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 .
Status of Claims
This Office Action is in response to Claims 1-11 and 13-15, filed October 8, 2025, which are pending in this application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the luggage and other leather goods (claims 1 and 15), “strap guide” (claim 1), two flat discs (claim 6), and a retaining pin (claims 8-9 and 14), the retaining strap running OVER the instep of the foot (claim 14) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "4" and "45" (para. 0044) have both been used to designate the “front cover area”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a hold down device for holding the retaining strap” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1, 4-6, 11, and 14-15 are objected to because of the following informalities:
Claim 1 recites the limitation "the upper side” in line 13. There is insufficient antecedent basis for this limitation in the claim;
Claim 1 recites the limitation "the bottom side” in line 19. There is insufficient antecedent basis for this limitation in the claim;
Claim 4 recites the limitation "the clear height” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim;
Claim 5 recites the limitation "the direction” in line 6. There is insufficient antecedent basis for this limitation in the claim;
Claim 6 recites the limitation "the rear edge” in line 5. There is insufficient antecedent basis for this limitation in the claim;
Claim 6 recites the limitation "the front edge” in line 5. There is insufficient antecedent basis for this limitation in the claim;
Claim 11 recites the limitation "the outer sides” in line 4. There is insufficient antecedent basis for this limitation in the claim;
Claim 14 recites the limitations "the instep”, “the foot”, “the heel area”, “the opposite end”, and “the other side”. There is insufficient antecedent basis for these limitations in the claim;
Claim 15 recites the limitation "the width” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 8-11 and 13-15 (and claim 7 at least for depending from a rejected claim) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite as it recites, “A buckle, in particular for leather goods, other luggage items or footwear, and in particular for holding a retaining strap embodied as a flat strap with a flat side, wherein the buckle has a buckle body with….” As this preamble does not contain a transitional phrase such as “comprising”, “consisting of”, “consisting essentially of”, etc., it is unclear if the claim is open-ended such that the claim invention may have structures not recited or if the claim is close-ended and the claimed invention does not have structures beyond what is recited. See MPEP 2111.03. For purposes of examination, Examiner has interpreted the claim to be open-ended.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. In the present instance:
Claim 1 recites the broad recitation “a buckle”, and the claim also recites “in particular for leather goods, other luggage items or footwear, and in particular for holding a retaining strap embodied as a flat strap with a flat side” which is the narrower statement of the range/limitation.
Claim 2 recites the broad recitation “characterized in that the front cover area and the rear underlay area are embodied to be flat and are provided in two planes parallel to each other, which are offset from each other at a distance of between 3 mm and 15 mm”, and the claim also recites “preferably between 5 mm and 10 mm, in the direction of” which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “characterized in that the retaining pin has a retaining pin body”, and the claim also recites “in particular a cylindrical retaining pin body” which is the narrower statement of the range/limitation.
Claim 8 recites the broad recitation “to characterized in that the fastening means is constituted by a retaining means receptacle in the form of a passage opening or an insertion groove for the purpose of”, and the claim also recites “in particular, snapping in a retaining pin” which is the narrower statement of the range/limitation.
Claim 10 recites the broad recitation “spring slots extending at least on one side”, and the claim also recites “preferably on both sides” which is the narrower statement of the range/limitation.
Claim 11 recites the broad recitation “characterized in that the buckle body comprises slip-resistant grip areas with a plurality of raised areas”, and the claim also recites “which are provided in particular around the offset area on the outer sides of the offset area” which is the narrower statement of the range/limitation.
Claim 13 recites the broad recitation “Footwear, characterized in that the footwear comprises a buckle according to claim 1”, and the claim also recites “and is embodied in particular as an ankle boot, boot, ankle bootie, sandal, slipper, or mules” which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “characterized in that the strap passage comprises a clear width and/or a clear height which is at most 4 mm”, and the claim also recites “preferably at most 2 mm” which is the narrower statement of the range/limitation.
