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 .
Election/Restrictions
Applicant’s election of Species A, Boot 100 (Figures 1-6), is acknowledged. Election was made with traverse in the reply filed August 18, 2025. No claims are withdrawn.
Applicant’s traversal is on the grounds that all inventions could be examined without a serious burden. This is found not persuasive because the entire application contains a number of species that are patentably distinct from one another and including divergent claimed subject matter separating the species. Such recognized divergent subject matter is a burden to examination. It is further noted that none of claims 1-20 are withdrawn pursuant to the requirement for restriction.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “the slot aligned with the open upper edge of the pouch to provide access to the pouch from the outer surface of the boot” as recited in claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “wherein the shaft includes an edge attachable to the outer surface of the shaft around the slot, the edge being configured to cover the slot” as recited in claim 8 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “wherein the pouch is further configured to conceal the upper edge of the pouch and the slot integrated into the shaft of the boot” as recited in claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “slot maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft” as recited in claim 19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” (lines 11-12). This limitation implies that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slit or other opening disposed on the outer surface of the shaft), which is not believed to be the nature of the invention. Upon information and belief, the pouch is disposed completely within the interior of the shaft, requiring a wearer to reach down into the interior of the shaft to access the pouch. As such, this limitation is not described in such a way as to convey possession of the claimed invention.
Claim 6 recites the limitation “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot” (lines 1-2). For reasons similar to those detailed regarding claim 1, above, this limitation is not described in such a way as to convey possession of the claimed invention.
Claim 8 recites the limitation “wherein the shaft includes an edge attachable to the outer surface of the shaft around the slot, the edge being configured to cover the slot” (lines 1-2). This limitation is not believed to be depicted in the drawings and it is unclear how this recited “edge” is related to second end 118 of shaft 110 because the specification provides no additional information about this claimed structure.
Claim 10 recites the limitation “wherein the pouch is further configured to conceal the upper edge of the pouch and the slot integrated into the shaft of the boot” (lines 1-2). This limitation is not believed to be depicted in the drawings and it is unclear how the pouch is configured to conceal a portion of itself at least because the specification provides no additional information about this claimed structure.
Claim 19 recites the limitation “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” (lines 11-12). This limitation implies that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slit or other opening disposed on the outer surface of the shaft), which is not believed to be the nature of the invention. Upon information and belief, the pouch is disposed completely within the interior of the shaft, requiring a wearer to reach down into the interior of the shaft to access the pouch. As such, this limitation is not described in such a way as to convey possession of the claimed invention.
Claim 19 recites the limitation “a slot maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft” (lines 13-14). This limitation implies that the slot is, for example, a slit cut into the outer surface of the shaft, which is not believed to be the nature of the invention at least because slot 236 depicted in Figure 7 is shown in broken lines, implying that the slot is housed in the interior of the shaft, not in the outer surface. As such, this limitation is not described in such a way as to convey possession of the claimed invention.
Claim 20 recites the limitation “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” (lines 11-12). This limitation implies that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slit or other opening disposed on the outer surface of the shaft), which is not believed to be the nature of the invention. Upon information and belief, the pouch is disposed completely within the interior of the shaft, requiring a wearer to reach down into the interior of the shaft to access the pouch. As such, this limitation is not described in such a way as to convey possession of the claimed invention.
Dependent claims are rejected at least for depending from a rejected claim.
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 1-20 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 recites the limitation “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” (lines 11-12). This limitation renders the claim indefinite at least because it implies that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slit or other opening disposed on the outer surface of the shaft), which is not believed to be the nature of the invention. Because it is not believed that invention is configured so that a wearer can access the pouch without reaching into the interior of the shaft, the meaning of this limitation is not understood. For purposes of examination, this limitation will be interpreted as merely requiring that a wearer can access that pouch by reaching into the interior of the shaft.
Claim 6 recites the limitation “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot” (lines 1-2). For reasons similar to those detailed regarding claim 1, above, this limitation renders the claim indefinite because its meaning is not understood.
Claim 8 recites the limitation “wherein the shaft includes an edge attachable to the outer surface of the shaft around the slot, the edge being configured to cover the slot” (lines 1-2). This limitation renders the claim indefinite at least because it is unclear how it relates to second end 118 of shaft 110. It is further noted that the specification and drawings provide no additional context by which to interpret this limitation.
Claim 10 recites the limitation “wherein the pouch is further configured to conceal the upper edge of the pouch and the slot integrated into the shaft of the boot” (lines 1-2). This limitation renders the claim indefinite at least because it is unclear how the pouch is able to conceal a portion of itself. It is further noted that the specification and drawings provide no additional context by which to interpret this limitation.
