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 .
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not provide proper antecedent basis for the claim limitation “adaptive engine”. For purposes of examination the examiner will trat “adaptive engine to mean - -tensioning device - -.
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 1-12 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.
The limitation “adaptive engine” is vague and indefinite. It is not clear what structure is encompassed by such language, since the specification does not define or described such limitation. For purposes of examination the examiner will treat “adaptive engine to mean - -tensioning device - -.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Bernier et al. (US 5,839,210 herein after Bernier) in view of Liu (Pub. No. US 2003/0150135).
With respect to claim 1, Bernier discloses an article of footwear (shoe, see figures 1-20), comprising:
an upper (outer cover 14) forming a throat opening (opening where arrow 10 is pointing to, in figure 2);
a sole structure (the outer cover is more than just an overlay of cloth, leather, or some other material, but incorporates a heel, sole, sides and top portions of the shoe which define the qualities of flexure, support, and gripping capacity that are inherent in quality shoes);
a tensioning device/adaptive engine (retractor 28) including a reel member (pulley 66) and a motor (pulley 74), the tensioning device (retractor 28, see figures 4-11) disposed in at least one of the upper and the sole structure, the tensioning device/adaptive engine configured to change a property of the article of footwear (Referring to FIGS. 4-11, the retractor is changed from its uncharged state to its charged state by pulling on one of the straps, preferably the upper of the three lower straps 18. This action pulls on one of the cables 26, namely the cable connected to the upper of the lower straps. The bunched cables, 30 and 26, wrap around the direction-reversing pulley 74 and are connected to the slide 94 at the slide's rear end); and
a guide member (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing), secured to the upper, configured to guide the tensioning member (cable 26, see figures 3-11); and
a plurality of tightening members (cinch straps 18, which extend across an instep opening 19 defined by the inner casing and are connected at both ends to the inner casing, see figure 1-2), secured to the guide member (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing) and to the upper (outer cover 14), each tightening member (cinch strap 18) of the plurality of tightening members (18) extending across various portions of the throat of the upper (see figures 1-2);
wherein the tensioning device/adaptive engine transmits tension to the tightening members (cinch straps 18) by applying force to the reel (the catch 104 is best illustrated in FIG. 7. The ring is pulled by the user to release the retractor to pull the straps tightly against the user's foot in the shoe). The retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing) as the tensioning member (cable 26) is wound around the reel member Pulley 66. Liu discloses the motor unit is mounted in the housing, is coupled to the spool, and is operable so as to drive rotation of the spool in the housing to wind the pull string on the spool for pulling the second fastener toward the first fastener in order to engage the fastener engaging portion with the fastener engaging section, thereby resulting in automated tightening of the shoe.
Bernier does not appear to disclose the motor to be powered by a power source. Liu discloses a tensioning member for an article of footwear, where a motor unit is mounted in the housing 41 and includes a motor 42, an electric power source 43, such as a battery unit, coupled to and supplying electric power to the motor 42, and a speed reduction gearing 44 for coupling the motor 42 to the spool 45. Liu discloses the motor unit is mounted in the housing, is coupled to the spool, and is operable so as to drive rotation of the spool in the housing to wind the pull string on the spool for pulling the second fastener toward the first fastener in order to engage the fastener engaging portion with the fastener engaging section, thereby resulting in automated tightening of the shoe. Therefore, it would have been obvious to one of ordinary skill in the art to add a power source to the footwear of Bernier as taught by Liu for powering the motor, since it has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art. In re Venner, 120 USPQ 192 (1958).
With respect to claim 2, Bernier/Liu discloses wherein the guide member (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing) is an elongate guide member having a first end and a second end (see figure 1), wherein a first tightening member (cinch strap 18) of the plurality of tightening members is secured proximate the first end and a second tightening member of the plurality of tightening members is secured proximate the second end.
With respect to claims 3-4 Bernier/Liu discloses wherein the guide member (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing) comprises a channel (passageways 68; 70; 72, see figure 9), configured to guide the tensioning member (cable 26), positioned between, at least in part, the first tightening member (cinch strap 18) and the second tightening member (cinch strap 18); wherein the channel is a curved channel (passageways 68; 70; 72, see figure 9, where it shows passageway 68 having a curvature).