Claim 1 is indefinite as it recites, “a through opening through which the retaining strap can be inserted in a closing direction as a strap passage for the retaining strap”. The phrase "can" renders the claim indefinite because it is unclear whether the limitations following the phrase are a required part of the claimed invention. See MPEP § 2173.05(d). The verb form of the word "can" carries multiple meanings in the English language. It can be used to indicate a physical ability or some other specified capability. It can also be used to indicate a possibility or probability. Because "can" indicates a mere capability or possibility rather than a required structural limitation, it makes the actual boundaries of the claimed invention vague and ambiguous, and because it is susceptible to more than one plausible construction. It is unclear whether the limitation refers to a capability that is required to be present in the invention or whether it refers to a system capability that is a mere possibility that is not required. The term "can" makes it unclear whether the limitation is optional or required. For purposes of examination, Examiner has interpreted the “can” limitations as being optional and respectfully suggests amending "can" to recite "is configured to" or “comprises” depending on the limitation and whether a structural or functional limitation is being claimed.
Claim 1 is indefinite as it recites, “a through opening through which the retaining strap can be inserted in a closing direction as a strap passage for the retaining strap”. It is unclear if the strap passage is the same structure as the through opening. For purposes of examination, Examiner has interpreted the limitation to mean the through opening is a passage for the strap and thus the through opening and strap passage are the same structure.
Claim 1 is indefinite as it recites, “a strap guide for receiving the retaining strap, which is embodied in such a way that the retaining pin is pressed into the opening in the retaining strap even when the retaining strap is under low tension”. First, because of the formatting of the claim, it is unclear if “a strap guide” is part of the buckle or part of the buckle body. Further, it is unclear as to what structure is the strap guide. The specification and drawings do not point out a particular structure as the strap guide and it is unclear how the strap guide is different from other claimed structures such as the through opening/strap passage, the hold down device, the rear underlay, or the front cover area. For purposes of examination, Examiner has interpreted the strap guide to be referring to the path the strap would travel when in use.
The term “low tension” in claim 1 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 recites the limitation "the strap receptacle " in line 16. There is insufficient antecedent basis for this limitation in the claim. As a strap receptacle was not previously claimed, it is unclear if “strap receptacle” is referring to a new structure or if the strap receptacle is referring to the through opening/strap passage or the holding-down device.
Claim 1 recites the limitation "the passage opening" in line 16. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the passage opening” is referring to the “through opening”, the “strap passage”, or an additional structure.
Claim 1 recites the limitation "the rear underlay" in lines 17-18. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the rear underlay” is referring to the “rear support area” previously claimed or a different/additional structure.
Claim 1 is indefinite as it recites, “and the passage opening constituting the strap passage is arranged in an offset area connecting the front cover area with the rear underlay area connected by a shift area to be provided”. As the offset area connects the front cover area and the rear underlay area, but then the front cover area and rear underlay area are connected by a “shift area”, it is unclear if the shift area is the offset area or a different area of the buckle body. Further, it is unclear what meant “to be provided”. Is the shift area provided or not? Is the shift area only provided when a strap is inserted? For purposes of examination, Examiner has interpreted the shift area to be the offset area that is already provided.
Claim 1 recites the limitation "the belt passage" in line 20. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the belt passage” is referring to the “through opening”, the “strap passage”, or an additional structure.
Claim 2 is indefinite as it recites, “characterized in that the front cover area and the rear underlay area are embodied to be flat and are provided in two planes parallel to each other, which are offset from each other at a distance of between 3 mm and 15 mm, preferably between 5 mm and 10 mm, in the direction of .” It is unclear if both the front cover area and the rear underlay area each have two planes such that a total of 4 claims is claimed or if the front cover area is in a first plane and the rear underlay area is in a second plane and the first and second planes are parallel to one another.
Claim 3 is indefinite as it recites, “characterized in that the hold-down device is constituted by a bracket provided on the upper side of the front underlay area, under which the retaining strap can be slid.” The phrase "can" renders the claim indefinite because it is unclear whether the limitations following the phrase are a required part of the claimed invention. See MPEP § 2173.05(d). The verb form of the word "can" carries multiple meanings in the English language. It can be used to indicate a physical ability or some other specified capability. It can also be used to indicate a possibility or probability. Because "can" indicates a mere capability or possibility rather than a required structural limitation, it makes the actual boundaries of the claimed invention vague and ambiguous, and because it is susceptible to more than one plausible construction. It is unclear whether the limitation refers to a capability that is required to be present in the invention or whether it refers to a system capability that is a mere possibility that is not required. The term "can" makes it unclear whether the limitation is optional or required. For purposes of examination, Examiner has interpreted the “can” limitations as being optional and respectfully suggests amending "can" to recite "is configured to" or “comprises” depending on the limitation and whether a structural or functional limitation is being claimed. Further it is unclear what structure “under which” is referring to as it may be the hold-down device, the bracket, or the front underlay area.
