DETAILED ACTION
This is in response to application filed on December 11th, 2024 in which claims 1-21 were presented for examination, amended by preliminary amendment on 7/2/25 to present claims 10-21 for examination, amended on 12/15/25 in response to the restriction requirement to present claims 10-19 for examination.
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 without traverse of Species 4 (Figs. 6-8), Subspecies B (Figs. 45A-45B), Group A’ (Figs. 47-50), Subgroup 1’ (Figs. 47-49) in the reply filed on 12/15/25 is acknowledged.
Claim(s) 10, 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected embodiment, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/15/25. For clarification--
Examiner noted on page 2 of the restriction requirement of 8/13/25 that, upon cursory review, Claim 10 seemed to be directed to a combination of distinct species Figs. 7 and 18 and that support for such was recommended to be indicated in the response. However, no remarks were made in the response directed to such support, and the election was without traverse. As such, Claim 10 (and its dependent claims 15-19) are withdrawn as being directed to a non-elected embodiment. Claim 10 alone has a plethora of 112(b) indefinite issues (for example: how there are four separate openings each with their own material), let alone the issues in its dependent claims (how there is yet an additional fifth opening in Claim 15 with its own feature and an intermediate material in Claim 15 and another sixth resilient material/feature in Claim 17); even so though, Claim 10 Lines 6-7 “blend into design lines”, let alone Claim 10 Lines 15-20 about color, shape, camouflage and/or decorative features, is clearly directed to Fig. 7 (found in only [0131] for Fig. 7). Furthermore, Claim 10 Lines 21-22 “at least one opening in the material forming the shaft of the boot that does not extend from the top thereof, let alone Claim 10 Lines 22-28 about another opening that does not extend from the top thereof having an air-permeable material ([0146]), is clearly directed to Fig. 18 (found in only [0145] for Fig. 18). No support is found in the elected embodiment (such as the detailed description or the figures) for a combination of these species, and the restriction requirement indicating that Fig. 7 and Fig. 18 were separate species was elected without dispute and without traverse, and therefore that there is no proper embodiment directed to a combination.
Claim 14 is also being withdrawn as being directed to a non-elected embodiment. Claims 11 and 13, on which Claim 14 depend, are directed to Figs. 6, 7. However, Claim 14 is directed to Fig. 9 (found only in [0044] for Fig. 9). No support is found in the elected embodiment (such as the detailed description or the figures) for a combination of these species, and the restriction requirement indicating that Fig. 7 and Fig. 9 were separate species was elected without dispute and without traverse, and therefore that there is no proper embodiment directed to a combination.
Disagreement otherwise indicates that the restriction should have been traversed while distinctly and specifically pointing the supposed errors in the restriction requirement, which would have also included an explanation of where the aforementioned combinations (at least Species 4 and Species 13 for Claim 10; Species 4 and 5 for Claim 14) were disclosed, such as in the figures (it is also noted that no figure has been presented as to how Species 4 and 13 could possibly be combined; especially as such, specification antecedent basis for the claims in mere summary sections were not considered separate species embodiments).
Specification
The abstract of the disclosure is objected to for the following:
Current abstract is the same as parent application 16/737,758, now USPN 11564450; abstract should be directed to the elected embodiment, such as including language pertaining to “an upper portion transitions to a lower portion with a turn”; as a reminder, word count is currently 137, and should be between 50 and 150.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim(s) 11, 13 is/are objected to because of the following informalities:
Claim 11 Line 10 delete “degree” and substitute –degrees—
Claim 11 Line 10 before “shape” delete “the” and substitute –a—
Claim 13 Line 4 before ‘vertical portion” delete “top” and substitute –upper—for consistency of the term with Claim 11 Line 7
Claim 13 Line 6 delete “attached” and substitute –attach--
Disagreement with any of the aforementioned may warrant at least a 112(b) indefiniteness rejection without constituting a new rejection
Appropriate correction is required.
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.
Claim(s) 11-13 is/are rejected under U.S.C. 112(b).
The term “comfort features” in Claim 11 Line 1 is unclear and therefore renders the claim indefinite. It is unclear which of the structures in Claim 11 the term refers to (resilient material, portions, etc). For the purposes of applying art and providing rejections, the term will be considered met inasmuch as the body of Claim 11 is met.
The term “thereof” in Claim 11 Line 3 is unclear and therefore renders the claim indefinite. It is unclear whether the term is referring to the shaft or the boot. For the purposes of applying art and providing rejections, in order to provide antecedent basis for Claim 13 Line 2, the term will be considered “from a top of the boot shaft.” Any disagreement will warrant additional 112(b) indefiniteness rejections without constituting new rejections, such as for Claim 13 Line 2 lacking antecedent basis.
Dependent claims are rejected at the least for depending on rejected claims.
