Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined
under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35
U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
correction of the statutory basis for the rejection will not be considered a new ground of
rejection if the prior art relied upon, and the rationale supporting the rejection, would be
the same under either status.
DETAILED ACTION
The present application, filed on or after February 24, 2026, of which claims 1-20 were presented for examination, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Species IX (Figs. 4, 5, and 8A-8F) in the reply filed on February 24, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claim 2 is objected to because of the following informalities:
Regarding claim 2, the limitation “medial-later direction” in line: 2 should be changed to “medial-lateral direction”.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,161,197 and claims 1-16 of U.S. Patent No. 11,388,955. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations regarding the “lace cable, plurality of lace guides, and lace guide track” in claims 16-20 is similar in scope to claims 1-20 of U.S. Patent No. 12,161,197, and the limitations regarding the “footwear upper, lace cable, plurality of lace guides, and lace guide track” in claims 1-15 is similar in scope to claims 1-16 of U.S. Patent No. 11,388,955.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, it recites the limitation "to a heel portion on either side of the open central portion" in line: 4. There is insufficient antecedent basis for this limitation in the claim. It is unclear if Applicant is attempting to claim a “heel portion” different from “a heel portion” introduced in line: 3. Examiner assumes Applicant is referring to the “heel portion” introduced in line: 3.
Claims 2-15 are rejected for depending directly/indirectly 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.
Claims 1, 2, 8-12, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Olivieri (US Patent 4,937,952) in view of Berthet et al. “Berthet” (US PG Pub. 2011/0088283).
Regarding claim 1, Olivieri discloses a footwear assembly (1, Fig. 1-2) comprising:
a footwear upper (see annotated Fig 1 below) including a toe box portion (see annotated Fig 1 below), a medial side (see annotated Fig 1 below), a lateral side (see annotated Fig 1 below), an open central portion (see annotated Fig 2 below), and a heel portion (see annotated Fig 1 below), the medial side and the lateral side each extending proximally from the toe box portion to a heel portion on either side of the open central portion (as shown in annotated Fig. 2 below);
a lace cable (9) with a first end (9a) anchored along a distal outside portion of the medial side (as shown in Fig. 1) and a second end (9b, Col. 2, lines: 18-21, Examiner notes in Fig. 2 would be were element 11 is located,) anchored along a distal outside portion of the lateral side (as shown in Fig. 2);
a plurality of lace guides (12, 13, 15, and 16) distributed along the medial side and the lateral side (as shown in Fig. 1 and 2), each lace guide of the plurality of lace guides adapted to receive a length of the lace cable (9, as shown in Fig. 1), wherein the lace cable extends through each of the plurality of lace guides without crossing over the open central portion (Col. 2, lines: 42-44, as shown in Fig. 1 and 2); and
a lace guide track (19 and 20).
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Fig. 1-Examiner Annotated
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Fig. 2-Examiner Annotated
Olivieri does not disclose the lace guide track is adapted to adjustably position a lace guide of the plurality of lace guides.
However, Berthet teaches yet another footwear assembly, wherein Berthet teaches a lace guide track (combination of 101, 103, and 114, Fig. 2-5) is adapted to adjustably position a lace guide (34) of the plurality of lace guides (combination of 32, 33, 34, 35, and 36, Par. 0072, examiner notes the positioning of the lace guide, 34, is adjustable between 10mm and 25mm, “adapted to…guides” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
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 lace guide track disclosed by Olivieri, by incorporating a lace guide track that is adapted to adjustably position a lace guide of the plurality of lace guides, as taught by Berthet, in order to enhance user fitment.
Regarding claim 2, Olivieri in view of Berthet disclose wherein the lace guide track (combination of 19 and 20 of Olivieri) extends in a medial-lateral direction (examiner notes as shown in Fig. 1, where element 19 is positioned in a medial direction, and in Fig. 2, where element 20 is positioned in a lateral direction) to enable medial-lateral adjustment of the lace guide (“to enable…guide” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Regarding claim 8, Olivieri in view of Berthet disclose each lace guide of the plurality of lace guides (12, 13, 15, and 16 of Olivieri) forms a u-shaped channel to retain the lace cable (Col. 2, lines: 38-44, examiner notes one of ordinary skill in the art would recognize pulleys have a “u-shaped” channel).
Regarding claim 9, Olivieri in view of Berthet disclose wherein the u-shaped channel in each lace guide is an open channel allowing a lace loop to be pulled into the lace guide (see Fig. 1 and 2 of Olivieri, Col. 2, lines: 38-44, “allowing a…guide” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Regarding claim 10, Olivieri in view of Berthet disclose wherein the u-shaped channel in each lace guide (12, 13, 15, and 16 of Olivieri) is formed in a u-shape with the lace cable threaded through the tubular structure (tubular profiles of 12, 13, 15, and 16, as shown in Fig. 1).
