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
Applicant’s election without traverse of species I (boot (100) as shown in figures 1-3) in the reply filed on 11/3/2025 is acknowledged.
A further review of the claims reveals that claim 1 which recites a “zipper” is not generic to all of the species and therefore this claim is not generic inasmuch as the other species do not contain a zipper.
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 “a locking slider that is configured to lock at a plurality of positions” in claim 3 [claim 3 and claims dependent of claim 3 (i.e. claims 4-7)]; “a bellow lining” in claim 11; “a top stop” in claim 19; and “a bottom stop” in claim 20 must be shown or the feature(s) canceled from the claim(s). 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 because in figure 1, the reference numeral “102” is shown twice. It would appear the one pointing to the handle should be “124”. In figure 4, “104” which is supposed to represent the lower shaft is actually pointing at the sole structure and therefore should be corrected. 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.
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 3-7,11 and 19-20 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.
With regard to claims 3-7, the disclosure fails to show or adequately teach how the slider (e.g. 118) is a locking slider that is configured to lock at a plurality of locations (as defined in claims 3-4). There must be some mechanical structure that locks the slider. Without such information the examiner is unable to perform an adequate search.
With regard to claim 11, the disclosure fails to show or adequately teach how the lining (108) is a bellow lining. Doe the liner have a section of bellows or some structure that acts similar to a bellow? Where are they located?
With regard to claims 19-20, the disclosure fails to show or adequately teach a top stop and a bottom stop. There must be some mechanical structure that stops the slider. Without such information the examiner is unable to perform an adequate search.
Claims 3-7 and 19-20 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 pre-AIA the applicant regards as the invention.
With regard to claims 3-7, the slider being a locking slider that is configured to lock in a plurality of positions as defined in claim 3, is not understood. What structure locks the slider? Therefore the scope of the claims can’t be determined.
With regard to claims 19-20, it is not clear how the zipper assembly has a top stop and a bottom stop and therefore is unclear and indefinite. What structure is applicant trying to claim? Therefore the scope of the claims can’t be determined.
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) 1,2,8-11 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20120113536 (Jeong). See the four page English translation of KR ‘536.
Regarding claims 1,2 and 8-11, Jeong discloses a safety boot comprising
an upper shaft (3);
at least one lining (6) coupled to an inner surface of the upper shaft; and,
at least one zipper assembly (zipper 5 with slider as shown) coupled to the upper shaft, wherein each zipper assembly comprises at least one slider (see slider attached to the zipper as shown in figures 1-4),
wherein each slider is configured to move from a top position (see figure 2) to a bottom position (see figure 1), wherein moving the at least one slider from the top position to the bottom position increases a circumference of the upper shaft.
Regarding claim 2, Jeong teaches a boot having all the structure as claimed and therefore is inherently capable of being locked at the top position or bottom position (e.g. a safety pin could be applied through the upper and over the slider to lock it in place).
Regarding claims 8 and 10, the liner is made of Gore-Tex (see abstract) and is taught throughout as being waterproof and prevents water from seeping inward.
Regarding claim 9, see figures 1 and 4 showing the lining (6) is bonded onto the inner surface of the upper shaft.
Regarding claim 11, see figure 3 which shows folded expansion joint which represent a bellows portion of the lining.
Regarding claims 19-20, as understood, the top of the zipper and the bottom of the zipper would represent the top stop and bottom stop, respectively.
The boot as taught by Jeong expands when the zipper is lowered and therefore inherently is a calf adjustable boot.
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.
Claims 3-7, as understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong ‘536 in view of US 3855715 (Johnson).
Jeong teaches a boot having structure as claimed (see the rejection above for details) except for the slider having a locking slider which locks in a plurality of positions at equal intervals, and each interval being 1 inch.
Johnson teaches a boot zipper having a split ring (14) and loops (22) so the slider (16) is locked at any position along the zipper (21); see paragraph bridging col 1 and col. 2 and figures 1-2. 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 boot as taught by Jeong with the zipper assembly having a split ring and loops along the zipper, as taught by Johnson, to the slider can be locked at any position including equal intervals equal to 1 inch, to facilitate the slider staying secured in a set position.
