DETAILED ACTION
This office action is in response to the amendment filed January 9, 2026 in which claims 1-5, 9, 11-14, and 16-20 are presented for examination and claims 6-8, 10, and 15 are canceled.
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 Arguments
Applicant’s First Argument: Objection to the drawings should be withdrawn at least for cited reasons.
Examiner’s Response: Examiner respectfully disagrees. As an initial matter, it is agreed that current amendments to Figure 1 do not introduce new matter and that the cancelation of claims 7-8 and 10 obviate the bases of objection detailed in the prior office action regarding claims 7-8 and 10. However, it is respectfully maintained that the drawings filed January 9, 2026 (including amended Figure 1) fail to depict “a slot is 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” as recited in currently amended claims 1 and 19 and “a slot maintained in the outer surface of the shaft” as currently recited in claim 19. “Slot 236” is depicted in amended Figure 1 (like original Figure 7) using phantom lines, thereby indicating that the slot is not disposed in “outer surface 112” of the shaft of the boot. As such, the drawings do not depict a slot capable of providing access to the pouch from the outer surface of the boot as currently claimed or a slot maintained in the outer surface of the shaft as currently claimed. The objection is maintained (see drawing objections, below).
Applicant’s Second Argument: Rejection of claims 1-20 under 35 USC 112(a) should be withdrawn at least because there is support in the disclosure as originally filed for limitations such as “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” and US Parent Application 18/197,769 provides explicit support for a storage compartment that is accessible from the outer surface of the boot shaft.
Examiner’s Response: Examiner respectfully disagrees. As an initial matter, it is agreed that the disclosure as originally filed provides support for the specific language of limitations such as “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” in cited paragraphs [0001] and [0005] (as well as the originally filed claims) such that the limitations do not constitute new matter. However, it is respectfully maintained that such limitations are not sufficiently described in the specification in such a way as to convey possession of the claimed invention because it remains unclear how the pouch is configured to be accessible by a wearer from the outer surface of the boot/shaft when the pouch is disposed on the inner surface. To sufficiently support such a limitation, the disclosure would need to depict and describe, for example, a configuration of the boot including a pouch disposed on the inner surface of the shaft and a slot disposed in the outer surface of the shaft in the same boot. The disclosure never depicts nor describes such a configuration. The drawings and specification of the instant application depict and describe a pouch disposed on the inner surface of the shaft and a slot that is not disposed in the outer surface of the shaft (see for example Figure 1). As such, the disclosure of the instant application only provides sufficient support for a configuration with a pouch disposed on the inner surface of the shaft that provides access to the pouch from the inner surface of the shaft. The disclosure of US Parent Application 18/197,769 depicts and describes a boot with a pouch that is accessible from the outer surface of the shaft, but the pouch on the boot in US Parent Application 18/197,769 is itself disposed on the outer surface, not the inner surface (see Figures 1-4 of US Parent Application 18/197,769). As such, neither the disclosure of the instant application nor that of US Parent Application 18/197,769 depict and describe a configuration of a boot including a pouch disposed on the inner surface of the shaft and a slot disposed in the outer surface of the shaft in the same boot, as required to support a limitation as recited in currently amended claims 1, 19, and 20. It is further noted that the meaning of paragraph [0051] of the instant specification, as cited in Applicant’s Arguments, is confusing and not understood. Specifically, the first two sentences indicate a pouch “disposed on inner surface 114” that is somehow accessible from the outer surface (see paragraph [0051] of the instant specification). However, the third sentence of paragraph [0051] of the instant specification appears to describe the pouch being positioned on the outer surface of the shaft to provide accessibility to the pouch from the outer surface (see paragraph [0051] of the instant specification). The rejection is maintained (see rejection under 35 USC 112(a), below).
Applicant’s Third Argument: Rejection of claims 1-20 under 35 USC 112(b) should be withdrawn at least because limitations such as “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” are sufficiently depicted and described in the disclosure of the instant application and/or of US Parent Application 18/197,769 such that the meaning of such a limitation in the claims is not indefinite.