Regarding claim 11, Olivieri in view of Berthet disclose wherein the plurality of lace guides (12, 13, 15, and 16 of Olivieri) are arranged in a pattern (pattern shown in Fig. 1 and 2 due to orientation and positioning of lace guides, 12, 13, 14, and 16) shaped to flatten a force or torque verses lace displacement curve during tightening of the lace cable (examiner notes as shown in Fig. 1 and 2. “shaped to…cable” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Regarding claim 12, Olivieri in view of Berthet disclose wherein the pattern includes three upper lace guides (elements 12, 13, 15, and 16) proximate the centerline of the footwear upper on each of the medial side and the lateral side (elements 12 and 15 on the medial side; see annotated Fig. 1 above for further clarification, and elements 13 and 16 on the lateral side, see annotated Fig. 2 above for further clarification).
Regarding claim 16, Olivieri discloses a lacing architecture (combination of 9, 12, 13, 15, 16, 19, and 20, Fig. 1-2) for an automated footwear platform (as shown in Fig. 1-2), the lacing architecture comprising:
a lace cable (9) with a first end (9a) anchored along a distal outside portion of the medial side of an upper portion of a footwear assembly (as shown in Fig. 1) and a second end (9b, Col. 2, lines: 18-21, Examiner notes in Fig. 2 would be were element 11 is located) anchored along a distal outside portion of a lateral side of the upper portion (as shown in Fig. 2);
a plurality of lace guides (12, 13, 15, and 16) distributed in a first pattern along the medial side (“first pattern” is as shown in Fig. 1) and in a second pattern along the lateral side (“second pattern” is as shown in Fig. 2. Examiner notes patterns shown are due to orientation and positioning of lace guides, 12, 13, 14, and 16), each lace guide of the plurality of lace guides receiving a length of the lace cable (9, as shown in Fig. 1), wherein at least a portion of the medial side is separated from at least a portion of the lateral side by an open central portion (as shown in annotated Fig. 1-2 above); and
a lace guide track (19 and 20).
Olivieri does not disclose the lace guide track is adapted to adjustably position a lace guide of the plurality of lace guides.
However, Berthet teaches yet another footwear assembly, wherein Berthet teaches a lace guide track (combination of 101, 103, and 114, Fig. 2-5) is adapted to adjustably position a lace guide (34) of the plurality of lace guides (combination of 32, 33, 34, 35, and 36, Par. 0072, examiner notes the positioning of the lace guide, 34, is adjustable between 10mm and 25mm, “adapted to…guides” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
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 lace guide track disclosed by Olivieri, by incorporating a lace guide track that is adapted to adjustably position a lace guide of the plurality of lace guides, as taught by Berthet, in order to enhance user fitment.
Regarding claim 17, Olivieri in view of Berthet disclose wherein the lace guide track (combination of 19 and 20 of Olivieri) extends in a medial-lateral direction (examiner notes as shown in Fig. 1, where element 19 is positioned in a medial direction, and in Fig. 2, where element 20 is positioned in a lateral direction) to enable medial-lateral adjustment of the lace guide (“to enable…guide” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Claims 3-7 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Olivieri in view of Berthet, further in view of Chou (US Patent 5,983,530), hereinafter Chou.
Regarding claim 3, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose the lace guide track extends across the open central portion from the medial side to the lateral side.
However, Chou teaches yet another footwear assembly, wherein Chou teaches a lace guide track (52, Fig. 1) extends across the open central portion (15) from the medial side to the lateral side (see annotated Fig. 1 below, examiner notes element 52 extends across the medial and lateral side, due to its width spanning into both sides).
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Fig. 1-Examiner Annotated
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 lace guide track disclosed by Olivieri in view of Berthet, by extending across the open central portion from the medial side to the lateral side as taught by Chou, in order to enhance the securement of the footwear.
Regarding claim 4, Olivieri in view of Berthet, further in view of Chou disclose the lace guide track (52, Fig. 1 of Chou) adjustably positions a medial lace guide of the plurality of lace guides (41) and a lateral lace guide of the plurality of lace guides (Col. 3, lines: 25-40, examiner notes the position of guides 41 and 42 are adjustable, due to the movement of track, 52, as shown in Fig. 2-3).
Regarding claim 5, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose a plurality of lace guide tracks to adjustably position the plurality of lace guides.
However, Chou teaches yet another footwear assembly, wherein Chou teaches a plurality of lace guide tracks (52, Fig. 1, Col. 3, lines: 34-37, examiner notes the at least 2 slots are being broadly and reasonably interpreted to be “tracks”) to adjustably position the plurality of lace guides (combination of 41 and 42, Col. 3, lines: 25-40, examiner notes the position of guides 41 and 42 are adjustable, due to the movement of track, 52, as shown in Fig. 2-3)
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 lace guide track as disclosed by Olivieri in view of Berthet, by incorporating a plurality of lace guide tracks to adjustably position the plurality of lace guides as taught by Chou, in order to enhance the securement of the footwear.
Regarding claim 6, Olivieri in view of Berthet, further in view of Chou disclose wherein each of the plurality of lace guide tracks (52 of Chou) extends across the open central portion from the medial side to the lateral side (see annotated Fig. 1 above of Chou, examiner notes element 52 extends across the medial and lateral side, due to its width spanning into both sides).
