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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11490680, 11839258, and/or 12262777. Although the claims at issue are not identical, they are not patentably distinct from each other.
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.
Claims 11-16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 11 the phrase “such that each arm of the pair of arms does not shear relative to the upper” is confusing, vague, and indefinite because it is not clear what structural limitations applicant intends to encompass with such language.
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.
Claim(s) 1-5 and 11-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beers (2018/0110292).
Beers shows A rapid-entry shoe (see specifically figures 50, 51, and 54-59) comprising:
a sole portion (32);
an upper (38) coupled to the sole portion (32), the upper defining a topline (at 39); and
a pair of arms (2381 or 2614 as shown in the figures), each arm extending continuously from a medial side of the upper, around a rear portion of the upper, and to a lateral side of the upper (see figures);
wherein the rapid-entry shoe has a collapsed configuration in which the topline is
expanded to facilitate reception of a foot of an individual donning the rapid-entry shoe (as described throughout the specification and shown in figure 56);
wherein the rapid-entry shoe has an uncollapsed configuration in which the topline is
unexpanded to retain the foot within the rapid-entry shoe (as described throughout the specification and shown in figure 55);
wherein each arm of the pair of arms is integrated within the upper (the arms are considered to be integrated within the upper as they are encompassed by a portion of the upper at 2633);
wherein the pair of arms is configured to bias the upper toward the uncollapsed
configuration (see figure 55);
wherein each arm of the pair of arms is coupled to and at least partially overlying
the upper (as shown in the figures);
wherein each arm of the pair of arms configured to move with the upper
between the collapsed configuration and the uncollapsed configuration (see figures 55 and 56); and
wherein the rapid-entry shoe is biased by the pair of arms toward the uncollapsed
configuration (see paragraph [0126]) as claimed.
In reference to claim 2, see paragraphs [0119], [0130], and [0177] which teaches materials.
In reference to claim 3, see paragraph [0112].
In reference to claim 4, the rearmost part of the upper is considered to be a static portion.
In reference to claim 5, the topline (39) does not permit elongation between the arms inasmuch as applicant has claimed and defined such.
In reference to claim 11, Beers shows a rapid-entry shoe (see figures 50-59) comprising:
a sole portion (32);
an upper (38) coupled to the sole portion (32), the upper defining a topline (at 39);
a pair of arms (2381 or 2614 as shown in the figures) coupled to at least a portion of the upper, each arm of the pair of arms coupled adjacent to the sole portion and extending adjacent to the topline,
wherein, when the topline (39) of the rapid-entry shoe is compressed toward the sole portion,
the pair of arms are configured to expand an opening of the rapid-entry shoe (see paragraph [0105] and figure 56),
wherein each arm of the pair of arms is coupled to the upper via one of stitching (see paragraph [0122], weaving, and gluing such that each arm of the pair of arms does not shear relative to the upper (inasmuch as this phrase is understood); and
wherein each arm of the pair of arms includes a first end and a second end that are coupled to and terminate at lateral and medial sides of the sole portion (see figures 50-59) as claimed.
In reference to claim 12, see paragraphs [0119], [0130], and [0177] which teaches materials.
In reference to claim 13, see paragraph [0112].
In reference to claim 14, the rearmost part of the upper is considered to be a static portion.
In reference to claim 15, the topline (39) does not permit elongation between the arms inasmuch as applicant has claimed and defined such.
In reference to claim 16, see paragraph [0122] which discloses stitching.
Claim(s) 1, 4, 5, 11, and 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheney (10638810).
Cheney shows A rapid-entry shoe (see specifically figures 2A-6A) comprising:
a sole portion (shown in figure 6A);
an upper (shown at 100 in figure 6A) coupled to the sole portion (shown in figure 6A), the upper defining a topline (above 120); and
a pair of arms (110 or 120 as shown in the figures), each arm extending continuously from a medial side of the upper, around a rear portion of the upper, and to a lateral side of the upper (see figures);
wherein the rapid-entry shoe has a collapsed configuration in which the topline is
expanded to facilitate reception of a foot of an individual donning the rapid-entry shoe (as described throughout the specification and shown in figures 9A-9C);
wherein the rapid-entry shoe has an uncollapsed configuration in which the topline is
unexpanded to retain the foot within the rapid-entry shoe (as described throughout the specification and shown in figures 9A-9C);
wherein each arm of the pair of arms is integrated within the upper (as described in column 2 lines 52-57);
wherein the pair of arms is configured to bias the upper toward the uncollapsed
configuration (see figure 9C);
wherein each arm of the pair of arms is coupled to and at least partially overlying
the upper (as shown in the figures);
wherein each arm of the pair of arms configured to move with the upper
between the collapsed configuration and the uncollapsed configuration (see figures 9A-9C); and
wherein the rapid-entry shoe is biased by the pair of arms toward the uncollapsed
configuration (see figure 9C) as claimed.
