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 .
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12268280. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim footwear with a heel structural element having a rear portion, arm portions, and the rear portion having a convex cross section.
Claim 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19/047591 Although the claims at issue are not identical, they are not patentably distinct from each other because both claim footwear with a heel structural element having a rear portion, arm portions, and the rear portion having a convex cross section.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a strap element with a heel structure element disposed inside the strap element” must be shown or the feature(s) canceled from the claim(s). It is noted that the specification paragraph [0029] states “the footwear strap includes a strap element (not shown in FIGS 1A-1C)” and this is the only description of a “strap element”. There is other mention of “The strap” but this terminology is directed towards the entire rear portion as shown in the Figures 3A-3D and references as number 300 as “the footwear strap”, not a strap element, see paragraphs [0050]-[0053]. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In claims 1, 9, and 13 the phrase “a strap element” is confusing, vague, and indefinite because it is not clear from the drawings and the specification what structures applicant intends to encompass with such language. The phrase “a strap element with a heel structure element disposed inside the strap element” is not adequately described or shown. It is noted that the specification paragraph [0029] states “the footwear strap includes a strap element (not shown in FIGS 1A-1C)” and this is the only description of a “strap element”. There is other mention of “The strap” but this terminology is directed towards the entire rear portion as shown in the Figures 3A-3D and references as number 300 as “the footwear strap”, not a strap element, see paragraphs [0050]-[0053]. It is unlcear as to what structures are considered to be “a strap element” or how and where “a strap element” is located or what shape is encompassed.
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.
Claims 1-17 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.
In claims 1, 9, and 13 the phrase “a strap element” is confusing, vague, and indefinite because it is not clear from the drawings and the specification what structures applicant intends to encompass with such language.
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) 1-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weeks (2023/0284748 which is based on application PCT/US22/46726 filed 10/14/2021 and printed as WO 2023/064568 with a publication date of 4/20/23). These documents appear to be identical and the US publication 2023/0284748 has been used to clarify the rejection below.
Weeks shows An article of footwear comprising:
a strap element (42) and a heel structural element (52) disposed inside the strap element (see figure 7);
the heel structural element (52) positioned at a heel region of the footwear, configured to maintain structural shape and integrity during foot insertion;
the heel structural element comprising an upper rear portion (see figures 6A and 6B) with an inwardly oriented convex cross-sectional curvature configured to facilitate easily receiving a user’s heel when donning the shoe; and
at least of portion of the convex cross-sectional curvature facing a sole structure of the footwear (see figures 6A and 6B) as claimed.
In reference to claims 2, 3, and 9 see side arms at 70 and see curvature shown in figure 7.
In reference to claim 4, see figures 4C and 4D.
In reference to claims 5 and 11 see paragraph [0044].
In reference to claims 6 and 12, see figures 6A and 6B.
In reference to claims 7 and 17, the arms are considered to have planar surfaces as shown in the figures inasmuch as applicant has shown and described such.
In reference to claims 8 and 15, see paragraph [0039] which states that the heel element (32) is an interior component of the upper and therefor they terminated adjacent the sole structure and do not directly attach to the sole.
In reference to claim 10, the bottom of the upper and lining is considered to be a “base” between the heel element and the sole (see paragraph [0039]).
In reference to claims 13 and 14, see paragraph [0044] and arms at 70 and the rear shaped as shown in figure 6A and 6B.
In reference to claim 16, see figure 7.
Response to Arguments
Applicant's arguments filed 3/27/26 have been fully considered but they are not persuasive.
In response to applicants’ arguments directed towards Weeks, see above rejections related to the newly added term “strap element” and Weeks is considered to show a “strap element” (42, figure 7) as claimed.
Information Disclosure Statement
It is noted that in view of the lack of disclosure of the “strap element” the above rejection is considered to read on this phrase. If one were to argue a specific “shape” to a “strap element” it appears that newly cited reference to Matsumoto (JP 2009077768) teaches a thin “strap element” (32) (see figures 1-3) with a heel element (31) located inside the exterior element.
The prior art cited and not relied upon by the Examiner for the above rejections are considered to be pertinent in that the references cited are considered to be the nearest prior art to the subject matter defined in the claims as required by MPEP707.05.
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.
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Any inquiry concerning the MERITS of this examination from the examiner should be directed to Marie Bays whose telephone number is (571) 272-4559. The examiner can normally be reached from Mon-Thurs 6-4. Alternatively if the Examiner cannot be reached, please contact the Examiners SPE Alissa Tompkins at 571-272-3425.
/MARIE D BAYS/Primary Examiner, Art Unit 3732
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