Examiner’s Response: Examiner respectfully disagrees. As discussed above in relation to the 35 USC 112(a), it is maintained that neither the instant application nor US Parent Application 18/197,769 sufficiently describe a configuration of the boot including a pouch disposed on the inner surface of the shaft and a slot disposed in the outer surface of the shaft in the same boot, as would be necessary to render such a limitation definite. It is further respectfully noted that current amendments to claims 1 and 19 have resulted in updated bases of rejection under 35 USC 112(b) (see rejection under 35 USC 112(a), below). The rejection is maintained.
Applicant’s Fourth Argument: Rejection of various claims under 35 USC 103 over US Pub No. 2018/0347941 Mandelbaum et al. in view of USPN 11,122,864 Recchi should be withdrawn at least because Mandelbaum does not teach, suggest, or disclose a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft, wherein an open upper edge is defined in the pouch, the open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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, and wherein an upper edge of the pouch is free of stitching extending between the pouch and the shaft such that the pouch is further accessible through the upper edge, as recited by currently amended claims.
Examiner’s Response: Examiner respectfully disagrees. Mandelbaum discloses a boot (100) (see Figures 1-8; paras. 0026-0042), comprising: a shaft 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, see below; para. 0026); 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, pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608 of pouch 600); wherein an open upper edge (608) is defined in the pouch (see Figure 6; para. 0039), the open upper edge accessible by the wearer from the outer surface of the shaft of the boot (see Figure 6; para. 0039; insofar as definite and as best understood, open upper edge/upper edge 608 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of the shaft to open upper edge/upper edge 608 of pouch 600), wherein a slot is defined in the shaft (annotated Figures 2 and 6, see below; para. 0039; inasmuch as currently claimed, the V-shaped notches in both of the front and rear of the second end of the shaft can each properly be interpreted as “a slot”), the slot aligned with the open upper edge of the pouch to provide access to the pouch from the outer surface of the shaft of the boot (as depicted in annotated Figure 6, inasmuch as currently claimed, open upper edge/upper edge 608 of pouch 600 is aligned with the at least portions of the slot, and a wearer is capable of reaching through either of the slots into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608), and wherein an upper edge (608) of the pouch is free of stitching extending between the pouch and the shaft such that the pouch is further accessible through the upper edge (see Figure 6; para. 0039).
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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 limitations “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” and “open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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” as recited in currently amended claim 1 must be shown or the feature(s) canceled from the claim(s). The drawings of the instant application depict a boot with a pouch on the inner surface of the shaft and with a slot that is disposed in something other than the outer surface of the shaft (“slot 236” is depicted in phantom lines in both Figures 1 and 7, indicating that “slot 236” is located behind “outer surface 112” of “shaft 110” and therefore at least cannot be disposed in the outer surface of the shaft). As such, the drawings of the instant application do not depict a boot with a pouch disposed on the inner surface of the shaft that is accessible from the outer surface of the shaft. It is further respectfully noted that the drawings of US Parent Application 18/197,769 depict a pouch disposed on the outer surface of the shaft and therefore also do not depict a pouch disposed on the inner surface of the shaft that is accessible from the outer surface of the shaft. 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, the “slot maintained in the outer surface of the shaft” as recited in currently amended claim 19 must be shown or the feature(s) canceled from the claim(s). The drawings of the instant application depict a boot having a slot that is disposed in something other than the outer surface of the shaft because “slot 236” is depicted in phantom lines in both Figures 1 and 7, indicating that “slot 236” is located behind “outer surface 112” of “shaft 110” and therefore at least cannot be disposed in the outer surface of the shaft. 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, the limitations “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” and “open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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” as recited in currently amended claim 19 must be shown or the feature(s) canceled from the claim(s). The drawings of the instant application depict a boot with a pouch on the inner surface of the shaft and with a slot that is disposed in something other than the outer surface of the shaft (“slot 236” is depicted in phantom lines in both Figures 1 and 7, indicating that “slot 236” is located behind “outer surface 112” of “shaft 110” and therefore at least cannot be disposed in the outer surface of the shaft). As such, the drawings of the instant application do not depict a boot with a pouch disposed on the inner surface of the shaft that is accessible from the outer surface of the shaft. It is further respectfully noted that the drawings of US Parent Application 18/197,769 depict a pouch disposed on the outer surface of the shaft and therefore also do not depict a pouch disposed on the inner surface of the shaft that is accessible from the outer surface of the shaft. 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, the “first material positioned between the first edge, the second edge, and the bottom edge of the pouch and the inner surface of the shaft” as recited in currently amended claim 20 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 Objections
Claim 16 is objected to because of the following informalities: Claim 16 depends from claim 15, which is canceled. Additionally, the limitation “the item” in claim 16 lacks proper antecedent basis. For purposes of examination, claim 16 will be interpreted as depending from claim 1.
