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 .
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Selbiger (4,817,303).
Regarding claim 1, Selbiger discloses a footwear assembly (figs 1-5) comprising:
a footwear upper (member 12) including a first inelastic portion (member 24), a second inelastic portion (member 28a), and an elastic member (member 32a), the upper forming a toe box portion, a medial side, a lateral side, and a heel portion, the medial side and the lateral side each extending proximally from the toe box portion to the heel portion, wherein closing a gap between the first lace receiving member and the second lace receiving member causes the elastic portion to transition from the tensioned state to the relaxed state (col 5, lines 30-45);
a lace cable (member 46) with a first end anchored along a distal outside portion of the medial side and a second end anchored along a distal outside portion of the lateral side (fig 2);
a plurality of lace guides (members 44a and 44b) distributed along the medial side and the lateral side, each lace guide of the plurality of lace guides adapted to receive a length of the lace cable, wherein the lace cable extends through each of the plurality of lace guides to form a pattern along each of the medial side and lateral side of the footwear, wherein a first lace guide of the plurality of lace guides is secured to the first inelastic portion, a second lace guide of the plurality of lace guides is secured to the second inelastic portion, and the elastic member extends between the first and second lace guides (fig 2);
a medial proximal lace guide of the plurality of lace guides routing the lace cable from the pattern formed by a medial portion of the plurality of lace guides into a position allowing the lace cable to engage a motorized tensioning system disposed within a mid-sole portion; and a lateral proximal lace guide of the plurality of lace guides to route the lace cable out of the position allowing the lace cable to engage the motorized tensioning system into the pattern formed by a lateral portion of the plurality of lace guides (fig 2, the limitations “the lace cable to engage a motorized tensioning system disposed within a mid-sole portion” are treated at an intended use of the lace cable).
Regarding claim 2, Selbiger discloses the elastic member connects the first and second lace guides across a centerline portion of the footwear upper (figs 1-2).
Regarding claim 3, Selbiger discloses the elastic member connects the first and second lace guides across the heel portion of the footwear upper (figs 1-2).
Regarding claim 4, Selbiger discloses the elastic member is a first elastic member and further comprising a second elastic member extending between third and fourth lace guides of the plurality of lace guides (figs 1-3).
Regarding claim 5, Selbiger discloses a footwear assembly (figs 1-5) comprising:
a footwear upper (member 12) including a first inelastic portion (member 24), a second inelastic portion (member 28a), and an elastic member (member 32a), the upper forming a toe box portion, a medial side, a lateral side, and a heel portion, the medial side and the lateral side each extending proximally from the toe box portion to the heel portion, wherein closing a gap between the first lace receiving member and the second lace receiving member causes the elastic portion to transition from the tensioned state to the relaxed state (col 5, lines 30-45);
a lace cable (member 46) with a first end anchored along a distal outside portion of the medial side and a second end anchored along a distal outside portion of the lateral side (fig 2);
a plurality of lace guides (member 44a and 44b) distributed along the medial side and the lateral side, each lace guide of the plurality of lace guides adapted to receive a length of the lace cable, wherein the lace cable extends through each of the plurality of lace guides to form a pattern along each of the medial side and lateral side of the footwear, wherein a first lace guide of the plurality of lace guides is secured to the first inelastic portion, a second lace guide of the plurality of lace guides is secured to the second inelastic portion, and the elastic member extends between the first and second lace guides (fig 2);
a medial proximal lace guide of the plurality of lace guides routing the lace cable from the pattern formed by a medial portion of the plurality of lace guides into a position allowing the lace cable to engage a motorized tensioning system disposed within a mid-sole portion; and a lateral proximal lace guide of the plurality of lace guides to route the lace cable out of the position allowing the lace cable to engage the motorized tensioning system into the pattern formed by a lateral portion of the plurality of lace guides (fig 2, the limitations “the lace cable to engage a motorized tensioning system disposed within a mid-sole portion” are treated at an intended use of the lace cable).
Regarding claim 6, Selbiger discloses the elastic member comprises an elastic centerline portion extending from at least the toe box portion proximally to a foot opening, and the first and second inelastic portions of the footwear upper comprise the medial and lateral sides, respectively (fig 2).
Regarding claim 7, Selbiger discloses the elastic member comprises an elastic heel portion extending proximate to a foot opening, and the first and second inelastic portions of the footwear upper comprise medial and lateral sides of the heel portion, respectively (fig 2).
Regarding claim 8, Selbiger discloses the elastic member can be opened or expanded to permit access to an interior space within the footwear upper (col 5, lines 30-45).
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.
Claim(s) 9-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Selbiger (4,817,303) in view of Hammerslag (6,289,558).
