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
Claims 66-67 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 17, 2026.
Applicant’s election without traverse of Group I, claims 48-65, drawn to a reel device and the elected species 2 of figures 11-13 in the reply filed on June 17, 2026 is acknowledged. However, claims 50 and 61 are further withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (of figures 1-10), there being no allowable generic or linking claim. It is noted that only species 1 is provided with a quick release mechanism to provide rapid release of the tensioning member from the spool as disclosed in paragraph [0071] and figure 7C. In other words, there is no release mechanism for rapid release in the elected species 2 of figures 11-13.
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.
Claims 48-49, 51-60, and 62-65 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,225,982. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims recite each and every main structural component of the pending claims of the instant application. For example, regarding claim 48, the reference claim 1 recites a reel device for tightening a cord, comprising: a drive assembly, wherein the drive assembly comprises: an upper member (reading on the claimed a rotatable upper member), wherein the upper member is rotatable in a first direction by a user; a drive axle coupled to the upper member; a pin gear; a cycloidal gear coupled to the pin gear; an outer gear coupled to the cycloidal gear (collectively read on a gear assembly); and a spool (reading on a spool) coupled to the outer gear, wherein rotation of the upper member in the first direction results in rotation of the outer gear and the spool in the first direction (reading on wherein rotation of the upper member causes the spool to rotate to wind the tensioning member around the spool); wherein the cycloidal gear is rotationally coupled to an eccentric shaft portion of the drive axle, and wherein the drive axle is configured to drive the cycloidal gear (further defining the gear assembly in a manner that provides the mechanical advantage recited in the pending claim). Further, the reference claim 2 recites wherein the reel device is configured to rotate the spool at a first drive ratio or at a second drive ratio that differs from the first drive ratio, the second drive ratio ranging from 2:1 to 150:1 (reading on the claimed wherein activation of the gear assembly provides a mechanical advantage to the reel device such that rotation of the upper member to the spool is at a ratio greater than 1:1 when the gear assembly is activated). Regarding claim 59, the reference claims 1 and 2 discloses the claimed reel device as set forth above. The reference claims do not expressly recite a clutch, wherein activation of the clutch allows rotation of the upper member without rotation of the spool. However, the reference specification discloses that “the reel device 100 may include an adjustable clutch mechanism to prevent over tensioning of the cord 193 …” (in paragraph [0073]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the clutch mechanism disclosed in the reference specification in order to prevent over-tensioning of the cord.
Claim Objections
Claim 48 is objected to because of the following informalities: the recitation “a tensioning member” (line 4) should be replaced with -- the tensioning member -- since proper antecedent basis has been established in line 1 of the claim. Appropriate correction is required.
Claim 59 is objected to because of the following informalities: the recitation “a tensioning member” (line 4) should be replaced with -- the tensioning member -- since proper antecedent basis has been established in line 1 of the claim. Appropriate correction is required.
Claim 65 is objected to because of the following informalities: the semicolon (line 2) should be replaced with a comma. Appropriate correction is required.
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.
Claim(s) 48, 49, 51-53, and 55-58 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soderberg et al., US 8,468,657.
Regarding claim 48, Soderberg discloses a reel device for tightening a tensioning member (lace), comprising: a rotatable upper member (622); the tensioning member (lace); a spool (610); wherein rotation of the upper member (622) causes the spool (610) to rotate to wind the tensioning member (lace) around the spool (610); a gear assembly (670, 654, 652), wherein activation of the gear assembly (670, 654, 652) provides a mechanical advantage to the reel device such that rotation of the upper member (622) to the spool (610) is at a ratio greater than 1:1 when the gear assembly is activated (“provides a user with a substantial mechanical advantage in tightening footwear laces … a gear ratio of 1:4” in col. 27, ll. 9-12).
Regarding claim 49, Soderberg discloses the reel device of claim 48, wherein activation of the gear assembly provides a mechanical advantage to the reel device (600) such that rotation of the upper member (622) to the spool (610) is at a ratio ranging from 2:1 to 150:1 when the gear assembly is activated (col. 27, ll. 13-16 further discloses a range of “gear ratios from 1:1 to 1:5 or more could be used”; as reject in claim 48, the gear ratio of 4:1 has been disclosed and falls within the claimed range).
Regarding claim 51, Soderberg discloses the reel device of claim 48, wherein rotation of the upper member (622) in a first direction results in rotation of the spool (610) in the first direction (col. 27, ll. 5-8).
Regarding claim 52, Soderberg discloses the reel device of claim 48, wherein the upper member (622) can be rotated in a clockwise (col. 27, ll. 5-8) or counterclockwise direction to initiate uptake of the tensioning member (lace).
Regarding claim 53, Soderberg discloses the reel device of claim 52, wherein when the upper member (622) is rotated in a clockwise direction (when shaft 644 is rotated in the clockwise direction to wind the lace) to initiate uptake of the tensioning member (lace) around the spool (610), the upper member (622) is configured to rotate in a counterclockwise direction (that is opposite to the clockwise and winding direction of the spool) to unwind (inherent feature) the tensioning member (lace) from the spool (610).
Regarding claim 55, Soderberg discloses the reel device of claim 48, wherein the tensioning member (lace) comprises a cord (ordinary meaning of the term “lace”).
Regarding claim 56, Soderberg discloses the reel device of claim 48, wherein the reel device comprises a base (714) [to couple to the reel device to an adjustable member (footwear, backpacks, belts, apparel, etc.; col. 33, ll. 58-col. 34, ll.2)].