Appropriate correction is required.
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 1-5, 9, 11-14, and 16-20 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 limitations “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) and “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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” (lines 12-15). The limitations “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” and “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot” imply that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slot or other opening disposed in the outer surface of the shaft). Such a configuration would require some type of opening in the outer surface of the shaft of the boot to provide access to the upper edge. However, such an opening is not sufficiently described in the specification to convey possession of the claimed invention. It is further respectfully noted that the limitation that “a slot is defined in the shaft” notably does not indicate which portion(s) of the shaft the slot is defined in (e.g., the claim does not recite, for example, “a slot defined in the outer surface of the shaft and extending from the outer surface of the shaft to the inner surface of the shaft,” a limitation that would not be supported by the disclosure of the instant application). It is additionally further respectfully noted that the disclosure of the instant application never explicitly describes or depicts precisely which portion(s) of the shaft the slot is disposed in. For example, is the slot disposed in the interior lining with the pouch disposed between the interior lining and the inner surface of the shaft? The limitation in claim 1 that there is a slot defined in the shaft to provide access to the pouch from the outer surface of the shaft is not described in the specification with sufficient detail and/or specificity to convey possession of the claimed invention. It is respectfully suggested that to overcome this rejection, claim 1 may be amended to remove limitations regarding the slot and the alleged ability to access the pouch from the outer surface of the shaft. Alternatively, a further continuation-in-part application may be filed which provides sufficient detail and specificity as to the structural configuration of the slot to provide support for a limitation that there is a slot defined in the shaft to provide access to the pouch from the outer surface of the shaft.
Claim 19 recites the limitations “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), “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), and “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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” (lines 15-17). The limitations “a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface of the shaft” and “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot” imply that a wearer is capable of accessing the pouch without reaching into the interior of the shaft (for example, by reaching through a slot or other opening disposed in the outer surface of the shaft and extending to the inner surface of the shaft). Such a configuration would require some type of opening in the outer surface of the shaft and extending to the inner surface of the shaft of the boot to provide access to the upper edge. However, such an opening is not sufficiently described in the specification to convey possession of the claimed invention. As to 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,” it is respectfully noted that the specification of the instant application never explicitly describes precisely which portion(s) of the shaft the slot is disposed in and notably does not explicitly disclose the slot being disposed in the outer surface of the shaft. Likewise, “slot 236” is depicted in phantom lines in both Figures 1 and 7, indicating that “slot 236” is located behind “outer surface 112” of “shaft 110” and therefore at least cannot be disposed in the outer surface of the shaft. It is unclear from the disclosure precisely which surface(s) of the shaft the slot is disposed in (e.g., is the slot disposed in the inner surface of the shaft, some surface of the interior lining, the outer surface of the shaft, etc.?) As such, the limitations in claim 19 that there is a pouch disposed on the inner surface and configured to be accessible by the wearer from the outer surface and that there is a slot maintained in the outer surface of the shaft are not described in the specification with sufficient detail and/or specificity to convey possession of the claimed invention. It is respectfully suggested that to overcome this rejection, claim 19 may be amended to remove limitations regarding the slot and the ability to access the pouch from the outer surface of the shaft. Alternately, a further continuation-in-part application may be filed which provides sufficient detail and specificity as to the structural configuration of the slot to provide support for a limitation that there is a slot defined in the shaft to provide access to the pouch from the outer surface of the shaft.
