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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the rigid heel having a height between 2-3 inches and a sole toe height of at least 1 inch (ratio or 1:3 or 1:2) and “a gradual slope from the heel to the toe”, must be shown or the feature(s) canceled from the claim(s). Figure 1 doesn’t show a sole with the thickness as claimed and there is no gradual slope from the heel to the toe, in fact, it is sloping in the opposite direction. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 3a,4a. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0094856 (Guerra) in view of KR 200335174. See 5 pages of English translation of KR ‘174.
Regarding claims 1-5, Guerra discloses a shoe having a sole comprising:
a. a rigid heel of a height of at least about 2 inches (e.g. sole is made out of a rigid base wherein the base material extends to the heel portion of the sole); e.g. see figure 3C and ¶0096 and 0033-0038)
b. a toe having a height of at least 1 inch wherein the toe height is less than the heel height to maintain a gradual slope from the heel to the toe (at least see ¶0036).
Guerra lacks teaching spikes in the bottom of a sole.
KR ‘174 teaches providing spikes on shoes including high-heeled shoes (see figures 1-5 and more specifically figure 5 and page 3, lines 6-7, page 4, lines 31-32 of the English Translation.
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 shoe as taught by Guerra with spikes on the bottom sole, as taught by KR ‘174, to provide a non-slip structure on a high heeled shoe.
Regarding claims 2-3, at least see ¶0033-0038 of Guerra.
With regard to claims 4-5, the width of the sole taught by Guerra has not been disclosed. However, it would appear to be an obvious design choice to construct shoe sole with a width in the ranges as claimed inasmuch as a number of different widths would appear to be suitable depending on the size of the individual wearer. Moreover, these widths appear to be a typical width of standard shoe sizes. This view is buttressed by applicant's disclosure which does not reveal that the width of the shoe sole as claimed solves any particular problem and/or yields any unexpected results. Therefore, it would be an obvious design choice to modify the sole of the shoe as taught by the combination above with a width in the ranges as claimed.
All of the functional claim language and statements of intended use (i.e. “golf shoe” do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the reference device has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
Claim 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0020414 (Mulholland) in view of US 2362010 (Huff).
Regarding claims 1-5, Mulholland discloses a golf shoe having a sole (10,30,50,52) comprising:
a. a heel of a height of at least about 2 inches (e.g. at least see ¶0038 and 0040);
b. a toe having a height of at least 1 inch wherein the toe height is less than the heel height to maintain a gradual slope from the heel to the toe (at least see ¶0040; the height of sole layer 10 in the toe area is not disclosed but it is as shown in figure 1 is substantially the same thickness of insert 30 in the toe area which is ¼ inch as disclosed in ¶0040 and the toe end of the insert 30 is ½ inch; therefore the overall thickness of layers 10,30,50 and 52 would at least be 1 inch as claimed);
and a spike on the bottom of a sole (see treads 52 as shown in figures 10 and 16 and see the end of ¶0038).
To the extent that the toe of the sole is not 1 inch, it would appear to be an obvious design choice to construct the toe of the sole as taught Mulholland to be at least 1 inch inasmuch as a number of thickness would appear to be suitable depending on the individual wearer and the activity for. This view is buttressed by applicant's disclosure which does not reveal that the use of the specific thickness in the toe of the sole solves any particular problem and/or yields any unexpected results. Therefore, it would be an obvious design choice to toe of the sole with a height of at least 1 inch.
Mulholland lacks specifically teaching the heel portion of the sole is rigid.
Huff teaches a high heel shoe wherein the heel portion of the sole (19) is rigid to provide ample support for the user; see page 1, col. 2, lines 3-7.
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 shoe as taught by Mulholland with the heel portion of the sole being rigid, as taught by Huff, to provide support for the user’s foot.
With regard to claims 4-5, the width of the sole taught by Mulholland has not been disclosed. However, it would appear to be an obvious design choice to construct shoe sole with a width in the ranges as claimed inasmuch as a number of different widths would appear to be suitable depending on the size of the individual wearer. Moreover, these widths appear to be a typical width of standard shoe sizes. This view is buttressed by applicant's disclosure which does not reveal that the width of the shoe sole as claimed solves any particular problem and/or yields any unexpected results. Therefore, it would be an obvious design choice to modify the sole of the shoe as taught by the combination above with a width in the ranges as claimed.
All of the functional claim language and statements of intended use (i.e. “golf shoe” do not make an otherwise unpatentable claim patentable. It is believed to be well settled that "recitation with respect to manner in which claimed apparatus is intended to be employed does not differentiate claimed apparatus from prior art apparatus satisfying structural limitations of that claimed" Ex parte Masham 2 USPQ2nd 1647. Also see Ex parte Casey 152 USPQ 235. The law of anticipation does not require that an anticipatory reference teach what the applicant is claiming or has disclosed, but only that the claims "read on" something disclosed in the reference, i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 871 (Fed Cir. 1983). Furthermore, it is only necessary that the reference include structure capable of performing the recited function in order to meet the functional limitations of a claim. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977). Since the reference device has all of the same structural elements, as noted above, it would clearly seem to be inherently capable of performing the functions as claimed.
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.
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.
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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