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 .
This is in response to Applicant’s amendment in which claims 1 and 18 have been amended, claims 2, 6, and 20 have been canceled, and claims 1-5 and 7-19 remain pending.
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 8, 12, and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spier (US 3,807,062), herein Spier ‘062.
Regarding claim 1, Spier ‘062 discloses a skate boot comprising: a boot body (22) comprising (i) a sole (32) extending from a heel end of the boot towards a toe end of the boot to receive a foot of a user thereon, (ii) two side walls (33) extending upwardly from the sole at medial and lateral sides of the boot respectively to define a lower portion of a tongue opening of the boot between respective upper edges of the side walls, (iii) a rear wall (34) extending upwardly from the sole between the side walls at the heel end of the boot, and (iv) an upper cuff (35) having a rear portion above the rear wall and side portions extending forwardly from the rear portion towards respective front edges of the upper cuff to define an upper portion of the tongue opening between the front edges, (v) wherein the sole, the side walls, the rear wall, and the upper cuff collectively define a unitary molded structure formed of a plastic material (column 2, lines 58-64) having a first prescribed hardness; and a cuff insert (upper cuff portion of 21, which extends only within the cuff area) at least partially embedded within the upper cuff of the boot body; wherein the cuff insert includes only a rear section (26) at the rear portion of the upper cuff of the boot body and two side sections (27) extending forwardly from the rear section at the side portions of the upper cuff of the boot body; and wherein the cuff insert comprises a unitary structure formed of a second material (column 2, line 65-column 3, line 4) having a second prescribed hardness (column 2, line 55-column 3, line 57; Fig. 1-4).
Spier ‘062 does not disclose the specific hardness of the second material, but does disclose that it is formed of a relatively rigid material to impart strength, stiffness, and rigidity (column 2, lines 65-67). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the second prescribed hardness of the second material of the cuff insert greater than 70 on the Shore D hardness scale, in order to provide sufficient strength, stiffness, and rigidity to the cuff insert. 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.
Spier ‘062 does not disclose the specific hardness of the first material, but does disclose that the first material may be a polyurethane or thermoplastic polyester elastomer (such as Dupont™ Hytrel®, which may have a Shore D hardness between 50 and 70: column 2, lines 60-62). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first prescribed hardness of the first material of the boot body between 50 and 70 on the Shore D hardness scale, in order to provide sufficient flexibility to the boot body. 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.
Regarding claim 8, Spier ‘062 discloses that the plastic material of the boot body substantially fully spans an exterior side of the cuff insert (column 3m lines 5-7; Fig. 1-4).
Regarding claim 12, Spier ‘062 discloses that the cuff insert is at least partially exposed and uncovered by the plastic material of the boot body at an interior side of the boot body (Fig. 4).
Regarding claim 14, Spier ‘062 discloses a plurality of apertures (29) extending through the cuff insert between an interior side and an exterior side of the boot body, the plurality of apertures being occupied by the plastic material of the boot body (column 3, lines 22-30, 51-53; Fig. 2, 4).
Regarding claim 15, Spier ‘062 discloses that at least some of the apertures have an undercut area (truncated shape) at the interior side of the boot body such that a boundary edge of the aperture is enlarged at the interior side of the boot body relative to the exterior side of the boot body (column 3, lines 23-26; Fig. 4).
Regarding claim 16, Spier ‘062 discloses that the side sections of the cuff insert terminate at respective forward edges, the forward edges being spaced rearwardly of the front edges of the upper cuff of the boot body respectively (Fig. 2).
Regarding claim 17, Spier ‘062 discloses a plurality of lace openings (37) formed in the boot body along the front edges of the upper cuff of the boot body, the forward edges of the side sections of the cuff insert being rearward of the lace openings (Fig. 2).
Claim(s) 1, 8-12, 14, 16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spier (US 3,718,994), herein Spier ‘994.