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 1-5, 9, 11-14, and 16-20 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 limitations “an open upper edge is defined in the pouch” (line 12) and “an upper edge of the pouch” (line 15). Taken together, these limitations render the claim indefinite at least because it is unclear whether they refer to the same or different upper edge(s) of the pouch.
Claim 1 recites the limitations “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) and “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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” (lines 12-15). These limitations render the claim indefinite at least because they imply that a wearer is capable of accessing the pouch without reaching into the interior of the shaft, for example, by reaching through a slot that extends from the outer surface of the shaft to the inner surface of the shaft. However, such a configuration is not sufficiently described in the specification to convey possession of the claimed invention. Because such a configuration is not sufficiently described in the specification to convey possession of the claimed invention or adequately depicted in the drawings, the meaning of this limitation is not understood and it therefore renders the claim indefinite.
Claim 1 recites the limitation “the outer surface of the boot” (line 15). This limitation renders the claim indefinite because “the outer surface of the boot” lacks proper antecedent basis and it is further unclear whether the limitation on line 15 is intended to refer to the previously-recited “outer surface of the shaft of the boot” or some other outer surface. For purposes of examination, the limitation on line 15 will be interpreted as reciting “the outer surface of the shaft of the boot.”
Claim 19 recites the limitations “a slot maintained in the outer surface of the shaft” (line 13) and “the open upper edge accessible by the wearer from the outer surface of the shaft of the boot, wherein a slot is 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” (lines 15-17). These limitations render the claim indefinite at least because they imply that a wearer is capable of accessing the pouch without reaching into the interior of the shaft by reaching through a slot that extends from the outer surface of the shaft to the inner surface of the shaft. However, such a configuration is not sufficiently described in the specification to convey possession of the claimed invention. Because such a configuration is not sufficiently described in the specification to convey possession of the claimed invention or adequately depicted in the drawings, the meaning of this limitation is not understood and it therefore renders the claim indefinite.
Claim 19 recites the limitations “a slot maintained in the outer surface of the shaft” (line 13) and “a slot is defined in the shaft” (line 16). Taken together, these limitations render the claim indefinite at least because it is unclear whether they refer to the same or different slot(s).
Claim 19 recites the limitations “an open upper edge is defined in the pouch” (lines 14-15) and “an upper edge of the pouch” (lines 17-18). Taken together, these limitations render the claim indefinite at least because it is unclear whether they refer to the same or different upper edge(s) of the pouch.
Claim 19 recites the limitation “the outer surface of the boot” (line 17). This limitation renders the claim indefinite because “the outer surface of the boot” lacks proper antecedent basis and it is further unclear whether the limitation on line 17 is intended to refer to the previously-recited “outer surface of the shaft of the boot” or some other outer surface. For purposes of examination, the limitation on line 17 will be interpreted as reciting “the outer surface of the shaft of the boot.”
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 1-5, 9, 11, 14, and 16-19 are rejected, insofar as definite and as best understood, 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 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, pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608 of pouch 600); wherein an open upper edge (608) is defined in the pouch (see Figure 6; para. 0039), the open upper edge accessible by the wearer from the outer surface of the shaft of the boot (see Figure 6; para. 0039; insofar as definite and as best understood, open upper edge/upper edge 608 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of the shaft to open upper edge/upper edge 608 of pouch 600), wherein a slot is defined in the shaft (annotated Figure 2 and annotated Figure 6, see below; para. 0039; inasmuch as currently claimed, the V-shaped notches in both of the front and rear of the second end of the shaft can each properly be interpreted as “a slot”), the slot aligned with the open upper edge of the pouch to provide access to the pouch from the outer surface of the shaft of the boot (as depicted in annotated Figure 6, inasmuch as currently claimed, open upper edge/upper edge 608 of pouch 600 is aligned with the at least portions of the slot, and a wearer is capable of reaching through either of the slots into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608), and wherein an upper edge (608) of the pouch is free of stitching extending between the pouch and the shaft such that the pouch is further accessible through the upper edge (see Figure 6; para. 0039).