With respect to claim 5 and the elongated guide member being a first and a second elongated guide member instead of one elongated guide member, it would have been obvious to one of ordinary skill in the art to make the elongated guide member of Bernier/Liu in two separate members, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Bernier/Liu discloses wherein the elongate guide member is a first elongate guide member (made in two separate members as modified above), and further comprising a second elongate guide member (made in two separate members as modified above) having a first end and a second end, wherein a third tightening member of the plurality of tightening members is secured proximate the first end and a fourth tightening member (as duplicated and added above) of the plurality of tightening members is secured proximate the second end.
With respect to claim 6, it with have been obvious to one of ordinary skill in the art to have the lower guide member of Bernier/Liu comprise a plurality of channels, since it has been held that mere duplication and rearranging of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8 and In re Einstein, 8 USPQ 167.
With respect to claim 7, Bernier/Liu discloses an article of footwear (shoe, see figures 1-2), comprising:
an upper (outer cover 14) forming a throat opening (opening where arrow 10 is pointing to in figure 2);
a guide member (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing), secured to the upper (outer cover 14), configured to guide a tensioning member (cable 26; 30); and
a plurality of tightening members (cinch strap 18), secured to the guide member and to the upper (see figures 1-14), each tightening member (cinch strap 18) of the plurality of tightening members extending across various portions of the throat of the upper (cinch straps 18, which extend across an instep opening 19 defined by the inner casing and are connected at both ends to the inner casing, see figure 1-2);
a tensioning device/adaptive engine (retractor 28) including a reel member (pulley 66) and a motor (a motor powered by power source, as taught and modified by Liu), the tensioning device/adaptive engine configured transmit tension to the tightening members by applying force to the guide member from the reel member (Referring to FIGS. 4-11, the retractor is changed from its uncharged state to its charged state by pulling on one of the straps, preferably the upper of the three lower straps 18. This action pulls on one of the cables 26, namely the cable connected to the upper of the lower straps. The bunched cables, 30 and 26, wrap around the direction-reversing power motor and are connected to the slide 94 at the slide's rear end; Liu discloses the motor unit is mounted in the housing, is coupled to the spool, and is operable so as to drive rotation of the spool in the housing to wind the pull string on the spool for pulling the second fastener toward the first fastener in order to engage the fastener engaging portion with the fastener engaging section, thereby resulting in automated tightening of the shoe); and
wherein the guide member is an elongate guide member having a first end and a second end (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing, see figures 4-11), wherein a first tightening member (cinch strap 18) of the plurality of tightening members is secured proximate the first end and a second tightening member (cinch strap 18) of the plurality of tightening members is secured proximate the second end;
wherein the elongated guide member can be a first guide member and a second guide member, since it would have been obvious to one of ordinary skill in the art to make the elongated guide member of Bernier/Liu in two separate members, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Bernier/Liu discloses wherein the elongate guide member is a first elongate guide member (made in two separate members as modified above), and further comprising a second elongate guide member (made in two separate members as modified above) having a first end and a second end, wherein a third tightening member of the plurality of tightening members is secured proximate the first end and a fourth tightening member (as duplicated and added above) of the plurality of tightening members is secured proximate the second end;
wherein the lower guide member can comprise a plurality of channels (passageways 68, 70, 72, see figure 9) configured to guide the tensioning member (cable 26), positioned between, at least in part, the first tightening member (18) and the second tightening member (18); and wherein the channel is a curved channel (passageways 68, 70, 72, see figure 9 where it shows the passageway 68 having a curvature).
Bernier/Liu as modified above discloses all the limitations of the claims except for a fourth tightening member. Bernier discloses three cinch straps 18, in the illustrated embodiment, however Bernier discloses the foregoing description and drawings were given for illustrative purposes only, it being understood that the invention is not limited to the embodiments disclosed, but is intended to embrace any and all alternatives, equivalents, modifications and rearrangements of elements. Therefore, it would have been obvious to one of ordinary skill in the art to provide an additional fourth tightening member to the article of footwear of Bernier/Liu, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8.
With respect to claims 8 and 9, Bernier/Liu discloses wherein the lower guide member can comprise a plurality of channels (passageways 68, 70, 72, see figure 9) configured to guide the tensioning member (cable 26), positioned between, at least in part, the first tightening member (18) and the second tightening member (18) ; and wherein the channel is a curved channel (passageways 68, 70, 72, see figure 9 where it shows the passageway 68 having a curvature).
