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 .
Status of Claims
This Office Action is in response to claims 1-19, filed 18 March 2025, which are pending in this application.
Drawings
The drawings are objected to because Figures 1-8 are black and white photographs. Black and white photographs are not ordinarily permitted in utility patent applications unless there is no other practicable medium for illustrating the claimed invention. Based on Figures 1, 3, & 7, which are black and white drawings, the claimed invention of this application is capable of being shown as a series of drawings. It is also noted that dark shading within the drawings is not acceptable. Each claimed aspect of the invention must be clear, visible, and appropriately marked within the drawings for the understanding of the subject matter sought to be patented. See 37 C.F.R. 1.84(b)(2).
Photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one photograph drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Objections
Claim(s) 18-19 is/are objected to because of the following informalities:
Claim 18, lines 10-11, should recite, “a receiving surface comprising at least one of [[the]] a set of hooks and [[the]] loops of a hook and loop coupling system”.
Claim 19, lines 11-12, should recite, “a receiving surface comprising at least one of [[the]] a set of hooks and [[the]] loops of a hook and loop coupling system”.
Appropriate correction is required.
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 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, 4, 9, and 11-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmelzer US 20080060110.
Regarding Independent Claim 1, Schmelzer discloses a system (Figs. 1-2F #200) for attaching a personal item to a shoe (Abstract), the system comprising: a shoe (Figs. 1-2A #100), wherein the shoe is a molded shoe made from a stretchable material (¶0004), the shoe having a plurality of expandable holes in an upper portion of the shoe (Figs. 1-2 #105; ¶0005); a shaft (Figs. 1-2F #210) having first and second ends (Figs. 1-2F #210 top/bottom); a first shoulder secured to the first end of the shaft (Figs. 1-2F #215), the first shoulder being configured for insertion through a first expandable hole of the plurality of expandable holes and configured to engage an inner surface of the upper portion of the shoe (¶0040); a second shoulder secured to the second end of the shaft (Figs. 1-2F #220); a mounting patch coupled to the second shoulder (Figs. 1-2F #225), the mounting patch comprising a receiving surface (¶0042) that extends at least to a second expandable hole of the plurality of expandable holes (Figs. 1-2A #205, the second expandable hole is adjacent to the first expandable hole; a personal item comprising an attachment surface (Figs. 1-2F #205; ¶0042), the attachment surface configured to securely yet releasably couple to the receiving surface when the attachment surface is placed into contact with the receiving surface (¶0038, 0042-0044, 0049-0056).
Regarding Claim 2, Schmelzer discloses the system of claim 1, wherein the personal item is a toy (Figs. 1-2A show an ornament #205, which is classically considered a toy).
Regarding Claim 4, Schmelzer discloses the system of claim 2, wherein a maximum dimension of the toy is less than twice a width of the shoe (Figs. 1-2F).
Regarding Claim 9, Schmelzer discloses the system of claim 1, wherein the mounting patch extends above the surface of the first expandable hole by no more than one inch (Fig. 2C).
Regarding Claim 11, Schmelzer discloses the system of claim 1, wherein the second shoulder is configured to engage an outer surface of the upper portion of the shoe (Fig. 2C).
Regarding Claim 12, Schmelzer discloses the system of claim 2, wherein the mounting patch and attachment surface are large enough to enable the toy to be securely attached at any rotational orientation of the toy to the mounting patch (Figs. 1-2C).
Regarding Claim 13, Schmelzer discloses the system of claim claim 1, wherein the mounting patch has a radial maximum dimension larger than a radial maximum dimension of the second shoulder (Figs. 1-2F).
Regarding Claim 14, Schmelzer discloses the system of claim 1, wherein the shoe and the mounting patch are coupled together only via the first shoulder, the shaft, and the second shoulder (Figs. 1-2F).
Regarding Claim 15, Schmelzer discloses the system of claim 2, wherein the toy and the mounting patch are coupled together only via the receiving surface and the attachment surface (Figs. 1-2F; ¶0042).
Regarding Claim 16, Schmelzer discloses the system of claim 1, wherein the receiving surface has a maximum dimension larger than a maximum dimension of the second shoulder (Figs. 1-2F).
Regarding Claim 17, Schmelzer discloses the system of claim 1, wherein the personal item is a tool (Figs. 1-2A show a portable ornament which could be a tool), a memento (Figs. 1-2A show a portable ornament which could be a momento), a portable item (Figs. 1-2A show a portable ornament), or a movable item (Figs. 1-2A show a portable ornament which is moveable in so much as it can be moved in the hole #105).
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) 3, 5-8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmelzer as applied to claims 1-2 above, and further in view of Tobias US 7237347.
Regarding Claim 3, Schmelzer discloses the system of claim 2, but does not expressly disclose wherein the toy is made of plush material.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 4-5 #26) that includes a toy (Figs. 4-5 #10) wherein the toy is made of plush material (Col. 1:21-27).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the personal item would be a toy because, “Children enjoy novelty items and accessories that they can wear, particularly plush items that resemble cute animals or popular characters,” (Tobias Col. 1:17-21). Further, it has been held to be 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. See MPEP 2144.07.
