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 .
This is in response to Applicant’s amendment in which claims 1-17 remain pending.
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 (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-7, 10-13, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fitzgerald (US 6,010,438).
Regarding claim 1, Fitzgerald discloses a device for attaching a weight on an instep of a shoe comprising a body (19) having: a first coupling (22) to releasably fasten the body to a central area of the instep of a shoe (wherein the hooks are capable of being fastened to a central area of an instep of a shoe, such as to the laces), such that when the device is in use a part of the body overlaps the longitudinal axis of the shoe, and a second coupling (27, 28) to fasten a weight (23) to the body; the second coupling being offset from the first coupling such that, when the device is in use, the second coupling is offset from the longitudinal axis of the shoe, and when a weight is attached to the second coupling it exerts a torque on the body about the longitudinal axis of the shoe (column 4, lines 26-60; column 5, lines 3-55; Fig. 3-6).
Regarding claim 3, Fitzgerald discloses that the body is curved in a direction that is substantially perpendicular to the longitudinal axis of the shoe when the device is in use attached to a shoe (Fig. 3).
Regarding claim 4, Fitzgerald discloses that one of first and second couplings being clamping elements (such as hooks or snaps; column 6, lines 18-20).
Regarding claim 5, Fitzgerald discloses that the coupling elements is snap-fit binding elements (column 6, lines 18-20).
Regarding claim 6, Fitzgerald discloses that the second coupling is disposed to releasably fasten the weight to the body.
Regarding claim 7, Fitzgerald discloses that the body is made of a plastic material (column 5, lines 62-66).
Regarding claim 10, Fitzgerald discloses that the first coupling comprising two clamping elements (22) arranged at opposite ends of one side of the body, and the second coupling comprising two clamping elements (27, 28) arranged at opposite ends of the other side of the body (Fig. 3-5).
Regarding claim 11, Fitzgerald discloses a device for releasably attaching a weight on an instep of a shoe such that the weight is offset from the longitudinal axis of the shoe, the device comprising a body (19) having: a first coupling (22) to releasably fasten the body to the instep of a shoe, with the body overlapping the longitudinal axis of the shoe, and a second coupling (27, 28) to fasten a weight (23) to the body; the second coupling being offset from the first coupling such that, when the device is in use attached to the instep of a shoe and there is a weight fastened to the body, the weight is offset from the longitudinal axis of the shoe and exerts a torque about the longitudinal axis of the shoe (column 4, lines 26-60; column 5, lines 3-55; Fig. 3-6).
Regarding claim 12, Fitzgerald discloses that first coupling of the body is arranged on a bottom side of the body that faces the shoe when the device is in use attached to the instep of a shoe, and the second coupling is arranged on an upper side of the body, opposite the bottom side (Fig. 3).
Regarding claim 13, Fitzgerald discloses that the second coupling comprising snap-fit elements that match snap-fit elements provided on the weight (Fig. 3).
Regarding claim 16, Fitzgerald discloses that the body having a curved shape, in a direction that is substantially perpendicular to the longitudinal axis of the shoe when the device is in use attached to the shoe (Fig. 3).
Claim(s) 1, 3-9, and 11-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fitzgerald (US 6,010,438).
Regarding claim 1, Fitzgerald discloses a device for attaching a weight on an instep of a shoe comprising a body (23) having: a first coupling (inner 27, 28, as seen in Fig. 5 below) to releasably fasten the body to a central area of the instep of a shoe (wherein the fasteners are capable of being fastened at a central area of an instep of a shoe), such that when the device is in use a part of the body overlaps the longitudinal axis of the shoe, and a second coupling (outer 27, 28, as seen in Fig. 5 below) to fasten a weight (additional element 23) to the body; the second coupling being offset from the first coupling such that, when the device is in use, the second coupling is offset from the longitudinal axis of the shoe, and when a weight is attached to the second coupling it exerts a torque on the body about the longitudinal axis of the shoe (column 4, lines 26-60; column 5, lines 3-55; Fig. 3-6).
PNG
media_image1.png
652
516
media_image1.png
Greyscale
Regarding claim 3, Fitzgerald discloses that the body is curved in a direction that is substantially perpendicular to the longitudinal axis of the shoe when the device is in use attached to a shoe (Fig. 3).
Regarding claim 4, Fitzgerald discloses that one of first and second couplings being clamping elements (indentations and nodes; column 5, lines 17-23).
Regarding claim 5, Fitzgerald discloses that the coupling elements is snap-fit binding elements (indentations and nodes; column 5, lines 17-23).
Regarding claim 6, Fitzgerald discloses that the second coupling is disposed to releasably fasten the weight to the body.
Regarding claim 7, Fitzgerald discloses that the body is made of a plastic material (column 5, lines 62-66).
Regarding claim 8, Fitzgerald discloses a mounting base (19) with a third coupling (27, 28) matching the first coupling of the body (Fig. 5).
Regarding claim 9, Fitzgerald discloses that the mounting base is configured to be attached on the instep of the shoe under the shoelaces and fastened with the shoelaces (by hooks 22).