Claim 4 is indefinite as it recites, “characterized in that the hold-down device comprises a bridge area with a straight bottom side facing the upper side of the front cover area”. As claim 4 depends from claim 3 which recites, “that the hold-down device is constituted by a bracket provided on the upper side of the front underlay area, it is unclear if the hold down device has both a bracket and a bridge area, if the bridge area is part of the bracket, or if the hold down device has a bracket or a bridge area. For purposes of examination, Examiner has interpreted the limitation to mean the bracket has a bridge area.
Claim 4 is indefinite as it recites, “wherein the distance between the bottom side of the bridge area and the upper side of the front cover area corresponds to the clear height of the strap passage perpendicular to the closing direction and the offset of the planes in which the front cover area and the rear underlay area are provided”. There is insufficient antecedent basis for “the offset” and “the planes” as claim 4 depends from claims 1 and 3, and the offset and planes were recited in claim 2. It is unclear if claim 4 should depend from claim 2.
Claim 5 recites the limitations "the free end” and “the locking body" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. As a locking body was not previously claimed and does not appear to refer to any structure previously claimed, it is unclear what the locking body is and where the free end of it is. For purposes of examination, Examiner has interpreted the locking body to be the retaining pin body.
Claim 5 is indefinite as it recites, “characterized in that the retaining pin has a retaining pin body, in particular a cylindrical retaining pin body, extending downward from the bottom side of the rear underlay area through the opening in the retaining strap when the retaining strap is inserted when the retaining strap is inserted, and a barb arranged at the free end of the locking body and projecting in the direction of the front cover area is to comprise.” It is unclear what is meant by “in the direction of the front cover area is to comprise”. Does this mean that the front cover area comprises one of the claimed structures, or does is simply mean the direction of the front area?
Claim 6 recites the limitation "the rear backing area” in line 6. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the rear backing area” is referring to the “rear support area”, the “rear underlay area”, or an additional structure.
Claim 6 is indefinite as it recites, “characterized in that the buckle body is made in one piece from metal or plastic, wherein the front cover area and the rear underlay area are constituted by two flat discs and the connecting offset area is constituted by two connecting supports which, together with the rear edge of the front cover area and the front edge of the rear backing area, constitute the strap passage.” As the body is one piece, it is unclear how the front cover area and rear underlay area are two flat discs. This is further unclear as two flat discs are now shown and what is shown is the front and rear areas having a curved edge. It is also unclear if each of these areas is 2 flat discs or if the front area is a first flat disc and the rear area is a second flat disc.
Claim 8 is indefinite as it recites, “characterized in that the fastening means is constituted by a retaining means receptacle in the form of a passage opening or an insertion groove for the purpose of, in particular, snapping in a retaining pin.” It is unclear if “a retaining pin” is referring to the retaining pin recited in claim 1 or to a different retaining pin.
Claim 9 recites the limitation "the retaining means receptacle” in line 2. There is insufficient antecedent basis for this limitation in the claim. As claim 9 depends from claim 1, it is unclear what the retaining means receptacle is referring to as it may be the through opening, strap passage, or hold-down device, or claim 9 should depend from claim 8 where a retaining means receptacle was claimed. For purposes of examination, Examiner has interpreted claim 9 to depend from claim 8.
Claim 9 recites the limitation "the top” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. As the top lack antecedent basis and the top is not claimed as referring to any particular structure, it is unclear what “the top” is referring to as it may be the top of the pin, the retaining means receptacle, the passage opening, the buckle body, the buckle, or otherwise.