Regarding claim 1, Spier ‘994 discloses a skate boot comprising: a boot body (12) comprising (i) a sole (31) extending from a heel end of the boot towards a toe end of the boot to receive a foot of a user thereon, (ii) two side walls (35) extending upwardly from the sole at medial and lateral sides of the boot respectively to define a lower portion of a tongue opening of the boot between respective upper edges of the side walls, (iii) a rear wall (33) extending upwardly from the sole between the side walls at the heel end of the boot, and (iv) an upper cuff (36) having a rear portion above the rear wall and side portions extending forwardly from the rear portion towards respective front edges of the upper cuff to define an upper portion of the tongue opening between the front edges, (v) wherein the sole, the side walls, the rear wall, and the upper cuff collectively define a unitary molded structure formed of a plastic material (column 3, lines 39-40) having a first prescribed hardness; and a cuff insert (upper cuff portion of 13, which extends only within the cuff area) at least partially embedded within the upper cuff of the boot body; wherein the cuff insert includes only a rear section (20) at the rear portion of the upper cuff of the boot body and two side sections (21) extending forwardly from the rear section at the side portions of the upper cuff of the boot body; and wherein the cuff insert comprises a unitary structure formed of a second material (column 3, lines 9-16) having a second prescribed hardness (column 3, line 1-column 4, line 4; Fig. 1-5).
Spier ‘994 does not disclose the specific hardness of the second material, but does disclose that it is formed of a material having good rigidity and stiffness (column 3, lines 8-15). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the second prescribed hardness of the second material of the cuff insert greater than 70 on the Shore D hardness scale, in order to provide sufficient strength, stiffness, and rigidity to the cuff insert. 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.
Spier ‘994 does not disclose the specific hardness of the first material, but does disclose that the first material may a plastic material having good flexibility and heigh abrasion resistance (such as polyurethane: column 3, lines 38-40). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first prescribed hardness of the first material of the boot body between 50 and 70 on the Shore D hardness scale, in order to provide sufficient flexibility to the boot body. 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.
Regarding claim 8, Spier ‘994 discloses that the plastic material of the boot body substantially fully spans an exterior side of the cuff insert (column 4, lines 1-4; Fig. 1, 2).
Regarding claim 9, Spier ‘994 discloses a plurality of spacers (23) formed on the exterior side of the cuff insert to protrude outwardly towards an exterior of the skate boot by a distance corresponding to a thickness of the plastic material of the boot body that spans the exterior side of the cuff insert (column 3, lines 61-67; Fig. 4, 5).
Regarding claim 10, Spier ‘994 discloses that the spacers are situated at spaced apart locations along both side sections of the cuff insert and on the rear section of the cuff insert (Fig. 3, 5).
Regarding claim 11, Spier ‘994 discloses that the spacers are situated in proximity to a boundary edge (such as the upper rear edge) of the cuff insert (Fig. 3).
Regarding claim 12, Spier ‘994 discloses that the cuff insert is at least partially exposed and uncovered by the plastic material of the boot body at an interior side of the boot body (Fig. 4).
Regarding claim 14, Spier ‘994 discloses a plurality of apertures (24) extending through the cuff insert between an interior side and an exterior side of the boot body, the plurality of apertures being occupied by the plastic material of the boot body (column 3, lines 56-61; Fig. 3, 4).
Regarding claim 16, Spier ‘994 discloses that the side sections of the cuff insert terminate at respective forward edges, the forward edges being spaced rearwardly of the front edges of the upper cuff of the boot body respectively (Fig. 4).
Regarding claim 19, Spier ‘994 discloses that an upper edge of the cuff insert is located along a corresponding upper edge of the boot body (Fig. 4).
Claim(s) 1, 3, 12-14, 16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trinkaus et al. (US 2012/0144703), herein Trinkaus, in view of Spier (US 3,718,994), herein Spier ‘994.
