DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: In claim 28, support for the terminology (i.e. “wherein said opening constitutes a majority of the length of said shoe”); and in claim 31, (i.e. “wherein a result of the elastic straps having been woven through the openings, at least one of said elastic straps comes in contact with a wearer’s foot” is lacking support and antecedent basis for this terminology. The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim. Note: claims 28 and 31 appear to be new matter as noted below.
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 28 and 31 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.
In claim 28, the phrase “wherein said opening constitutes a majority of the length of said shoe” is new matter. Applicant relies on figures 17-18 for support. However, claims 17-18 are perspective views of the shoe and therefore since it is a perspective view, it is not clear if the opening constitutes a majority of the length of said shoe. A side view of the shoe would have been more appropriate to show the opening constitutes a majority of the length of the shoe. Moreover, it is not clear if the shoe is drawn to scale. Furthermore, there is not teaching in the specification of the opening constitutes a majority of the length of said shoe.
In claim 31, the phrase ““wherein a result of the elastic straps having been woven through the openings, at least one of said elastic straps comes in contact with a wearer’s foot” is new matter. Applicant relies on paragraph [47] for support. However, nowhere in paragraph 47 does it say or teach that the wearer’s foot comes in contact with a wearer’s foot as a result of the elastic straps having been woven through the openings. Moreover, paragraph [33] teaches “a sock layer makes contact with the wearer’s foot”. The sock layer is not shown in the figures but how does one know if the elastic straps woven through the opening make contact with the wearer’s foot (assuming applicant is meaning making contact with the wearer’s foot when worn) ; especially if a sock layer or some other type of lining is used. There must be clear support in the original disclosure.
Claims 13,14,17,18 and 20-28 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.
In claim 13, the phrase “each of said elastic straps at least one” is unclear, not grammatically correct and therefore is indefinite. It is suggested this be changed to “each of said elastic straps comprising one” to be definite. This would reflect that each of the said elastic straps includes at least one of the three limitations (i.e. (i), (ii) or (iii)). The terms “strap” and “at least one” needs a transitional term between them (e.g. comprising, including, etc.). The indefinite language was discussed at the interview but upon further review is still indefinite.
In claim 31, it is not clear how the elastic straps come in contact with the wearer’s foot as a result of the elastic straps having been woven through the openings and therefore is unclear and indefinite. There is no support in the disclosure as noted in the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection above.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 13,14,17,18,20,23-27 and 29-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0652720 (Miller).
Regarding claims 13,14,17,18,20 and 23-27, Miller teaches a shoe (1) comprising: (a) a sole;
(b) an upper, extending above the sole, that includes a front section, a side section, a rear section, and a tongue that originates from the front section and extends toward the rear section (shield 2 inherently is a tongue); and
(c) a plurality of elastic strap (strap 24 on each side of the shoe, at least see abstract and claim 1), each of said elastic straps [comprising] at least one of (i) extends over and across the tongue, (ii) is attached to the tongue, or (iii) extends from a side edge of the tongue, wherein each of the sidewalls has an inside surface and an outside surface, and at least one of the sidewall including a plurality of openings (the strap 24 extends partially over the side of the tongue, is attached to the tongue, and extends from a side edge of the tongue; see figure 1), and
wherein the elastic strap woven through the opening, so as to partially run along the inside of said at least one sidewalls and to partially run along the outside surface of said at least one of the sidewalls, and distal ends that attach to a position near the bottom of the upper or the sole [see figure 1 which shows strap 24 starting at the sole and weaving through portions of the upper (28,31 and 34) and therefore extends on the exterior and interior of the side section of the upper multiple times].
Regarding claim 14, the shoe as taught above is inherently a loafer style shoe.
Regarding claims 17,18, see the gap between the tongue (shield 2) and the upper (e.g. 31,34) in figure 1.
