DETAILED ACTION
This office action is in response to the amendment filed April 14, 2026 in which claims 1-20 are presented for examination.
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 .
Response to Arguments
Applicant’s First Argument: The limitations “closure mechanism,” “retention members,” and “release mechanism,” should not be interpreted under 35 USC 112(f) at least because these terms each connote a well-understood class of mechanical structures when read in light of the specification.
Examiner’s Response: Examiner respectfully disagrees. The limitations “closure mechanism” in claims 1, 5, and 19, “retention members” in claim 19, and “release mechanism” in claim 19 are interpreted under 35 USC 112(f) (see “Claim Interpretation” heading, below) because each of these limitations meet the three-prong test under 35 USC 112(f) for the limitations to be interpreted under 35 USC 112(f). Specifically, each of these limitations (A) use a generic placeholder for the term means (i.e., “mechanism,” “members,” and “mechanism,” respectively), (B) modify the generic placeholder with functional language (“closure,” “retention,” and “release,” respectively), and (C) the generic placeholder is not modified by structure or materials in the cited claims for performing the recited function. As such, each of these limitations in the cited claims are interpreted under 35 USC 112(f). It is respectfully noted that interpretation under 35 USC 112(f) is not optional. If a limitation invokes 35 USC 112(f), then it is interpreted under 35 USC 112(f). If Applicant does not wish for claim limitations to invoke 35 USC 112(f), these limitations should be amended so that they do not satisfy at least one prong of the three-prong test under 35 USC 112(f). For example, “closure mechanism” in currently amended claim 10 does not invoke 35 USC 112(f) because it is modified by structure for performing the recited function. It is further respectfully noted that 35 USC 112(f) is not a rejection.
Applicant’s Second Argument: Rejection of claim 1-9 under 35 USC 112(a) because of the term “fastening mechanism” should be withdrawn at least in view of current amendments to the claims.
Examiner’s Response: Agreed. The rejection of claims 1-8 is withdrawn. However, claim 9 is now rejected under 35 USC 112(a) on an updated basis due to current amendments to claim 9 (see rejection under 35 USC 112(a), below).
Applicant’s Third Argument: Rejection of claim 1-9 and 17 under 35 USC 112(b) should be withdrawn at least in view of current amendments to the claims.
Examiner’s Response: Agreed. The rejection is withdrawn.
Applicant’s Fourth Argument: Applicant respectfully requests that rejection of claim 1-20 on the grounds of non-statutory double patenting over claims 1-22 of USPN 1,310,459 be held in abeyance pending the indication of allowable subject matter.
Examiner’s Response: Examiner notes Applicant’s request and respectfully maintains the rejection (see below).
Applicant’s Fifth Argument: Rejection of claim 1 under 35 USC 103 over USPN 11,185,130 Bock et al. in view of USPN 9,095,188 Cavaliere should be withdrawn at least for cited reasons.
Examiner’s Response: Applicant’s arguments are moot because Bock in view of Cavaliere is not relied upon to reject claim 1 in the instant office action. It is further noted however that Examiner respectfully disagrees with various arguments advanced by Applicant regarding currently amended claim 1 and the rejection of claim 1 in the prior office action mailed January 20, 2026 and notes that Bock and Cavaliere may be relied upon, alone or in combination, to reject claim 1 in future office action(s).
Applicant’s Sixth Argument: Rejection of claim 10 under 35 USC 103 over US Pub No. 2021/0235819 Andreasen et al. in view of USPN 10,660,408 Houng et al. should be withdrawn at least for cited reasons.
Examiner’s Response: Applicant’s arguments have been fully considered but they are moot in view of the current basis of rejection of claim 10 under 35 USC 103.
Applicant’s Seventh Argument: Rejection of claim 16 under 35 USC 103 over USPN 11,185,130 Bock et al. in view of USPN 9,095, 188 Cavaliere should be withdrawn at least for cited reasons.