With respect to claim 10, Bernie/Liu discloses an article of footwear (see figures 1-20), comprising:
an upper (outer cover) forming a throat opening (opening where arrow 10 is pointing to in figure 2);
a sole structure (the outer cover is more than just an overlay of cloth, leather, or some other material, but incorporates a heel, sole, sides and top portions of the shoe which define the qualities of flexure, support, and gripping capacity that are inherent in quality shoes);
a tensioning device/adaptive engine (retractor 28) including a reel member (pully 66) and a motor (a motor powered by power source, as taught and modified by Liu), the tensioning device/adaptive engine disposed in at least one of the upper and the sole structure, the tensioning device/adaptive engine configured to change a property of the article of footwear (the catch 104 is best illustrated in FIG. 7. The ring is pulled by the user to release the retractor to pull the straps tightly against the user's foot in the shoe; Liu discloses the motor unit is mounted in the housing, is coupled to the spool, and is operable so as to drive rotation of the spool in the housing to wind the pull string on the spool for pulling the second fastener toward the first fastener in order to engage the fastener engaging portion with the fastener engaging section, thereby resulting in automated tightening of the shoe);
a first elongate guide member and a second elongate guide member, each secured to the upper; since it would have been obvious to one of ordinary skill in the art to make the elongated guide member of Bernier/Liu in two separate members, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179;
a plurality of tightening members (cinch straps 18), secured to the first and second elongate guide members and to the upper, each tightening member of the plurality of tightening members extending across various portions of the throat of the upper (cinch straps 18, which extend across an instep opening 19 defined by the inner casing and are connected at both ends to the inner casing, see figure 1-2); and
a lower guide member positioned between the first and second elongate guide members and the sole structure (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing);
wherein the first elongate guide member has a first end and a second end, wherein a first tightening member of the plurality of tightening members is secured proximate the first end and a second tightening member of the plurality of tightening members is secured proximate the second end (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing); and
wherein the second elongate guide member has a first end and a second end, wherein a third tightening member of the plurality of tightening members is secured proximate the first end and a fourth tightening member of the plurality of tightening members is secured proximate the second end (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing).
With respect to claims 11-12, Bernier/Liu discloses wherein the guide member (the retractor 28 includes a cable routing housing having an inner part 62 and an outer part 64, with the two parts fitting together to form the housing) comprises a channel (passageways 68; 70; 72, see figure 9), configured to guide the tensioning member (cable 26), positioned between, at least in part, the first tightening member (cinch strap 18) and the second tightening member (cinch strap 18); wherein the channel is a curved channel (passageways 68; 70; 72, see figure 9, where it shows passageway 68 having a curvature).
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,201,212. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to an article of footwear, comprising: an upper forming a throat opening; a sole structure; a tensioning device/ adaptive engine including a reel member and a motor, the tensioning device/adaptive engine disposed in at least one of the upper and the sole structure, the adaptive engine configured to change a property of the article of footwear; and a guide member secured to the upper; and a plurality of tightening members, secured to the guide member and to the upper, each tightening member of the plurality of tightening members extending across various portions of the throat of the upper; wherein the tensioning device/adaptive engine transmits tension to the tightening members by applying force to the reel member.
The claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter of a tensioning system including a guide assembly that is claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,324,284. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to an article of footwear, comprising: an upper forming a throat opening; a sole structure; a tensioning device/ adaptive engine including a reel member and a motor, the tensioning device/adaptive engine disposed in at least one of the upper and the sole structure, the adaptive engine configured to change a property of the article of footwear; and a guide member secured to the upper; and a plurality of tightening members, secured to the guide member and to the upper, each tightening member of the plurality of tightening members extending across various portions of the throat of the upper; wherein the tensioning device/adaptive engine transmits tension to the tightening members by applying force to the reel member.
The claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter of a tensioning system including a guide assembly that is claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,268,282. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to an article of footwear, comprising: an upper forming a throat opening; a sole structure; a tensioning device/ adaptive engine including a reel member and a motor, the tensioning device/adaptive engine disposed in at least one of the upper and the sole structure, the adaptive engine configured to change a property of the article of footwear; and a guide member secured to the upper; and a plurality of tightening members, secured to the guide member and to the upper, each tightening member of the plurality of tightening members extending across various portions of the throat of the upper; wherein the tensioning device/adaptive engine transmits tension to the tightening members by applying force to the reel member.
The claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. The subject matter of a tensioning system including a guide assembly that is claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See MPEP § 804.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILA M MOHANDESI whose telephone number is (571)272-4558. The examiner can normally be reached on M-Thurs. 7:00-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J Tompkins can be reached on 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JILA M MOHANDESI/Primary Examiner, Art Unit 3732
JMM
01/20/2026