.
Claim 9 is indefinite as it recites, “wherein said bands are shaped to define a space to allow the insertion of said strips into said space.” As the claims are drawn to the gaiter and not the footwear, it is unclear what structure is required by the claim. Further, as claim 1 recites the bands having “a bulging portion”, it is unclear if “are shaped” is referring to the bulging portion or to a different structure. Examiner has interpreted the claim to mean that the first means are configured to engage the bands in a space behind the bulging portion.
Claim 12 is indefinite as it recites, “wherein said second means for temporary engagement to at least one of said laces is constituted by a hook protruding from a vertex of a substantially triangular flap wherein one side of the flap is stitched to said gaiter at an end of said lower perimeter edge.” It is unclear how one of ordinary skill can ascertain to any requisite degree how much the shape of the flap can deviate from being triangular and still be considered “substantially triangular”.
Claim 13 is indefinite as it recites, “wherein a cap of an automatic press-stud is placed on a first face of said substantially triangular flap directed away from said lower portion and cooperates with a socket associated with a second face of said gaiter to which said flap is fixed”. First, it is unclear how a press-stud is automatic. There is no disclosure of how the press stud is acting or operating in a manner essentially independent of external influence or control. Further, as only a first face of the flap and not of the entire gaiter is claimed, it is unclear what “a second face of said gaiter” is referring to. Examiner has interpreted the “a second face” to be referring to an outer of the lower portion of the gaiter.
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, 4-5, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shorten (US 2019/0150535) in view of Musladin (WO 2006/125244).
Regarding claim 1, Shorten discloses a removable gaiter (200), for protecting a footwear (100), the footwear comprising an upper (104), configured to envelop a foot of a user (see para. 0045), which is associated with a sole (102) and is provided with eyelets (as seen in Fig. 3, the holes that laces 108 enter into) for laces (108) for tying (as seen in Fig. 3) (as best as can be understood, the preceding structure has been interpreted to be part of the preamble and is intended use and not required by the claim, see 35 USC 112(b) above), the removable gaiter comprising an upper portion (see annotated Fig. 2), which when deployed is configured to envelop an area of a tibia of the user (as seen in Fig. 7 where leg 700 is shown), and is connected to a lower portion (see annotated Fig. 2), which when deployed is configured to envelop an area of instep (as understood from Fig. 7, as the gaiter covers the laces, would cover envelop the instep), said lower portion being provided, on a lower perimeter edge (see annotated Fig. 1), with first means (hooks 224/226) and configured for temporary engagement with complementarily-shaped grip means (124/126) disposed on said footwear associated with and protruding laterally from said upper in an area above that of a heel of said sole (see Figs. 2 and 3) (Examiner notes that as best as can be understood, all limitations of the footwear are not positively recited and only functionally claimed and therefore the gaiter only needs to be capable of functioning in such a way as to be used on a hypothetical piece of the footwear), wherein said first means for temporary engagement are constituted by two strips (strips comprising 224/226, see annotated Fig. 2) which at a first end are attached to said lower perimeter edge of said lower portion in an area adjacent to a vertical central axis to said gaiter in a condition in which said gaiter is opened out on a plane (as seen in annotated Fig. 2), wherein said grip means are associated with and protrude laterally from said upper in an area disposed above the heel of said sole and configured to be disposed under said two strips (as best as can be understood and interpreted as structure that is not positively recited, as the strips detachable, they are capable of attaching to such a grip means such that they lay under a space in the grip means), wherein said grip means are constituted by bands, metallic or made of a resilient material, having a bulging portion and arranged substantially parallel to said sole transversely to said upper at the heel area (as best as can be understood and interpreted as structure that is not positively recited, as the strips detachable, they are capable of attaching to such a grip means such that they lay under a space in the grip means).
Shorten does not expressly disclose wherein the two strips are made of hook and loop fastener material.
Musladin teaches a gaiter connecting to footwear wherein said first means for temporary engagement is a strip (4) made of hook and loop fastener material (26 that is not visible in Fig. 1 but disclosed on p. 9, lines 5-10).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the first means of Shorten to be a hook and loop strip as taught by Musladin so that the strip is detachable and can be “pulled tight” to hold the gaiter close to the footwear (see p. 9, lines 5-15 of Musladin) in order to prevent debris from entering the gaiter and consequently the shoe.
Examiner notes that italicized limitations in the prior art rejections are functional and do not positively recite a structural limitation, but instead require an ability to so perform and/or function. As the prior art discloses the structure of the gaiter, there would be a reasonable expectation for the gaiter to perform such functions, as Examiner has explained after each functional limitation.
