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 III (shoe as shown in figures 3A-3D) in the reply filed on 11/23/2025 is acknowledged.
Claims 8 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/23/2025.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
Claim Rejections - 35 USC § 112
Claims 1-7 and 9-16 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 pre-AIA the applicant regards as the invention.
In claim 1 and 9, the phrases “wherein the stress results from contact between the at least one fulcrum and the rear strap or the upper” (claim 1) and “wherein the stress results from contact between the at least one fulcrum of the plurality of fulcrums and the rear strap or the upper” (claim 9) is inaccurate and indefinite. The stress doesn’t result from contact between the fulcrum and the upper in any of the embodiments. The stress is the result of the contact between the fulcrum and the rear strap only. Therefore, “or the upper” should be deleted and then the claim would be accurate and therefore definite.
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) 1,2,9 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0000178 (Pratt ‘178).
Regarding claims 1,2,9 and 10, Pratt ‘178 discloses a rapid-entry shoe comprising:
a sole portion (see sole (i.e. bottom portion of shoe) shown in the figures);
an upper coupled to the sole portion (see upper (i.e. upper portion of shoe) shown in the figures);
a rear strap [arm 100 and/or deformable element 115); a shoe can have two arms (see ¶0022)] coupled at a coupling (105) to opposing sides of the upper;
a plurality of fulcrums (each arm having a fulcrum 101 (see last sentence of ¶0024) coupled to opposing sides of the upper; and wherein the rapid-entry shoe has an uncollapsed configuration (e.g. see figure 1A);
wherein the rapid-entry shoe has a collapsed configuration (e.g. see figure 1B) to facilitate donning and doffing of the rapid-entry shoe;
wherein, in the collapsed configuration (figure 1B), the rear strap is moved toward the sole portion and deflected by at least one fulcrum of the plurality of fulcrums to create a stress in the rear strap (deformable arm 115 deforms as shown in figures 1A,1B and creates a stress);
wherein the stress results from contact between the at least one fulcrum of the plurality of fulcrums and the rear strap or the upper; and
wherein the rapid-entry shoe is biased by the stress toward the uncollapsed configuration (see figure 1A and at least ¶0021-0026 and 0034). [Bold face represents additional language added to claim 9].
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 5,13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0000178 (Pratt ‘178) in view of US 9820527 (Pratt ‘527).
Regarding claims 5,13 and 14, Pratt ‘178 discloses a rapid-entry shoe (see the rejection above for details) except for:
a u-shaped rear stabilizer coupled to the rear strap, the rear stabilizer configured to prevent inward deflection of the rear strap when the rapid-entry shoe is in the collapsed configuration (claims 5 and 13); and
the rear stabilizer comprises a mechanical property different from that of an adjacent portion of the rear strap, the mechanical property being one or more of material, cross-section, thickness, geometry, twisting and density (claim 14).
Pratt ‘527 teaches a u-shaped rear stabilizer (140,142,144,146) coupled to the rear strap (deformable element 130), the rear stabilizer configured to prevent inward deflection of the rear strap when the rapid-entry shoe is in the collapsed configuration (at least see col. 10, line 50 to col. 11, line 6) and the rear stabilizer comprises a mechanical property different from that of an adjacent portion of the rear strap, the mechanical property being one or more of material, cross-section, thickness, geometry, twisting and density (at least see col. 11, lines 7-18 and see figs. 1B,3C and 4A-4C). Additionally, see ¶0034 of Pratt ‘178 which teaches the element 115 as described in US Patent 9,820,527 is incorporated therein by reference.
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 shoe as taught by Pratt ‘178 with the rear strap comprising a u-shaped rear stabilizer, wherein the stabilizer comprises a mechanical property different from that of an adjacent portion of the rear strap, the mechanical property being one or more of material, cross-section, thickness, geometry, twisting and density, as taught by Pratt ‘527, to prevent inward deflection of the rear strap.
Claim(s) 6-7 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as applied to claims 1 and 9, respectively above, and further in view of US 2020/0253333 (Kilgore).
Kilgore teaches a rapid-entry shoe having a device for enabling relatively easy foot entry and removal (at least see first sentence of ¶0033 and 0002) wherein the device (10) includes a rear strap (strut 12A (arms 24,26) having an elongated lip (72; see figures 19-25) having a perimeter that is greater than a perimeter of a rear portion of the upper and the sole (see figure 25 showing the elongated tip extending well beyond the perimeter of the upper and the sole). 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 rear strap of the rapid-entry shoe as taught by the combination above to have an elongated lip so the perimeter is greater than a perimeter of the sole and the upper, as taught by Kilgore, to provide the benefit of a broader expanse on which to set the foot during depression of the device (see last sentence of ¶0055 of Kilgore).
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.
13. Claims 1-7 and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,268,272. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are merely broader than the patent claim. In essence, once the applicant has received a patent for a species or a more specific embodiment, he is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. This is because the more specific “anticipates” the broader. Drawing a helpful analogy, if you have a broad claim to examine, and you find a reference, which discloses every element of the claim, you have a reference that anticipates. The same is true in an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. That is, in a nutshell, the rationale for why the two claims are not patentably distinct. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Allowable Subject Matter
Upon filing a proper terminal disclaimer, claims 3-4 and 11-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, by the addition of suitably specific language, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Note: withdrawn claims 8 and 17 would have to be canceled since these features are shown in non-elected species II as shown in figures 2A-2B which do not have one of a slot and a lateral flange to prevent the rear strap from rotating beyond the fulcrum as defined in claim 11 and 12. The prior art fails to teach or suggest the combination of the features.
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 571-272-4888. 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