Regarding claim 1, Trinkaus discloses a skate boot comprising: a boot body (8) comprising (i) a sole extending from a heel end of the boot towards a toe end of the boot to receive a foot of a user thereon, (ii) two side walls extending upwardly from the sole at medial and lateral sides of the boot respectively, (iii) a rear wall extending upwardly from the sole between the side walls at the heel end of the boot, and (iv) an upper cuff having a rear portion above the rear wall and side portions extending forwardly from the rear portion towards respective front edges of the upper cuff (Fig. 4, 5), (v) wherein the sole, the side walls, the rear wall, and the upper cuff collectively define a unitary molded structure formed of a plastic material (paragraph 0037, 0038) having a first prescribed hardness; and a cuff insert (upper cuff portion of 2, 3, which extends only within the cuff area) at least partially embedded within the upper cuff of the boot body; wherein the cuff insert includes only a rear section at the rear portion of the upper cuff of the boot body and two side sections extending forwardly from the rear section at the side portions of the upper cuff of the boot body (Fig. 2, 4); and wherein the cuff insert comprises a unitary structure formed of a second material (paragraph 0040) having a second prescribed hardness (paragraphs 0035-0040, 0044-0045; Fig. 1-6).
Trinkaus does not disclose a tongue opening of the boot between respective upper edges of the side walls and upper cuff. Spier ‘994 teaches that a reinforced plastic sport boot may include a tongue opening of the boot between respective upper edges of the side walls and upper cuff (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a tongue opening, as taught by Spier ‘994, to the boot of Trinkaus, as this would be a simple substitution of one type of sport boot opening for another, with the predictable result of providing a boot which may be easily entered and exited, and closed with a buckle system.
Trinkaus does not disclose the specific hardness of the second material, but does disclose that it is formed of a material having good rigidity and stiffness (paragraph 0037, 0040). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the second prescribed hardness of the second material of the cuff insert greater than 70 on the Shore D hardness scale, in order to provide sufficient strength, stiffness, and rigidity to the cuff insert. 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.
Trinkaus does not disclose the specific hardness of the first material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first prescribed hardness of the first material of the boot body between 50 and 70 on the Shore D hardness scale, in order to provide sufficient flexibility to the boot body. 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.
Regarding claim 3, Trinkaus discloses that the second material of the cuff insert is a fibre reinforced composite material (paragraph 0040).
Regarding claim 12, Trinkaus discloses that the cuff insert is at least partially exposed and uncovered by the plastic material of the boot body at an interior side of the boot body (Fig. 6).
Regarding claim 13, Trinkaus discloses at least one flange portion (19) formed at a bottom boundary of the cuff insert at a location spaced outwardly from an interior surface of the cuff insert so as to receive a portion of the plastic material of the boot body overlapping an interior of the flange portion at the interior side of the boot body (paragraph 0046; Fig. 1, 5).
Regarding claim 14, Trinkaus discloses a plurality of apertures (16) extending through the cuff insert between an interior side and an exterior side of the boot body, the plurality of apertures being occupied by the plastic material of the boot body (paragraph 0044; Fig. 1, 6).
Regarding claim 16, Trinkaus discloses that the side sections of the cuff insert terminate at respective forward edges, the forward edges being spaced rearwardly of the front edges of the upper cuff of the boot body respectively (Fig. 4).
Regarding claim 18, Trinkaus discloses that the side sections of the cuff insert terminate of respective forward edges (14), the forward edges being tapered and reduced in thickness relative to a remainder of the cuff insert (Fig. 2, 6).
Regarding claim 19, Trinkaus discloses that an upper edge of the cuff insert is located along a corresponding upper edge of the boot body (Fig. 4, 5).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trinkaus and Spier ‘994, as applied to claim 1, further in view of Reuss et al. (US 6,557,865), herein Reuss.
Regarding claim 4, Trinkaus discloses that the cuff insert is formed of a plastic (paragraph 0040), but does not specifically disclose polycarbonate. Reuss teaches that a rigid plastic material used for a sport boot may be polycarbonate (column 5, lines 43-44). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the second material of the cuff insert a polycarbonate, as taught by Reuss, in order to user a material well known for use in sports boots which is rigid. 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.
