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 .
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.
Election/Restrictions
Newly submitted claim 16 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 16 is directed to a method of manufacturing a shoe.
Since applicant has received an action on the merits for the originally presented invention (product), this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 16 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show a shoe comprising an upper having two rows of eyelet as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-15 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.
In claim 1, line 5, the limitation “which is fixed to the upper at one of the eyelets” is vague and indefinite. It is not clear if “which is” is referring to the “edging element” or the “shoelace”?
Claim Rejections - 35 USC § 102
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) 1-2, 4-8, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomas (US 1,489,470).
With respect to claim 1, Thomas discloses a shoe comprising:
an upper (see figure 1) having two rows of eyelets (a row 8 of fastening devices is provided on each side of the shoe 10, see figure 1);
a shoelace (9, see figures 2 & 3);and
an edging element (lacing fastener 1, 2 & 7, see figure 2) having a through-hole through which the shoelace extends threaded into the eyelets (opening on the edge of the shoe upper, see figure 1), which is fixed to the upper (see figures 1-3) at one of the eyelets;
wherein a connection between the shoelace and the edging element is firmer (the lacing 9 may pass straight through the opening 5, as shown in Figure 2, and then be bent out through the slot 4, or it may be engaged by the member 3 as a hook, as shown in Figure 3) than a connection between the edging element and the upper (the cylindrical body portion 1 is thrust therein and then is preferably upset or bent to form a retaining flange portion 7).
With respect to claim 2, Thomas discloses wherein a diameter of the through-hole (5) appears to be small enough that the shoelace (9) can only be pulled through it by overcoming a strong frictional force, without being noticeably damaged (functional language, see figure 2).
With respect to claim 4, Thomas discloses wherein the edging element (1, 2, 7) is arranged at the bottommost eyelet (see figure 1) of one of the two rows of the eyelets in the upper of the shoe.
With respect to claim 5, as best understood by the examiner, Thomas discloses wherein the connection between the edging element and the shoelace (9) is located 48% to 52% of the total length of the shoelace away from one end of the shoelace (see figure 2).
With respect to claims 6-8, Thomas discloses wherein the edging element (1, 2, 7) comprises three annular bodies (1, 2, 7, see figure 2) arranged one after another in the axial direction, rigidly connected together, wherein the annular body (1) with the smallest outside diameter is located between the two other annular bodies (2 & 7), which both have larger outside diameters (1, see figure 2); wherein the outside diameters of the two annular bodies (2 & 7) with the larger outside diameter are different from one another (see figure 2); and wherein the edging element (1, 2, 7) has a longitudinal slot (opening 5 of the cylindrical body 1, see figures 2-3) open toward the two end sides of the edging element (1, 2, 7), the slot (opening 5) extending radially from an outer lateral surface of the annular bodies (2, 7, 8) to the through hole (opening 5) of the edging element passing through all of the annular bodies (1, 2, 7).
With respect to claim 12, Thomas discloses wherein that the edging element (1, 2, 7) protrudes beyond the outer side of the upper (see figures 1-3) and has a decorative element (loop portion 3) on the protruding part of the edging element (see figures 2-3).
With respect to claim 14, Thomas discloses wherein the annular body having the largest outside diameter is fixed to an inner surface of the upper (see figure 2).
Claim(s) 1-2, 4-9, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guglielmo et al. (Pub. No. US 2014/0259295).
With respect to claim 1, Guglielmo et al. discloses a shoe comprising:
an upper (see figure 1) having two rows of eyelets (12, see figure 1);
a shoelace (the eyelet cover is inserted into a shoe eyelet 12, a shoe lace or other material may be threaded through the bore);
an edging element (eyelet cover 20, see figures 2-7) having a through-hole which the shoelace extends, which is fixed to the upper (eyelet cover 20 is shaped and configured to snap into, or otherwise be inserted or fitted into, an eyelet 12) at one of the eyelets so as not to move away from the eyelet (Neck 36 includes an insertion region 38 at an inner end of neck 36 opposite the outer end, the insertion region having a ridge 44 that helps retain eyelet cover 20 in position after insertion into eyelet 12);
wherein a connection between the shoelace and the edging element is firmer (bore 52 forms an interior passage through eyelet cover 20 and is sized to receive a shoe lace of shoe 10) than a connection between the edging element and the upper (Neck 36 includes an insertion region 38 at an inner end of neck 36 opposite the outer end, the insertion region having a ridge 44 that helps retain eyelet cover 20 in position after insertion into eyelet 12).