Regarding claim 11, Fitzgerald discloses a device for releasably attaching a weight on an instep of a shoe such that the weight is offset from the longitudinal axis of the shoe, the device comprising a body (23) having: a first coupling (inner 27, 28) to releasably fasten the body to the instep of a shoe, with the body overlapping the longitudinal axis of the shoe, and a second coupling (outer 27, 28) to fasten a weight (additional element 23) to the body; the second coupling being offset from the first coupling such that, when the device is in use attached to the instep of a shoe and there is a weight fastened to the body, the weight is offset from the longitudinal axis of the shoe and exerts a torque about the longitudinal axis of the shoe (column 4, lines 26-60; column 5, lines 3-55; Fig. 3-6).
Regarding claim 12, Fitzgerald discloses that first coupling of the body is arranged on a bottom side of the body that faces the shoe when the device is in use attached to the instep of a shoe, and the second coupling is arranged on an upper side of the body, opposite the bottom side (Fig. 3).
Regarding claim 13, Fitzgerald discloses that the second coupling comprising snap-fit elements that match snap-fit elements provided on the weight (Fig. 3).
Regarding claim 14, Fitzgerald discloses a mounting base (19) to be attached on the instep of a shoe under the shoelaces and fastened with the shoelaces (with hooks 22), the mounting base comprising a plate with a curved bottom surface adapted to the instep of the shoe (Fig. 5), and a third coupling (27, 28) matching the first coupling of the body (Fig. 5).
Regarding claim 15, Fitzgerald discloses that the first coupling of the body comprising snap-fit elements, and the third coupling of the mounting base comprising snap-fit elements matching the snap-fit elements of the first coupling of the body (indentations and nodes: column 5, lines 17-23; Fig. 3).
Regarding claim 16, Fitzgerald discloses that the body having a curved shape, in a direction that is substantially perpendicular to the longitudinal axis of the shoe when the device is in use attached to the shoe (Fig. 3).
Regarding claim 17, Fitzgerald discloses a device for attaching a weight on the instep of a shoe, the device comprising: a mounting base (19) having a curved bottom surface to adapt to the instep of a shoe (Fig. 3), the mounting base to be attached on the instep of a shoe having shoelaces and to be fastened to the shoe with the shoelaces (at hooks 22), and a body (23) to be releasably fastened to the mounting base; -the body having a first coupling (inner 27, 28) to fasten the body to the mounting base, and a second coupling (outer 27, 28) to fasten a weight to the body, and the mounting base having a third coupling (27, 28) matching the first coupling of the body; the second coupling of the body being offset from the first coupling of the body such that, when the device is in use attached to the instep of a shoe, the second coupling is offset from the longitudinal axis of the shoe, and when a weight is attached to the second coupling, the weight exerts a torque on the body about the longitudinal axis of the shoe (column 4, lines 26-60; column 5, lines 3-55; Fig. 3-6).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitzgerald, as applied to claim 1.
Regarding claim 2, Fitzgerald does not disclose the specific offset distance, but appears to show the second coupling being offset from the first coupling an offset distance of between 10 mm and 35 mm in a direction that is substantially perpendicular to the longitudinal axis of the shoe when the device is in use (Fig. 4, 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the offset distance between 10-35 mm in order to provide a secure connection between the weights across the width of the device. The claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
Regarding claims 1, 11, and 17, Applicant argues that Fitzgerald has nothing like “a part of the body [that] overlaps the longitudinal axis of the shoe.” However, claims 1, 11, and 17 do not positively recite the shoe, and therefore do not positively recite a positional relationship between the body and the shoe. Claim 1 recites “a first coupling to releasably fasten the body to a central area of the instep of a shoe, such that when the device is in use a part of the body overlaps the longitudinal axis of the shoe” (emphasis added for clarity). Claim 11 recites “a first coupling to releasably fasten the body to the instep of a shoe” (emphasis added for clarity). Similarly, claim 17 recites “the mounting base to be attached on the instep of a shoe” and “when the device is in use attached to the instep of a shoe, the second coupling is offset from the longitudinal axis of the shoe” (emphasis added for clarity).
The device of Fitzgerald is clearly capable of being coupled to the shoe such that a part of the body overlaps the longitudinal axis of the shoe, as discussed in the rejections above. For example, the hooks are capable of being fastened to a central area of an instep of a shoe, such as to the laces, directly to a tongue, or to the opposite side of the tongue opening.
Applicant further argues that base weight plate (19) or intermediate weight (23) of Fitzgerald has a weight, and therefore it must be positioned in use on a lateral side of the shoe. However, there is no requirement that device of Fitzgerald be placed on the lateral side of the shoe. The device is a free weight with hooks 22 that are capable of being hooked to other portions of the shoe, such as the tongue, laces, or medial side of the tongue opening (such that a portion of the device would be overlap the longitudinal axis of the shoe).
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant further argues that the currently-claimed devices do not need use of additional components such as a cover plate of straps. In response to Applicant's argument that Fitzgerald includes additional structure not required by Applicant's invention, it must be noted that Fitzgerald discloses the invention as claimed. The fact that it discloses additional structure not claimed is irrelevant.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, 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 at (571) 272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
Prosecution Insights