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 .
Response to Amendments
The amendments filed with the written response received on 01 July 2026 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1, 3, 5-7, 9, 12, 17-18, and 20 has/have been amended, claim(s) 2, 4, 8, 10-11 is/are canceled, claim(s) 21-30 has/have been added. Accordingly, claim(s) 1, 3, 5-7, 9, 12, 17-18, and 20-30 is/are pending in this application with an action on the merits to follow.
Because of the applicant's amendment, the following in the office action filed 01 July 2026, are hereby withdrawn:
Objections to the Drawings
Objections to the Claims
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, 5-7, 9, 12, 17-18, 20-23, 25-27, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Forrester US 2969573.
Regarding Independent Claim 1, Forrester discloses an article of footwear (Figs. 1-12 show the full shoe) comprising: an upper (Figs. 1-12 show the upper) defining a foot receiving cavity (Figs. 1-2); a tongue (Figs. 1-12 #43) comprising a first panel (Figs. 1-2 #43 front) having an upper portion (Fig. 2 #43 shows the upper portion to the left of the hinge #18) and a lower portion (Fig. 2 #43 shows the lower portion to the right of the hinge #18, in the general area of #44) separated by a hinge (Figs. 2-3 #18) extending across a width of the tongue (Figs. 2-3), wherein the tongue is pivotably coupled to the upper (Figs. 2-8) and moveable between a retracted configuration (Fig. 2) and a foot-engaging configuration (Fig. 1), and wherein, in the foot-engaging configuration, the upper portion of the tongue is positioned adjacent to the upper (Fig. 1) and wherein, in the retracted configuration, the upper portion of the tongue is spaced apart from the upper (Fig. 2); and a securing mechanism (Applicant’s “securing mechanism” has been interpreted under 35 USC 112(f). Applicant’s “securing mechanism” appears to be a device for adjusting the tongue between a retracted and open position [per Applicant Drawings 1-19 and Spec Pg. 2:14-24]; Forrester has a fastening device for opening and closing the tongue, which are the same as the Applicant’s “securing mechanism”; see Figs. 3-4 for the fastening device) configured to selectively toggle the tongue between the retracted configuration and a foot-engaging configuration (Figs. 1-12; Col. 4:48-5:2), the securing mechanism comprising actuator material (Figs. 1-12 #8) having a first end coupled with the lower portion of the tongue (Figs. 4-8 #16 is attached to the manipulating member which is attached to the tongue at the lower portion) and extending along a length of the tongue to a second end positioned adjacent to the top portion of the tongue (Figs. 1-9 #14/15 extend along the length of the tongue when the tongue is in the closed position, and are attached to the upper adjacent to the tongue), the actuator material moveable between an extended position when the tongue is in the retracted configuration (Figs. 1-9) and a relaxed position when the tongue is in the foot-engaging configuration (Figs. 1-9) and comprising a pull portion (Figs. 1-12 #2/3), wherein the actuator material is configured to move the tongue between the retracted configuration and the foot-engaging configuration when a force is applied to the pull portion (Figs. 1-9; Col. 4:48-5:2).
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Forrester discloses the structure of the tongue, there would be a reasonable expectation for the tongue to perform such functions as explained after each functional limitation.
Regarding Claim 5, Forrester discloses the article of footwear of claim 1, wherein the tongue further comprises one or more reinforcements (Figs. 6-8 show multiple reinforcement structures #19/20/28/31) coupled with the lower portion of the tongue (Fig. 8), each of the one or more reinforcements defining a guide channel (Figs. 3-9 #20) configured to receive a portion the length of the actuator material (Figs. 4-9).
Regarding Claim 6, Forrester discloses the article of footwear of claim 5, wherein the guide channel is a first guide channel (Figs. 2-9 #22) and each of the one or more reinforcements further comprises a second guide channel separated from the first guide channel (Figs. 2-9 #23 is on the opposite side of #22 therefore is separate).
Regarding Claim 7, Forrester discloses the article of footwear of claim 1, wherein the securing mechanism further comprises a lock (Figs. 2-9 #29/30/32) coupled with the tongue (Figs. 2-9), the lock configured to secure the length of actuator material when the actuator material is in the extended position (Figs. 2-9), such that the tongue is secured in the retracted configuration when the lock is engaged (Figs. 2-9).