Claim 15 recites the limitation “wherein the pouch is dimensioned to prevent bulging when the pouch contains the item” (lines 1-2). It is impossible to determine the metes and bounds of this limitation because there is insufficient information about the claimed “item” (i.e., a small, thin item may not cause bulging, while a large, thick item may cause bulging).
Claim 19 recites the limitation “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” (lines 11-12). This limitation renders the claim indefinite at least because it implies that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slit or other opening disposed on the outer surface of the shaft), which is not believed to be the nature of the invention. Because it is not believed that invention is configured so that a wearer can access the pouch without reaching into the interior of the shaft, the meaning of this limitation is not understood. For purposes of examination, this limitation will be interpreted as merely requiring that a wearer can access that pouch by reaching into the interior of the shaft.
Claim 19 recites the limitation “a slot maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft” (lines 13-14). This limitation renders the claim indefinite at least because it implies that the slot is, for example, a slit cut into the outer surface of the shaft, which is not believed to be the nature of the invention at least because slot 236 depicted in Figure 7 is shown in broken lines, implying that the slot is housed in the interior of the shaft, not in the outer surface.
Claim 20 recites the limitation “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” (lines 11-12). This limitation renders the claim indefinite at least because it implies that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slit or other opening disposed on the outer surface of the shaft), which is not believed to be the nature of the invention. Because it is not believed that invention is configured so that a wearer can access the pouch without reaching into the interior of the shaft, the meaning of this limitation is not understood. For purposes of examination, this limitation will be interpreted as merely requiring that a wearer can access that pouch by reaching into the interior of the shaft.
Dependent claims are rejected at least for depending from a rejected claim.
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.
The factual inquiries 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.
Claims 1-11, 14-18, and 20 are rejected, insofar as definite and as best understood by the Examiner, under 35 U.S.C. 103 as being unpatentable over US Pub No. 2018/0347941 Mandelbaum et al. in view of USPN 11,122,864 Recchi.
To claim 1, Mandelbaum discloses a boot (100) (see Figures 1-8; paras. 0026-0042), comprising:
a vamp configured to cover a foot of a wearer, the vamp having a top portion and a bottom portion (annotated Figure 2, see below; para. 0026);
a shaft (104,106) having an inner surface (104), an outer surface (106), a first end, and an opposing second end, the first end connectable to the top portion of the vamp, the shaft being configured to cover a portion of a leg disposed above the foot of the wearer (annotated Figure 2; para. 0026);
an outsole attachable to the bottom portion of the vamp, the outsole having a rear portion (annotated Figure 2; rear portion not depicted likely due to being a conventional footwear element not forming a portion of the novelty of the invention of Mandelbaum);
a heel attachable at the rear portion of the outsole (annotated Figure 2);
at least one pull strap (110) disposed at the second end of the shaft (annotated Figure 2; para. 0027); and
a pouch (600) disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft (see Figure 6; para. 0039; insofar as definite and as best understood by the Examiner, pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of shaft 104,106 into the interior of shaft 104,106 to pouch 600).
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Mandelbaum does not disclose an interior lining disposed within the vamp and the shaft and does not explicitly disclose the outsole having a rear portion with the heel attached at the rear portion of the outsole.
However, Recchi teaches a boot (10) (see Figures 1-10, Figure 2 reproduced below for convenience; col. 3, line 62 – col. 7, line 23) comprising a vamp (20) configured to cover a foot of a wearer (see especially Figures 1-2; col. 4, lines 28-54), the vamp having a top portion and a bottom portion (see Figures 1-2); a shaft (24) having an inner surface, an outer surface, a first end, and an opposing second end, the first end connectable to the top portion of the vamp (see especially Figures 1-2; col. 4, lines 28-54), the shaft being configured to cover a portion of a leg disposed above the foot of the wearer (see especially Figures 1-2; col. 4, lines 28-54); an interior lining disposed within the vamp and the shaft (col. 5, lines 1-18); an outsole (14) attachable to the bottom portion of the vamp (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27), the outsole having a rear portion (14a) (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27); a heel (16) attachable at the rear portion of the outsole (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27); and at least one pull strap (31) disposed at the second end of the shaft (see especially Figures 1-2; col. 4, lines 28-54).
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Mandelbaum and Recchi teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the boot of Mandelbaum to include an outsole rear portion with the heel attachable at the rear portion of the outsole and an interior lining as taught by Recchi because Recchi teaches that these configurations are known in the art and the outsole/heel combination provides balance and torsional stability for the sides of a wearer’s foot (col. 2, lines 1-7) and the interior lining provides sweat dissipating characteristics to the boot (col. 5, lines 1-18).