Regarding claim 5, Trinkaus discloses that the plastic is reinforced with glass fibres (paragraph 0040).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spier ‘062, as applied to claim 1, in view of Wittmann (US 5,667,737).
Regarding claim 7, Spier ‘062 discloses that the boot body may be made of a variety of different plastic materials (column 2, lines 58-62), but does not specifically disclose polypropylene. Wittmann teaches that a plastic boot body may be formed of polypropylene (column 5, lines 64-65). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first material of the boot body a polypropylene, as taught by Wittman, in order to user a material well known for use in sports boots which can be injection molded. 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.
Response to Arguments
Applicant's arguments filed 04/28/2026 have been fully considered but they are not persuasive.
Applicant argues that the cuff insert of the current claims only includes a rear section at a rear portion of the upper cuff and two side sections extending forwardly from the rear section, while the inner shell 21 of Spier ‘062 encases a much larger portion of the foot. However, as defined in the current 35 USC 103 rejection (see above), the cuff insert is defined as only the upper cuff portion of inner shell 21, not the entirety of the inner shell. The cuff insert therefore claims only includes a rear section at a rear portion of the upper cuff and two side sections extending forwardly from the rear section. In response to Applicant's argument that Spier ‘062 includes additional structure not required by Applicant's invention, it must be noted that Spier ‘062 discloses the invention as claimed. The fact that it discloses additional structure not claimed is irrelevant.
Applicant argues that the boot body of Spier ‘062 is “a generally flexible plastic material,” which is different from the claimed boot body having a Shore D hardness between 50-70. However, one of the materials disclosed as “especially suitable” for the boot body is Dupont™ Hytrel®, which may have a Shore D hardness between 50 and 70 (see attached Dupont™ Hytrel® brochure, especially page 2 “High Performance and Flexibility”). Therefore, the boot body of Spier ‘062 may be made of material which is both flexible, and has a Shore D hardness between 50 and 70.
Applicant argues that Spier ‘994 and Trinkaus are directed to a ski boot, while Applicant’s is a skate boot. However, inasmuch as Applicant has defined “skate boot” within the claims, the boot of Spier ‘994 or Trinkaus is a skate boot. The boots are capable of being used as a skate boot, and Spier ‘994 and Trinkaus each disclose or teach all of the limitations of claim 1, as seen above.
Applicant argues that the cuff insert of the current claims only includes a rear section at a rear portion of the upper cuff and two side sections extending forwardly from the rear section, while the inner shell 13 of Spier ‘994 encases a much larger portion of the foot. However, as defined in the current 35 USC 103 rejection (see above), the cuff insert is defined as only the upper cuff portion of inner shell 13, not the entirety of the inner shell. The cuff insert therefore claims only includes a rear section at a rear portion of the upper cuff and two side sections extending forwardly from the rear section. In response to Applicant's argument that Spier ‘994 includes additional structure not required by Applicant's invention, it must be noted that Spier ‘994 discloses the invention as claimed. The fact that it discloses additional structure not claimed is irrelevant.
Applicant argues that the boot body of Spier ‘994 is “a generally flexible plastic material having good flexibility,” which is different from the claimed boot body having a Shore D hardness between 50-70. However, a material having a Shore D hardness between 50-70 may also be a flexible material, such as a thermoplastic polyester elastomer like Dupont™ Hytrel® (see attached Dupont™ Hytrel® brochure, especially page 2 “High Performance and Flexibility”). Therefore, the boot body of Spier ‘994 may be made of material which is both flexible, and has a Shore D hardness between 50 and 70.
Applicant argues that elements 2, 3 of Trinkaus are located at the heel area, and nowhere does Trinkaus suggest providing the support at a completely different area of the body. However, the reinforcing elements 2, 3 extend above the ankle into the cuff portion of the boot, as clearly seen in Fig. 3. Therefore, the upper portion of reinforcing elements 2, 3 does form a cuff insert, as defined in the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M PRANGE whose telephone number is (571)270-5280. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoa Huynh can be reached at (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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732
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