Examiner’s Response: Applicant’s arguments are moot because Bock in view of Cavaliere is not relied upon to reject claim 16 in the instant office action. It is further noted however that Examiner respectfully disagrees with various arguments advanced by Applicant regarding currently amended claim 16 and the rejection of claim 16 in the prior office action mailed January 20, 2026 and notes that Bock and Cavaliere may be relied upon, alone or in combination, to reject claim 16 in future office action(s).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “closure mechanism” in claims 1, 5, and 19, “retention members” in claim 19, and “release mechanism” in claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites the limitations “wherein the upper includes an interior surface formed of a material having a first elasticity and an exterior surface formed of a material having a second elasticity that is less than the first elasticity, and wherein the exterior surface of the upper is formed of a hydrophobic material.” These limitations constitute new matter because they are not present in the disclosure as originally filed. Specifically, although the disclosure as originally filed describes various possible materials and elasticities for the upper (see for example paragraphs 0033 and 0036-0038), the disclosure as originally filed does not sufficiently describe interior and exterior surfaces of the upper including the recited relative elasticities (i.e., exterior surface of the upper having less elasticity than the interior surface of the upper). Likewise, although the disclosure as originally filed sufficiently describes the upper comprising a hydrophobic material (see for example paragraph 0036 of the specification), the disclosure as originally filed does not provide support specifically for the exterior surface of the upper being formed of a hydrophobic material. Applicant is respectfully invited to rebut any of the bases of this rejection by reciting on the record, with specificity, which portion(s) of the disclosure as originally filed allegedly provide support for the recited limitation(s).
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 10,660,408 Houng et al. in view of USPN 5,157,813 Carroll and in further view of USPN 7,168,188 Auger et al.
To claim 1, Houng discloses an article of footwear (10) (see Figures 1-3; col. 4, line 1 – col. 6, line 31), comprising:
an upper (14) that is attached to a sole (12) (see Figures 1-2; col. 4, lines 1-12);
a longitudinal axis that extends between a rear end and a front end of the article of footwear (see Figures 1-2);
a midfoot region (26) that is disposed between a forefoot region (24) and a heel region (28) (see Figures 1-2; col. 4, lines 23-40);
a fastening system (18) that is operably engaged with a cord (80) (see Figures 1-2; col. 4, lines 1-12); and
a panel (22) that is superimposed on the upper (see Figures 1-2; col. 5, lines 40-57),
wherein the panel is defined by edges that interface with the upper and include various convex and concave curvatures therealong (see Figures 1-2; col. 5, lines 40-57; col. 8, lines 33-54),
wherein the cord is laced through a plurality of eyelets (82) arranged on the panel (see Figures 1-2; col. 8, lines 22-32),
wherein the cord extends on a lateral side of the upper so that a first segment extends diagonally downward from a top section of the upper toward the sole before extending diagonally upwardly toward the top section (annotated Figure 1, see below; it is respectfully noted that the term “section” is very broad), and
wherein the first segment crosses over a second segment of the cord (annotated Figure 1).
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Houng does not disclose a fastening system including a closure mechanism (interpreted under 35 USC 112(f)), that is operably engaged with the cord.
However, Carroll teaches an article of footwear comprising a fastening system including a closure mechanism (24) (interpreted under 35 USC 112(f)) that is operably engaged with a cord (12) (see Figures 1-6; col. 4, line 48 – col. 9, line 29).
Houng and Carroll teach analogous inventions in the field of footwear. 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 footwear of Houng to include a closure mechanism as taught by Carroll because Carroll teaches that this configuration is known in the art and allows an athlete wearing the footwear to accurately control the comfort of the footwear while engaging in vigorous activity, exercise in comfort, and not experience the discomfort that arises from the use of conventional shoes in which laces are tied (col. 8, line 67 – col. 9, line 13). It would further have been obvious to one of ordinary skill in the art that closure mechanism (24) of Carroll would negate the need for the wearer to tie the footwear each time it’s donned.
The modified invention of Houng (i.e., Houng in view of Carroll, as detailed above) does not expressly teach an article of footwear further comprising a heel component disposed adjacent the rear end within the heel region, the heel component having a midsection that includes padding.
However, Auger teaches an article of footwear (10) comprising a heel component (24,32) disposed adjacent a rear end within a heel region, the heel component having a midsection that includes padding (32) (see Figures 1-6; col. 3, line 9 – col. 6, line 44).