Regarding claim 7, Olivieri in view of Berthet, further in view of Chou disclose wherein each lace guide track of the plurality of lace guide tracks (52 of Chou) is adapted to receive a medial lace guide (41) and an opposing lateral lace guide of the plurality of lace guides (42, examiner notes tracks 52 receives guides 41 and 42 through their shared connection of at least tension rope, 14, shown in at least Fig. 1-3).
Regarding claim 18, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose the lace guide track extends across the open central portion from the medial side to the lateral side.
However, Chou teaches yet another footwear assembly, wherein Chou teaches a lace guide track (52, Fig. 1) extends across the open central portion (15) from the medial side to the lateral side (see annotated Fig. 1 above, examiner notes element 52 extends across the medial and lateral side, due to its width spanning into both sides).
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 lace guide track disclosed by Olivieri in view of Berthet, by extending across the open central portion from the medial side to the lateral side as taught by Chou, in order to enhance the securement of the footwear.
Regarding claim 19, Olivieri in view of Berthet, further in view of Chou disclose the lace guide track (52, Fig. 1 of Chou) adjustably positions a medial lace guide of the plurality of lace guides (41) and a lateral lace guide of the plurality of lace guides (Col. 3, lines: 25-40, examiner notes the position of guides 41 and 42 are adjustable, due to the movement of track, 52, as shown in Fig. 2-3).
Regarding claim 20, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose a plurality of lace guide tracks to adjustably position the plurality of lace guides.
However, Chou teaches yet another footwear assembly, wherein Chou teaches a plurality of lace guide tracks (52, Fig. 1, Col. 3, lines: 34-37, examiner notes the at least 2 slots are being broadly and reasonably interpreted to be “tracks”) to adjustably position the plurality of lace guides (combination of 41 and 42, Col. 3, lines: 25-40, examiner notes the position of guides 41 and 42 are adjustable, due to the movement of track, 52, as shown in Fig. 2-3)
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 lace guide track as disclosed by Olivieri in view of Berthet, by incorporating a plurality of lace guide tracks to adjustably position the plurality of lace guides as taught by Chou, in order to enhance the securement of the footwear.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Olivieri in view of Berthet, further in view of Spademan (US Patent 4,924,605), hereinafter Spademan.
Regarding claim 13, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose wherein each of the three upper lace guides on each of the medial side and the lateral side are coupled to a lace adjustment track to enable different spacing distance from the centerline.
However, Spademan teaches yet another footwear assembly, wherein Spademan teaches each of the three upper lace guides (10, Fig. 1) on each of the medial side and the lateral side (Fig. 1 and 3) are coupled to a lace adjustment track (27) to enable different spacing distance from the centerline (Col. 6, lines: 1-8, examiner notes adjustment of spacing distance occurs due to holes 29, “to enable…centerline” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function)
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 three upper lace guides on each side as disclosed by Olivieri in view of Berthet, by incorporating a lace adjustment track as taught by Spademan, in order to allow the footwear for use with different feet sizes (Col. 6, lines: 1-8).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Olivieri in view of Berthet, further in view of Ingimundarson et al. “Ingimundarson” (US Patent 8,858,482), hereinafter Ingimundarson.
Regarding claim 14, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose wherein the footwear upper includes a zipper extending from the toe box portion to a foot opening between a medial portion of the plurality of lace guides and a lateral portion of the plurality of lace guides.
However, Ingimundarson teaches yet another footwear assembly, wherein Ingimundarson teaches the footwear upper (1404, Fig. 14) includes a zipper (1428) extending from the toe box portion (portion of 1416) to a foot opening (opening shown around arrow of 1400) between a medial portion of the plurality of lace guides (1434, Fig. 14) and a lateral portion of the plurality of lace guides (1434, Col. 13, lines: 56-58 and 60-63, examiner notes one of ordinary skill in the art would recognize element 1434 would also be placed on the opposite side of the medial side, the lateral side, due to the embodiment of using a tightening mechanism, 1430, on each the medial and lateral side of the 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 footwear upper as disclosed by Olivieri in view of Berthet, by incorporating a zipper that extends from the toe box portion to a foot opening between a medial portion of the plurality of lace guides and a lateral portion of the plurality of lace guides as taught by Ingimundarson, in order to allow for easier installation of the footwear onto the wearer (Col. 3, lines: 35-39).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Olivieri in view of Berthet, further in view of Johnson (US Patent 7,096,559), hereinafter Johnson.
Regarding claim 15, Olivieri in view of Berthet disclose the invention substantially as claimed above.
They do not disclose wherein the lace cable is routed under the footwear upper to engage a lacing engine disposed within an inferior portion of the footwear assembly.
However, Johnson teaches yet another footwear assembly, wherein Johnson teaches the lace cable (26) is routed under the footwear upper (14, as shown in Fig. 2) to engage a lacing engine (52) disposed within an inferior portion of the footwear assembly (shown as portion of footwear lacing engine, 52, is housed within in Fig. 1-2).
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 lace cable as disclosed by Olivieri in view of Berthet, by routing it under the footwear upper as taught by Johnson, in order to enhance the structural integrity of the footwear.
Conclusion
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ALISSA TOMPKINS can be reached on (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
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