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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) teaches a boot wherein the pouch further comprises a first edge (604a of Mandelbaum), a second edge (604b of Mandelbaum), and a bottom edge (606 of Mandelbaum) of the pouch (see Figure 6 and para. 0039 of Mandelbaum).
Mandelbaum is silent as to the manner in which pouch (600) of Figure 6 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).
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.
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 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 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 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).
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 19, 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 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);
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, pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of shaft to access pouch 600 via open upper edge/upper edge 608 of pouch 600); 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 (annotated Figures 2 and 6, see above; para. 0039; inasmuch as currently claimed, the V-shaped notches, which extend through outer surface 106 of the shaft in both of the front and rear of the second end of the shaft can each properly be interpreted as “a slot”), wherein an open upper edge (608) is defined in the pouch (see Figure 6; para. 0039), the open upper edge accessible by the wearer from the outer surface of the shaft of the boot (see Figure 6; para. 0039; insofar as definite and as best understood, open upper edge/upper edge 608 of pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608 of pouch 600), wherein a slot is 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 shaft of the boot (annotated Figures 2 and 6, see above; para. 0039; inasmuch as currently claimed, the V-shaped notches, which extend through outer surface 106 of the shaft in both of the front and rear of the second end of the shaft can each properly be interpreted as “a slot;” as depicted in annotated Figure 6, inasmuch as currently claimed, open upper edge/upper edge 608 of pouch 600 is aligned with the at least portions of the slot, and a wearer is capable of reaching through either of the slots into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608), and wherein an upper edge (608) of the pouch is free of stitching extending between the pouch and the shaft such that the pouch is further accessible through the upper edge (see Figure 6; para. 0039).
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, insofar as definite and as best understood, 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, insofar as definite and as best understood, 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 20 is rejected, insofar as definite and as best understood, under 35 U.S.C. 103 as being unpatentable over Mandelbaum in view of USPN 10,178,815 Vieyra et al.
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 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);
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, pouch 600 is accessible “from the outer surface of the shaft” by a wearer reaching past the second end of the shaft into the interior of the shaft to access pouch 600 via open upper edge/upper edge 608 of pouch 600)
a first edge (604a), a second edge (604b), and a bottom edge (606) of the pouch connected and secured to the inner surface of the shaft (see Figures 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), 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).
The modified invention of Mandelbaum (i.e., Mandelbaum in view of Recchi, as detailed above) does not expressly teach a boot further comprising a first material positioned between the first edge, the second edge, and the bottom edge of the pouch and the inner surface of the shaft to provide a sealed barrier between the pouch and the shaft of the boot.
However, Vieyra teaches a boot (2001) (see Figure 20; col. 8, lines 19-23) comprising a pouch (1502) (see Figure 20; col. 8, lines 19-23) comprising a first material (602) positioned between a first edge, a second edge, and a bottom edge of the pouch to provide a sealed barrier (see Figures 6 and 20; col. 1, lines 44-67; col. 4, lines 55-59; col. 7, lines 33-46; first material 602 provides a sealed barrier against RFID hacking attempts).
The modified invention of Mandelbaum and Vieyra teach analogous inventions in the fields of footwear and pouches. 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 pouch of the modified invention of Mandelbaum to include a first material as taught by Vieyra because Vieyra teaches that this configuration is known in the art and beneficial for protecting the contents of the pouch from RFID hacking attempts (col. 7, lines 33-46).
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.
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/F Griffin Hall/Primary Examiner, Art Unit 3732
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