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 .
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,102,178 & claims 1-17 of U.S. Patent No. 12,207,702. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are in regards to similar claim matter even though different term language is used.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is 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 12 recites “is contoured to receive at least a portion of the heel potion of the upper”.
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.
Claims 1-5 & 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Francis (USPN 112,439).
Regarding Claim 1, Francis discloses a rapid-entry shoe (Figures 1 & 2) comprising: a base (base, see annotated Figure 2 below); an upper (a) coupled to the base; a deformable element (b) coupled to the upper; and a heel piece (d & heel piece, see annotated Figure 2 below) configured to direct a user's foot into the rapid-entry shoe; wherein the deformable element comprises a first anchor at a first end (c, on one side) and a second anchor at a second end (c, on the other side) ;wherein the deformable element extends continuously about a heel portion of the upper between the first anchor and the second anchor (Figure 2); wherein the first anchor and the second anchor are coupled to opposing sides of the base (Figure 2); wherein the deformable element has a deformable element cross section (cross-section b, see annotated Figure 2 below) at a rearmost portion between the first anchor and the second anchor; wherein at least one of the first anchor and the second anchor has an anchor cross section (cross-section c, see annotated Figure 2 below) that is larger than the deformable element cross section; wherein the deformable element is configured to have an uncollapsed configuration in which the deformable element holds the heel portion of the upper in a closed position to secure the user's foot in the rapid-entry shoe (Page. 1, lines 54-61); and wherein the deformable element may be deformed downward by an opening force to a collapsed configuration to permit rapid entry of the user's foot into the rapid-entry shoe (Page 1, lines 47-53).
Regarding Claim 2, Francis discloses the heel piece is coupled to the deformable element (Figure 2).
Regarding Claim 3, Francis discloses the heel piece is coupled to the upper (Figure 2).
Regarding Claim 4, Francis discloses at least a portion of the deformable element is disposed on an outer surface of the upper (exposed, see annotated Figure 2 below).
Regarding Claim 5, Francis discloses the deformable element comprises a material stiffener (inasmuch is understood by material stiffener, the deformable element is made of a metallic spring which is a material stiffener since it is a stiff material).
Regarding Claim 11, Francis discloses the deformable element is preloaded in the uncollapsed configuration (Page. 1, lines 54-61).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Francis (USPN 112,439) in view of Rickert (USPN 921,461).
Regarding Claim 5, Francis does not specifically disclose the deformable element comprises a material stiffener. However, Rickert discloses a deformable element (7) comprises a material stiffener (4’ & additional rubber on top of deformable element & 4’). It would have been obvious to one of ordinary skill in the art to include the tape, as taught by Rickert, to the deformable element of Francis, in order to be able to provide a gripping means when the shoe is worn.
Regarding Claim 6, the combination of Francis and Rickert disclose the material stiffener is shaped to flare when the deformable element is in the collapsed configuration (as modified, when the deformable element is in the collapsed configuration the material stiffener is capable of flaring to widen for entry).
Regarding Claim 7, the combination of Francis and Rickert disclose the material stiffener comprises a concavity along a rear edge when the deformable element is in the collapsed configuration (as modified, when the deformable element is in the collapsed configuration the material stiffener is capable of having a concavity along a rear edge).
Regarding Claim 8, the combination of Francis and Rickert disclose at least a portion of the material stiffener is disposed on an outer surface of the upper (Rickert, Figure 4).
Claims 9 & 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Francis (USPN 112,439) in view of McDonald (USPN 5,319,869).
Regarding Claim 9, Francis does not specifically disclose the deformable element further comprises a base structure coupled to the base that extends substantially horizontally around a periphery of the heel portion of the upper below the deformable element to form a closed perimeter with the deformable element. However, McDonald discloses a base structure coupled to the base that extends substantially horizontally around a periphery of the heel portion of the upper (7) to provide increased rearfoot stability and control (Col. 2, line 67- Col. 3, line 13). It would have been obvious to one of ordinary skill in the art to include the base structure of McDonald, to the shoe of Francis, in order to provide increased rearfoot stability and control. Therefore, the combination of Francis and McDonald discloses forming a closed perimeter with the deformable element and base structure.
Regarding Claim 12, Francis discloses a rapid-entry shoe (Figures 1 & 2) comprising: a base (base, see annotated Figure 2 below); an upper (a) coupled to the base; a deformable element (b) coupled to the upper; and a heel piece (d and heel piece, see annotated Figure 2 below) configured to direct a user's foot into the rapid-entry shoe; wherein the deformable element comprises a first anchor at a first end (c, on one side) and a second anchor at a second end (C, on the other side); wherein the deformable element extends continuously about a heel portion of the upper between the first anchor and the second anchor (Figure 2); wherein the first anchor and the second anchor are coupled to opposing sides of the base (Figure 2); wherein the deformable element is configured to have an uncollapsed configuration in which the deformable element holds the heel portion of the upper in a closed position to secure the user's foot in the rapid-entry shoe (Page 1, lines 54-61); wherein the deformable element may be deformed downward by an opening force to a collapsed configuration to permit rapid entry of the user's foot into the rapid-entry shoe (Page 1, lines 47-53). Francis does not disclose at least one of the first anchor and the second anchor extends rearwardly from the deformable element and is contoured to receive at least a portion of the heel portion of the upper when the deformable element is in the collapsed configuration. However, McDonald discloses a counter (7) extends rearwardly and is contoured to receive at least a portion of the heel portion of the upper to provide increased rearfoot stability and control (Col. 2, line 67- Col. 3, line 13). It would have been obvious to one of ordinary skill in the art to include the base structure of McDonald, to the shoe of Francis, in order to provide increased rearfoot stability and control. Therefore, the combination of Francis and McDonald discloses at least one of the first anchor and the second anchor extends rearwardly from the deformable element in a counter and is contoured to receive at least a portion of the heel portion of the upper when the deformable element is in the collapsed configuration.
Regarding Claim 13, the combination of Francis and McDonald disclose at least one of the first anchor and the second anchor is comprised of a portion of a heel counter of the rapid-entry shoe (as modified, Francis, Figure 2 & McDonald, Figure 2).
Regarding Claim 14, the combination of Francis and McDonald disclose the deformable element has a variable cross section along its length (Francis, Figure 2 due to the spiral structure).
Regarding Claim 15, the combination of Francis and McDonald disclose the deformable element comprises a tapering shape (Francis, Figure 2).
Regarding Claim 16, the combination of Francis and McDonald disclose the deformable element extends outward and rearward from the first anchor and outward and rearward from the second anchor such that a distance measured between opposing arms of the deformable element is greater at a location away from the base than the distance is at the base (Francis, Figure 2).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Francis (USPN 112,439).
Regarding Claim 10, Francis does not specifically the deformable element is comprised of a polymer. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the material of the deformable element as claimed, since it is well within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Also, such a modification would be considered a mere choice of preferred material that is on the basis of its suitability for the intended use. In other words, using a polymer would have been an "obvious to try" approach because the use of such a material that is not of innovation but of ordinary skill and common sense.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732