Regarding Independent Claim 9, Forrester discloses a tongue (Figs. 1-12 #43) for an article of footwear (Figs. 1-2), the tongue comprising: a front panel (Figs. 1-2 #43 front) and a back panel (Figs. 1-2 #43 front) coupled to one another around the periphery and defining an interior area (Figs. 2 and 8), the front panel defining one or more apertures (Fig. 8 #45/46); an upper portion (Fig. 2 #43 shows the upper portion to the left of the hinge #18) having a top edge (Figs. 1-3 show the top edge of #43 at reference #40) and a lower portion (Fig. 2 #43 shows the lower portion to the right of the hinge #18, in the general area of #44) having a bottom edge (Fig. 2 shows the folded edge in the general area of #44), the upper and lower portions separated by a hinge (Figs. 2-9 #18) extending across a width of the tongue (Figs. 2-9), wherein, when the tongue is in a retracted configuration (Fig. 2), the tongue is folded along the hinge and the top edge is positioned closer to the bottom edge (Fig. 2) than when the tongue is in a foot-engaging configuration (Fig. 1); and the securing mechanism (Applicant’s “securing mechanism” has been interpreted under 35 USC 112(f). Applicant’s “securing mechanism” appears to be a device for adjusting the tongue between a retracted and open position [per Applicant Drawings 1-19 and Spec Pg. 2:14-24]; Forrester has a fastening device for opening and closing the tongue, which are the same as the Applicant’s “securing mechanism”; see Figs. 3-4 for the fastening device) configured to selectively toggle the tongue between the retracted configuration and the foot-engaging configuration (Figs. 1-12; Col. 4:48-5:2), the securing mechanism comprising actuator material (Figs. 1-12 #8) having a first end coupled with the lower portion of the tongue (Figs. 4-8 #16 is attached to the manipulating member which is attached to the tongue at the lower portion), a second end positioned adjacent to the top edge (Figs. 1-9 #15 extend along the length of the tongue when the tongue is in the closed position, and are attached to the upper adjacent to the top edge), and a middle portion extending along a length of the tongue connecting the first and second ends (Figs. 1-3), wherein the actuator material is moveable between an extended position when the tongue is in the retracted configuration (Figs. 1-3) and a relaxed position when the tongue is in the foot-engaging configuration (Figs. 1-3), and wherein the securing mechanism comprises a pull portion (Figs. 1-12 #2/3).
Regarding Claim 12, Forrester discloses the tongue of claim 9, wherein the pull portion is configured to move the tongue between the retracted configuration and the foot-engaging configuration when a force is applied to the pull portion (Figs. 1-9; Col. 4:48-5:2).
Regarding Claim 17, Forrester discloses the tongue of claim 9, further comprising a lock (Figs. 2-9 #29/30/32) positioned in the interior area (Figs. 2-3), the lock configured to secure the actuator material (Figs. 2-9) when the actuator material is in the extended position, such that the tongue is secured in the retracted configuration when the lock is engaged (Figs. 2-9).
Regarding Claim 18, Forrester discloses the tongue of claim 17, wherein the lock comprises a toggle lock (Fig. 6 #29/30/32) having a tubular body (Fig. 5 shows the tubular body) and a translatable clasp (Fig. 3 shows the clasp can change positions and be removed from the actuators, thus is “translatable”) having a first end defining an aperture (Fig. 6 #17/30 lower with aperture #32) and a clasp body (Fig. 6 #30 top) configured to be at least partially received by the tubular body and to translate relative to the tubular body (Figs. 2-9) , wherein the aperture is configured to receive at least a portion of the actuator material (Fig. 6 shows #18 is attached to #17/30 thus receives actuator material #8/16).