Claim 9 is indefinite as it recites, “wherein a pin with an abutment edge projecting laterally at the top can be inserted in a first region and the buckle can then be displaced relative to the pin by overcoming a locking force provided by the constriction in such a way that the pin.” The phrase "can" renders the claim indefinite because it is unclear whether the limitations following the phrase are a required part of the claimed invention. See MPEP § 2173.05(d). The verb form of the word "can" carries multiple meanings in the English language. It can be used to indicate a physical ability or some other specified capability. It can also be used to indicate a possibility or probability. Because "can" indicates a mere capability or possibility rather than a required structural limitation, it makes the actual boundaries of the claimed invention vague and ambiguous, and because it is susceptible to more than one plausible construction. It is unclear whether the limitation refers to a capability that is required to be present in the invention or whether it refers to a system capability that is a mere possibility that is not required. The term "can" makes it unclear whether the limitation is optional or required. For purposes of examination, Examiner has interpreted the “can” limitations as being optional and respectfully suggests amending "can" to recite "is configured to" or “comprises” depending on the limitation and whether a structural or functional limitation is being claimed. Further, it is unclear “a pin” is required by the claim. As the claim is drawn to the buckle, and the pin appears to be referring to a pin on the footwear/luggage/leather goods, Examiner has interpreted the limitations drawn to “the pin” to be functional limitation and only require the retaining means and buckle be capable of performing such claimed functions.
Claim 10 is indefinite as it recites, “in order to increase the elastic deformability of the retaining means receptacle, spring slots extending at least on one side, preferably on both sides, are provided around the retaining means receptacle at a distance of less than 10 mm from the retaining means receptacle.” It is unclear how many spring slots are being claimed and if they are on the side/sides of the receptacle or if they are “around” the receptacle.
Claim 11 is indefinite as it recites, “characterized in that the buckle body comprises slip-resistant grip areas with a plurality of raised areas, which are provided in particular around the offset area on the outer sides of the offset area.” It is unclear if each of grip areas has a plurality of raised areas or if each of grip areas has a raised area such that in totality, there are a plurality of raised areas.
Claim 13 is indefinite as it recites, “Footwear, characterized in that the footwear comprises a buckle according to claim 1 and is embodied in particular as an ankle boot, boot, ankle bootie, sandal, slipper, or mules.” As claim 1 recites “footwear”, it is unclear if claim 13 is referring to the same footwear. Further, as claim 1 recites, “buckle”, it is unclear if claim 13 is referring to the same buckle. Examiner respectfully suggests amending the claim to recite all the structure required instead of writing the claim in a shorthand form.
Claim 14 is indefinite as it recites, “characterized in that the footwear comprises a retaining strap running over the instep of the foot or the heel area of a wearer, which is hinged on one side to one side of the footwear in a strap hinge and can be fastened at the opposite end with a buckle arranged on the other side of the footwear and detachably connected to the footwear via a pin attached to the footwear .” As claim 14 depends from claim 13 and therefore claim 1, it is unclear if “a retaining strap” is referring to the retaining strap recited in claim 1 or a different/additional retaining strap. Further, it is unclear what is meant by “one side to one side” and if is referring to the same side or two different sides. In addition “the opposite end” lacks antecedent basis and it is unclear what the opposite end is opposite of. Finally, the phrase "can" renders the claim indefinite because it is unclear whether the limitations following the phrase are a required part of the claimed invention. See MPEP § 2173.05(d). The verb form of the word "can" carries multiple meanings in the English language. It can be used to indicate a physical ability or some other specified capability. It can also be used to indicate a possibility or probability. Because "can" indicates a mere capability or possibility rather than a required structural limitation, it makes the actual boundaries of the claimed invention vague and ambiguous, and because it is susceptible to more than one plausible construction. It is unclear whether the limitation refers to a capability that is required to be present in the invention or whether it refers to a system capability that is a mere possibility that is not required. The term "can" makes it unclear whether the limitation is optional or required. For purposes of examination, Examiner has interpreted the “can” limitations as being optional and respectfully suggests amending "can" to recite "is configured to" or “comprises” depending on the limitation and whether a structural or functional limitation is being claimed.