The modified invention of Houng and Auger teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the footwear of the modified invention of Houng to include a heel component as taught by Auger because Auger teaches that this configuration is known in the art and helps to improve fit about a wearer’s heel helping to maintain the heel in proper position, reducing relative movement of the wearer’s heel and improving comfort. Additionally, different padding may be installed, allowing for customization and/or optimization of the footwear (col. 2, line 27-35).
To claim 2, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the closure mechanism is configured to be twisted or rotated by a user (see Figures 1-6 and col. 7, line 38 – col. 8, line 46 of Carroll).
To claim 3, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the cord extends in a V- shaped pattern on the lateral side of the upper and a lowermost point of the V-shaped pattern of the cord is positioned on the upper in the midfoot region (see Figures 1-2 of Houng).
To claim 4, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the closure mechanism is configured to be iteratively actuated to reach successive tightness levels (col. 7, line 38 – col. 9, line 13 of Carroll).
To claim 5, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the closure mechanism is arranged on the lateral side of the upper (see Figures 1-2 of Carroll; portions of closure mechanism 32 of Carroll extend over portions of the lateral side of the upper of footwear 10 of Carroll and/or would be an obvious variant).
To claim 6, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the closure mechanism is configured to be pushed inwardly to release the article of footwear from a tightened configuration (see Figures 1-6 and col. 8, lines 47-54 of Carroll; via element 88 of Carroll).
To claim 7, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the panel is superimposed on the lateral side and a medial side of the upper within the forefoot region and the midfoot region (see Figures 1-2 of Houng).
To claim 8, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) further teaches an article of footwear wherein the cord extends in a V shaped pattern (see Figures 1-2 of Houng).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 10,660,408 Houng et al. in view of USPN 5,157,813 Carroll and USPN 7,168,188 Auger et al., and in further view of USPN 11,185,130 Bock et al.
To claim 9, the modified invention of Houng (i.e., Houng in view of Carroll and Auger, as detailed above) teaches an article of footwear as recited in claim 1, above.
The modified invention of Houng does not explicitly disclose an article of footwear wherein the upper includes an interior surface formed of a material having a first elasticity and an exterior surface formed of a material having a second elasticity that is less than the first elasticity, and wherein the exterior surface of the upper is formed of a hydrophobic material.
However, Bock teaches an article of footwear (44) (see Figures 1-17B; col. 6, line 44 – col. 21, line 20) comprising an upper (50) wherein the upper includes an interior surface formed of a material having a first elasticity and an exterior surface formed of a material having a second elasticity that is less than the first elasticity, and wherein the exterior surface of the upper is formed of a hydrophobic material (see Figures 2-8; col. 6, lines 21-43; col. 7, line 45 – col. 8, line 41).
The modified invention of Houng and Bock teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the upper of the modified invention of Houng to include the elasticity properties as recited in claim 9 because Bock teaches that this configuration is known in the art and may provide the upper with desired elasticity and recovery characteristics. It would further have been obvious to one of ordinary skill that an exterior surface of an upper formed of a hydrophobic material may aid in keeping a wearer’s foot dry when the footwear is worn in wet conditions.
Claims 10-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 10,660,408 Houng et al. in view of USPN 5,157,813 Carroll and in further view of USPN 11,134,746 Seid.
To claim 10, Houng discloses an article of footwear (10) (see Figures 1-3; col. 4, line 1 – col. 6, line 31), comprising:
an upper (14) that is attached to a sole (12) (see Figures 1-2; col. 4, lines 1-12);
a longitudinal axis that extends between a rear end and a front end of the article of footwear (see Figures 1-2);
a midfoot region (26) that is disposed between a forefoot region (24) and a heel region (28) (see Figures 1-2; col. 4, lines 23-40);
a fastening system (18) with a cord (80) (see Figures 1-2; col. 4, lines 1-12); and
a panel (22) (see Figures 1-2; col. 5, lines 40-57),
wherein the panel includes a first edge, wherein the first edge is curved (see Figures 1-2; col. 5, lines 40-57), and
wherein the cord is routed through the panel (see Figures 1-2; col. 8, lines 22-32).