Regarding Independent Claim 20, Forrester discloses an article of footwear (Figs. 1-2) comprising: an upper (Figs. 1-12 show the upper) defining a foot receiving cavity (Figs. 1-2 #44); a tongue (Figs. 1-12 #43) having an upper portion (Fig. 2 #43 shows the upper portion to the left of the hinge #18) and a lower portion (Fig. 2 #43 shows the lower portion to the right of the hinge #18, in the general area of #44) separated by a hinge (Figs. 2-9 #18) across a width of the tongue (Figs. 2-9), the tongue being pivotably coupled to the upper (Figs. 1-2) and moveable between a retracted configuration (Fig. 2) and a foot-engaging configuration (Fig. 1), and wherein in the foot-engaging configuration the upper portion of the tongue is positioned adjacent to the upper (Fig. 1) and in the retracted configuration the upper portion of the tongue is positioned adjacent to the upper (Fig. 2) and in the retracted configuration the upper portion of the tongue is spaced apart from the upper (Fig. 2) and a securing mechanism (Applicant’s “securing mechanism” has been interpreted under 35 USC 112(f). Applicant’s “securing mechanism” appears to be a device for adjusting the tongue between a retracted and open position [per Applicant Drawings 1-19 and Spec Pg. 2:14-24]; Forrester has a fastening device for opening and closing the tongue, which are the same as the Applicant’s “securing mechanism”; see Figs. 3-4 for the fastening device) defining one or more tongue apertures (Figs. 1-12 #46/apertures of #18) and being configured to selectively toggle the tongue between the retracted configuration and the foot-engaging configuration (Figs. 1-12; Col. 3:35-60; Col. 4:48-5:2), the securing mechanism comprising: actuator material (Figs. 1-12 #8) having a first end coupled with the lower portion of the tongue (Figs. 4-8 #16 is attached to the manipulating member which is attached to the tongue at the lower portion), a second end positioned adjacent to the top portion of the tongue (Figs. 1-9 #15 extend along the length of the tongue when the tongue is in the closed position, and are attached to the upper adjacent to the top edge) and comprising a pull portion (Figs. 1-12 #2/3), and a middle portion connecting the first and second ends (Figs. 1-3), wherein the actuator material is moveable between an extended position when the tongue is in the retracted configuration (Figs. 1-9) and a relaxed position when the tongue is in the foot engaging configuration (Figs. 1-9), a lock (Figs. 2-9 #29/30/32) having a first end defining an aperture (Fig. 6 #17/30 lower with aperture #32) configured to receive a portion of the actuator material (Fig. 6 shows #18 is attached to #17/30 thus receives actuator material #8/16), and a release (Fig. 6 #30 top) coupled with the lock and configured to increase the size of the aperture and to allow the actuator material to move relative to the lock (Figs. 2-9).
Regarding Claim 21, Forrester discloses the article of footwear of claim 1, wherein the second end is separated from the upper (Fig. 9 shows the second end #14/15 is capable of being separated from the upper when pull-portions #2/3 are removed, thus “is separated”).
Regarding Claim 22, Forrester discloses the article of footwear of claim 7, wherein the lock comprises: a first end defining an aperture (Fig. 6 #17/30 lower with aperture #32) configured to receive the actuator material (Fig. 6 shows #18 is attached to #17/30 thus receives actuator material #8/16); and a body (Figs. 2-9 show the body of the lock) coupled with the tongue (Fig. 8).
Regarding Claim 23, Forrester discloses the tongue of claim 9, wherein the first end is positioned in the interior area and the second end comprises the pull portion and is positioned outside the interior area (Figs. 2-3 & 9).
Regarding Claim 25, Forrester discloses the tongue of claim 9, further comprising a plurality of reinforcements positioned in the interior area (Figs. 6-8 show multiple reinforcement structures #19/20/28/31), each of the one or more reinforcements defining a guide channel (Figs. 3-9 #20) configured to receive a portion of the actuator material (Figs. 4-9).
Regarding Claim 26, Forrester discloses the tongue of claim 9, wherein, when the actuator material is in the extended position, more of the actuator material is positioned outside of the interior area than when the actuator material is in the relaxed position (Fig. 2 shows the actuator material #8 is exposed to the outside of the interior as the actuator material is not in full contact with the interior material).
Regarding Claim 27, Forrester discloses the tongue of claim 12, wherein applying the force to the pull portion causes at least a portion of the actuator material to move from a position in the interior area to a position outside the interior area (Figs. 1-9; Col. 4:48-5:2).
Regarding Claim 30, Forrester discloses the article of footwear of claim 20, wherein the pull portion is separated from the upper (Fig. 9 shows the second end #14/15 is capable of being separated from the upper when pull-portions #2/3 are removed, thus “is separated”).
Allowable Subject Matter
Claim(s) 3, 24, and 28-29 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant’s arguments, filed 01 July 2026, with respect to the 35 USC 102 rejections of claims 1-20 have been considered but are not persuasive.