To claim 2, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the boot is selected from the group consisting of a western-style boot, riding boot, work boot, hiking boot, tactical boot, hunting boot, rain boot, and combinations thereof (see especially Figures 1-2 of Mandelbaum; it is respectfully noted that the various boot types/styles recited in claim 2 are being treated as statements of intended use and/or merely being very broad as opposed to being indefinite under 35 USC 112(b)).
To claim 3, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the boot is a pair of boots, a respective pouch disposed on the inner surface of the shaft of each boot of the pair of boots (see Figure 6 and para. 0039 of Mandelbaum).
To claim 4, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the pouch is connectable to the inner surface of the shaft via stitching (paras. 0010, 0032, 0035 of Mandelbaum), the stitching connecting a first edge (604a of Mandelbaum), a second edge (604b of Mandelbaum), and a bottom edge (606 of Mandelbaum) of the pouch to the inner surface of the shaft (see Figure 6 and para. 0039 of Mandelbaum).
To claim 5, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the stitching further comprises a first material (paras. 0010, 0032, 0035 of Mandelbaum; inasmuch as currently claimed, the stitching of Mandelbaum necessarily comprises a material), the first material being sewn down to secure the first, second, and bottom edges of the pouch to the inner surface of the shaft and to provide a sealed barrier between the pouch and the shaft of the boot (see Figure 6 and para. 0039 of Mandelbaum).
To claim 6, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot further comprising an open upper edge (608 of Mandelbaum) defined in the pouch, the open upper edge accessible by the wearer from the outer surface of the shaft of the boot (see Figure 6 and para. 0039 of Mandelbaum).
To claim 7, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot further comprising a slot defined in the shaft, the slot aligned with the open upper edge of the pouch to provide access to the pouch from the outer surface of the boot (see Figure 6 and para. 0039 of Mandelbaum).
To claim 8, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the shaft includes an edge attachable to the outer surface of the shaft around the slot, the edge being configured to cover the slot (see Figure 6 and para. 0039 of Mandelbaum).
To claim 9, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the pouch is configured to store one or more personal items (see Figure 6 and para. 0039 of Mandelbaum; intended use).
To claim 10, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the pouch is further configured to conceal the upper edge of the pouch and the slot integrated into the shaft of the boot (see Figure 6 and para. 0039 of Mandelbaum).
To claim 11, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the pouch is constructed from a durable, breathable material (paras. 0029, 0038 of Mandelbaum).
To claim 14, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the durable, breathable material has a first side and an opposing second side, the first side forming an outer face of the pouch, and the opposing second side forming an inner face of the pouch (see Figure 6 and para. 0039 of Mandelbaum).
To claim 15, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the pouch is dimensioned to prevent bulging when the pouch contains the item (see Figure 6 and para. 0039 of Mandelbaum; functional, indefinite).
To claim 16, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the item is securable in the pouch without requiring a closure mechanism (see Figure 6 and para. 0039 of Mandelbaum; functional, indefinite).
To claim 17, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the shaft is dimensioned such that an external appearance of the boot remains consistent with traditional boot designs despite inclusion of the pouch (see Figures 1-2, 6, and para. 0039 of Mandelbaum; it is noted that because para. 0041 of the instant specification provides a definition for “traditional boot designs,” this claim is being treated as merely being very broad rather than indefinite under 35 USC 112(b)).
To claim 18, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) further teaches a boot wherein the pull strap is configured for the wearer to don the boot without interference with the pouch (see Figures 1-2, 6, and paras. 0027, 0039 of Mandelbaum).
To claim 20, Mandelbaum discloses a boot (100) (see Figures 1-8; paras. 0026-0042), comprising:
a vamp configured to cover a foot of a wearer, the vamp having a top portion and a bottom portion (annotated Figure 2, see above; para. 0026);
a shaft (104,106) having an inner surface (104,106), an outer surface (104,106), a first end, and an opposing second end, the first end connectable to the top portion of the vamp, the shaft being configured to cover a portion of a leg disposed above the foot of the wearer (annotated Figure 2; para. 0026);
an outsole attachable to the bottom portion of the vamp, the outsole having a rear portion (annotated Figure 2; rear portion not depicted likely due to being a conventional footwear element not forming a portion of the novelty of the invention of Mandelbaum);
a heel attachable at the rear portion of the outsole (annotated Figure 2);
at least one pull strap (110) disposed at the second end of the shaft (annotated Figure 2; para. 0027);
a pouch (600) disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft (see Figure 6; para. 0039; insofar as definite and as best understood by the Examiner, pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of shaft 104,106 into the interior of shaft 104,106 to pouch 600); and
a first edge (604a), a second edge (604b), and a bottom edge (606) of the pouch connected to the inner surface of the shaft (see Figures 6; para. 0039) to provide a sealed barrier between the pouch and the shaft of the boot (see Figure 6; para. 0039).
