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 Group I, claims 1-19, in the reply filed on 12/5/2025 is acknowledged.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/5/2025.
Claim Objections
Claim 18 is objected to because of the following informalities: Claim 18 recites the limitation “terminates of respective forward edges” in line 2 (emphasis added for clarity). It appears that this limitation should read -- terminates at respective forward edges--. Appropriate correction is required.
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 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) 1, 2, 6, 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 (21, which extends within the cuff area) at least partially embedded within the upper cuff of the boot body; wherein the cuff insert includes 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 discloses that the boot is formed of a flexible plastic, and the cuff is formed of a relatively rigid plastic (column 2, lines 58-66), but does not explicitly disclose the relative hardnesses of the plastic materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a second prescribed hardness that is harder than the first prescribed hardness, in order to provide an outer shell/boot body which is relatively flexible, providing comfort, and an inner shell/cuff which is relatively rigid, providing strength, stiffness, and rigidity to specific locations of the boot.
Regarding claim 2, Spier ‘062 does not disclose the specific hardness of the second 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 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.
Regarding claim 6, Spier ‘062 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 less than 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 (13, which extends within the cuff area) at least partially embedded within the upper cuff of the boot body; wherein the cuff insert includes 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 discloses that the boot is formed of a flexible plastic, and the cuff is formed of a relatively rigid plastic (column 3, lines 8-15, 38-40), but does not explicitly disclose the relative hardnesses of the plastic materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a second prescribed hardness that is harder than the first prescribed hardness, in order to provide an outer shell/boot body which is relatively flexible, providing comfort, and an inner shell/cuff which is relatively rigid, providing strength, stiffness, and rigidity to specific locations of the boot.
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 (2, 3) at least partially embedded within the upper cuff of the boot body; wherein the cuff insert includes 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 bot od 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 discloses that the cuff is formed of a relatively rigid plastic providing a high degree of stability and bending resistance (paragraphs 0035, 0037, 0040), but does not explicitly disclose the relative hardnesses of the plastic materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a second prescribed hardness that is harder than the first prescribed hardness, in order to provide an outer shell/boot body which is relatively flexible, providing comfort, and an inner shell/cuff which is relatively rigid, providing stability, bending resistance, and rigidity to specific locations of the boot.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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/SHARON M PRANGE/ Primary Examiner, Art Unit 3732