Regarding the 35 USC 102 rejection of claims 1, 9, and 20, the Applicant argues:
Forrester does not teach the common amendments “a tongue comprising a first panel having an upper portion and a lower portion separated by a hinge extending across a width of the tongue ...; and actuator material having a first end coupled with the lower portion of the tongue and extending along a length of the tongue to a second end positioned adjacent to the top portion of the tongue, the actuator material moveable between an extended position when the tongue is in the retracted configuration and a relaxed position when the tongue is in the foot-engaging configuration and comprising a pull portion, wherein the actuator material is configured to move the tongue between the retracted configuration and the foot-engaging configuration when a force is applied to the pull portion” to the independent claims as the amendments to the claims would cause the mechanism of Forrester to not function properly. (Remarks Pgs. 4-8)
The Examiner respectfully disagrees. Forrester discloses a tongue (Figs. 1-4 #43) comprising a first panel (Figs. 1-3 show the first panel of #43 with stitching around the terminal edge) having an upper portion (Fig. 2 #43 shows the upper portion to the left of the hinge #18, the upper portion of #43 extending essentially the length of the pocket #45) and a lower portion (Fig. 2 #43 shows the lower portion to the right of the hinge #18, in the general area of #44) separated by a hinge (Figs. 2-9 #18 is a hinge) extending across a width of the tongue (Fig. 2-3 show the hinge #18 extends across the width of the tongue, though not the entire width of the tongue)..; and actuator material (Figs. 1-12 #8) having a first end coupled with the lower portion of the tongue (Figs. 4-8 #16 is attached to the manipulating member which is attached to the tongue at the lower portion thus is coupled to the lower portion of the tongue) and extending along a length of the tongue to a second end positioned adjacent to the top portion of the tongue (Figs. 1-9 #14/15 extend along the length of the tongue when the tongue is in the closed position, and are attached to the upper adjacent to the tongue), the actuator material moveable between an extended position when the tongue is in the retracted configuration and a relaxed position when the tongue is in the foot-engaging configuration and comprising a pull portion, wherein the actuator material is configured to move the tongue between the retracted configuration and the foot-engaging configuration when a force is applied to the pull portion (Figs. 1-9 show the actuator material is movable between the two positions and is described in detail in Forrester Col. 4:48-5:2).
Further for claim 9, Forrester does not teach “an upper portion with a top edge and a lower portion with a bottom edge, the upper and lower portions separated by a hinge extending across a width of the tongue, wherein when the tongue is in a retracted configuration the tongue is folded along the hinge and the top edge is positioned closer to the bottom edge than when the tongue is in a foot-engaging configuration,”. (Remarks Pg. 7)
The Examiner respectfully disagrees. Forrester discloses an upper portion (Fig. 2 #43 shows the upper portion to the left of the hinge #18, the upper portion of #43 extending essentially the length of the pocket #45) having a top edge (Figs. 1-3 show the top edge of #43 at reference #40) and a lower portion (Fig. 2 #43 shows the lower portion to the right of the hinge #18, in the general area of #44) having a bottom edge (Fig. 2 shows the folded edge in the general area of #44), the upper and lower portions separated by a hinge (Figs. 2-9 #18 is a hinge) extending across a width of the tongue (Fig. 2-3 show the hinge #18 extends across the width of the tongue, though not the entire width of the tongue), wherein, when the tongue is in a retracted configuration (Fig. 2), the tongue is folded along the hinge (Fig. 2 shows the fold of the tongue at the hinge) and the top edge is positioned closer to the bottom edge (Fig. 2) than when the tongue is in a foot-engaging configuration (Fig. 1).
Further for claim 20, Forrester does not teach, “a lock having a first end defining an aperture configured to receive a portion of the actuator material, and a release coupled with the lock and configured to increase the size of the aperture and allow the actuator material to move relative to the lock,”. (Remarks Pg. 8).
The Examiner respectfully disagrees. Forrester teaches a lock (Figs. 2-9 #29/30/32) having a first end defining an aperture (Fig. 6 #17/30 lower with aperture #32) configured to receive a portion of the actuator material (Fig. 6 shows #18 is attached to #17/30 thus receives actuator material #8/16), and a release (Fig. 6 #30 top) coupled with the lock and configured to increase the size of the aperture and to allow the actuator material to move relative to the lock (Fig. 6 shows the aperture had the pin #29 which moves the actuator material #8 relative to the lock).
Applicant submits that the dependent claims are patentable based on their dependencies from claim(s) 1, 9, and 20; however, as discussed in the rejection and in the arguments above, claim(s) 1, 9, and 20 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the independent claims under 35 U.S.C. 102 and/or 103 have been maintained.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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