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 of Species I (Figures 1A-1C) in the reply filed on 7/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-3, 5-13 & 17 are being treated on the merits. Claims 4 & 14-16 have been withdrawn from consideration.
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 1-3 & 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,426,666. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are in regards to similar claim matter even though different term language is used. Also, the current application is broader than the patented invention.
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.
Claims 8-13 & 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheney et al. (US 10,638,810, herein after Cheney).
With respect to claim 8, Cheney discloses a rapid-entry shoe (100, see figures 1A, 2A-6B and 9A-C), comprising:
a sole portion (the portion of the footwear covering under the foot of the user’s foot, see figures 1A, 2A-6B and 9A-C);
an upper (the portion of the footwear covering over the foot of the user’s foot, see figures 6A-6B) having a rear portion extending around a heel of the rapid-entry shoe; and
a heel counter (compressible lattice structure, see figures 1A, 2A-6B and 9A-C) extending around the heel and coupled to the upper, the heel counter having an upper central portion, a mid-central portion, a lower central portion, a medial side, and a lateral side (see figures 5A-B),
wherein the upper portion of the heel counter has a first configuration and is configured to be distorted into a second configuration under a load of a foot in response to a foot being inserted into the rapid-entry shoe (the lattice structure 110 is formed of a material that is capable of being reversibly compressed such that it recoils back up after the foot/heel of the user is no longer applying the downward compressive force), at least part of the upper portion is configured to lower relative to the first configuration and the at least part of the upper portion is configured to return to the first configuration after the load of the user's foot is removed (see figures 2A-B, see column 3, lines 53-60),
wherein distortion of the heel counter into the second configuration includes the heel counter widening (the open position may have an expanded shoe opening to facilitate reception of a foot of an individual wearing the rapid-entry shoe 100, while the closed position may have a smaller shoe opening to retain the foot within the rapid-entry shoe 100, see column 4, lines 48-63) with medial and lateral sides of the heel cup moving outward thereby widening an opening of the rapid-entry shoe, and
wherein at least one of the upper central portion, the mid-central portion, and the lower central portion folds (apertures are separated from one another by one or more folds, pleats, surface grooves and/or surface channels (e.g., a recess in the surface of a material)) under the load in the second configuration and unfolds in the first configuration (a downward force on the lattice structure 110 (e.g., exerted by a user's heel) may compress the lattice structure 110 to collapse/fold the plurality of apertures 112 to lower the heel portion of the shoe to the open position and thereby expand the shoe opening (through which a user's foot is inserted)see figures 2A-B).
With respect to claim 9, Cheney discloses wherein the upper central portion of the heel counter is configured to be lowered and extended backward (see figures 9A-C) away from the foot when donning the rapid- entry shoe (see figures 9A-C & 2A-B).
With respect to claim 10, Cheney discloses wherein the heel counter (lattice structure 110) defines an aperture (112), wherein portions of the heel counter surrounding the aperture are configured to distort when the foot is being inserted into the rapid-entry shoe (the rapid-entry shoe 100 may be in an open position when the compressible lattice structure 110 is compressed downward toward a base of the rapid-entry shoe 100 such that the plurality of apertures 112 are at least partially collapsed , see FIG. 2B).
With respect to claim 11, Cheney discloses wherein the upper includes a component (a textile material may have perforations or other openings that may extend through and across the rear portion of the shoe) positioned on at least one of an inner surface and an outer surface of the heel counter to cover the aperture (with reference to FIG. 11, the lattice structure 110 may be separate from a material that is a mesh, knit or the like (e.g., on the inside or outside of the lattice structure 110) that has perforations or openings 132).
With respect to claim 12, Cheney discloses wherein the aperture includes a slit (In some embodiments, the plurality of apertures 112 are open, pass-through slots extending completely through lattice structure 110) and an open position of the slit causes a perimeter of the heel counter to expand.
With respect to claim 13, Cheney discloses wherein the aperture includes a slit (In some embodiments, the plurality of apertures 112 are open, pass-through slots extending completely through lattice structure 110) and the slit is vertical.
With respect to claim 17, Cheney discloses wherein the heel counter includes a material or portion thereof that is weaker or thinner than an adjacent material or portion thereof (apertures are separated from one another by one or more weakened portions of the compressible lattice structure 110, the relative weakness being due to at least one of a differing thickness and a differing material).
Allowable Subject Matter
Claims 1-3 and 5-7 are allowed over the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHARINE KANE whose telephone number is (571)272-3398. The examiner can normally be reached Mon-Fri 9am-6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA HUYNH can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732
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