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the reel device, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that the reel based lacing system disclosed by Soderberg (US 8,468,657), is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 57, Soderberg discloses the reel device of claim 56, wherein the rotatable upper member (622), the tensioning member (lace), the spool (610), and the gear assembly (670, 654, 652) are removable (since they are separate components) from the base (714).
Regarding claim 58, Soderberg discloses the reel device of claim 56, [wherein the adjustable member is any one of a prosthetic device, an orthotic device, a shoe (a sport shoe), a boot, or an apparel member].
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.
Claim(s) 54 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soderberg et al., US 8,468,657 in view of Trudel et al., US 9,681,705.
Regarding claim 54, Soderberg discloses the reel device of claim 48, wherein the gear assembly comprises a plurality of planetary gears (654) meshing with a ring gear (652). Soderberg does not explicitly disclose the gear assembly comprises a cycloidal gear and an outer gear. Trudel teaches a reel assembly comprising a cycloidal gear (1130) and an outer gear (1152). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the gears of Soderberg by substituting with the cycloidal gear and outer gear arrangement as taught by Trudel in order to achieve a functionally equivalent gear drive assembly within the confined space of a low profile reel closure.
Claim(s) 59, 60, 62 and 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soderberg et al., US 8,468,657 in view of Cavanagh, US 9,629,417.
Regarding claim 59, Soderberg discloses a reel device for tightening a tensioning member (lace), comprising: a rotatable upper member (622); the tensioning member (lace); a spool (610); wherein rotation of the upper member (622) causes the spool (610) to rotate to wind the tensioning member (lace) around the spool (610); a gear assembly (670, 654, 652), wherein activation of the gear assembly (670, 654, 652) provides a mechanical advantage to the reel device such that rotation of the upper member (622) to the spool (610) is at a ratio greater than 1:1 when the gear assembly is activated (“provides a user with a substantial mechanical advantage in tightening footwear laces … a gear ratio of 1:4” in col. 27, ll. 9-12).
Soderberg does not explicitly disclose a clutch, wherein activation of the clutch allows rotation of the upper member without rotation of the spool. Cavanagh teaches a reel device further comprising a clutch (809) wherein activation of the clutch (809) allows rotation of the upper member (804) without rotation of the spool (806). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the reel device of Soderberg to incorporate a clutch as taught by Cavanagh in order to prevent over tensioning of the lace and permit the user to tighten the reel to a repeatable and predetermined tightness.
Regarding claim 60, the combination of Soderberg and Cavanagh teaches the reel device of claim 59. Soderberg further discloses wherein activation of the gear assembly provides a mechanical advantage to the reel device (600) such that rotation of the upper member (622) to the spool (610) is at a ratio ranging from 2:1 to 150:1 when the gear assembly is activated (col. 27, ll. 13-16 further discloses a range of “gear ratios from 1:1 to 1:5 or more could be used”; as reject in claim 48, the gear ratio of 4:1 has been disclosed and falls within the claimed range).
Regarding claim 62, the combination of Soderberg and Cavanagh teaches the reel device of claim 59. Soderberg further discloses wherein the upper member (622) can be rotated in a clockwise (col. 27, ll. 5-8) or counterclockwise direction to initiate uptake of the tensioning member (lace).
Regarding claim 63, the combination of Soderberg and Cavanagh teaches the reel device of claim 62. Soderberg further discloses wherein when the upper member (622) is rotated in a clockwise direction (when shaft 644 is rotated in the clockwise direction to wind the lace) to initiate uptake of the tensioning member (lace) around the spool (610), the upper member (622) is configured to rotate in a counterclockwise direction (that is opposite to the clockwise and winding direction of the spool) to unwind (inherent feature) the tensioning member (lace) from the spool (610).
Claim(s) 64 and 65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soderberg et al., US 8,468,657 in view of Cavanagh, US 9,629,417 as applied to claim 59 above, and further in view of Trudel et al., US 9,681,705.
Regarding claim 64, the combination of Soderberg and Cavanagh teaches the reel device of claim 59. Soderberg further discloses wherein the gear assembly comprises a plurality of planetary gears (654) meshing with a ring gear (652). The combination does not expressly teach the gear assembly comprises a cycloidal gear and an outer gear. Trudel teaches a reel assembly comprising a cycloidal gear (1130) and an outer gear (1152). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the gears of the combination of Soderberg and Cavanagh by substituting with the cycloidal gear and outer gear arrangement as further taught by Trudel in order to achieve a functionally equivalent gear drive assembly within the confined space of a low profile reel closure.
Regarding claim 65, the combination of Soderberg, Cavanagh, and Trudel teaches the reel device of claim 64. Soderberg further discloses wherein the rotatable upper member (622), the tensioning member (lace), the spool (610), and the gear assembly (670, 654, 652) are removable (since they are separate components) from the base (714).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for similar art cited. For example, US 4,566,655 discloses a two speed drive for a fishing reel with planetary gears and torque clutch; US 2,772,576 discloses a gear mechanism for fishing reel having an automatic shift from high gear to low gear in response to a torque threshold; and US 6,682,454 discloses a planetary gear reduction device with integrated limiter clutch feature.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROWLAND DO whose telephone number is (571)270-5737. The examiner can normally be reached Monday-Thursday 8:30 - 7:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
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