Claims 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong ‘536.
Jeong teaches a boot as claimed (see the rejection above) except for the boot having a height of 14 inches. It would appear to be an obvious design choice to construct the boot having any suitable height as desired including 14 inches inasmuch as a number of heights would appear to be suitable depending on the individual wearer and/or the activity for be used. Since the applicant has not demonstrated or even alleged that this specific boot height produces any unexpected results, it is our concluded that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum boot height and thereby arrive at a boot height as claimed.
Claims 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong ‘536 in view of US 671711 (Soderberg).
Jeong teaches a boot as claimed (see the rejection above) except for two pull straps stitched on an outer surface of the upper shaft and proximity to the zipper assembly. Soderberg teaches a boot having two pull straps on the upper shaft located on the side of the boot. 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 boot as taught by Jeong, with two pull straps on the upper shaft, as taught by Soderberg, to facilitate pulling the boot on to the wearer’s foot.
With regard to attaching the pull straps stitched to the outer surface of the upper shaft. The examiner takes official notice that is old and conventional to attach pull tabs/loops/straps to an outer surface of the upper by stitches inasmuch as a there are a number of different means of attaching the pull straps to the footwear upper. Moreover, it is old and conventional to attach multiple shoe/boot components together by stitching. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to attach the pull straps of the boot as taught above with the pull straps attached by stitching to the outer surface of the upper shaft, to provide an economical means to secure them together.
Claims 3-7,12-14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeong ‘536 in view of US 4745693 (Brown).
Jeong teaches a boot having structure as claimed (see the rejection above for details) except for the slider having a locking slider which locks at a plurality of positions at equal intervals, and each interval being 1 inch (claims 3-7) and at least one flap coupled to an outer surface of the upper shaft to protect the zipper assembly, wherein the flap has at least one of a plurality of hooks or loops.
Regarding claims 3-7, Brown teaches a self-locking zipper having a slider having a locking slider which locks at a plurality of positions at equal intervals, and each interval being 1 inch; at least see col. 2, lines 29-35. 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 boot as taught by Jeong with the zipper assembly having self-locking zipper, as taught by Brown, so that the slider can be locked at any position including equal intervals equal to 1 inch, to facilitate the slider staying secured in a set position.
Regarding claims 12-14 and 16, Brown teaches the zipper end being covered by a flap (19) and secured to the upper by a hook and loop fastener; at least see the figures and col. 2, lines 29-51. 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 top end of the zipper assembly at the outer surface of the upper shaft as taught by Jeong with a flap having hook and loop fastener, as taught by Brown, so the top end of the zipper slider is covered and secured in place to protect and further secure the slider in place (i.e. prevent the slider from sliding downward). The flap will inherently provide some form of protection when exposed to a fire.
Claims 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claim 12 above and further in view of KR 101978717 (Moon). See English translation of KR ‘717.
Jeong teaches a boot having structure as claimed (see the rejection above for details) except for at least on flap is a flame and heat resistant material that is capable of withstanding temperature of 260 degrees Celsius. KR’ teaches a safety boot made out of flame and heat resistant material, at least see page 3, lines 1-18, page 5, lines 11-24 and page 8, lines 5-9 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 modify the boot as taught by Jeong for at least the flap and/or at least other portions of the boot made out of flame and heat resistant material, as taught by Moon, to facilitate resistance to high heat and flames. With regard to the withstanding temperature of 260 degrees Celsius, it would appear to be an obvious design choice to construct the flame and heat resistant material out of a material that would withstand temperature of 260 degrees Celsius inasmuch as a number of different materials that can withstand different temperatures can be used depending on the activity being used for (e.g. firefighting). That is, these parameters are recognized in the art to be a variable that is result effective. Generally, it is considered to have been obvious to develop workable or even optimum ranges for such variables. For example, see In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955) and In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Since the applicant has not demonstrated or even alleged that this material that can withstand temperature of 260 degrees produces any unexpected results, it is concludes that it would have been obvious for an artisan with ordinary skill to determine a workable or even optimum material and thereby arrive with a material that can withstand a temperature of 260 degrees Celsius.
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.
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