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 Objections
Claim 1 is objected to because of the following informalities: “a front-side portion contiguous to at least one of a front end portion” in Claim 1 should read “a front-side portion contiguous to a front end portion” as there is only one structure recited for the front-side portion to be contiguous to. Appropriate correction is required.
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.
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Claims 1 and 3-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-13 of U.S. Patent No. 12582199. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are minor. See comparison table below:
Instant app 19/460940
US PN 12582199
1
A shoe comprising: a sole; and an upper located above the sole and having an opening through which a foot of a wearer is inserted when the wearer puts on the shoe, and a shoelace tightening region located forward of the opening,
1
A shoe comprising: a sole; and an upper located above the sole and having an opening through which a foot of a wearer is inserted when the wearer puts on the shoe, and a shoelace tightening region located forward of the opening,
wherein the upper further includes: an upper body configured to, together with the sole, accommodate the foot of the wearer, and a tape member having a generally rectangular shape and being higher in rigidity than the upper body, the tape member being sewn onto an outer surface of the upper body,
wherein the upper further includes: an upper body configured to, together with the sole, accommodate the foot of the wearer; and a tape member having a generally rectangular shape and being higher in rigidity than the upper body, the tape member being sewn onto an outer surface of the upper body,
wherein the tape member includes: a first portion located in the shoelace tightening region and extending in a front-rear direction of the upper, a front-side folded portion contiguous to at least one of a front end portion and a rear-side folded portion contiguous to a rear end portion of the first portion,
wherein the tape member includes: a first portion located in the shoelace tightening region and extending in a front- rear direction of the upper, a front-side folded portion contiguous to a front end portion and a rear-side folded portion contiguous to a rear end portion of the first portion,
each of the front-side folded portion and rear-side folded portion being formed by folding the tape member downward when viewed from the first portion, and
each of the front-side and rear-side folded portions being formed by folding the tape member downward when viewed from the first portion…
wherein the first portion is sewn onto the upper body such that a plurality of gaps through which a shoelace passes are provided between the first portion and the upper body, and wherein the first portion of the tape member does not include any folds.
and wherein the first portion is sewn onto the upper body such that a plurality of gaps through which a shoelace passes are provided between the first portion and the upper body, and wherein the first portion of the tape member does not include any folds.
3
The shoe according to claim 1, wherein the upper further includes a plurality of stitch portions provided by sewing the first portion onto the upper body to provide the gaps, and the stitch portions are arranged to be spaced apart from each other in an extending direction of the first portion such that the shoelace passing through the gaps between the upper body and the first portion can be folded around each of the stitch portions on the outer surface of the upper body and engaged with each of the stitch portions.
3
The shoe according to claim 1, wherein the upper further includes a plurality of stitch portions provided by sewing the first portion onto the upper body to provide the gaps, and the stitch portions are arranged to be spaced apart from each other in an extending direction of the first portion such that the shoelace passing through the gaps between the upper body and the first portion can be folded around each of the stitch portions on the outer surface of the upper body and engaged with each of the stitch portions.
4
The shoe according to claim 3, wherein a size of each of the stitch portions in the extending direction is smaller than a separation distance between the stitch portions.
4
The shoe according to claim 3, wherein a size of each of the stitch portions in the extending direction is smaller than a separation distance between the stitch portions.
5
The shoe according to claim 3, wherein each of the stitch portions is located to entirely overlap with the first portion in a width direction of the first portion, the width direction being orthogonal to the extending direction and extending along the outer surface of the upper body, and wherein the stitch portions are configured such that, when the shoelace is engaged with each of the stitch portions, at least a part of a folded portion of the shoelace is not located between the upper body and the first portion.
5
The shoe according to claim 3, wherein each of the stitch portions is located to entirely overlap with the first portion in a width direction of the first portion, the width direction being orthogonal to the extending direction and extending along the outer surface of the upper body, and wherein the stitch portions are configured such that, when the shoelace is engaged with each of the stitch portions, at least a part of a folded portion of the shoelace is not located between the upper body and the first portion.
6
The shoe according to claim 3, wherein each of the stitch portions is located to entirely overlap with the first portion in a width direction of the first portion, the width direction being orthogonal to the extending direction and extending along the outer surface of the upper body, and wherein the stitch portions are configured such that, when the shoelace is engaged with each of the stitch portions, a folded portion of the shoelace is entirely located between the upper body and the first portion.
6
The shoe according to claim 3, wherein each of the stitch portions is located to entirely overlap with the first portion in a width direction of the first portion, the width direction being orthogonal to the extending direction and extending along the outer surface of the upper body, and wherein the stitch portions are configured such that, when the shoelace is engaged with each of the stitch portions, a folded portion of the shoelace is entirely located between the upper body and the first portion.
7
The shoe according to claim 1, wherein the upper further includes a first reinforcing portion higher in rigidity than the upper body, the first reinforcing portion being located on an inner surface of the upper body so as to sandwich the upper body between the first reinforcing portion and the first portion, and wherein together with the first portion, the first reinforcing portion is sewn onto the upper body.
7
The shoe according to claim 1, wherein the upper further includes a first reinforcing portion higher in rigidity than the upper body, the first reinforcing portion being located on an inner surface of the upper body so as to sandwich the upper body between the first reinforcing portion and the first portion, and wherein together with the first portion, the first reinforcing portion is sewn onto the upper body.
8
The shoe according to claim 1, wherein the upper further includes a second reinforcing portion higher in rigidity than the upper body and the second reinforcing portion extending in an up-down direction along the upper body.
