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 Species I (Figs. 1A-C) in the reply filed on 07/05/2026 is acknowledged. Claims 4, 10-11, and 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/05/2026. Claims 1-3, 5-9, and 12-14 are presented for examination on the merits.
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) 1-3, 5, 7-9, and 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Somerville (US 2011/0016751 A1).
Regarding claim 1, Somerville teaches a rapid-entry shoe (2; Fig. 10; it is noted that Fig. 10 is a fifth embodiment where like reference numerals refer to like features previously described) comprising:
a base (4; Fig. 10);
an upper (8);
a heel arm (10; Fig. 10) coupled to the base (10 is coupled to 4 via 30 as shown in Fig. 10) or the upper at a rear portion of the rapid-entry shoe (10 is coupled to 8 via 30);
and a resilient member (resilient stretchable, e.g. woven elastic fabric portions 50) coupled to a side portion of the rapid-entry shoe, wherein the heel arm comprises an open are shape coupled to opposing sides of the rapid- entry shoe (Fig. 10), wherein the heel arm is configured to transition between a collapsed configuration (Fig. 6) and an uncollapsed configuration (Fig. 6), wherein in the collapsed configuration the heel arm is deformed or rotated downward or rearward (10 is in a compressed state and bends and rotates downward towards 4; see Fig. 7 in comparison to Fig. 6), wherein the resilient member is directly or indirectly coupled to the heel arm at a heel arm coupling point (Fig. 10 shows 50 directly extending between 10 and 8; see annotated Fig. 10 below, where a heel arm coupling point is the connection point at 10 and 50) and is coupled to the base or the upper at a forward coupling point (see annotated Fig. 10 below, where 50 is coupled to the upper at the annotated forward coupling point), and wherein the resilient member exerts an upward force on the heel arm to bias the heel arm toward the uncollapsed configuration (the biasing means, for biasing 10 to extend around the upper heel of the foot 6, which includes a pair of resilient stretchable, e.g. woven elastic fabric portions 50 extending between 10 and 8).
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Regarding claim 2, Somerville further teaches the rapid-entry shoe of claim 1, wherein the heel arm is comprised of a rigid material that maintains its shape between the collapsed configuration and the uncollapsed configuration so does not bias the heel arm toward the uncollapsed configuration (para. 44 discloses the heel restraint substantially maintains its shape when moved along the heel and toward the sole).
Regarding claim 3, Somerville further teaches the rapid-entry shoe of claim 1, wherein the heel arm is comprised of a semi-rigid material that resiliently deforms between the collapsed configuration and the uncollapsed configuration to further bias the heel arm toward the uncollapsed configuration (para. 44 discloses the heel restraint 10 includes the arcuate heel strap 20, which is made from leather).
Regarding claim 5, Somerville further teaches the rapid-entry shoe of claim 1, wherein in the uncollapsed configuration, an angle measured between the heel arm and the base is greater than an angle measured between the resilient member and the base (Figs. 9-10).
Regarding claim 7, Somerville teaches a rapid-entry shoe (2; Fig. 10; it is noted that Fig. 10 is a fifth embodiment where like reference numerals refer to like features previously described) comprising:
a base (4; Fig. 10);
an upper (8) coupled to the base (Fig. 10);
a heel arm (10; Fig. 10) coupled to the base (10 is coupled to 4 via 30 as shown in Fig. 10) or the upper at a rear portion of the rapid-entry shoe (10 is coupled to 8 via 30);
and a resilient member (resilient stretchable, e.g. woven elastic fabric portions 50) coupled to the base or the upper (50 coupled to 4 or 8 via 30, and therefore, coupled to the base or the upper), wherein the heel arm comprises an open arc shape coupled to opposing sides of the base or the upper (Figs. 9-10), wherein the heel arm is configured to transition between a collapsed configuration (Fig. 6) and an uncollapsed configuration (Fig. 6), wherein in the collapsed configuration the heel arm is deformed or rotated downward or rearward (10 is in a compressed state and bends and rotates downward towards 4; see Fig. 7 in comparison to Fig. 6), wherein the resilient member (resilient stretchable, e.g. woven elastic fabric portions 50) is directly or indirectly coupled to the heel arm at a heel arm coupling point (Fig. 10 shows 50 directly extending between 10 and 8; see annotated Fig. 10 above of claim 1 rejection, where a heel arm coupling point is the connection point at 10 and 50) and is coupled to the base or the upper at a forward coupling point (see annotated Fig. 10 above of claim 1 rejection, where 50 is coupled to the upper at the annotated forward coupling point), and wherein the resilient member exerts an upward force on the heel arm to bias the heel arm toward the uncollapsed configuration (the biasing means, for biasing 10 to extend around the upper heel of the foot 6, includes a pair of resilient stretchable, e.g. woven elastic fabric portions 50 extending between 10 and 8).
