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 .
Election/Restrictions
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 22, 2026.
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 (i.e., changing from AIA to pre-AIA ) 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.
1. Claim(s) 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hieblinger (US 2016/0338449).
Regarding Claim 7, Hieblinger discloses an article of footwear, comprising: a sole (1); an upper (2), secured with respect to the sole, forming an opening to admit a foot of a wearer (as seen in Fig.1), the opening being adjustable between a first segment of the upper (i.e. medial side of 2) and a second segment of the upper (i.e. lateral side of 2) to secure the article of footwear to the foot of the wearer (para.24); a first fold-over strip (3) extending from a lateral side of the article of footwear to a medial side of the article of footwear over the upper; a second fold-over strip (4) extending from the medial side of the article of footwear to a lateral side of the article of footwear over the upper (as seen in Fig.2), at least one of the first and second fold-over strips at least partially overlapping the other one of the first and second fold-over strips (as seen in Fig.2); at least one lace guide (9), positioned on at least one of the first and second fold-over strips (as seen in Fig.3); a heel lace guide (rear 15) positioned on a heel of the upper (as seen in Fig.1); wherein a lace (6) is configured to extend through the at least one lace guide and the heel lace guide and cinch the first and second fold-over strips down onto the upper when the tension is increased on the lace (para.24; as seen in Fig.1-3).
Regarding Claim 8, Hieblinger further discloses an article of footwear of claim 7, wherein the at least one lace guide (9) includes a first lace guide positioned on the first fold-over strip (3) and a second lace guide (8) positioned on the second fold-over strip (4), wherein the lace (6) is configured to extend through both the first and second lace guides (as seen in Fig.1-3).
Regarding Claim 9, Hieblinger discloses an article of footwear of claim 7, wherein the first and second fold-over strips are secured to and extend from the sole (as seen in Fig.1 & 3).
Regarding Claim 10, Hieblinger discloses an article of footwear of claim 7, wherein the first fold-over strip overlaps the second fold-over strip (as seen in Fig.2).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
2. Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hieblinger (US 2016/0338449) in view of Rushbrook (US 2015/0289595).
Regarding Claim 1, Hieblinger discloses an article of footwear, comprising: a sole (1); an upper (2), secured with respect to the sole, forming an opening to admit a foot of a wearer (as seen in Fig.1), the opening being adjustable between a first segment of the upper (i.e. medial side of 2) and a second segment of the upper (i.e. lateral side of 2) to secure the article of footwear to the foot of the wearer (para.24); a first fold-over strip (3) extending from a lateral side of the article of footwear to a medial side of the article of footwear over the upper; a second fold-over strip (4) extending from the medial side of the article of footwear to a lateral side of the article of footwear over the upper (as seen in Fig.2), at least one of the first and second fold-over strips at least partially overlapping the other one of the first and second fold-over strips (as seen in Fig.2); at least one lace guide (9), positioned on at least one of the first and second fold-over strips (as seen in Fig.3; para.24); a reel lacing system (8), configured to engage with a lace (6) to increase and decrease tension on the lace (para.24), the reel lacing system comprising: a lace spool (para.24), configured to spool and unspool the lace (via 8) to increase and decrease the tension on the lace, respectively (para.24); wherein the lace is configured to extend through the at least one lace guide and cinch the first and second fold-over strips down onto the upper when the tension is increased on the lace (para.24). Hieblinger does not disclose a heel lace guide positioned on a heel of the upper; a motorized lacing system positioned within the sole, the motorized lacing system comprising: a motor; and a lace spool, operatively coupled to the motor. However, Rushbrook teaches footwear having an upper (145), straps (140), and a sole (110,165); a lace (155) which tightens the straps on the medial and lateral sides (para.68 & 117; as seen in Fig.1 & 2); a heel lace guide (aperture in 160 that receives 155) positioned on a heel of the upper (as seen in Fig.3); a motorized lacing system (para.71; 160,505,510,415,420,430,440) positioned within the sole (as seen in Fig.5), the motorized lacing system comprising: a motor; and a lace spool, operatively coupled to the motor (para.71 & 136).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the reel lacing system of Hieblinger to be motorized, as taught by Rushbrook, in order for adjustments may be made without the wearer having to stop the activity in which they are participating, allowing for adjusting tightness according to changes in the fit. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have placed the reel lacing system of modified Hieblinger at the heel and sole, as taught by Rushbrook, in order to provide the desired aesthetic appearance for the user. Further, it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04 VI. When in combination, Hieblinger and Rushbrook teach the lace is configured to extend through the at least one lace guide and the heel lace guide and cinch the first and second fold-over strips down onto the upper when the tension is increased on the lace.
Regarding Claim 2, Hieblinger further discloses an article of footwear of claim 1, wherein the at least one lace guide (9) includes a first lace guide positioned on the first fold-over strip (3), including a lace holder (i.e. 8 is a lace holder) on the second fold-over strip (as seen in Fig.1). Hieblinger does not explicitly disclose a second lace guide positioned on the second fold-over strip. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the lace holder of Hieblinger to be a second lace guide, the same as the first lace guide, as taught by Hieblinger, in order to provide a lace guide on the second fold-over strip to route the lace to the motorized lacing system of modified Hieblinger. When in combination, Hieblinger and Rushbrook teach wherein the lace is configured to extend through both the first and second lace guides.
Regarding Claim 3, Hieblinger discloses an article of footwear of claim 1, wherein the first and second fold-over strips are secured to and extend from the sole (as seen in Fig.1 & 3).
Regarding Claim 4, Hieblinger discloses an article of footwear of claim 1, wherein the first fold-over strip overlaps the second fold-over strip (as seen in Fig.2).
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.
3. Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,471,678. Although the claims at issue are not identical, they are not patentably distinct from each other because instant Claim 1 recites the same subject matter as Claim 1 of US 12,471,678. Instant Claim 2 recites the same subject matter as Claim 2 of US 12,471,678. Instant Claim 3 recites the same subject matter as Claim 3 of US 12,471,678. Instant Claim 4 recites the same subject matter as Claim 4 of US 12,471,678. Instant Claim 5 recites the same subject matter as Claim 5 of US 12,471,678. Instant Claim 6 recites the same subject matter as Claim 6 of US 12,471,678. Instant Claim 7 recites the same subject matter as Claim 7 of US 12,471,678. Instant Claim 8 recites the same subject matter as Claim 8 of US 12,471,678. Instant Claim 9 recites the same subject matter as Claim 9 of US 12,471,678. Instant Claim 10 recites the same subject matter as Claim 10 of US 12,471,678. Instant Claim 11 recites the same subject matter as Claim 11 of US 12,471,678. Instant Claim 22 recites the same subject matter as Claim 2 of US 12,471,678.
Allowable Subject Matter
Claims 5-6 and 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 5-6 and 11-12 are allowed as none of the prior art, alone or in combination, teach the lace exits the upper through a first aperture, extends through the at least one lace guide, extends through the heel lace guide, and enters the upper through a second aperture different than the first aperture.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Hatfield (US 2013/0160328) teaches overlapping straps that tighten at the heel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN E LYNCH whose telephone number is (571)272-3267. The examiner can normally be reached Monday to Friday, 8:00am-4:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J. Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN E LYNCH/Primary Examiner, Art Unit 3732
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