Claim Interpretation
Broadest Reasonable Interpretation
Pending further claim limitations directed to structure, the term “opening is further shaped and positioned to blend into design lines” in Claim 12 is considered met by the prior art as indicated below. Though [0131] gives various examples of blending such as “decorative motive generally includes lines that are of similar thickness to the exposed width of the resilient portion 320” in the opening, or [0131] “color, texture, or other visual appearance of decorative lines can be configured to correspond with a visual aspect of a resilient portion 320” of the opening, none of these structural limitations have yet been claimed. As examples, these structures are not the explicit definition of the term “blend”, nor has an explicit definition of the term “blend” been established in the specification (for example: “wherein the term ‘blend’ is defined as”) that would require the term to be explicitly interpreted as one or more of these structures.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11, 12 is/are rejected under 35 U.S.C. 102(a)(1) as being 35 U.S.C. 102(a)(1) as being anticipated by Kelly (USPN 0229144).
Regarding Claim 11, Kelly teaches a method of providing and disguising comfort features in a boot (if a prior art, in its normal and usual operation, would necessarily describe a device capable of performing the steps of the method or process, then the device claimed will be considered to be inherent by the prior art process or method. When the prior art process or method is the same as a process or method described in the specification for describing the claimed device, it can be assumed the process or method will inherently describe the claimed device capable of performing the different steps of the process or method. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). MPEP 2112.02); as best understood in light of the 112(b) rejections-- see Fig; Line 5 “improvement in shoes”; Kelly teaches the shoe/boot and the subsequent structures which meets the structural limitations in the claims and performs the functions of providing and disguising comfort features), the method comprising providing the following:
an opening in a shaft of the boot that extends from a top thereof at least half-way down towards a shoe box of the boot (as best understood in light of the 112(b) rejections-- see Fig. for extent; Line 52 "gore f"; "Line 75 "curved gores"; for shaft -- Lines 42-45 "leg of…boot…composed of two parts, d and e"; for shoe box--Line 37 “upper…a”)
the opening spanned by a resilient material that is configured to allow the boot shaft to expand in response to pressure to accommodate entry or exit of a foot through the boot shaft and to return to a non-expanded state after said entry or exit (Lines 55-57 "rear and front portions of the leg leaves a space for a curved tapering gore of ordinary elastic cloth"; Kelly teaches the resilient material which meets the structural limitations in the claims and performs the functions as recited such as being capable of allowing expansion and a non-expanded state as recited),
the opening comprising an upper vertical portion and a lower curved portion (see Fig),
wherein the two portions are connected to one another and wherein a transition from the upper vertical portion to the lower curved portion includes a turn of approximately 90 degrees in the shape of the opening (see Fig).
Regarding Claim 12, Kelly further teaches the method of Claim 11, wherein the opening is further shaped and positioned to blend into design lines visible on an outside of the shaft of the boot (see claim interpretation; Lines 75-79 "curved gores…hidden from view, the boot presents the appearance of an ordinary full boot" therefore sized, shaped, and/or positioned to blend; see Fig. for design lines (cut of boot); Line 39 "upper is cut on a curve, x x"; wherein this curve is visible on an outside of the shaft).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 11, 13 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 9 of U.S. Patent No. 12193543. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 11, 13 under examination are anticipated by claim 9 of the reference patent. Every limitation in the application under examination claims is recited in the conflicting reference patent claims, and the differences between the claims are highlighted below by bolding all limitations that differ, and underlining limitations that will be addressed below.
Instant Application
USPN 12193543
11. A method of providing and disguising comfort features in a boot, the method comprising providing the following:
9. A system for enhancing comfort while maintaining style in footwear, the system comprising:
an opening in a shaft of the boot that extends from a top thereof at least half-way down towards a shoe box of the boot,
a boot having an opening in a shaft of the boot that extends from a top thereof at least half-way down towards a shoe box of the boot,
the opening spanned by a resilient material that is configured to allow the boot shaft to expand in response to pressure to accommodate entry or exit of a foot through the boot shaft and to return to a non-expanded state after said entry or exit,
the opening spanned by a resilient material that is configured to allow the boot shaft to expand in response to pressure to accommodate entry or exit of a foot through the boot shaft and to return to a non-expanded state after said entry or exit,
the opening comprising an upper vertical portion and a lower curved portion,
the opening comprising an upper vertical portion and a lower curved portion,
wherein the two portions are connected to one another
wherein the two portions are connected to one another
and wherein a transition from the upper vertical portion to the lower curved portion includes a turn of approximately 90 degree in the shape of the opening
and wherein a transition from the upper vertical portion to the lower curved portion includes a turn of approximately 90 degrees in the shape of the opening; and
a pull tab at the top of the boot shaft, including
an inner and an upper portion which extend down inside and outside of the boot shaft respectively,
the pull tab positioned and sized to hang over and hide the upper vertical portion of the opening and the approximately 90 degree turn in the transition of the opening,
the inner and outer portions of the pull tab securely attached to the boot shaft below the approximately 90 degree turn in the transition of the opening