Regarding Claim 5, Schmelzer discloses the system of claim 2, wherein the toy has a coupling system (Figs. 1-2F; ¶0044, “having a removably-attached shoulder, the removable shoulder can be attached to shaft 210 by a snap fastener, adjustable barrel nut, bayonet fastener, or other suitable fastener”), but does not expressly disclose wherein the toy comprises the loops of a hook and loop coupling system.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 10A-B #42) that includes a toy (Figs. 10A-B #10) wherein the toy comprises the loops of a hook and loop coupling system (Fig. 10A #44).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the personal item would be a toy containing the loops of a hook and loop system since hook and loop material is inexpensive and easy for users to manipulate. Further, it has been held to be 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. See MPEP 2144.07.
Regarding Claim 6, Schmelzer discloses the system of claim 2, wherein the toy has a coupling system (Figs. 1-2F; ¶0044, “having a removably-attached shoulder, the removable shoulder can be attached to shaft 210 by a snap fastener, adjustable barrel nut, bayonet fastener, or other suitable fastener”), but does not expressly disclose wherein the toy has at least one separate pair of hooks and loops of a hook and loop coupling system.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 10A-B #42) that includes a toy (Figs. 10A-B #10) wherein the toy has at least one separate pair of hooks and loops (Figs. 10A-B #46/44) of a hook and loop coupling system (Fig. 10A).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the personal item would be a toy containing at least one separate pair of hooks and loops of a hook and loop coupling system since hook and loop material is inexpensive and easy for users to manipulate. Further, it has been held to be 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. See MPEP 2144.07.
Regarding Claim 7, Schmelzer discloses the system of claim 2, wherein the toy has a coupling system (Figs. 1-2F; ¶0044, “having a removably-attached shoulder, the removable shoulder can be attached to shaft 210 by a snap fastener, adjustable barrel nut, bayonet fastener, or other suitable fastener”), but does not expressly disclose wherein the toy has at least two separate pairs of hooks and loops of a hook and loop coupling system.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 10A-B #42) that includes a toy (Figs. 10A-B #10) wherein the toy has at least two separate pairs of hooks and loops (Figs. 10A-B #46/44 show multiple hooks and loops on the material) of a hook and loop coupling system (Fig. 10A).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the personal item would be a toy containing at least two separate pair of hooks and loops of a hook and loop coupling system since hook and loop material is inexpensive and easy for users to manipulate. Further, it has been held to be 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. See MPEP 2144.07.
Regarding Claim 8, the modified system of Schmelzer discloses the system of claim 2, but does not expressly disclose wherein the toy's outer surface is made entirely of textile material.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 4-5 #26) that includes a toy (Figs. 4-5 #10) wherein the toy’s outer surface is made entirely of textile material (Tobias Col. 3:5-15).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the personal item would be a toy because textiles used for toys are generally light weight and easy to clean. Further, it has been held to be 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. See MPEP 2144.07.
Regarding Claim 10, Schmelzer discloses the system of claim 2, but does not expressly disclose wherein the toy is in the form of an animal.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 4-5 #26) that includes a toy (Figs. 4-5 #10) wherein the toy is in the form of an animal (Figs. 3-4).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the toy would be in the form of an animal since, “Children enjoy novelty items and accessories that they can wear, particularly plush items that resemble cute animals or popular characters,” (Tobias Col. 1:17-21). Further, the Examiner notes that the ornament #205 is in the shape of a flower and thus it would be reasonable for the ornament to also be made in the shape of an animal since flora and fauna are common designs in the art for ornamentation. Examiner notes a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04. A Change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmelzer in view of Tobias.
Regarding Independent Claim 18, Schmelzer discloses a system (Figs. 1-2F #200) for attaching a personal item to a shoe (Abstract), the system comprising: a shoe (Figs. 1-2A #100), wherein the shoe is a molded shoe made from a stretchable material (¶0004), the shoe having a plurality of expandable holes in an upper portion of the shoe (Figs. 1-2 #105; ¶0005); a shaft (Figs. 1-2F #210) having first and second ends (Figs. 1-2F #210 top/bottom); a first shoulder secured to the first end of the shaft (Figs. 1-2F #215), the first shoulder being configured for insertion through an expandable hole of the plurality of expandable holes and configured to engage an inner surface of the upper portion of the shoe (¶0040); a second shoulder secured to the second end of the shaft (Figs. 1-2F #220); a mounting patch coupled to the second shoulder (Figs. 1-2F #225), the mounting patch comprising a receiving surface (¶0042) comprising a coupling system (Figs. 1-2F; ¶0044, “having a removably-attached shoulder, the removable shoulder can be attached to shaft 210 by a snap fastener, adjustable barrel nut, bayonet fastener, or other suitable fastener”); and a personal item comprising an attachment surface (Figs. 1-2F #205 surface; ¶0042), the attachment surface comprising the coupling system (¶0044), the attachment surface configured to securely yet releasably couple to the receiving surface (¶0038, 0042-0044, 0049-0056) when the attachment surface is placed into contact with the receiving surface (Figs. 1-2F), wherein a maximum dimension of the personal item is less than twice a width of the shoe (Figs. 1-2F).
