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 .
Election/Restrictions
Applicant’s election without traverse of Invention I and Species A in the reply filed on June 15, 2026 is acknowledged. In the reply, Applicant indicated claims 30-48 as reading upon the elected invention.
That said, Claims 46-47 are also withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species C, there being no allowable generic or linking claim. Examiner notes that a removable polymer, strip, and thermos-sensitive polymer was only disclosed by Applicant with respect to Species C as described in the Restriction Requirement. Election was made without traverse in the reply.
Applicant is reminded that upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim.
Accordingly, claims 30-49 are currently pending in this application with claims 46-47 and 49 being withdrawn from further consideration. An action on the merits follows.
Information Disclosure Statement
The information disclosure statement filed May 5, 2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
The listing of references in the specification at least at page 2, line 23 is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 following feature(s) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
“wherein the base unit comprises a protruding platform and the top unit comprises a recess corresponding to the protruding platform, wherein the protruding platform is inserted into the recess” as recited in claim 37
“wherein the two opposite ends [of the string] are arranged in a recess formed by the sole unit and/or the upper” as recited in claim 43
“wherein the two ends of the string are attached to the sole unit and/or to the upper by attachment elements, wherein the two ends of the string can be separated from the attachment elements” as recited in claim 44
The drawings are also objected to because Fig. 5 appears to show an improper exploded view and/or shows multiple views in a single figure. If meant to show an exploded or disassembled view, the view should include a bracket or line to show the relationship or order of assembly of various parts. Otherwise, each individual view should be separately labeled in the figures (e.g., Fig. 5A and Fig. 5B) and appropriately described in the written description of the specification.
The drawings are also objected to because it is unclear to which of the figures the block arrows positioned between Figs. 1A-1C are meant to belong. It is suggested that the block arrows be removed from the drawings.
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.
Specification – Disclosure
The disclosure is objected to because at page 12, it appears that “upper 2” should instead read “upper 3” to correspond with the previously established reference characters.
Appropriate correction is required.
Claim Objections
A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim. A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant's sequence will not be changed. See MPEP § 608.01(n). That said, claims 41 and 45 is objected to because the claim is separated from a dependent claim (i.e., claim 39) by a claim which does not also depend from said dependent claim (i.e., claim 40).
Claim 35 is objected to because at line 1, “shoe (1)” should read “shoe” where the inclusion of the apparent reference character is removed.
Claim 41 is objected to because at line 2, “a string, which is threaded” should read “a string threaded”.
Claim 44 is objected to because at lines 1-3, all instances of “the two ends” should read “the two opposite ends”.
Claim 45 is objected to because at line 3, “2x” should read “two times”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a removable connection element” in claim 30
“attachment elements” in claim 44
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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 30-45 and 48 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.
Claim 30 recites the limitation “the connection element” at line 3. There is insufficient antecedent basis for this limitation in the claim. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “the removable connection element” to agree with the previously established terminology. Consistent use of this term should be carried out and corrected throughout the claims where necessary (i.e., at least claims 31-34 and 41). For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 30 further recites the limitation “such that it can be removed from the shoe upon which the upper and the sole unit are separate from each other” at lines 4-5. It is unclear what the word “it” is meant to refer. Furthermore, it is unclear to what structure or action the phrase “upon which” is meant to refer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “such that the removable connection element can be removed from the shoe and the upper and the sole unit are separable from each other”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 36 recites the limitation “a bottom unit and a thereon arranged top unit” at line 2. It is unclear to which of the previously introduced structures “thereon” is meant to refer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “a bottom unit and a top unit arranged on the bottom unit”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art. Claim 36 further recites the limitation “such that they together define the notch” at line 3. It is unclear to which of the previously introduced structures “they” is meant to refer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “such that the bottom unit and the top unit together define the notch”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 40 recites the limitation “the plurality of loops” at line 2. There is insufficient antecedent basis for this limitation in the claim. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “a plurality of loops”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 41 recites the limitation “the loops of the upper” and “the loops of the sole unit” at lines 2-3. There is insufficient antecedent basis for these limitations in the claim. It is unclear how or if the loops relate to the previously introduced plurality of loops of claim 39. Furthermore, it is unclear if the claims explicitly requiring the presence of the plurality of loops on both the upper and sole unit which were introduced as optionally being in the alternative (i.e., and/or) in claim 39. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the claim be amended to clearly and properly recite the relationship of the various loop structures as well as to clearly recite which of the optional structures are necessarily required. For the purposes of examination, the limitation will be interpreted as best can be understood when applying prior art.