8
The shoe according to claim 7, wherein the upper further includes a second reinforcing portion higher in rigidity than the upper body... and the second reinforcing portion extending in an up-down direction along the upper body.
9
The shoe according to claim 8, wherein the upper further includes a first reinforcing portion higher in rigidity than the upper body, the first reinforcing portion being located on an inner surface of the upper body so as to sandwich the upper body between the first reinforcing portion and the first portion, wherein together with the first portion, the first reinforcing portion is sewn onto the upper body, and wherein the second reinforcing portion is located on the inner surface of the upper body, connected to the first reinforcing portion, and formed of a single member together with the first reinforcing portion.
7
The shoe according to claim 1, wherein the upper further includes a first reinforcing portion higher in rigidity than the upper body, the first reinforcing portion being located on an inner surface of the upper body so as to sandwich the upper body between the first reinforcing portion and the first portion, and wherein together with the first portion, the first reinforcing portion is sewn onto the upper body.
9
The shoe according to Claim 8 wherein the second reinforcing portion is located on the inner surface of the upper body, connected to the first reinforcing portion, and formed of a single member together with the first reinforcing portion.
10
The shoe according to claim 1, wherein the tape member is a lateral foot-side tape member attached to the outer surface of the upper body on a lateral foot side, and the shoe further includes a medial foot-side tape member attached to the outer surface of the upper body on a medial foot side.
10
The shoe according to claim 1, wherein the tape member is a lateral foot-side tape member attached to the outer surface of the upper body on a lateral foot side, and the shoe further includes a medial foot-side tape member substantially the same as the lateral foot-side tape member and attached to the outer surface of the upper body on a medial foot side, wherein the lateral foot-side tape member and medial foot-side tape members are formed of separate contiguous tape members.
11
The shoe according to claim 1, wherein the upper body includes: a lateral foot portion located on a lateral foot side, and a medial foot portion located on a medial foot side and connected to the lateral foot portion, wherein the upper body has a slit located in the shoelace tightening region and extending forward from the opening such that the lateral foot portion and the medial foot portion are separated from each other, and wherein the lateral foot portion and the medial foot portion are configured in such a manner that the lateral foot portion and the medial foot portion located on both sides of the slit in a foot width direction overlap with each other by tightening the shoelace passing through the gaps between the first portion and the upper body.
11
The shoe according to claim 1, wherein the upper body includes: a lateral foot portion located on a lateral foot side, and a medial foot portion located on a medial foot side and connected to the lateral foot portion, wherein the upper body has a slit located in the shoelace tightening region and extending forward from the opening such that the lateral foot portion and the medial foot portion are separated from each other, and wherein the lateral foot portion and the medial foot portion are configured in such a manner that the lateral foot portion and the medial foot portion located on both sides of the slit in a foot width direction overlap with each other by tightening the shoelace passing through the gaps between the first portion and the upper body.
12
The shoe according to claim 1, wherein the upper body is formed of a knitted fabric.
12
The shoe according to claim 1, wherein the upper body is formed of a knitted fabric.
13
method of manufacturing a shoe, the method comprising: preparing a sole; manufacturing an upper having an opening through which a foot of a wearer is inserted when the wearer puts on the shoe and including a shoelace tightening region located forward of the opening; and joining the upper to a top side of the sole, wherein manufacturing the upper includes: preparing an upper body capable of, together with the sole, accommodating the foot of the wearer, forming a front-side folded portion and a rear-side folded portion by folding a tape member having a generally rectangular shape along a fold portion, the tape member being higher in rigidity than the upper body, and sewing a first portion of the tape member onto an outer surface of the upper body so as to be located in the shoelace tightening region and to extend in a front-rear direction of the upper, the first portion being a portion on one side in the tape member when viewed from the front-side folded portion, wherein the first portion is sewn onto the upper body such that a plurality of gaps through which a shoelace passes are provided between the first portion and the upper body, and wherein the first portion of the tape member does not include any folds.
13
A method of manufacturing a shoe, the method comprising: preparing a sole; manufacturing an upper having an opening through which a foot of a wearer is inserted when the wearer puts on the shoe and including a shoelace tightening region located forward of the opening; and joining the upper to a top side of the sole, wherein manufacturing the upper includes: preparing an upper body capable of, together with the sole, accommodating the foot of the wearer, forming a front-side folded portion and a rear-side folded portion by folding a tape member having a generally rectangular shape along respective fold portions, the tape member being higher in rigidity than the upper body, sewing a first portion of the tape member onto an outer surface of the upper body so as to be located in the shoelace tightening region and to extend in a front-rear direction of the upper, the first portion being a portion on one side in the tape member when viewed from the folded portions, attaching a front-side second portion of the tape member to the outer surface of the upper body so as to extend downward from the front-side folded portion to a peripheral side surface of the sole, the front-side second portion being a portion on the other side in the tape member when viewed from the folded portions, attaching a rear-side second portion of the tape member to the outer surface of the upper body so as to extend downward from the rear-side folded portion to a peripheral side surface of the sole, the rear-side second portion being a portion on the other side in the tape member when viewed from the folded portions, and wherein the first portion is sewn onto the upper body such that a plurality of gaps through which a shoelace passes are provided between the first portion and the upper body, and wherein the first portion of the tape member does not include any folds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALEY A SMITH whose telephone number is (571)272-6597. The examiner can normally be reached Monday - Thursday 7:00 am - 5:00 pm.
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/HALEY A SMITH/Primary Examiner, Art Unit 3732
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