Regarding claim 4, the modified gaiter of Shorten discloses wherein said upper portion and said lower portion are made with a same material configured to be, for each one or separately, partially or completely waterproof (as the upper and lower portions are each part of tube 202 which is disclosed a waterproof in para. 0053).
Regarding claim 5, the modified gaiter of Shorten discloses wherein, in a condition wherein said gaiter is removed from said footwear, the gaiter is configured to be arranged on a plane that gives the gaiter a substantially frustum shape with curved lateral edges (as best as can be understood based on the 35 USC 112(b) rejection above, and as the gaiter is made of a flexible material as disclosed in para. 0053, it can be laid out similar to Fig. 2 and manipulated so that the side edges are curved and the body is a truncated triangle shape).
Regarding claim 9, the modified gaiter of Shorten discloses wherein the bands are shaped to define to define a space to allow the insertion of said strips into said space (as best as can be understood and interpreted as structure that is not positively recited, as the strips detachable, they are capable of attaching to such a grip means such that they lay under a space in the grip means).
Regarding claim 10, the modified gaiter of Shorten discloses wherein said two strips are configured to be inserted into said space and folded such that a second, free end of said two strips (free end of 4 in Fig. 1 of Musladin) is positioned against an internal strip (the 26 shown in Fig. 1 of Musladin) attached internally to said gaiter in an area that lies above said lower perimeter edge of said lower portion (as when in combination, 26 of Fig. 1 of Musladin would be an the inside of the lower portion of the gaiter of Shorten above the lower perimeter edge).
Regarding claim 11, the modified gaiter of Shorten discloses wherein said first means for temporary engagement is configured to be disengaged from said grip means by manually detaching said second, free end of said strips from the internal strip (similar to how engagement/disengagement occurs on p. 9, lines 5-15 of Musladin, disengagement from the grip means on the hypothetical footwear when the same strip is used in the gaiter of Shorten).
Claim(s) 2-3 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Shorten and Musladin, as applied to claim 1 above, and further in view of Bressoux (EP 0852916).
Regarding claim 2, the modified gaiter of Shorten discloses further comprising second means configured for temporary engagement with at least one of said laces (second means 220; Examiner notes the second means has been interpreted under 35 USC 112(f) and the second means 25 of the instant application is a hook 26 on the shoe that connect to the laces of the footwear and as 220 of Shorten is a disclosed as a hook in para. 0025 that is capable of hooking to laces on the footwear, then it is at least functional equivalent) and where “the gaiter may have fasteners that are assembled to create the tube structure, including… zippers”, but does not expressly disclose third means for temporary engagement of lower lateral ends and said lower portion once coupled together.
Bressoux teaches a removable gaiter (1) comprising third means for temporary engagement of lower lateral ends and said lower portion once coupled together (third means 14/13, Examiner notes the third means has been interpreted under 35 USC 112(f) and the third means 28 of the instant application is press stud and socket 29/30 that connect the edges of the gaiter together and as 14/13 of Bressoux show a similar fastening arrangement, they are at least functional equivalent.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a vertical opening with a temporary attachment means of the lateral ends of the gaiter of Shorten, as taught by Bressoux, in order to provide an elongated opening to that the wearer may more easily don the gaiter over the footwear while also reducing “the risk of the zipper opening accidentally, which is likely to occur under the effect of the lateral tension permanently exerted by the gaiter cover, and by the clamping means when it is provided, on its coupling ribbons, and in particular when the cursor is not positively stopped on the latter” (see para. 0005 of Bressoux).
Regarding claim 3, the modified gaiter of Shorten discloses all the limitations of claim 1 above, and where “the gaiter may have fasteners that are assembled to create the tube structure, including… zippers”, but does not expressly disclose a zipper is attached to lateral edges of said upper portion and said lower portion to draw the lateral edges together so as to envelop, when deployed, said areas of the instep and of said tibia.
Bressoux teaches a removable gaiter (1) comprising a zipper (3-8) is attached to lateral edges of said upper portion and said lower portion to draw the lateral edges together so as to envelop, when deployed, said areas of the instep and of said tibia (as seen in Figs. 1-2, the zipper is along lateral edges of the entire length of the gaiter and secures the edges together so that the gaiter envelops the instep and tibia).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a vertical opening with zipper to the gaiter of Shorten, as taught by Bressoux, in order “to create the tube structure” (see para. 0053 of Shorten) so that the gaiter may be more easily don and remove the gaiter while wearing the footwear.