Claim 42 recites the limitation “such that it can be removed” at line 2. It is unclear to which structure “it” is meant to refer. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “such that the string can be removed”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 42 further recites the limitation “thereby preferably” at line 2. It is unclear if the preferably or preferred limitations are necessarily required or not. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “thereby optionally”. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art.
Claim 45 recites the limitation “the rim portion” at line 2. There is insufficient antecedent basis for this limitation in the claim. Therefore, the metes and bounds of the claim are unclear, and the claim is rendered indefinite. It is suggested that the limitation instead read “a rim portion” and further specify to which structure the rim portion belongs. For the purposes of examination, the limitation will be interpreted as best can be understood according to the suggested language above when applying prior art wherein the rim portion belongs to one of the upper or the sole.
Claims 31-45 and 48 are also rejected for being dependent on a rejected claim.
An effort has been made to identify all indefinite language with the pending claims. However, Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive, and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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.
Claims 30-38 and 48, as best can be understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0119950 to Kohatsu et al. (hereinafter, “Kohatsu”).
Regarding claim 30, Kohatsu teaches a shoe comprising a sole unit and an upper, wherein the upper forms a foot accommodation compartment (See Kohatsu, Figs. 19-20; shoe (1900) having sole (1903, 1920) and upper (1901, 1902) forming compartment for foot accommodation), and wherein the upper and the sole unit are connected to each other by a removable connection element, wherein the connection element is configured such that it can be removed from the shoe upon which the upper and the sole unit are separated from each other (See Kohatsu, Figs. 19-20; sole and upper removably connected by lace (1910) which is capable of being removed to separate sole and upper).
Regarding claim 31, Kohatsu (as discussed with respect to claim 30 above) further teaches wherein the connection element forms a form-locking and/or force locking and/or material bonding connection between the upper and the sole unit (See Kohatsu, Figs. 19-20; lace (1910) at least applies force to hold sole and upper together; giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
Regarding claim 32, Kohatsu (as discussed with respect to claim 30 above) further teaches wherein the connection element circumferentially surrounds the foot accommodation compartment (See Kohatsu, Fig. 9; lace (1910) circumferentially surrounds foot accommodation compartment formed by upper).
Regarding claim 33, Kohatsu (as discussed with respect to claim 30 above) further teaches wherein the connection element extends between the sole unit and the upper (See Kohatsu, Figs. 19-20; lace (1910) extends between sole (1903, 1920) and upper (1901, 1902)).
Regarding claim 34, Kohatsu (as discussed with respect to claim 30 above) further teaches wherein the connection element comprises a string and wherein the sole unit defines a notch extending along a peripheral region of the sole unit and wherein the string and the upper are accommodated in the notch such that the upper is arranged between the string and the sole unit (See annotated Fig. 20 of Kohatsu below; lace (1910) is a string; notch structure is formed along a peripheral region of sole (1903, 1920) and accommodates at least a portion of string and upper (1901, 1902); Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)).
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Annotated Fig. 20 of Kohatsu
Regarding claim 35, Kohatsu (as discussed with respect to claims 30 and 34 above) further teaches wherein the string and the notch form together a form-locking and/or force locking connection (See Kohatsu, Figs. 19-20; lace (1910) at least applies force on notch to hold sole and upper together; giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
Regarding claim 36, Kohatsu (as discussed with respect to claims 30 and 34 above) further teaches wherein the sole unit comprises a bottom unit and a thereon arranged top unit, wherein the bottom unit and the top unit are configured such that they together define the notch (See annotated Fig. 20 of Kohatsu above; sole has bottom unit (1903) arranged with top unit (1920) which together form notch).