Claim 15 is indefinite as it recites, “Leather goods, container or piece of luggage comprising a buckle according to claim 1, characterized in that the strap passage comprises a clear width and/or a clear height which is at most 4 mm, preferably at most 2 mm, greater than the width or thickness of the retaining strap.” As claim 1 recites “leather goods” and “luggage”, it is unclear if claim 13 is referring to the same leather goods or luggage. Further, as claim 1 recites, “buckle”, it is unclear if claim 13 is referring to the same buckle. Examiner respectfully suggests amending the claim to recite all the structure required instead of writing the claim in a shorthand form.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 14 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 14 recites, “characterized in that the footwear comprises a retaining strap running over the instep of the foot or the heel area of a wearer”. As such, Applicant has positively recited and claimed a human body part, because a wearer’s heel or foot is actively being recited as being run over within a product claim. Examiner respectfully suggests amending to add functional language such as "adapted to” or “configured to” preceding any reference to a human or human body part. For example, Applicant could recite, "characterized in that the footwear comprises a retaining strap configured to run[[ning]] over [[the]] an instep of [[the]] a foot or [[the]] a heel area of a wearer”.
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.
(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, 3, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Settles (US 1365551).
Regarding claim 1, Settle discloses a buckle (Figs. 1-3), in particular for leather goods, other luggage items or footwear, and in particular for holding a retaining strap (stirrup leather strap seen in Fig. 2) embodied as a flat strap with a flat side (as seen in Fig. 2) (All statements of intended use such as “for footwear” and “for holding a retaining strap” have been fully considered. However, they are deemed to not impose any structural limitations that distinguish over the cited references), wherein the buckle has a buckle body (as the entire buckle is considered the buckle body) with a through opening (4) through which the retaining strap can be inserted in a closing direction as a strap passage for the retaining strap (as seen in Fig. 2), a retaining pin (7 on rear area 1) for fixed engagement in an opening in the retaining strap (as seen in Fig. 2), and with a strap guide for receiving the retaining strap (as best as can be understood as the path of the strap, see in Fig. 2), which is embodied in such a way that the retaining pin is pressed into the opening in the retaining strap even when the retaining strap is under low tension (as can be seen in Fig. 2), characterized in that the buckle body has a front cover area (2), viewed in the closing direction, with a hold-down device for holding the retaining strap (5; interpreted under 35 USC 112(f) and as the hold down device of the instant application is 6 in Fig. 4 and disclosed as a bracket or bridge, and 5 of Settles can be considered a bracket or bridge for holding the strap as seen in Figs. 2-3) on the upper side of the front cover area (as seen in Fig. 3), and a rear support area (1) offset in a direction perpendicular to the flat side of the retaining strap relative to the front cover area when the retaining strap is inserted into the strap receptacle as intended (as seen in Figs. 1-2 and disclosed on p. 1, lines 43-50), and the passage opening constituting the strap passage (interpreted as the through opening 4) is arranged in an offset area connecting the front cover area with the rear underlay area (interpreted as rear support area 1) connected by a shift area to be provided (as best as can be understood, the area containing through opening 4 is an offset area that shifts/transitions from a plane having the rear area to a plane having a front cover area, best seen in Fig. 2), wherein the buckle body is embodied such that the strap guide runs along a straight or curved path under the bottom side of the rear underlay area through the belt passage over the upper side of the front cover area (as seen in Fig. 2), and the retaining pin is provided on the bottom side of the rear underlay area (as seen in Fig. 2).
Examiner notes that italicized limitations in the prior art rejections are functional and do not positively recite a structural limitation, but instead require an ability to so perform and/or function. As the prior art discloses the structure of the buckle, there would be a reasonable expectation for the buckle to perform such functions, as Examiner has explained after each functional limitation. Examiner further notes that in at least claims 1-11 and 13, the strap is not positively recited and is not interpreted as required as part of the claimed invention, but the claimed invention requires the ability to perform/function relative to a hypothetical strap.
Regarding claim 3, Settles discloses the buckle characterized in that the hold-down device (5) is constituted by a bracket provided on the upper side of the front underlay area (2) (as can be seen in Fig. 3), under which the reattaining strap can be slid (as understood from Fig. 2).