With respect to claim 2, Guglielmo et al. discloses wherein the diameter of the through-hole (52) appears to be small enough that the shoelace can only be pulled through it by overcoming a strong frictional force, without being noticeably damaged (see paragraph [0018]).
With respect to claim 4, Guglielmo et al. discloses wherein the edging element (20) is arranged at the bottommost eyelet (see figure 1) of one of the two rows of the eyelets in the upper of the shoe.
With respect to claim 5, as best understood by the examiner, Guglielmo et al. discloses wherein the connection between the edging element and the shoelace is located (neck 36) at 48% to 52% of the total length of the shoelace away from one end of the shoelace (see figures 2-7).
With respect to claims 6-8, Guglielmo et al. discloses wherein the edging element (20) comprises three annular bodies (crown 22, neck 36, flange 44, see figure 2) arranged one after another in the axial direction, rigidly connected together, wherein the annular body (36) with the smallest outside diameter is located between the two other annular bodies (22 & 44), which both have larger outside diameters (36, see figures 3-4); wherein the outside diameters of the two annular bodies (22 & 44) with the larger outside diameter are different from one another (see figures 3-4); and wherein the edging element (20) has a longitudinal slot (opening 5 of the cylindrical body 1, see figures 2-3) open toward the two end sides of the edging element (1, 2, 7), the slot (bore 52) extending in a radially from an outer lateral surface of the annular bodies (22, 36, 52) to the through hole (52) of the ending element passing through all of the annular bodies (22, 36, 52).
With respect to claim 9, Guglielmo et al. discloses an edging element (see figures 1-8) wherein two adjacent annular bodies are split into individual spring tongues by one or more longitudinal slots (46, see paragraph [0037]).
With respect to claim 12, Guglielmo et al. discloses wherein the edging element (22, 36, 44) protrudes beyond the outer side of the upper (top surface 24 of crown 22 is visually exposed on shoe 10) and has a decorative element (see paragraph [0019]) on the protruding part of the edging element.
With respect to claim 14, Guglielmo et al. discloses wherein the annular body having the largest outside diameter is fixed to an inner surface of the upper (see figure 2).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over either Thomas and/or Guglielmo et al.
The limitation “the edging element (2) includes a plastic material molded over the shoelace” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. It would have been obvious to one of ordinary skill in the art to form the edging element of each of Thomas and/or Guglielmo et al. by over molding the shoelace with plastic, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
With respect to claim 15 and the edging element being fixed to the upper at only one of the eyelets, and the other eyelets are free of the edging element, It would have been obvious to one having ordinary skill in the art to fix the edging element to the upper at only one of the eyelets in order to reduce cost of manufacturing, since such a modification would amount to a mere omission of an element. It has been held that omission of an element and its function in a combination where the remaining elements perform the same function as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Thomas in view Guglielmo et al. (Pub. No. US 2024/0259295).
With respect to claim 9, Thomas discloses all the limitations of the claims except for wherein that two adjacent annular bodies being are split into individual spring tongues by one or more longitudinal slots. Guglielmo et al. discloses an edging element (see figures 1-8) wherein two adjacent annular bodies are split into individual spring tongues by one or more longitudinal slots. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the edging elements of Thomas with the edging elements of Guglielmo et al, since the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over either one of Thomas and/or Guglielmo et al. in view Yosha (US 5,913,618).
With respect to claim 13, each of Thomas and/or Guglielmo et al. discloses all the limitations of the claims except for the edging element to be equipped with electronic identification circuit. Yosha discloses that it is old and conventional to provide a data-carrying element/tab/label (for example, a semiconductor chip or a magnetic stripe), that contains data relating to items, such as personal identification, medical history/condition, driver's license data, magnetic keys for a product. Therefore, it would have been obvious to one of ordinary skill in the art to provide the identification information circuit to the edging element of each of Thomas and/or Guglielmo et al. as taught by Yosha, so that the data carrying element can be automatically read by an accessory reader; for example, an insert reader, a swipe reader, or a capture reader.
Allowable Subject Matter
Claims 10-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,137,776. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are both directed to a shoe comprising an upper having two rows of eyelets and a shoelace having a longitudinal region threaded into the eyelets, and an edging element which is fastened to the planar upper at one of the eyelets and is fixed so as not to move away from the eyelet and has a through-hole through which the shoelace extends, wherein the edging element is permanently and rigidly connected to the longitudinal region of the shoelace, such that this connection extends through the longitudinal region.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shown are edging elements analogous to applicant’s instant invention.
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 JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached M-Thurs. 7:00-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, 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, Alissa J Tompkins can be reached on 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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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
02/20/2026