Regarding claim 37, Kohatsu (as discussed with respect to claims 30, 34, and 36 above) further teaches wherein the top unit comprises a protruding platform and the base unit comprises a recess corresponding to the protruding platform, wherein the protruding platform is inserted into the recess; or wherein the base unit comprises a protruding platform and the top unit comprises a recess corresponding to the protruding platform, wherein the protruding platform is inserted into the recess (See annotated Fig. 20 of Kohatsu above; top unit (1920) forms protruding platform which is inserted into bottom unit (1903); giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
Regarding claim 38, Kohatsu (as discussed with respect to claims 30, 34, and 36-37 above) further teaches wherein the notch extends from the peripheral region up to the protruding platform, and/or wherein the protruding platform defines one or more channel structures extending through the protruding platform and wherein the string is arranged in the one or more channel structures (See annotated Fig. 20 of Kohatsu above; notch extends from peripheral region to protruding platform of top unit (1920); giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
Regarding claim 48, Kohatsu (as discussed with respect to claim 30 above) further teaches wherein the upper and the sole unit are made from different materials (See Kohatsu, Figs. 19-20; upper (1901, 1902) and sole (1920, 1903) can be made from different materials; [0098], [0136]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 39-42 and 45, as best can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu, as applied to claim 30 above, and further in view of US 2019/0116936 to Tinajero et al. (hereinafter, “Tinajero”).
Regarding claim 39, although Kohatsu teaches the presence of holes on the upper and sole for receiving the lace (See Kohatsu, Figs. 19-20), Kohatsu (as discussed with respect to claim 30 above) is silent to wherein the upper comprises a plurality of loops and/or wherein the sole unit comprises a plurality of loops.
However, Tinajero, in a related footwear art, is directed to an article of footwear having a tied connection between an upper and a lower sole structure (See Tinajero, Figs. 1-4; abstract). More specifically, Tinajero teaches wherein the upper comprises a plurality of loops and/or wherein the sole unit comprises a plurality of loops (See Tinajero, Fig. 1; upper (102) has plurality of loops (168) formed in knitted upper fabric for receiving tie structure (108); corresponding lower portion (106) on sole can be formed of knitted material similar to upper (102) and include same loops; [0024], [0031]; giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to replace the upper and lower holes and lace structure of Kohatsu for the knitted upper and lower loops and tie structure disclosed by Tinajero, as the modification amounts to no more than a simple substitution of one known upper and lower tie connection for another with nothing more than the reasonable expectation of one upper and lower tie connection performing just as well as the other to yield predictable results, i.e., tied connection of an upper to a lower sole structure in an article of footwear.
Regarding claim 40, although Kohatsu teaches the presence of holes on the upper and sole for receiving the lace (See Kohatsu, Figs. 19-20), Kohatsu (as discussed with respect to claim 30 above) is silent to wherein the sole unit comprises a rim portion which comprises the plurality of loops.
However, Tinajero, in a related footwear art, is directed to an article of footwear having a tied connection between an upper and a lower sole structure (See Tinajero, Figs. 1-4; abstract). More specifically, Tinajero teaches wherein the sole unit comprises a rim portion which comprises the plurality of loops (See Tinajero, Fig. 1; upper (102) has plurality of loops (168) formed in knitted upper fabric for receiving tie structure (108); corresponding lower portion (106), i.e., a rim portion, on sole can be formed of knitted material similar to upper (102) and include same loops; [0024], [0031]; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to replace the upper and lower holes and lace structure of Kohatsu for the knitted upper and lower loops and tie structure disclosed by Tinajero, as the modification amounts to no more than a simple substitution of one known upper and lower tie connection for another with nothing more than the reasonable expectation of one upper and lower tie connection performing just as well as the other to yield predictable results, i.e., tied connection of an upper to a lower sole structure in an article of footwear.
Regarding claim 41, the modified shoe of Kohatsu (i.e., Kohatsu in view of Tinajero, as discussed with respect to claims 30 and 39 above) further teaches wherein the connection element is a string, which is threaded through at least a portion of the loops of the upper and through at least a portion of the loops of the sole unit (See Tinajero, Fig. 4; tie structure (108) threaded through loops in upper and lower sole as applied in the modified shoe as discussed above).
