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 .
Status of Claims
This Office Action is in response to claims 1-20, filed 14 August 2025, which are pending in this application.
Drawings
The drawings are objected to because Figures 1-3 are black and white photographs. Black and white photographs are not ordinarily permitted in utility patent applications unless there is no other practicable medium for illustrating the claimed invention. Based on Figures 4-19, which are black and white drawings, the claimed invention of this application is capable of being shown as a series of drawings. It is also noted that dark shading within the drawings is not acceptable. Each claimed aspect of the invention must be clear, visible, and appropriately marked within the drawings for the understanding of the subject matter sought to be patented. See 37 C.F.R. 1.84(b)(2).
Photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one photograph drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Objections
Claim(s) 9-10 and 12 is/are objected to because of the following informalities:
Claim 9, line 2, should recite, “
Claim 9, line 3, should recite, “extending across [[a]]the width of the tongue”.
Claim 9, line 7, should recite, “to an upper for [[an]]the article of footwear”.Claim 10, line 3, should recite, “extends along [[a]]the length of the tongue”.
Claim 12, line 2, should recite, “is disposed at [[a]]the distal end of the tongue”.
Appropriate correction is required.
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:
“securing mechanism” of claims 1, 9, and 20
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(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 3 and 20 (and claims 4-7 at least for depending from a rejected claim) is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3 and 20 recites the limitation “the length of activator material” in lines 5 and 10, respectively. There is insufficient antecedent basis for this limitation in the claim as there is no “a length of activator material” previously recited. It is unclear if this recitation was intended to be “the length of actuator material”, however, the Specification also recites “the length of activator material” so the Examiner is unsure. Therein the meets and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “the length of actuator material”.
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) 1-20 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); a tongue (Figs. 1-12 #43) pivotably coupled to the upper (Figs. 2-8); 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 a retracted configuration and a foot-engaging configuration (Figs. 1-12; Col. 4:48-5:2).
Regarding Claim 2, Forrester discloses the article of footwear of claim 1, wherein the tongue further comprises a hinge (Fig. 8 #18) extending across a width of the tongue (Figs. 5-8 shows the hinge along a width of the tongue), such that the tongue is foldable along the hinge (Figs. 1-9).
Regarding Claim 3, Forrester discloses the article of footwear of claim 2, wherein the securing mechanism comprises a length of an actuator material (Figs. 1-12 #8) received by one or more tongue apertures (Figs. 1-12 #46/apertures of #18); and wherein the length of actuator material extends along a length of the tongue (Figs. 2-9) and is configured such that pulling on a pull portion of the length of activator material (Figs. 1-12 #2/3) causes the tongue to fold along the hinge (Figs. 1-12; Col. 3:35-60).
Regarding Claim 4, Forrester discloses the article of footwear of claim 3, wherein the securing mechanism comprises the pull portion extending from a distal end of the tongue (Figs. 3-8).
Regarding Claim 5, Forrester discloses the article of footwear of claim 3, wherein the tongue further comprises a guide (Figs. 3-9 #20) configured to receive the length of actuator material (Figs. 3-9).
Regarding Claim 6, Forrester discloses the article of footwear of claim 5, wherein the guide defines two parallel channels (Figs. 2-9 #22/23), each configured to receive a respective end of the length of actuator material (Figs. 3-9).
Regarding Claim 7, Forrester discloses the article of footwear of claim 3, wherein the securing mechanism further comprises a lock (Figs. 2-9 #29/30/32) configured to secure the length of actuator material (Figs. 2-9), such that the tongue is secured in the retracted configuration when the lock is engaged (Figs. 2-9).
Regarding Claim 8, Forrester discloses the article of footwear of claim 1, wherein the upper defines a foot-receiving cavity (Figs. 1-2 #40), and wherein the tongue comprises a back panel facing the foot-receiving cavity (Figs. 1-2 #43 back) and a front panel positioned opposite the back panel (Figs. 1-2 #43 front), with the front panel forming an externally-facing surface of the tongue (Figs. 1-2), and wherein the securing mechanism is disposed at least partially between the front panel and the back panel (Figs. 1-2 shows the securing mechanism is placed in #45 thus placing is between #43 front and #43 back; Col. 3:61-4:23).
