SHOE

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 . General Information Preliminary Amendment Applicant’s preliminary amendment filed on 08 March 2024 is hereby acknowledged. No new matter has been added. The amendment of the papers has been entered. DETAILED ACTION Drawings The drawing disclosure does not meet the requirements of 37 CFR § 1.84 because: An extraneous background tone and shadows are shown on the drawing sheets of figures 1-7. All background tones and shadows should be deleted. Only the drawing view and figure designation should be shown. All drawing views should be placed on a clean sheet void of any extraneous background matter, tone or shadows. (Note 37 CFR 1.152) Please see below for examples. Correction is needed to remove all extraneous background tone and shadows in figures 1 - 7. PNG media_image1.png 754 873 media_image1.png Greyscale Examiner notes that applicant should take care to carefully remove all visible background tone including any negative spaces. Only the claimed article should be shown. Please see below for an example of an existing patent properly shown without background tone and shadows. PNG media_image2.png 173 362 media_image2.png Greyscale Additionally, portions of the photographic disclosure appear dark and low in contrast in figures 1 – 7. All drawings should be made by a process that will give them satisfactory reproduction characteristics. (Note 37 CFR 1.84 (l)) Photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. (Note 37 CFR 1.84 (b) (1) and 37 CFR 1.152). (Note MPEP 1503.02, V. Photographs and Color Drawings). The dark, low contrast portions of the photographs should be lightened for improved contrast, legibility, and reproducibility. Please see below for examples. PNG media_image3.png 545 919 media_image3.png Greyscale PNG media_image4.png 397 661 media_image4.png Greyscale The use of the term [Goodyear] and the “Wingfoot Symbol”, which is a trade name or a mark used in commerce, has been noted in this application. The term should include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. However, it appears neither the inventor nor assignee own the right to this trademark, and as such it must be removed from the reproductions. Please see below for examples. PNG media_image5.png 641 968 media_image5.png Greyscale PNG media_image6.png 489 991 media_image6.png Greyscale To overcome the objection above, the applicant should remove the [Goodyear] and “Wingfoot Symbol” from the reproductions by converting to light gray halftone and placing in a perimeter of broken lines. A full set of corrected drawing sheets 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. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. 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. When preparing new drawings in compliance with the requirement therefor, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121. Specification Objections Figure Descriptions Descriptions of the figures are not required to be written in any particular format, however, they must describe the views of the drawing clearly and accurately. MPEP 1503.01 (II) The description of figure 1 states “in accordance with our new design”. However, as the claim contains a single inventor, the possessive adjective “our” should be amended to “my”. The description should state “in accordance with my new design”. For clarity and accuracy, the description of figure 1 should be amended to read: -- Fig. 1 is a front perspective view of a shoe in accordance with my new design; -- Extraneous Descriptive Statement The descriptive statement following the claim seeks to broaden the scope of the claim beyond what is shown in the drawings and must be deleted. MPEP §1503.01(II) The design claim is limited to what is shown in the drawings. Statements that are extraneous to the claimed design are meaningless and confusing in the specification of a design patent. Accordingly, to overcome the objection, the statement following the claim that reads: [The Applicant regards its design as that shown… need not be printed as part of any patent that may issue.] must be canceled. (see 37 CFR 1.71 and 1.73) Claim Rejection - 35 USC § 112(b) Claim is 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. The scope of the claim is unclear due to the extraneous statement which broadens the scope of the claim in the amended specification filed 08 March 2024. The descriptive statement in the amended specification dated 08 March 2024 is confusing to the claim and contains language which is broadening to the claim. Specifically, statements such as “may or may not form part of the claim”, “may be disclaimed as required”, and “may be construed as then defining a boundary” are examples of confusing and broadening language. Statements that attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted. MPEP §1503.01(II) The design claim is limited to what is shown in the drawings. Statements that are extraneous to the claimed design are meaningless and confusing in the specification of a design patent. Accordingly, to overcome the rejection, the statement following the claim that reads: [The Applicant regards its design as that shown… need not be printed as part of any patent that may issue.] must be canceled. (see 37 CFR 1.71 and 1.73) Conclusion The claim stands rejected under 35 U.S.C. 112(b). The art of record not relied upon is cited as cumulative art. Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to YELIZAVETA Y MASALIMOVA whose telephone number is (571)272-9403. The examiner can normally be reached on Mon-Fri, 9 am - 5 pm EST. Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Wilson can be reached on (571) 272-7639. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Y.Y.M./ Examiner, Art Unit 2926 /LEANNE WAS-ENGLEHART/Primary Examiner, Art Unit 2918