Regarding claim 42, the modified shoe of Kohatsu (i.e., Kohatsu in view of Tinajero, as discussed with respect to claims 30, 39, and 41 above) further teaches wherein the string is arranged such that it can be removed from the shoe by pulling the string (See Tinajero, Fig. 4; tie structure (108) is capable, as applied in the modified shoe as discussed above, is capable of being removed from the shoe by pulling) thereby preferably removing the string from all loops of the upper and from all loops of the sole unit at once, and/or wherein the string extends through the loops of the upper and the loops of the sole unit without forming interloops (giving importance to the term “preferably” which is being interpreted as meaning “optionally” in the claim, the associated claim limitations do not necessarily need to be present to meet the requirements of the claim; therefore, the prior art meets the limitations of the claim; giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
Regarding claim 45, the modified shoe of Kohatsu (i.e., Kohatsu in view of Tinajero, as discussed with respect to claims 30 and 39 above) further teaches wherein the plurality of the loops of the upper and the plurality of loops of the rim portion are each formed from a yarn (See Tinajero, Fig. 4; loops (168), as applied to both upper and sole in the modified shoe as discussed above, are formed by knitted yarn; [0031]) and wherein the string has thickness which is at least 2x larger than a thickness of the yarn forming the plurality of loops of the upper and the plurality of loops of the rim portion (See Tinajero, Fig. 4; thickness of tie structure (108) is at least two times larger than that of the yarn forming the knitted upper and lower loops of the modified shoe as discussed above; size of individual yarns in knit structure can be seen to be much smaller than half the thickness of tie structure (108)).
Claims 43-44, as best can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Kohatsu in view of Tinajero, as applied to claims 30, 39, and 41 above, and further in view of USPN 8,438,708 to Tuck (hereinafter, “Tuck”).
Regarding claim 43, the modified shoe of Kohatsu (i.e., Kohatsu in view of Tinajero, as discussed with respect to claims 30, 39, and 41 above) further teaches wherein the string comprises two opposite ends of the string (See Kohatsu, Figs. 19-20; lace (1910) has lace ends similar to those shown in the embodiment of Fig. 12).
That said, the modified shoe of Kohatsu is silent to wherein the two opposite ends are arranged in a recess formed by the sole unit and/or the upper.
However, Tuck, in a related footwear art, is directed to a shoe having a lace cover to keep laces tied together (See Tuck, Figs. 1-3; abstract). More specifically, Tuck teaches wherein the two opposite ends are arranged in a recess formed by the sole unit and/or the upper (See Tuck, Figs. 1-3; knot (K) and ears (E) of lace (L) are covered by lace cover (10) which forms a recess between panels of cover on the upper; giving importance to the term “or” in the claim, the prior art meets at least one of the listed alternative limitations and, therefore, meets the limitations of the claim).
It would have been obvious for one of ordinary skill in the art at the time of the effective filing date of the invention to include the lace cover disclosed by Tuck on the modified shoe of Kohatsu to cover the lace ends in order to cover the lace ends and help keep the lace ends tied together when desired (See Tuck, abstract).
Regarding claim 44, the modified shoe of Kohatsu (i.e., Kohatsu in view of Tinajero and Tuck, as discussed with respect to claims 30, 39, 41, and 43 above) further teaches wherein the two ends of the string are attached to the sole unit and/or to the upper by attachment elements, wherein the two ends of the string can be separated from the attachment elements (See Kohatsu, Fig. 19; lace (1910) has lace ends similar to those shown in the embodiment of Fig. 12 which are attached to upper (1901, 1902) via holes in top portion where lace ends are tied together; lace ends can be removed from holes in top portion).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. USPN 5,979,077 to Schenkel; USPN 2,438,711 to Leach et al.; US 2009/0313851 to Spinelli; US 2021/0015202 to Lai et al.; US 2020/0268100 to Bramani; US 2020/0359743 to Bentvelzen et al.; USPN 2,510,236 to Kutcher; and US 2015/0289581 to Sussmann et al. are each directed to articles of footwear with separable uppers and sole structures.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MARCHEWKA whose telephone number is (571) 272-4038. The examiner can normally be reached M-F: 9:00AM-5:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON T OSTRUP can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R MARCHEWKA/Examiner, Art Unit 3732
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