12. The method of Claim 11, wherein the opening is further shaped and positioned to blend into design lines visible on an outside of the shaft of the boot
10. The system of claim 9, wherein the opening is further shaped and positioned to blend into design lines visible on an outside of the shaft of the boot
13. The method of Claim 11, further comprising: a pull tab at the top of the boot shaft, including
9. The system…comprising...a pull tab at the top of the boot shaft, including
an inner and an outer portion which extend down inside and outside of the boot shaft respectively,
9. The system…comprising…a pull tab…including an inner and an upper portion which extend down inside and outside of the boot shaft respectively,
the pull tab positioned and sized to hang over and hide the top vertical portion of the opening and the approximately 90 degree turn in the transition of the opening,
9. The system…comprising…the pull tab positioned and sized to hang over and hide the upper vertical portion of the opening and the approximately 90 degree turn in the transition of the opening,
the inner and outer portions of the pull tab securely attached to the boot shaft below the approximately 90 degree turn in the transition of the opening
9. The system…comprising...the inner and outer portions of the pull tab securely attached to the boot shaft below the approximately 90 degree turn in the transition of the opening
As shown in the mapping above, claim 9 of the reference patent includes all of the limitations of claim 11 of the instant application, but differs in that, while also reciting further limitations, claim 9 of the reference patent recites a method instead of a system of claim 11 of the instant application. However, if a prior art, in its normal and usual operation, would necessarily describe a device capable of performing the steps of the method or process, then the device claimed will be considered to be inherent by the prior art process or method. When the prior art process or method is the same as a process or method described in the specification for describing the claimed device, it can be assumed the process or method will inherently describe the claimed device capable of performing the different steps of the process or method. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). MPEP 2112.02). No additional method steps other than “providing” have been recited in the instant claim 11. As such, the “system” of the reference patent claim 9 anticipated the “method” of claim 9 of the instant application, in that the system of Claim 9 provides the structure for the method of Claim 11.
As the method is taught, so is “providing and disguising comfort features in a boot” as best understood in light of the 112(b) rejections. 12193543 teaches a system, such as for enhancing comfort while maintaining style in footwear, which meets the structural limitations in the claims and performs the functions as recited, such as disguising comfort features in a boot.
Furthermore, Claim 9 of the reference patent includes all of the limitations of claim 13 of the instant application, but differs in that claim 13 of the instant application refers to a top vertical portion while claim 9 refers to an upper vertical portion. as best understood, claim 13 has a typographical error and should read upper vertical portion to be consistent with the rest of claim 13, and therefore has the same limitations as Claim 9 of the reference patent.
Claim(s) 12 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 10 of U.S. Patent No. 12193543. See map above.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 13 is/are further objected to as being dependent upon a rejected base claim, but may be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, after overcoming the double patenting rejection(s) and any 112(b) rejections.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 13, none of the prior art of record discloses a system with a pull tab hiding a top/upper vertical portion of the opening and the approximately 90 degree turn in the transitioning of the opening while the inner and outer portions of the pull tab securely attach to the boot shaft below the approximately 90 degree turn in the transition of the opening, in conjunction with the other structural limitations, as set forth in the claim. The use of pull tabs on a boot shaft and a boot shaft with an opening with approximately a 90 degree turn is known in the art of footwear, but the specific extent of orientation and extent of the pull tab covering both the top/upper vertical portion and approximately 90 degree turn while being secured below the approximately 90 degree turn as claimed by the applicant is novel. Specifically, prior art Kelly (USPN 0229144) discloses a top/upper vertical portion and approximately 90 degree turn in the transitioning of an opening, along with pull tabs, as recited in the application. Prior art Norwood et al (US Publication 2014/0345165), herein Norwood, also discloses a pull tab with inner/outer portions that secure to a shaft, and covers an opening. However, none of the prior art discloses, teaches, or suggests that the pull tab’s portions would secure to the shaft below the approximately 90 degree turn. To modify Kelly with Norwood and further extend Norwood’s pull tab to extend below the approximately 90 degree turn merely to be as recited in the current application would be impermissible hindsight reconstruction of the applicant’s invention without any disclosure, teaching, or suggestion from the prior art of record, as is presently the case.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be used to formulate a rejection if necessary: Feller et al (US Publication 2020/0359747) directed to a pull tab secured below a curving resilient feature, but has a date that is later than the current effective filing date 1/11/19 of the instant application’s current claims, due to provisional 62/791,671; Jacobsen (USPN D901847) is directed to a pull tab secured below a feature—many design patents illustrate similarly but without express disclosure, cannot be interpreted as a resilient feature; Chen (US Publication 2016/0302528) directed to illustrated pull tabs; Crawford et al (US Publication 2016/0192728), Recchi et al (US Publication 2012/0186106), Warren (USPN 0378988) directed to resilient feature not extending to a top of a boot shaft; Chen et al (USPN 6760982) directed to inner/outer layers of resilient material.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
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/GRACE HUANG/Primary Examiner, Art Unit 3732