Regarding claim 12, the modified gaiter of Shorten discloses wherein said second means for temporary engagement to at least one of said laces (220 of Shorten) is constituted by a hook (as disclosed in para. 0053 of Shorten) protruding from a vertex of a substantially triangular flap (as seen in annotated Fig. 2 of Short), but does not expressly disclose wherein one side of the flap is stitched to said gaiter at an end of said lower perimeter edge.
Bressoux teaches a removable gaiter comprising a substantially triangular flap (see annotated Fig. 1), wherein one side of the flap is attached to said gaiter at an end of said lower perimeter edge (see annotated Fig. 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a secondary panel to create the flap of the modified gaiter of Shorten as taught by Bressoux in order to create a more 3-dimensional shape out of 2-dimensional material to better fit the curvature of foot and leg of the wearer.
The modified gaiter of Shorten does not expressly disclose how the flap is attached to the gaiter, however, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have used stitching as the attachment method in the modified gaiter of Shorten and Bressoux with stitching, as such an arrangement would have at least have been obvious to try as it only involves choosing from a finite number of identified, predictable solutions (stitching, heat sealing, gluing), with a reasonable expectation of success (securely fastening two panels together). See MPEP 2143 E.
Regarding claim 13, the modified gaiter of Shorten discloses wherein tapes of the zipper (tapes 3 and 4 of zipper 3-8 of Bressoux) being associated with the lateral edges of said upper portion and said lower portion to draw the lateral together so as to envelop, when deployed, said areas of the instep and of the tibia (as seen in Figs. 1-2 of Bressoux and explained above in claim 3), but does not expressly disclose wherein a cap of an automatic press-stud is placed on a first face of said substantially triangular flap directed away from said lower portion and cooperates with a socket associated with a second face of said gaiter to which said flap is fixed.
Bressoux teaches a gaiter wherein a cap of an automatic press-stud (13, see Fig. 5) is placed on a first face (inner face) of said substantially triangular flap (see annotated Fig. 1 of Bressoux, and not that the flap includes band 16 which extends around the back to 18) directed away from said lower portion (see annotated Fig. 1 of Bressoux) and cooperates with a socket (14, see Fig. 5) associated with a second face (outer face of the overall flap) of said gaiter to which said flap is fixed (as the flap is assemble to the gaiter).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add press stud and socket fastener to the modified gaiter of Shorten, as taught by Bressoux, in order to reduces “the risk of the zipper opening accidentally, which is likely to occur under the effect of the lateral tension permanently exerted by the gaiter cover, and by the clamping means when it is provided, on its coupling ribbons, and in particular when the cursor is not positively stopped on the latter” (see para. 0005 of Bressoux).
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Annotated Fig. 2 (Shorten)
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Annotated Fig. 4 (Bressoux)
Response to Arguments
Applicant's arguments filed September 5, 2025, regarding the 35 USC 103 rejections of claims 6-8 which have been incorporated into amended claim 1, have been fully considered but they are not persuasive.
First, Applicant argues, “that none of the cited documents teach or disclose the particular temporary engagement means 12 which interact with complementarily-shaped grip means 13 arranged respectively adjacent to a vertical central axis 16 to the gaiter and above that of the heel 22 of the sole 4. To the contrary, Shorten teaches allegedly corresponding strips that are arranged laterally” (Remarks, p. 9, 2nd and 3rd paras.). Examiner respectfully disagrees. It is unclear if Applicant’s “allegedly corresponding strips” is referring to the “first means for temporary engagement… constituted by two strips” or to the “complimentarily-shaped grip means”. Examiner has interpreted this to be referring to the “complimentarily-shaped grip means” since they were recited in claim 1 as “arranged substantially parallel to said sole”. First, the “complimentarily-shaped grip means” have not been positively recited as the footwear has not be positively claimed as best as the claim can be understood by Examiner. Second, as seen in Figs. 1 and 3 of Shorten, the grip means 124/126 are “substantially parallel” to the sole.
Second, Applicant argues that Musladin does not remedy deficiencies of Shorten since the hook and loop strip of Musladin is at the front of the boot. Such an argument is a piecemeal analysis of the references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Third, in response to applicant's argument that the proposed combination does not provide advantages comparable to Applicant’s (Remarks, p. 10, 1st para.), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further such advantages are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant submits that the dependent claims are patentable based on their dependencies from claim 1; however, as discussed in the rejection below and in the arguments above, claim 1 is not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the dependent claims have been maintained.
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 HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732