Regarding claim 8, Somerville further teaches the rapid-entry shoe of claim 7, wherein the heel arm is comprised of a rigid material that maintains its shape between the collapsed configuration and the uncollapsed configuration so does not bias the heel arm toward the uncollapsed configuration (para. 44 discloses the heel restraint substantially maintains its shape when moved along the heel and toward the sole).
Regarding claim 9, Somerville further teaches the rapid-entry shoe of claim 7, wherein the heel arm is comprised of a semi-rigid material that resiliently deforms between the collapsed configuration and the uncollapsed configuration to further bias the heel arm toward the uncollapsed configuration (para. 44 discloses 10 to include the arcuate heel strap 20, which, in turn, is made of leather).
Regarding claim 12, Somerville teaches a rapid-entry shoe (2; Fig. 10; it is noted that Fig. 10 is a fifth embodiment where like reference numerals refer to like features previously described) comprising:
a base (4; Fig. 10);
an upper (8);
a heel arm (10; Fig. 10) having an open arc shape (10; Fig. 10);
and a resilient member (resilient stretchable, e.g. woven elastic fabric portions 50), wherein the heel arm comprises a heel section disposed between a medial side section and a lateral side section (Fig. 10), wherein the medial side section is coupled to the base (Fig. 10 shows 10 is coupled to 4 via 30) or the upper at a medial rearward coupling point and the lateral side section is coupled to the base or the upper at a lateral rearward coupling point, wherein the resilient member is directly or indirectly coupled to the heel arm at a heel arm coupling point (Fig. 10 shows 50 directly extending between 10 and 8; see annotated Fig. 10 above of claim 1 rejection, where a heel arm coupling point is the connection point at 10 and 50) and is further coupled to the base or the upper at a forward coupling point (see annotated Fig. 10 above of claim 1 rejection, where 50 is coupled to the upper at the annotated forward coupling point), wherein the heel arm is configured to transition between a first configuration for donning and doffing of the shoe (Fig. 6) and a second configuration for securing a foot inside the shoe (Fig. 6), wherein in the first configuration the heel arm is deformed or rotated downward or rearward (10 in a compressed state and bends and rotates downwards towards 4, see Fig. 7 in comparison to Fig. 6), and wherein the resilient member is configured to bias the heel arm toward the second configuration (Fig. 6).
Regarding claim 13, Somerville further teaches the rapid-entry shoe of claim 12, wherein the heel arm is comprised of a rigid material that maintains its shape between the first configuration and the second configuration so does not bias the heel arm toward the second configuration (para. 44 discloses the heel restraint substantially maintains its shape when moved along the heel and toward the sole).
Regarding claim 14, Somerville further teaches the rapid-entry shoe of claim 12, wherein the heel arm is comprised of a semi-rigid material that resiliently deforms between the first configuration and the second configuration to further bias the heel arm toward the second configuration (para. 44 discloses 10 includes 20, which, in turn, is made from leather).
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.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Somerville (US 2011/0016751 A1).
Regarding claim 6, Somerville discloses the rapid-entry shoe of claim 5, except for wherein a difference in an uncollapsed configuration of the angle measured between the heel arm and the base and the angle measured between the resilient member and the base is greater than the difference in a collapsed configuration of the angle measured between the heel arm and the base and the angle measured between the resilient member and the base.
In reference to the parameters and dimensions, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use portions with the claimed parameters and dimensions, 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. With respect to the parameters, the claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 5-9, and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9, and 12-14 of U.S. Patent No. 12,364,310. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions claim essentially the same structure. For example, claims 1 of the present application requires a base; an upper; a heel arm coupled to the base or the upper at a rear portion of the rapid-entry shoe; and a resilient member coupled to a side portion of the rapid-entry shoe, wherein the heel arm comprises an open are shape coupled to opposing sides of the rapid- entry shoe, wherein the heel arm is configured to transition between a collapsed configuration and an uncollapsed configuration, wherein in the collapsed configuration the heel arm is deformed or rotated downward or rearward, wherein the resilient member is directly or indirectly coupled to the heel arm at a heel arm coupling point and is coupled to the base or the upper at a forward coupling point, and wherein the resilient member exerts an upward force on the heel arm to bias the heel arm toward the uncollapsed configuration, which are the same and obvious elements required by claim 1 of U.S. Patent No. 12,364,310. Therefore, claims 1-3, 5-9, and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9, and 12-14 of U.S. Patent No. 12,364,310.
Conclusion
15 The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See similar footwear on the PTO-892 form attached to this Office Action.15
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/G.Q.H./Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732