In reference to claim 4, the rearmost part of the upper is considered to be a static portion.
In reference to claim 5, the topline (as shown in figures 9A-9C) does not permit elongation between the arms inasmuch as applicant has claimed and defined such.
In reference to claim 11, Cheney shows a rapid-entry shoe (see figures2A-6A) comprising:
a sole portion (see figure 6A);
an upper (at 100 in figure 6A) coupled to the sole portion (see figure 6A), the upper defining a topline (as shown in figures above 120);
a pair of arms (110 or 120 as shown in the figures) coupled to at least a portion of the upper, each arm of the pair of arms coupled adjacent to the sole portion and extending adjacent to the topline,
wherein, when the topline of the rapid-entry shoe is compressed toward the sole portion (see figure 9B),
the pair of arms are configured to expand an opening of the rapid-entry shoe (see figure 9B),
wherein each arm of the pair of arms is coupled to the upper via one of stitching (see column 9 lines 3-15) weaving, and gluing such that each arm of the pair of arms does not shear relative to the upper (inasmuch as this phrase is understood); and
wherein each arm of the pair of arms includes a first end and a second end that are coupled to and terminate at lateral and medial sides of the sole portion (see figures 2A-5A) as claimed.
In reference to claim 14, the rearmost part of the upper is considered to be a static portion.
In reference to claim 15, the topline (as shown in figures 9A-9C) does not permit elongation between the arms inasmuch as applicant has claimed and defined such.
In reference to claim 16, see column 9 lines 3-15 which discloses stitching.
In reference to claim 17, Cheney shows a rapid-entry shoe comprising:
a sole portion (see figure 6A);
an upper (at 100 in figure 6A) coupled to the sole portion (see figure 6A), the upper defining a topline and a heel portion (as shown in figures);
a plurality of arms (110 or 120 as shown in the figures) stitched to at least a portion of the upper (see column 9 lines 3-15 which discloses stitching), each arm of the plurality of arms extending upward and rearward from medial and lateral sides of the sole portion and around the heel portion of the upper (as shown in figures);
wherein each arm of the pair of arms is separate and distinct from each other (as shown in figures and discussed in column 5 lines 44-67);
wherein each arm of the plurality of arms includes a first end coupled to the medial side of the sole portion and a second end coupled to the lateral side of the sole portion at a position spaced from an adjacent arm of the plurality of arms (see figures 2A, 2B, 3B, 3C);
wherein the heel portion of the upper is configured to be deformed toward a collapsed
configuration during donning of the rapid-entry shoe (see figure 9B),
wherein the plurality of arms is configured to bias the heel portion of the upper to an
uncollapsed configuration (see figures 9A and 9C) such that the heel portion rebounds from the collapsed configuration to the uncollapsed configuration to lock in a heel of a user (see figures 9A-9C) as claimed.
In reference to claim 18, see figures 9A-9C.
In reference to claims 19 and 20 see figures.
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) 2, 3, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheney in view of Beers.
Cheney shows a shoe substantially as claimed except for specifically stating the materials. Beers teaches materials see paragraphs [0119], [0130], and [0177]. It would have been obvious to use well known materials as taught by Beers for the shoe of Cheney to provide durability, strength, comfort, etc..
Allowable Subject Matter
Claims 6-10 would be allowed upon the formal filing of proper Terminal disclaimers.
Response to Arguments
Applicant's arguments filed 6/8/26 have been fully considered but they are not persuasive.
In response to applicants’ arguments directed towards Beers, as noted above Beers shows the arms integrated within the upper as they are encompassed by a portion of the upper at 2633. In reference to claim 11, see above 112 rejection as the phrase argued is confusing, vague, and indefinite. In reference to claim 17, see above new rejection based on a new reference to Cheney.
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.
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/MARIE D BAYS/Primary Examiner, Art Unit 3732
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