Mandelbaum is silent as to the manner in which the pouch is connected to the inner surface of the shaft. However, Mandelbaum further discloses an additional pocket (218) connected to the inner surface of the shaft via stitching (215) (see Figures 1-4; paras. 0010, 0032, 0035), the stitching comprising a first material (paras. 0010, 0032, 0035; inasmuch as currently claimed, the disclosed stitching necessarily comprises a material), the first material being sewn down to secure the edges of the pocket (see Figures 1-4; paras. 0010, 0032, 0035).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure pouch 600 of Mandelbaum to be secured via stitching because Mandelbaum also teaches pocket 218 secured via stitching. It would further have been obvious to one of ordinary skill in the art that stitching is a well-known and conventional method to attach elements to one another in footwear securely and permanently.
Mandelbaum does not disclose an interior lining disposed within the vamp and the shaft and does not explicitly disclose the outsole having a rear portion with the heel attached at the rear portion of the outsole.
However, Recchi teaches a boot (10) (see Figures 1-10, Figure 2 reproduced above for convenience; col. 3, line 62 – col. 7, line 23) comprising a vamp (20) configured to cover a foot of a wearer (see especially Figures 1-2; col. 4, lines 28-54), the vamp having a top portion and a bottom portion (see Figures 1-2); a shaft (24) having an inner surface, an outer surface, a first end, and an opposing second end, the first end connectable to the top portion of the vamp (see especially Figures 1-2; col. 4, lines 28-54), the shaft being configured to cover a portion of a leg disposed above the foot of the wearer (see especially Figures 1-2; col. 4, lines 28-54); an interior lining disposed within the vamp and the shaft (col. 5, lines 1-18); an outsole (14) attachable to the bottom portion of the vamp (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27), the outsole having a rear portion (14a) (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27); a heel (16) attachable at the rear portion of the outsole (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27); and at least one pull strap (31) disposed at the second end of the shaft (see especially Figures 1-2; col. 4, lines 28-54).
Mandelbaum and Recchi teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the boot of Mandelbaum to include an outsole rear portion with the heel attachable at the rear portion of the outsole and an interior lining as taught by Recchi because Recchi teaches that these configurations are known in the art and the outsole/heel combination provides balance and torsional stability for the sides of a wearer’s foot (col. 2, lines 1-7) and the interior lining provides sweat dissipating characteristics to the boot (col. 5, lines 1-18).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Mandelbaum in view of Recchi (as applied to claims 1 and 11, above) in further view of US Pub No. 2005/0183293 Mick.
To claim 12, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) teaches a boot wherein the pouch is constructed from a durable, breathable material (paras. 0029, 0038 of Mandelbaum).
The modified invention of Mandelbaum does not explicitly disclose a boot wherein the durable, breathable material includes neoprene.
However, Mick teaches footwear (see Figure 1) comprising a pouch (16) constructed from neoprene (see Figure 1; para. 0021).
The modified invention of Mandelbaum and Mick teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to construct pouch 600 of the modified invention of Mandelbaum from neoprene as taught by Mick because Mick teaches that this configuration is known in the art and is both stretchy and durable (para. 0021). It is further respectfully noted that 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 (see MPEP 2144.07).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mandelbaum in view of Recchi (as applied to claims 1 and 11, above) in further view of USPN 9,179,730 Waters.
To claim 13, the modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) teaches a boot wherein the pouch is constructed from a durable, breathable material (paras. 0029, 0038 of Mandelbaum).
The modified invention of Mandelbaum does not explicitly disclose a boot wherein the durable, breathable material includes perforations formed therein to enhance breathability, and a thickness of the durable, breathable material is between 1 mm and 5 mm.
However, Waters teaches a boot (1) (see Figure 1; col. 3, lines 17-43) comprising a pouch (2), wherein the pouch is constructed from a material including perforations (8).
Mandelbaum and Waters teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure pouch 600 of the modified invention of Mandelbaum to include perforations as taught by Waters because Waters teaches that this configuration is known in the art and beneficial for allowing airflow through the pocket (Abstract).
