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 .
Claim Rejections - 35 USC § 102
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 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 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) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0310995 (Campari).
Regarding claims 1-4, Campari discloses a shoe comprising a cleat system that includes:
a cleat (31) for engaging a ground surface;
a post portion (33,34,35) operatively engaged with the cleat and that has an end (35) that engages a sole portion (3d,36) of the shoe;
a concave receptacle portion (i.e. concave recess formed on the inwardly curved recess of member 30), the post portion including a section having a complementary convex shape (spherical head 34) that pivotably engages with the concave receptacle portion in response to a shear force; and
one or more elastomeric elements (elastic deformable element (7) with a ring shaped body (32)) that engages with the cleat to control the degree of deformation or deflection of the cleat in response to a lateral shear force and to restore the cleat to its neutral position once the force is removed (see figures 10-11).
Regarding claim 2 [2. The shoe of claim 1, wherein the one or more elastomeric elements are configured and/or disposed to directionally control the deformation or deflection of the cleat.]; at least see figures 10-11 showing the elastomeric element (7) disposed directly with the cleat and deforming as claimed.
Regarding claim 3 [3. The shoe of claim 1, wherein the one or more elastomeric elements comprise a ring disposed around the cleat post portion.]; element (7) has a ring shaped body (32).
Regarding claim 4, [4. The shoe of claim 1, further comprising a retaining post engaged with the post portion.]; see inner part (30) which serves as a retaining post engaged with the post portion (33,34,35).
The cleat assembly taught by Campari has all the structure as claimed and is inherently capable of performing all of the functional language as claimed.
Regarding claim 5, Campari discloses a shoe comprising a cleat system that includes:
a cleat (31) for engaging a ground surface;
a post portion (33,34,35) operatively engaged with the cleat and that has an end (35) that engages a sole portion (3d,36) of the shoe;
a concave recess (i.e. concave recess formed on the inwardly curved recess of member 30), the post portion including a section having a complementary convex shape (spherical head 34) that pivotably engages with the concave receptacle portion in response to a shear force;
one or more elastomeric elements (elastic deformable element (7) with a ring shaped body (32)) that engages with the cleat to control the degree of deformation or deflection of the cleat in response to a lateral shear force and to restore the cleat to its neutral position once the force is removed (see figures 10-11); and
a retaining post engaged with the post portion (see inner part (30) which serves as a retaining post engaged with the post portion (33,34,35)).
The cleat assembly taught by Campari has all the structure as claimed and is inherently capable of performing all of the functional language as claimed.
Regarding claims 6-10, Campari discloses a cleat system comprising:
a cleat (31) having a head portion for engaging a ground surface and extending therefrom a post portion (33,34,35) that has an end (35) for engaging a shoe;
a concave receptacle portion (i.e. concave recess formed on the inwardly curved recess of member 30), the post portion including a section having a complementary convex shape (spherical head 34) that pivotably engages with the concave receptacle portion in response to a shear force; and
one or more elastomeric elements (elastic deformable element (7) with a ring shaped body (32)) that engages with the cleat to control the degree of deformation or deflection of the cleat in response to a lateral shear force and to restore the cleat to its neutral position once the force is removed (see figures 10-11).
Regarding claim 7 [7. The cleat assembly of claim 6, wherein the one or more elastomeric elements are configured and/or disposed to directionally control the deformation or deflection of the cleat.]; at least see figures 10-11 showing the elastomeric element (7) disposed directly with the cleat and deforming as claimed.
Regarding claim 8 [8. The cleat assembly of claim 6, wherein the one or more elastomeric elements comprise a ring disposed around the cleat post portion.]; element (7) has a ring shaped body (32).
Regarding claim 9, [9. The cleat assembly of claim 6, wherein an operative interface of the cleat comprises an elastomeric portion.]; inner part (30) is made of an elastomeric portion (see ¶0048) at an operative interface of the cleat (i.e. where outer surface of 30 makes contact with the inner surface of the cleat).
Regarding claim 10, [10. The cleat assembly of claim 6, further comprising a retaining post engaged with the post portion.]; see inner part (30) which serves as a retaining post engaged with the post portion (33,34,35).
The cleat assembly taught by Campari has all the structure as claimed and is inherently capable of performing all of the functional language as claimed.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-16 of U.S. Patent No. 12,490,812. Although the claims at issue are not identical, they are not patentably distinct from each other because they include all the same claim limitations (e.g. Cleat assembly, post portion (i.e. “fastener” in ‘812), concave recess, one or more elastomeric elements, the retaining post, etc.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including:
-“The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.”
--“A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.”
-Moreover, “The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06” MPEP 714.02. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TED KAVANAUGH whose telephone number is (571) 272-4556. The examiner can normally be reached on Monday-Thursday 8AM-6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule a telephone interview, applicant is encouraged to call the examiner. Normally telephone interviews can quickly be scheduled. For other types of interviews, 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 on 57-1272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Ted Kavanaugh/
Primary Patent Examiner
Art Unit 3732
Tel: (571) 272-4556