Houng does not disclose a fastening system including a closure mechanism that is disc-shaped and operably engaged with a cord, wherein the closure mechanism is configured to be twisted to actuate the fastening system.
However, Carroll teaches an article of footwear comprising a fastening system including a closure mechanism (24) that is disc-shaped and operably engaged with a cord (12), wherein the closure mechanism is configured to be twisted to actuate the fastening system (see Figures 1-6; col. 4, line 48 – col. 9, line 29).
Houng and Carroll teach analogous inventions in the field of footwear. 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 footwear of Houng to include a closure mechanism as taught by Carroll because Carroll teaches that this configuration is known in the art and allows an athlete wearing the footwear to accurately control the comfort of the footwear while engaging in vigorous activity, exercise in comfort, and not experience the discomfort that arises from the use of conventional shoes in which laces are tied (col. 8, line 67 – col. 9, line 13). It would further have been obvious to one of ordinary skill in the art that closure mechanism (24) of Carroll would negate the need for the wearer to tie the footwear each time it’s donned.
The modified invention of Houng (i.e., Houng in view of Carroll, as detailed above) does not teach an article of footwear further comprising a heel component disposed adjacent the rear end within the heel region, the heel component having a midsection that includes padding, wherein a distance is defined between the midsection of the heel component and the upper, wherein the distance is configured to be adjusted by a force applied by a user between a first configuration and a second configuration, wherein, in the first configuration, the midsection of the heel component is configured to be translated rearward relative to the longitudinal axis, and wherein, in the second configuration, the midsection of the heel component is configured to be translated forward relative to the longitudinal axis.
However, Seid teaches an article of footwear (1000) (see Figures 1-20; col. 6, line 48 – col. 17, line 7) comprising a heel component (130) disposed adjacent a rear end within a heel region, the heel component having a midsection (136B) that includes padding (col. 10, lines 23-35), wherein a distance is defined between the midsection of the heel component and an upper (102) (see Figures 1A-1F), wherein the distance is configured to be adjusted by a force applied by a user between a first configuration (see for example Figures 1D-1F) and a second configuration (see for example Figures 1A-1C), wherein, in the first configuration, the midsection of the heel component is configured to be translated rearward relative to the longitudinal axis (see for example Figures 1D-1F), and wherein, in the second configuration, the midsection of the heel component is configured to be translated forward relative to the longitudinal axis (see for example Figures 1A-1C).
The modified invention of Houng and Seid teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the footwear of the modified invention of Houng to include a heel component as taught by Seid because Seid teaches that this configuration is known in the art and allows for easy insertion and removal of a user’s foot (col. 1, lines 16-22).
To claim 11, the modified invention of Houng (i.e., Houng in view of Carroll and Seid, as detailed above) further teaches an article of footwear wherein the midsection of the heel component curves concavely between a lateral side and a medial side relative to a toe end (see Figures 1A-1F of Seid).
To claim 12, the modified invention of Houng (i.e., Houng in view of Carroll and Seid, as detailed above) further teaches an article of footwear wherein the cord defines a winding region that extends across the upper (see Figures 1-2 of Houng).
To claim 13, the modified invention of Houng (i.e., Houng in view of Carroll and Seid, as detailed above) further teaches an article of footwear wherein the panel includes a second edge that is opposite the first edge, wherein the second edge includes convex curvatures therealong (see Figures 1-2 and col. 5, lines 40-57; col. 8, lines 33-54 of Houng).
To claim 15, the modified invention of Houng (i.e., Houng in view of Carroll and Seid, as detailed above) further teaches an article of footwear wherein the heel component is configured to retain its shape in a rest configuration (see Figures 1A-1F of Seid).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 10,660,408 Houng et al. in view of USPN 5,157,813 Carroll and USPN 11,134,746 Seid, and in further view of USPN 11,185,130 Bock et al.
To claim 14, the modified invention of Houng (i.e., Houng in view of Carroll and Seid, as detailed above) teaches an article of footwear as recited in claim 10, above.
The modified invention of Houng does not explicitly teach an article of footwear wherein the upper is formed of a hydrophobic material.