Regarding claims 23-27, at least see figure 1 showing the details as claimed. The elastic strap 24 is on both sides of the shoe and therefore include separate left-side and right-side straps, each attached to a corresponding side of tongue. Figure 1 only show the strap (24) on the one side.
Regarding claims 29-30, the elastic straps as taught above weave inside and outside of the opening and therefore extend partly inside of and partially outside of the upper [see figure 1 of Miller which shows strap 24 starting at the sole and weaving through portions of the upper (28,31 and 34) and therefore extends partially on the side of and partially outside of the upper]. Figure 1 shows the straps on the outside of the upper and the inner side of the bridges (e.g. 44) represent the inside surface of the upper.
Regarding claim 31, Miller has all the structure as claimed and is inherently is capable of performing the functional language as claimed (i.e. See figure 1 showing the elastic strap (24) on the exterior of the upper and one (i.e. a wearer) is capable making contact with their foot before being inserted inside of the footwear).
Double Patenting
Claims 13,14,17,18,20-27 and 29-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10334910. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely broader than the patent claim. In essence, once the applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if you have a broad claim to examine, and you find a reference, which discloses every element of the claim, you have a reference that anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Regarding claim 14, the shoe as taught above is inherently a loafer style shoe. The phrase “said shoe is a loafer style” shoe doesn’t appear to add any additional structure to the claim.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,334,910 in view of US 34044608 (Rosen).
US Patent ‘910 claims a shoe as claimed except for the opening for accepting a wearer’s foot having a majority of the length of the shoe. Rosen teaches a loafer style shoe (see figures 1-5 and col. 2, lines 47-51) having the opening for accepting a wearer’s foot having a majority of the length of the shoe (see figures 1-2 showing the opening being a majority of the length of the shoe). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the claimed shoe of ‘910 with a style of shoe taught by Rosen wherein the opening for accepting a wearer’s foot having a majority of the length of the shoe inasmuch as a number of different styles of shoes appear to be suitable design choice.
Allowable Subject Matter
Upon filing a proper terminal disclaimer, Claims 21 and 22 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant states on page 7, “At the outset, Applicant notes that independent claim 13 recites, among other things, a shoe having a plurality of elastic straps, with: each of such elastic straps: (i) extending over and across the shoe’s tongue, (ii) attached to the tongue, or (iii) extends from a side edge of the tongue;”
However this is not accurate and/or is at least misleading because the phrase omits the language “at least one of” which is after “elastic straps” and therefore because of the phrase “at least one of” and because of the alternative language (“or), only one of the three (i.e. (i),(ii) or (iii) need to be satisfied.
102 rejection over Miller
Applicant argues “Generally speaking, a shoe tongue would not be referred to as a shield or plate, and more specifically , Miller’s shield/plate 2 appear to be made of plastic or more rigid material, e.g. as discussed in DE ‘788”.
In response, Collins English Dictionary, definition number 6, defines “tongue” as “The tongue of a shoe or boot is the piece of leather which is underneath the laces”, so applicant tongue (241), as shown in the figure 17 would also not be considered a tongue especially since it is not made of leather and is not located underneath laces. However, nothing is unusual about this because Applicant’s often invoke there right to be their own lexicographer. In the art it is not unusual for applicant to refer the same or similar shoe component with different labels. The Examiner can’t control how each Applicant labels each shoe component. For example, looking at another patent, see figure 15 of US 5651197 (reproduced below) wherein the specification describes element 3a as a “tongue overlay” and element 3b as “inner tongue”. Therefore, why couldn’t the “instep shield 2” of Miller be called an “instep tongue”, “a tongue” or “a tongue overlay”? It has the shape of a tongue and it extends over the wearer’s instep similarly to a tongue. Applicant has the power to specifically define these terms in the specification as to how each term is to be construed in the claims. A review of the specification, reveals that there is not special definition of “tongue” found in the specification. Applicant can also further define the tongue in the claims and currently applicant has not added any addition structure to the claims. Words in a claim must be given their plan meaning unless applicant has provided a clear definition in the specification. Normally, no term may be given a meaning repugnant to the usual meaning of the term, but applicant may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings. Hormone Research Foundation, Inc. v. Genentech, Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990).
