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 without traverse of species I (shoe upper as shown in figures 1-7) in the reply filed on 4/21/2026 is acknowledged.
Claims 3 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/21//2026.
To the extent that the withdrawn claims get rejoined, applicant should amend them during prosecution. Accordingly, if the independent claim is no longer generic then applicant is encourage to cancel the withdrawn claims.
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) 1,2 and 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3404468 (Rosen).
Regarding claims 1,2 and 4-6, Rosen discloses a shoe upper (e.g. 10,12,13,20; see figures 1-5) that includes an upper body (12) that covers an instep of a foot of a wearer and an upper bottom portion (10,20) that covers a sole of the foot of the wearer and is configured such that the upper bottom portion is fixed to an upper portion of a shoe sole, the shoe upper comprising:
a first portion (10,12); and
a second portion (elastic fabric insert 20) having a higher stretchability than that of the first portion, wherein the first portion is provided at least at the upper body, and the second portion is provided at least at the upper bottom portion (at least see col. 3, lines 39 to col. 4, line 30).
Regarding claim [[Claim 2] The shoe upper of claim 1, wherein the second portion is provided at the upper bottom portion so as to be stretched and contracted at least in a foot width direction.]; at least see col. 3, line 70 to col. 4, line 22.
Regarding [[Claim 4] The shoe upper of claim 1, wherein the second portion includes a stretchable material.]; at least see col. 4, lines 3-4.
Regarding [[Claim 5] A shoe that includes a sole and an upper that is fixed to an upper portion of the sole, wherein the upper is the shoe upper of claim 1.]; at least see shoe including sole and upper as shown in figures 1-5.
Regarding [[Claim 6] The shoe of claim 5, wherein the upper is fixed to the sole in a state where the second portion provided at the upper bottom portion is stretched at least in the foot width direction.]; at least see col. 3, line 70 to col. 4, line 22.
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
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