Schmelzer does not expressly disclose the receiving surface comprising at least one of the hooks and the loops of a hook and loop coupling system; the attachment surface comprising at least another of the hooks and the loops of a hook and loop coupling system, the attachment surface configured to securely yet releasably couple to the receiving surface specifically via the hook and loop coupling system.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 10A-B #42) that includes at least one of the hooks and the loops (Figs. 10A-B #46/44) of a hook and loop coupling system (Fig. 10A); the attachment surface comprising at least another of the hooks and the loops (Figs. 10A-B #46/44 show multiple hooks and loops on the material) of a hook and loop coupling system (Fig. 10A), the attachment surface configured to securely yet releasably couple to the receiving surface specifically via the hook and loop coupling system (Col. 5:11-30).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the receiving surface would have hooks and loops and the attachment surface would contain multiple sets of hooks and loops of a hook and loop coupling system since hook and loop material is inexpensive and easy for users to manipulate. Further, it has been held to be 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. See MPEP 2144.07.
Regarding Independent Claim 19, Schmelzer a system (Figs. 1-2F #200) for attaching a personal item to a shoe (Abstract), the system comprising: a shoe (Figs. 1-2A #100), wherein the shoe is a molded shoe made from a stretchable material (¶0004), the shoe having a plurality of expandable holes in an upper portion of the shoe (Figs. 1-2 #105; ¶0005); a shaft (Figs. 1-2F #210) having first and second ends (Figs. 1-2F #210 top/bottom); a first shoulder secured to the first end of the shaft (Figs. 1-2F #215), the first shoulder being configured for insertion through an expandable hole of the plurality of expandable holes and configured to engage an inner surface of the upper portion of the shoe (¶0040); a second shoulder secured to the second end of the shaft (Figs. 1-2F #220); a mounting patch coupled to the second shoulder (Figs. 1-2F #225), the mounting patch comprising a receiving surface (¶0042) that extends at least to a second expandable hole of the plurality of expandable holes (Figs. 1-2A), the second expandable hole is adjacent to the first expandable hole (Fig. 1), the receiving surface comprising a first part of a coupling system (Figs. 1-2F; ¶0044, “having a removably-attached shoulder, the removable shoulder can be attached to shaft 210 by a snap fastener, adjustable barrel nut, bayonet fastener, or other suitable fastener”), and wherein the mounting patch has a maximum dimension larger than a maximum dimension of the second shoulder (Figs. 1-2F); a personal item (Figs. 1-2A show an ornament #205) comprising an attachment surface (Figs. 1-2F #205 surface; ¶0042), the attachment surface comprising second part of a coupling system (Figs. 1-2F; ¶0044, “having a removably-attached shoulder, the removable shoulder can be attached to shaft 210 by a snap fastener, adjustable barrel nut, bayonet fastener, or other suitable fastener”), the attachment surface configured to couple to the receiving surface via the coupling system when the attachment surface is placed into contact with the receiving surface (¶0038, 0042-0044, 0049-0056), wherein a maximum dimension of the personal item is less than twice a width of the shoe (Figs. 1-2A).
Schmelzer does not expressly disclose the receiving surface specifically comprising the hooks of a hook and loop coupling system, the attachment surface specifically comprising the loops of a hook and loop coupling system, the personal item being plush, and the attachment surface configured to couple to the receiving surface specifically via the hook and loop coupling system when the attachment surface is placed into contact with the receiving surface.
Tobias teaches a shoe (Fig. 3; Abstract) with an accessory attachment (Figs. 10A-B #42) wherein the receiving surface specifically comprising the hooks of a hook and loop coupling system (Figs. 10A-B #46), the attachment surface specifically comprising the loops of a hook and loop coupling system (Figs. 10A-B #44), the personal item being plush (Col. 1:21-27), and the attachment surface configured to couple to the receiving surface specifically via the hook and loop coupling system when the attachment surface is placed into contact with the receiving surface (Col. 5:11-30).
Both Schmelzer and Tobias teach analogous inventions in the art of accessories for decorating shoes. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the receiving surface would have hooks and the attachment surface would have loops of a hook and loop coupling system, and the attachment surface configured to couple to the receiving surface specifically via the hook and loop coupling system when the attachment surface is placed into contact with the receiving surface since hook and loop material is inexpensive and easy for users to manipulate. Further, it has been held to be 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. See MPEP 2144.07. And it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Schmelzer with the teachings of Tobias such that the toy would be in the form of an animal since, “Children enjoy novelty items and accessories that they can wear, particularly plush items that resemble cute animals or popular characters,” (Tobias Col. 1:17-21). Further, the Examiner notes that the ornament #205 is in the shape of a flower and thus it would be reasonable for the ornament to also be made in the shape of an animal since flora and fauna are common designs in the art for ornamentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wilcox US 20070084019 teaches an ornamental rivet apparatus for shoes
Blunder US 20080127525 teaches a charm attachment for shoes
Nigro US 20170154553 teaches an accessory mount with hook and loop
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is
571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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