The modified invention of Mandelbaum (i.e. Mandelbaum in view of Recchi and Waters is silent as to the thickness of the durable, breathable material.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the boot of the modified invention of Mandelbaum such that a thickness of the durable, breathable material is between 1 mm and 5 mm as a matter of routine optimization. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
Claim 19 is rejected, insofar as definite and as best understood by the Examiner, under 35 U.S.C. 103 as being unpatentable over Recchi in view of USPN 10,178,815 Vieyra et al.
To claim 19, Recchi discloses a boot (10) (see Figures 1-10; col. 3, line 62 – col. 7, line 23), comprising:
a vamp (20) configured to cover a foot of a wearer (see especially Figures 1-2; col. 4, lines 28-54), the vamp having a top portion and a bottom portion (see Figures 1-2);
a shaft (24) having an inner surface, an outer surface, a first end, and an opposing second end, the first end connectable to the top portion of the vamp (see especially Figures 1-2; col. 4, lines 28-54), the shaft being configured to cover a portion of a leg disposed above the foot of the wearer (see especially Figures 1-2; col. 4, lines 28-54);
an interior lining disposed within the vamp and the shaft (col. 5, lines 1-18);
an outsole (14) attachable to the bottom portion of the vamp (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27), the outsole having a rear portion (14a) (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27);
a heel (16) attachable at the rear portion of the outsole; at least one pull strap disposed at the second end of the shaft (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27).
Recchi does not disclose a boot comprising a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft; and a slot maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft.
However, Vieyra teaches a boot (2001) (see Figure 20, reproduced below for convenience; col. 8, lines 19-23) comprising a pouch (1502) disposed on the inner surface (inner surface denoted by dashed line depicting outline of pouch 1502, the dashed line indicating that the pouch is concealed behind the outer surface of the shaft) and configured to be accessible by the wearer from the outer surface of the shaft (via slot at zipper 102); and a slot (the slot is the opening in the outer surface of the shaft of boot 2001 accessed via zipper 102, which allows access to the pouch from the outer surface of the shaft without requiring a wearer to reach into the shaft, which would not be considered access from the outer surface) maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft (see Figure 20; col. 8, lines 19-23).
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Recchi and Vieyra teach analogous inventions in the field of footwear. 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 boot of Recchi to include a pouch and slot as taught by Vieyra because Vieyra teaches that this configuration is known in the art and beneficial for storing personal goods (col. 1, lines 11-17).
Claim 19 is rejected, insofar as definite and as best understood by the Examiner, under 35 U.S.C. 103 as being unpatentable over Recchi in view of USPN 11,369,167 Mayer et al.
To claim 19, Recchi discloses a boot (10) (see Figures 1-10; col. 3, line 62 – col. 7, line 23), comprising:
a vamp (20) configured to cover a foot of a wearer (see especially Figures 1-2; col. 4, lines 28-54), the vamp having a top portion and a bottom portion (see Figures 1-2);
a shaft (24) having an inner surface, an outer surface, a first end, and an opposing second end, the first end connectable to the top portion of the vamp (see especially Figures 1-2; col. 4, lines 28-54), the shaft being configured to cover a portion of a leg disposed above the foot of the wearer (see especially Figures 1-2; col. 4, lines 28-54);
an interior lining disposed within the vamp and the shaft (col. 5, lines 1-18);
an outsole (14) attachable to the bottom portion of the vamp (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27), the outsole having a rear portion (14a) (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27);
a heel (16) attachable at the rear portion of the outsole; at least one pull strap disposed at the second end of the shaft (see especially Figures 1-2; col. 3, line 62 – col. 4, line 27).
Recchi does not disclose a boot comprising a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft; and a slot maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft.
However, Mayer teaches a boot (203) (see Figures 2A-4, Figures 2A-2B reproduced below for convenience; col. 2, line 37 – col. 3, line 30) comprising a pouch (207) disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft (see Figures 2A-2B); and a slot (opening adjacent reference numeral 309 in Figures 3A-3B) maintained in the outer surface of the shaft to conceal the pouch and permit access to the pouch from the outer surface of the shaft (see Figures 2A-4; col. 2, lines 37-56).
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Recchi and Mayer teach analogous inventions in the field of footwear. 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 boot of Recchi to include a pouch and slot as taught by Mayer because Mayer teaches that this configuration is known in the art and allows a wearer to conveniently carry small items (col. 1, lines 16-25).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Additional footwear with pockets analogous to the instant invention.
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/F Griffin Hall/Primary Examiner, Art Unit 3732