Regarding claim 9, Selbiger teaches a footwear assembly (figs 1-5) comprising: a sole structure (member 16);
a footwear upper (member 12) including a first inelastic portion (member 24), a second inelastic portion (member 28a), and an elastic member (member 32a), the upper defining a toe box portion, a medial side, a lateral side, and a heel portion, the footwear upper connected to the sole structure to form an interior space for receiving a foot, the footwear upper forming a collar to permit access to the interior space, wherein closing a gap between the first lace receiving member and the second lace receiving member causes the elastic portion to transition from the tensioned state to the relaxed state (col 5, lines 30-45);
a lacing system comprising:
a lace cable (member 46) having medial and lateral ends anchored to the footwear upper; and
a plurality of lace guides (member 44a and 44b) for routing the lace cable along the footwear upper between the medial and lateral ends, wherein a first lace guide of the plurality of lace guides is secured to the first inelastic portion, a second lace guide of the plurality of lace guides is secured to the second inelastic portion, and the elastic member extends between the first and second lace guides (fig 2)
wherein the elastic member functions to smooth out a torque versus lace displacement curve during tightening of the lace cable (col 5, lines 30-45).
Selbiger does not teach a motorized tensioning system disposed proximate the sole structure and a lace middle portion passing through the motorized tensioning system.
Hammerslag teaches a footwear having a motorized tensioning system disposed proximate the sole structure and a lace middle portion passing through the motorized tensioning system (fig 3, col 10, lines 16-40).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to modify the footwear of Hatfield by adding the motorized tensioning system and fuse the portion together, as taught by Hammerslag, in order to allow incremental adjustment of the tension of the lace. A release mechanism allows a user to quickly loosen the lace and provides equilibrated tightening pressure across a wearer's foot for sports boots and shoes (Hammerslag, col. 1, lines 10-40).
Regarding claim 10, the modified footwear Selbiger-Hammerslag discloses the elastic member is configured to stretch after the motorized tensioning system has tightened the lace cable (Selbiger, col 5, lines 30-45).
Regarding claim 11, the modified footwear Selbiger-Hammerslag discloses the elastic member is stretchable relative to other portions of the footwear upper (Selbiger, col 5, lines 30-45).
Regarding claim 12, the modified footwear Selbiger-Hammerslag discloses the elastic member is configured to widen the collar (Selbiger, col 5, lines 30-45).
Regarding claim 13, the modified footwear Selbiger-Hammerslag discloses the first and second lace guides are located on medial and lateral portions of the heel portion (Selbiger, fig 2), respectively.
Regarding claim 14, the modified footwear Selbiger-Hammerslag discloses the first and second lace guides are located on the medial side and the lateral side of the footwear upper (Selbiger, fig 2), respectively.
Regarding claim 15, the modified footwear Selbiger-Hammerslag discloses the first and second lace guides comprise loops of material attached to the footwear upper (Selbiger, fig 2).
Regarding claim 16, the modified footwear Selbiger-Hammerslag discloses the first lace guide is located on either the medial or lateral side of the footwear upper and the first inelastic portion of the shoe upper is located on the heel portion (Selbiger, fig 2).
Regarding claim 17, the modified footwear Selbiger-Hammerslag discloses the first lace guide and the first portion of the shoe upper are located on either the medial or lateral side of the footwear upper, and the first inelastic portion of the shoe upper is located at the throat (Selbiger, fig 2).
Regarding claim 18, the modified footwear Selbiger-Hammerslag discloses the elastic member connects the first and second inelastic portions of the shoe upper (Selbiger, figs 1-5).
Regarding claim 19, the modified footwear Selbiger-Hammerslag discloses the first inelastic portion of the shoe upper comprises the lateral side and the second inelastic portion of the shoe upper comprises the medial side, wherein the elastic member spans the heel portion (Selbiger, figs 1-5).
Regarding claim 20, the modified footwear Selbiger-Hammerslag discloses the first inelastic portion of the shoe upper comprises the lateral side and the second inelastic portion of the shoe upper comprises the medial side, wherein the elastic member spans a throat portion of the footwear upper (Selbiger, figs 1-5).
Regarding claim 21, the modified footwear Selbiger-Hammerslag discloses a plurality of elastic members incorporated into the lacing system (Selbiger, figs 1-5).
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. (9,629,418). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as a footwear having an upper, a sole, and a lacing system, wherein the upper comprising inelastic and elastic portions, wherein the lacing system comprising a motorized tensioning, a lace and a plurality of guides.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. (10,376,018). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as a footwear having an upper, a sole, and a lacing system, wherein the upper comprising inelastic and elastic portions, wherein the lacing system comprising a motorized tensioning, a lace and a plurality of guides.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. (11,219,276). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as a footwear having an upper, a sole, and a lacing system, wherein the upper comprising inelastic and elastic portions, wherein the lacing system comprising a motorized tensioning, a lace and a plurality of guides.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. (11,849,811). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as a footwear having an upper, a sole, and a lacing system, wherein the upper comprising inelastic and elastic portions, wherein the lacing system comprising a motorized tensioning, a lace and a plurality of guides.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. (12,478,140). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim essentially the same elements such as a footwear having an upper, a sole, and a lacing system, wherein the upper comprising inelastic and elastic portions, wherein the lacing system comprising a motorized tensioning, a lace and a plurality of guides.
Conclusion
The prior art made of record and not relied upon, is listed on the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO-THIEU L NGUYEN whose telephone number is (571)270-0476. The examiner can normally be reached M-F 7am-3pm.
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BAO-THIEU L. NGUYEN
Primary Examiner
Art Unit 3732
/BAO-THIEU L NGUYEN/Primary Examiner, Art Unit 3732
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