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Applicant argues Miller does not disclose or suggest anything about an elastic strap extending over and across its tongue, attached to its tongue, or extending from a side edge of its tongue.
In response, the claim states “each of said elastic straps at least one of (i) extending over and across the tongue, (ii) attached to the tongue, or (iii) extending from a side edge of the tongue” and therefore because of the phrase “at least one of” and because of the alternative language (“or), only one of the three (i.e. (i),(ii) or (iii) need to be satisfied. The straps of Miller satisfy at least two of the three limitations (i.e. (ii) attached to the tongue and (iii) extending from a side edge of the tongue. See figure 1 which clearly show the strap (24) attached to the tongue (2) via the coupling members (8) and the cables 5,6 and see figure 1 which clearly show the elastic strap (24) extending from a side edge of the tongue (2). With regard to the strap being elastic, see the English Abstract provided which states “An elastic strap (24)”.
Applicant argues “Miller does not say anything at all about any elastic strap being woven through openings in the sidewall of its upper, so as to partially run along the inside surface and to partially run along the outside surface of such sidewall. In this regard, the Office Action notes that its strap 24 just weaves ‘through portions of the upper (28, 31 and 34)’, which (while clearly part of the upper) appear to be separate components disposed on the outside of the shoe's sidewall. In fact, Miller's own language seems to indicate that they are separate components, e.g., referring (on page 3 of the translation) to ‘the arrangement of the support parts 28, 34 and the retaining tab 31’. As a result, Miller's band 24 clearly does not weave inside and outside of its shoe's upper.”.
In response to applicant argument “Miller Not saying anything..”, see claim 10 (copy provided below) and figure 1 (a portion of figure 1 is provided below) clearly shows the elastic strap (24) woven through the openings (43) in the sidewall (34) of its upper.
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In response to applicants argument regarding [the upper (28,31 and 34) appearing to be separate components outside of the shoe sidewall and therefore “the band 24 clearly does not weave inside and outside of the shoe’s upper”], the components 28,31 and 34 are part of the sidewall of the upper even though they may overlap other parts of the sidewall. In fact shoes can be made up of several overlapping layers joined together. Moreover, Collins English Dictionary, definition number 4, defines “upper” as “The upper of a shoe is the top part of it, which is attached to the sole and the heel”. Also, see the figure below which shows “A Shoe Anatomy” of a shoe, wherein the upper represents (e.g. the heel, the collar, the vamp, eyelets, laces, etc.) all parts of the shoe above the sole and some if not all of these components overlap each other. Therefore, clearly these components 28,31 and 34 are part of the sidewall of the upper and clearly the strap is woven through openings in the sidewall of its upper, so as to partially run along the inside surface and to partially run along the outside surface of such sidewall. Each component of the upper has a inside surface and an outside surface.
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Applicant argues that Miller is not inherently a loafer style shoe and in response provides what appears to be a definition of a loafer style shoe (reproduced below).
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In response, this “definition” which is vague and unclear, appears to include the shoe taught by Miller since this shoe is general lacesless (i.e. no laces), easy to wear, and low heeled and appears to be a casual shoe. Moreover, this “definition” has not been found in the disclosure and furthermore, if it was, claim 14 would be indefinite and a 35 USC 112 (b) rejection would have been provided.
Double Patenting rejection
Applicant argues that the double patenting rejection of dependent claim 14 (i.e. the loafer style shoe) should be withdrawn.
In response, the patent ‘910 claims a shoe having all the structure as claimed and inherently would be a loafer-style shoe. The phrase “said shoe is a loafer style” shoe doesn’t appear to add any additional structure to the claim. If it does add any additional structure applicant fails to specific demonstrate what that would be.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
THIS ACTION IS MADE FINAL. 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.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556