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 .
Status of Claims
This Office Action is in response to the amendment filed 12/2/25. As directed by the amendment, claim 1 has been amended; claim 19 has been added. Claims 1-11 and 19 are pending in this application.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 102 AIA
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheney US 20210337922 A1 (herein after Cheney).
Regarding claim 1, Cheney discloses a rapid-entry shoe (Abstract) comprising: a sole portion (101); an upper coupled to the sole portion (as seen in annotated Figures 1A and 1B and 5A and 5B), the upper configured to surround at least a portion of a foot of a user (paragraph 6A, 6B and 6C), the upper comprising a collapsible rear portion (102) configured to collapse during insertion of the foot (paragraph 6A, 6B and 6C), the collapsible rear portion including an energy set zone (102, paragraphs 0055, 0056 and 0058 of Cheney), the energy set zone being integral with the upper (paragraph 0020, and 0053 of Cheney), the energy set zone having a different material property than a remainder of the upper (paragraph 0051), the different material property configured to be activated by energy to change a material property of the energy set zone to the different material property (paragraph 0049 of Cheney); wherein the collapsible rear portion has an open configuration (as seen in annotated Figures 1A and 1B and 5A and 5B) and a closed configuration (as seen in annotated Figures 1A and 1B and 5A and 5B); wherein, in the open configuration (as seen in annotated Figures 1A and 1B and 5A and 5B), the collapsible rear portion is collapsed to facilitate donning (paragraph 6A, 6B and 6C) and doffing of the rapid-entry shoe (as seen in annotated Figures 1A and 1B and 5A and 5B); wherein, in the closed configuration (as seen in annotated Figures 1A and 1B and 5A and 5B), the collapsible rear portion is uncollapsed to facilitate retention of the rapid-entry shoe (as seen in annotated Figures 1A and 1B and 5A and 5B); wherein the collapsible rear portion comprises an energy set zone (102, paragraph 0051, 0055 and 0056); and wherein the energy set zone biases the collapsible rear portion toward the closed configuration (as seen in annotated Figures 1A and 1B and 5A and 5B).
[AltContent: textbox (Wherein, in the closed configuration, the collapsible rear portion is uncollapsed to facilitate retention of the rapid-entry shoe. )][AltContent: textbox (The collapsible rear portion including an energy set zone, the energy set zone being integral with the upper.)]
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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Wherein, in the open configuration, the collapsible rear portion is collapsed to facilitate donning and doffing of the rapid-entry shoe. )][AltContent: textbox (Wherein the collapsible rear portion has an open configuration and a closed configuration. )]
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[AltContent: textbox (The upper configured to surround at least a portion of a foot of a user. )]
[AltContent: textbox (Wherein the collapsible rear portion comprises an energy set zone.)]
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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (An upper coupled to the sole portion.)][AltContent: arrow][AltContent: textbox (The upper comprising a collapsible rear portion configured to collapse during insertion of the foot.)][AltContent: textbox (A sole portion. )]
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[AltContent: arrow][AltContent: textbox (The different material property configured to be activated by energy to change a material property of the energy set zone to the different material property. )][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (The energy set zone having a different material property than a remainder of the upper. )][AltContent: textbox (A rapid-entry shoe.)]
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[AltContent: textbox (Wherein the energy set zone biases the collapsible rear portion toward the closed configuration. )]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Wherein, in the open configuration, the collapsible rear portion is collapsed to facilitate donning and doffing of the rapid-entry shoe. )]
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Regarding claim 19, the modified rapid-entry shoe of the combined references discloses wherein the different material property includes at least one of increased hardness (paragraph 0049 of Cheney) and increased resiliency relative to the remainder of the upper (paragraph 0049 of Cheney).
Claim Rejections - 35 USC § 103 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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 -11 are rejected under 35 U.S.C. 103 as being unpatentable over Cheney US 20210337922 A1 (herein after Cheney) in view of Nordstrom US 20140053312 A1 (herein after Nordstrom).
Regarding claim 2, Cheney does not disclose wherein the energy set zone comprises an energy activated material.
Nordstrom teaches an energy activated material (Abstract, paragraphs 0002, 0003 and paragraph 0049, 0092).
Cheney and Nordstrom are analogous art to the claimed invention in that they relate to footwear that can change their configurations.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the energy set zone of Cheney by constructing the energy set zone to being made from an energy activated material as taught by Nordstrom, in order to allow the rear portion of the shoe to expand and contract from the heat of the wearers foot. The modification would be a simple modification to allow the footwear to be able to respond to one or more stimulus to alter characteristics as a result of the stimulus.
Regarding claim 3, the modified rapid-entry shoe of the combined references discloses wherein the energy activated material (Abstract, paragraphs 0002, 0003, 0004 and 0042, 0043 and 0044 of Nordstrom) comprises a material that, upon application of an external energy source (Abstract, paragraphs 0002, 0003, 0004), is characterized by an increased hardness or resiliency (paragraphs 0042, 0044 of Nordstrom).
Regarding claim 4, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) further comprises an energy resistant carrier material (paragraphs 0050, 0051 and 0133 of Nordstrom).
Regarding claim 5, the modified rapid-entry shoe of the combined references discloses wherein the energy activated material (Abstract, paragraphs 0002, 0003 and paragraph 0049, 0092 of Nordstrom) and the energy resistant carrier material (paragraphs 0050, 0051 and 0133 of Nordstrom) are woven, stitched, bonded or otherwise coupled or adjacent together (paragraphs 0050, 0051 and 0133 of Nordstrom).
Regarding claim 6, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) extends from a lateral (as seen in annotated Figures 1A and 1B and 5A and 5B of Cheney) or a medial side of the upper (as seen in annotated Figures 1A and 1B and 5A and 5B of Cheney) partially around the collapsible rear portion (as seen in annotated Figures 1A and 1B and 5A and 5B of Cheney).
Regarding claim 7, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) extends from a medial side of the rapid-entry shoe to a lateral side of the rapid-entry shoe (as seen in annotated Figures 1A and 1B and 5A and 5B of Cheney).
Regarding claim 8, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) is horseshoe or arc shaped (as seen in annotated Figures 1A and 1B and 5A and 5B of Cheney).
Regarding claim 9, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) is a portion of the upper harder or more resilient (paragraphs 0042, 0044 of Nordstrom) compared to a surrounding portion of the upper that is contiguous with the energy set zone (paragraph 0032 of Nordstrom – the upper may be constructed of leather. While the energy set zone is made from resilient and pliable rubber- paragraph 0056 of Cheney).
Regarding claim 10, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) is a portion of the upper selectively activated by heat (Abstract, paragraph 0003, 0041 of Nordstrom).
Regarding claim 11, the modified rapid-entry shoe of the combined references discloses wherein the energy set zone (102 of Cheney) is a portion of the upper selectively embroidered or laminated (paragraphs 0049, 0050 and 0071 of Nordstrom) with the energy activated material (paragraph 0049 of Nordstrom).
Arguments
Applicant’s arguments have been fully considered but are not convincing. Applicant’s arguments are directed towards structural elements included in the amended claims and thus do not apply to the combinations of references used to teach the limitations of the amended claims in the current rejection and/or the manner in which prior art has been applied in the current rejection. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, 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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/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
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