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 .
Statement of Understanding
It is the examiner’s understanding the insole surface is not claimed due to the insole portion being enclosed by broken lines as seen in Figure 6. Examiner requests clarification from the applicant if this understanding is incorrect.
Objections to the Specification
The description of Fig. 1 is objected to by the examiner because the Fig. 1 description uses "the" instead of "a" before the invention title as the claimed design is a single example of a Shoe and not the only example. Additionally, the Fig. 1 description is objectionable because the use of "my" in reference to the inventors is improper. There are two inventors listed in the application so "our" would be the proper form. Therefore, the figure description for Fig. 1 should be amended to read as follows:
--- Fig. 1 is a perspective view of a Shoe in accordance with our new design; ---
The examiner objects to the broken lines statement because the use of broken lines in the drawing disclosure must be fully described. The applicant describes the use of broken lines as “environmental structure”, which is incorrect since the title of the invention is “SHOE” and all its parts, including those portions in broken lines, are part of the shoe. Therefore, the examiner suggests amending the broken lines statement after the Figure 7 description and preceding the claim to read as:
--- The dash-dash broken lines shown in the drawings represent portions of the shoe and form no part of the claimed design. ---
Objection to the Claim
The examiner objects to the claim because it is not in proper format. The word "I" is improper and should be replaced with "WE" as there are multiple inventors listed in the application. The claim must be amended to read as:
--- WE CLAIM:
The ornamental design for a SHOE as shown and described. ---
Rejection under 35 U.S.C. 112, (a) and (b)
The claim is rejected under 35 U.S.C. 112 (a) and (b) or 35 U.S.C. 112, first and second paragraphs, (pre-AIA ), as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite and non-enabling because the shape, appearance, and description of some portions of the design are unclear due to the insufficient disclosure of the claimed design as currently depicted. Specifically, the following is noted:
The claim is indefinite and non-enabling because the examiner is uncertain if the surface ornamentation that is only visible in Fig. 6 forms part of the claim or not. The examiner understands the portion the surface ornamentation is on forms no part of the claim as the insole surface is enclosed with broken lines. However, the specific feature in question is shown in solid lines indicating it is claimed. Since this specific feature is not visible in any other figure view, the examiner has to rely on conjecture to understand exactly what is being claimed. Therefore, the examiner cannot understand the claimed design as currently presented.
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While the application contains drawings of the invention in multiple views, the insufficient disclosure requires the examiner to rely on conjecture to understand the intention of the applicant.
Those portions of the design that are inconsistently depicted may be made consistent in order to overcome that portion of the rejection. Portions of the design considered insufficiently disclosed may be removed from the claim by conversion to broken lines or as defined by a broken line boundary with all shading/contour lines removed. Applicant is cautioned however that removal of random items from the claim could introduce new matter if the resulting claimed design was not evident within the originally filed drawings.
The drawings must consistently depict the claimed design. Correction of the drawing is suggested.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
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.
Conclusion
Accordingly, the claim stands rejected under 35 U.S.C. 112(a) and (b), as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christen P. Brown-Lorrig whose telephone number is (571)272-2986. The examiner can normally be reached on Monday through Friday from 9am to 5pm.
Examiner interviews are available via telephone, in-person, 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 at (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.
/CHRISTEN PILAR BROWN-LORRIG/Examiner, Art Unit 2912
/MICHELLE E. WILSON/Supervisory Patent Examiner, Art Unit 2912
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