Regarding claim 4, Settles discloses the buckle characterized in that the hold-down device (5) comprises a bridge area with a straight bottom side facing the upper side of the front cover area (see annotated Fig. 3), wherein the distance between the bottom side of the bridge area and the upper side of the front cover area corresponds to the clear height of the strap passage (through opening 4) (as the distance between 5 and 2 is the same as the opening of 4) perpendicular to the closing direction and the offset of the planes in which the front cover area (2) and the rear underlay area (1) are provided (as seen in Fig. 2).
Regarding claim 7, Settle discloses the buckle characterized in that the front cover area (2) comprises fastening means for fastening the buckle body to a surface (fastening means 7, Examiner notes “fastening means” has been interpreted under 35 USC 112(f) and is at least a functional equivalent to the fastening means 7 of the instant application is which is in the form of a slot to connect to a pin, as 7 of Settles is a pin the can connect to a slot on a surface).
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) 2, 6, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Settles, as applied to claim 1 above.
Regarding claim 2, Settles discloses the buckle of claim 1, characterized in that the front cover area (2) and the rear underlay area (1) are embodied to be flat and are provided in two planes parallel to each other (as can be seen in Fig. 2-3), which are offset from each other (as seen in Figs. 2-3), but does not expressly disclose the offset being at a distance of between 3 mm and 15 mm, preferably between 5 mm and 10 mm, in the direction of. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to offset the front and rear areas of Settles at a distance between 3 and 15 mm, so that the through opening can accommodate a strap thick enough to support the weight/pressure of the footwear/luggage/leather good, and since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Further, such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.
Regarding claim 6, Settles discloses the buckle characterized in that the buckle body (body of buckle) is made in one piece from metal (see p. 1, lines 43-45 and as seen in Fig. 3), wherein the front cover area (2) and the rear underlay area (1) are constituted by two flat plates (see p. 1, lines 43-45 and as seen in Fig. 3) and the connecting offset area (3) is constituted by two connecting supports which (as can be understood from Fig. 3 and the passage opening 4 in the offset area, there is a support at each end of the opening), together with the rear edge of the front cover area and the front edge of the rear backing area, constitute the strap passage (as understood from Figs. 2-3), but settle does not expressly disclose wherein the two flat plates are discs. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the front and rear areas of the buckle of Settles to be discs in order to have round edges, and thus no corners that could injure/cause damage to the horse, and since change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04. A Change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04.
Regarding claim 15, Settled discloses leather goods (saddle/stirrup) comprising a buckle according to claim 1 (see claim 1 above), but does not expressly disclose characterized in that the strap passage comprises a clear width and/or a clear height which is at most 4 mm, preferably at most 2 mm, greater than the width or thickness of the retaining strap. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the strap passage of Settles to be at most 4mm greater than the thickness of the strap, so that the strap passage can easily accommodate the strap without undue force, and since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05. Further, such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Settles, as applied to claim 1 above, and further in view of Veach (US 5452498).
Regarding claim 5, Settles discloses the buckle characterized in that the retaining pin (7 on 1) has a retaining pin body (as 7 itself is a body), in particular a cylindrical retaining pin body (as seen in Figs. 2-3), extending downward from the bottom side of the rear underlay area (1, as seen in Fig. 3) through the opening in the retaining strap when the retaining strap is inserted (as can be seen in Fig. 2), but does not expressly disclose the retaining pin having a barb arranged at the free end of the locking body and projecting in the direction of the front cover area is to comprise.
Veach teaches a buckle (4, Figs. 2 and 4-5) wherein the retaining pin (23) having a cylindrical body (24) and a barb (25/27) arranged at the free end of the locking body (at the free end of the retaining pin, as seen in Fig. 5) and projecting in the direction of the front cover area (10/16) is to comprise (as can be seen in Figs. 2 and 5).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a barb to the free end of the retaining pin of Settles, as taught by Veach, in order to provide a more secure attachment of the retaining pin to the strap preventing disengagement as “the strap buckle still will be securely fastened due to the firm connection provided by bent posts 23 and 38 with the strap” (see col. 4, lines 47-51 of Veach).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Settles, as applied to claim 1 above, and further in view of Nakamura (US 4117573).