Regarding Independent Claim 9, Forrester discloses a tongue (Figs. 1-12 #43) for an article of footwear (Figs. 1-2), the tongue comprising: a tongue having a width and a length (Figs. 1-2), a hinge (Fig. 8 #18) extending across a width of the tongue (Figs. 5-8 shows the hinge along a width of the tongue), such that the tongue is foldable along the hinge (Figs. 1-9), 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 a retracted configuration and a foot-engaging configuration (Figs. 1-12; Col. 4:48-5:2), wherein the tongue is configured to be pivotably coupled to an upper for an article of footwear (Figs. 1-9).
Regarding Claim 10, Forrester discloses the tongue of claim 9, the securing mechanism comprising a length of actuator material (Figs. 1-12 #8) received by one or more tongue apertures (Figs. 1-12 #46/apertures of #18); and wherein the length of actuator material extends along a length of the tongue (Figs. 2-9), wherein the tongue is configured to fold along the hinge by pulling on a pull portion of the length of actuator (Figs. 1-12 #2/3) material (Figs. 1-12; Col. 3:35-60).
Regarding Claim 11, Forrester discloses the tongue of claim 10, wherein the securing mechanism comprises the pull portion extending from a distal end of the tongue (Figs. 1-9); and wherein the tongue is configured to fold along the hinge by pulling on the pull portion (Figs. 1-12; Col. 3:35-60; 4:48-5:2).
Regarding Claim 12, Forrester discloses the tongue of claim 11, wherein the pull portion is disposed at a distal end of the tongue (Figs. 1-9).
Regarding Claim 13, Forrester discloses the tongue of claim 11, wherein the pull portion is disposed at a medial edge of the tongue (Figs. 2-3).
Regarding Claim 14, Forrester discloses the tongue of claim 11, wherein the pull portion is disposed at a lateral edge of the tongue (Figs. 2-3).
Regarding Claim 15, Forrester discloses the tongue of claim 10, further comprising a guide (Figs. 3-9 #20) configured to receive the length of actuator material (Figs. 2-9).
Regarding Claim 16, Forrester discloses the tongue of claim 15, wherein the guide defines two parallel channels (Figs. 2-9 #22/23), each configured to receive a respective end of the length of actuator material (Figs. 3-9).
Regarding Claim 17, Forrester discloses the tongue of claim 10, further comprising a lock (Figs. 2-9 #29/30/32) configured to secure the length of actuator material (Figs. 2-9) 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”), and the translatable clasp is configured to be at least partially received by the tubular body and to translate relative to the tubular body (Figs. 2-9).
Regarding Claim 19, Forrester discloses the tongue of claim 9, further comprising a back panel (Figs. 1-2 #43 back) and a front panel positioned opposite the back panel (Figs. 1-2 #43 front), with the front panel forming an externally-facing surface of the tongue (Fig. 1), and wherein the securing mechanism is disposed at least partially between the front panel and the back panel (Figs. 1-2 shows the securing mechanism is placed in #45 thus placing is between #43 front and #43 back; Col. 3:61-4:23).
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) pivotably coupled to the upper (Figs. 1-2) and comprising a hinge (Fig. 8 #18) extending across a width of the tongue (Figs. 5-8 shows the hinge along a width of the tongue), such that the tongue is foldable along the hinge (Figs. 1-9); 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 a retracted configuration and a foot-engaging configuration (Figs. 1-12; Col. 3:35-60; Col. 4:48-5:2), the securing mechanism comprising a length of actuator material (Figs. 1-12 #8) received by the one or more tongue apertures (Figs. 3-9), wherein the length of actuator material extends along a length of the tongue (Figs. 3-9) and is configured such that pulling on a pull portion of the length of activator material (Figs. 1-12 #2/3) causes the tongue to fold along the hinge (Figs. 1-12; Col. 3:35-60).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lederer US 20120036737 teaches a shoe tongue
Feinstein US 9730494 teaches a shoe tongue
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