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 .
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 17 and 19 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.
Claims 17 and 19 recite intended uses and do not provide any further structural limitations. It is not clear what structural limitations applicant intends to encompass with such language. The phrase “is packable” is vague, confusing, and indefinite because it is not clear what structural limitations applicant intends to encompass with such language, i.e. what constitutes packable. Claim 19 also relies on unclaimed and undefined element, i.e. a pocket rendering the claim vague and indefinite.
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) 1-9, 11, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by McLellan (2020/0345106).
McLellan shows A stalking shoe comprising:
an upper portion (102) and a sole portion (108) that together define a foot pocket, the foot
pocket configured to surround a user's foot, the upper portion defining a foot opening, the
upper portion including a stretch portion (104) and a reinforcement portion (106 and 660), the reinforcement portion extending about a toe region at a front of the stalking shoe (see figure 1A), the reinforcement portion fortifying the toe region against puncture and tearing and configured to protect
the user's foot (see paragraph [0040] and [0039] which discuss portion 106 being durable and other characteristics/properties), the stretch portion configured to reduce weight of the stalking shoe and to
provide elastic conformance between the upper portion and the user's foot (see paragraph [0041]), the sole portion (108) including a stealth portion (see paragraph [0070] which discusses thin pliable and flexible materials that are considered to inherently provide “stealth” inasmuch as applicant has defined and claimed such), the stealth portion extending about a bottom surface of the stalking shoe (see figure 1A), the stealth portion formed of noise reducing material (the materials listed in paragraph [0070] are considered to be noise reducing inasmuch as applicant has defined and claimed such) as claimed.
In reference to claims 2, 5, 6, 7, 11 and 5, see figure 1A.
In reference to claim 3 see paragraph [0067] which discloses polyester knit.
In reference to claim 4, see paragraphs [0087]-[0088] which discuss breathability.
In reference to claim 7, the materials of the reinforcement portion (see paragraph [0040] and [0039]) are considered to be “configured to improve puncture and tear resistance” inasmuch as applicant has claimed and defined such.
In reference to claim 8, see heel reinforcement (120).
In reference to claim 9, see materials listed in paragraph [0112].
In reference to claim 20, McLellan shows An article of footwear comprising: a stretch portion (104) extending at least partially across a top foot region (see figure 1A), the stretch portion including an elastic material configured to provide conformance between the stretch portion and the top foot region (see paragraph [0041]); a reinforcement portion (106) extending at least partially across the top foot region (see figure 1A), the reinforcement portion connected to the stretch portion (see figure 1A), the reinforcement portion having greater stiffness and tear resistance than the stretch portion (see paragraphs [0039]-[0041]); and a stealth portion (108) extending at least partially about a bottom exterior surface of the article of footwear, the stealth portion including a material with a porous structure (see figure 1A), the stealth portion configured to contact the ground and dampen noise transmission (the materials listed in paragraph [0070] are considered to be noise reducing inasmuch as applicant has defined and claimed such) as claimed.
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over McLellan.
McLellan discloses the claimed invention except for the exact material for the heel reinforcement. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use leather, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over McLellan in view of Walton (2003/0230007).
In reference to claim 12, McLellan shows a shoe substantially as claimed except for a tightening structure. Walton teaches providing a tightening structure (65 and 67) on a low upper to provide additional tightening. It would have been obvious to provide the tightening structure as taught by Walton in the shoe of McLellan to provide additional security in the attachment to the foot.
In reference to claim 13, McLellan shows a stalking shoe comprising:
an upper portion (102) configured to surround a user's foot, the upper portion including
a stretch portion (104) including an elastic material configured to conform to the user's foot (see paragraph [0041]), and a reinforcement portion (106) having greater durability and tear resistance than the stretch portion (see paragraph [0040] and [0039] which discuss portion 106 being durable and other characteristics/properties); and
a sole (108) portion connected to the upper portion, the sole portion extending about a
bottom of the stalking shoe (see figure 1A), the sole portion including a stealth portion configured to
dampen noise and vibrations during movement (the materials listed in paragraph [0070] are considered to be noise reducing inasmuch as applicant has defined and claimed such) substantially as claimed except for the stealth portion being made from felt. Walton teaches the use of felt (see paragraph [0030]) for a sole. It would have been obvious to use felt as taught by Walton in the shoe of McLellan to provide traction in water/wet areas.
In reference to claim 14, see McLellan paragraph [0090].
In reference to claim 15, see Walton elements 39.
In reference to claim 16, It would have been obvious to one having ordinary skill in the art at the time the invention was made to space the grip elements as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In reference to claims 17 and 19, the shoe of McLellan as modified by Walton is considered to inherently be capable of the recited functions.
In reference to claim 18, see element 660 of McLellan and 106 in Figure 1A.
Claim(s) 1 and 12-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walton (2003/0230007) in view of McLellan.
In reference to claims 1 and 12, Walton shows a shoe comprising an upper portion (13) and a sole portion (29) and a tightening structure (65 and 67) substantially as claimed except for the exact upper. McLellan teaches forming an upper comprising an upper portion including a stretch portion (104) and a reinforcement portion (106 and 660), the reinforcement portion extending about a toe region at a front of the stalking shoe (see figure 1A), the reinforcement portion fortifying the toe region against puncture and tearing and configured to protect the user's foot (see paragraph [0040] and [0039] which discuss portion 106 being durable and other characteristics/properties), the stretch portion configured to reduce weight of the stalking shoe and to provide elastic conformance between the upper portion and the user's foot (see paragraph [0041]). It would have been obvious to form the upper as taught by McLellan in the shoe of Walton to provide a tighter and more secure fit of the upper onto the wearers foot.
In reference to claim 13, Walton shows a shoe A stalking shoe comprising:
an upper portion (13) configured to surround a user's foot,; and
a sole (29) portion connected to the upper portion, the sole portion extending about a
bottom of the stalking shoe (see figure 1), the sole portion including a stealth portion configured to
dampen noise and vibrations during movement, the stealth portion being made from felt (see paragraph [0030]) substantially as claimed except for the exact upper. McLellan teaches forming an upper comprising an upper portion (102) configured to surround a user's foot, the upper portion including
a stretch portion (104) including an elastic material configured to conform to the user's foot (see paragraph [0041]), and a reinforcement portion (106) having greater durability and tear resistance than the stretch portion (see paragraph [0040] and [0039] which discuss portion 106 being durable and other characteristics/properties). It would have been obvious to form the upper as taught by McLellan in the shoe of Walton to provide a tighter and more secure fit of the upper onto the wearers foot.
In reference to claim 14, see McLellan paragraph [0090].
In reference to claim 15, see Walton elements 39.
In reference to claim 16, It would have been obvious to one having ordinary skill in the art at the time the invention was made to space the grip elements as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In reference to claims 17 and 19, the shoe of Walton as modified by McLellan is considered to inherently be capable of the recited functions.
In reference to claim 18, see element 660 of McLellan and 106 in Figure 1A.
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