Regarding claim 11, Settles discloses all the limitations of claim 1 above, but does not expressly disclose the buckle characterized in that the buckle body comprises slip-resistant grip areas with a plurality of raised areas, which are provided in particular around the offset area on the outer sides of the offset area.
Nakamura teaches a buckle (Figs. 1-2) characterized in that the buckle body (1/2) comprises slip-resistant grip areas with a plurality of raised areas (ribs/ridges 5), which are provided in particular around the through opening (6’) on the outer sides of the through opening (see Fig. 2).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add ribs/ridges around the through opening of the buckle of Settles, as taught by Nakamura, “to tightly grip the band” (see col. 2, lines 45-50 of Nakamura) this preventing slippage, and “to grip said bands without danger of cutting the material of the band, and reinforcing said legs to resist deformation under the action of the band” (see claim 1 of Nakamura).
When in combination, as the through opening of Settles is within the offset area, and the raised areas are around the through opening, then the raised areas would be around the offset area.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Settles, as applied to claim 1 above, and further in view of Montalbano (US 2006/0230634).
Regarding claim 13, Settles discloses all the limitations of claim 1 above but does not expressly disclose footwear, characterized in that the footwear comprises a buckle according to claim 1 and is embodied in particular as an ankle boot, boot, ankle bootie, sandal, slipper, or mules.
Motalbano teaches footwear (1) comprising a buckle (4) and is embodied in particular as mules (see Fig. 1).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the buckle of Settles to mules as taught by Montalbano in order to use the buckle in a wider variety of applications of products that would benefit from quick and adjustable connections.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Settles and Montalbano, as applied to claims 1 and 13 above, and further in view of Carol (US 2011/0023335).
Regarding claim 14, the modified footwear of Settles discloses characterized in that the footwear (1 of Motalbano) comprises a retaining strap (3 of Motalbano) running over the instep of the foot or the heel area of a wearer (around the heel as seen in Figs. 1-2), can be fastened at the opposite end with a buckle (4 of Motalbano) arranged on the other side of the footwear (as seen in Figs. 1-2 of Motalbano), but does not express disclose the strap hinged on one side of the footwear in a strap aned detachably connected to the opposite side of the footwear via a pin attached to the footwear.
Motalbano teaches footwear with and adjustable buckle wherein the strap is detachably connected to the opposite side of the footwear footwear via a pin (2) attached to the footwear (on 1a, see Fig. 3 of Motalbano).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to move the pin (7 on 1 of Settles) and the corresponding opening of the modified invention of Settles, so that the pin is on the footwear and the opening is in the buckle, as taught by Motalbano, so that pin extends away from foot of the wearer as extending toward the foot can cause injury to the wearer, and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04.
The modified invention of Settles does not expressly disclose wherein the strap is hinged on one side to one side of the footwear in a strap hinge.
Carol teaches mule style footwear comprising a strap (16), wherein the strap is hinged on one side to one side of the footwear in a strap hinge (rivet 26 which allows for pivoting).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to connect the strap to the other side of the footwear of the modified invention of Settles, with a strap hinge, as taught by Carol, in order to provide rotatability (see para. 0023 of Carol) thus allowing the strap to be moved up or down according to the comfort of the wearer.
Allowable Subject Matter
Claims 8-10 (as best as can be understood by Examiner, note Examiner has interpreted claim 9 to depend from claim 8) would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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).
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the prior art of record as none of them, alone or in combination, disclose the buckle of claims 1 and 7 wherein the fastening means is constituted by a retaining means receptacle in the form of a passage opening or an insertion groove for the purpose of, in particular, snapping in a retaining pin. The closest prior art is Settles, but Settles does not disclose the fastening means is constituted by a retaining means receptacle in the form of a passage opening or an insertion groove for the purpose of, in particular, snapping in a retaining pin. Modifying Settles to have the claimed structure would be hindsight reconstruction based on Applicant’s own disclosure, therefore the claims are allowable.
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Annotated Fig. 3 (Settles)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Schwahn (US D44941) teaches a buckle with offset portions, a retaining pin, and a through hole passage, Stein (US 2783516) teaches a buckle with a hold down device, and retaining pins with barbs, and Hess (US 2462264) teaches a buckle with an offset center with a through hole passage.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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