However, Bock teaches an article of footwear (44) (see Figures 1-17B; col. 6, line 44 – col. 21, line 20) comprising an upper (50) wherein the upper is formed of a hydrophobic material (see Figures 2-8; col. 6, lines 21-43; col. 7, line 45 – col. 8, line 41).
The modified invention of Houng and Bock teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the upper of the modified invention of Houng to be i formed of a hydrophobic material because Bock teaches that this configuration is known in the art. It would further have been obvious to one of ordinary skill that an upper formed of a hydrophobic material may aid in keeping a wearer’s foot dry when worn in wet conditions.
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2021/0235819 Andreasen et al. in view of USPN 10,660,408 Houng et al.
To claim 16, Andreasen discloses an article of footwear (10) (see Figures 1-12; paras. 0038-0046), comprising:
an upper (100) that is attached to a sole (200) (see Figures 1-4; para. 0042) and includes a panel defined between a pair of edges (not numbered) (annotated Figure 1, see below);
a longitudinal axis (A10) that extends between a heel end (14) and a toe end (12) of the article of footwear (see Figure 1; para. 0040);
a midfoot region (22) that is disposed between a forefoot region (20) and a heel region (24) (see Figures 1-3; para. 0041);
a fastening system (300,400) arranged on the upper and including a cord (402) (see Figures 1-12; para. 0039); and
a heel component (432,434) disposed adjacent a heel end of the upper within the heel region and extending from the heel end of the upper in a rearward direction relative to the longitudinal axis (see Figures 1-5D; paras. 0125-0130),
wherein the heel component includes a midsection (434) that is relatively thicker than surrounding portions of the heel component, and wherein the midsection extends from a first end to a second end, such that the midsection curves concavely between a lateral side and a medial side of the heel component relative to the toe end of the article of footwear (see Figures 1-5D; paras. 0125-0130).
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Andreasen does not expressly disclose an article of footwear wherein the pair of edges of the panel are curved.
However, Houng teaches an article of footwear (10) (see Figures 1-3; col. 4, line 1 – col. 6, line 31) comprising a panel (22) wherein a pair of edges of the panel are curved (see Figures 1-2; col. 8, lines 33-54).
Andreasen and Houng teach analogous inventions in the field of footwear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the panel of the footwear of Andreasen to be curved as taught by Houng because Houng teaches that this configuration is known in the art and allows the panel to better conform to the shape of the foot of a wearer at the instep region in comparison to a panel having a straight end (col. 3, lines 6-14).
To claim 17, the modified invention of Andreasen (i.e., Andreasen in view of Houng, as detailed above) further teaches an article of footwear wherein the cord extends in a V-shaped pattern on a lateral side of the upper, such that the cord extends diagonally downwardly from a top section of the upper toward the sole before extending diagonally upwardly toward the top section (annotated Figure 1 of Houng, see above; it is respectfully noted that the term “section” is very broad).
To claim 18, the modified invention of Andreasen (i.e., Andreasen in view of Houng, as detailed above) further teaches an article of footwear wherein a plurality of retention members (82 of Houng) are arranged on the upper for retaining the cord (see Figures 1-2 and col. 8, lines 22-32 of Houng).
To claim 19, the modified invention of Andreasen (i.e., Andreasen in view of Houng, as detailed above) further teaches an article of footwear wherein the fastening system includes a closure mechanism (434 of Andreasen) and a release mechanism (438 of Andreasen) (see especially Figures 1-5D and paras. 0127-0130 of Andreasen).
To claim 20, the modified invention of Andreasen (i.e., Andreasen in view of Houng, as detailed above) further teaches an article of footwear wherein the closure mechanism is configured to be twisted by a user and wherein the release mechanism is configured to be pressed by a user (para. 0006).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,310,459.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite a closure system/fastening system for an article of footwear and/or an article of footwear comprising substantially the same elements including an upper, a sole, actuating/fastening/release/closure mechanism(s), and cord having multiple segments operably engaged with the actuating/fastening/release/closure mechanism(s).
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 GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at (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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/F Griffin Hall/Primary Examiner, Art Unit 3732
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