Detailed action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawing Objections
The drawing is objected to for the following:
-The Figure 2, 3, and 6 views omit the blank, unclaimed area surrounded by broken lines seen in other views (see below):
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-The Figure 1 through 6 views show the unclaimed upper in tones that are similar to claimed portions seen on the midsole and outsole. The unclaimed upper should be significantly lightened in order to clearly indicate that it is not claimed. See below:
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Correction of the drawing is required.
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.” 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.
Specification Objections
Applicant appears to use the same dashed lines to show boundaries and portions and environment that form no part of the claimed design, so there seems to be no distinction between a “dash-dash line” and a “dash-dash broken line”. As such, the different descriptions are confusing.
The special description indicating that “[t]he surface textures, color, and grayed-out and white-out portions form no part of the claimed design.” is confusing as surface textures within the claimed regions are understood to be claimed. Additionally, no color is shown in the drawings so the presence of this part of the statement is unclear. Similarly, as noted above in the drawing objection, the upper is not sufficiently grayed-out. This statement should be deleted.
As the descriptions in conjunction with the photographic disclosure are the subject of the following rejection, suggestions for amended descriptions are part of the rejection under 35 U.S.C. 112.
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 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 claim is indefinite and nonenabling because the scope, description, and appearance of the shoe sole are unclear due to unclear disclosure of the appearance and scope of the claimed design. Specifically, the following are noted beginning on the next page:
-The exact shape and appearance of the claimed shoe sole design cannot be understood due to the inconsistency between the feature/broken line description and drawing views. In the third sentence of the feature/broken line description, applicant states that “A dash-dash line is provided to define the boundary between the MP and OB and the dash-dash line forms no part of the claimed design.”. However, the bounds of the claimed design are not clearly defined as the midsole periphery and outsole bottom are both claimed, shown with opaque surfaces. Due to the contradiction between the feature/broken line description and drawing views, one of the following should be done in order to clarify the issue:
If both the midsole periphery and outsole bottom are claimed:
-In the Figure 1 through 7 views, the dashed line separating these two portions should be removed.
The broken line description should be amended as follows:
--- The broken lines define the boundaries of the claimed design and also indicate portions of the shoe sole and environmental structure that form no part thereof. The broken lines and lightened areas of the photographs indicate portions that form no part of the claimed design. ---
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If the midsole periphery is claimed and the outsole bottom is unclaimed (if chosen, a double patenting situation could occur due to the disclosure of copending application 29/974,954):
-In the Figure 1 through 7 views, the outsole bottom should be lightened in a manner similar to the upper. As the outsole bottom is the darkest portion, in lightening it, it (and the upper) should be lighter than the claimed midsole periphery to clearly show that it is masked. For clarity, and to match the definition of the unclaimed upper, the broken lines should wrap the perimeter of the outsole bottom.
-The feature broken line description should be amended to:
--- The broken lines define the boundaries of the claimed design and also indicate portions of the shoe sole and environmental structure that form no part thereof. The broken lines and lightened areas of the photographs indicate portions that form no part of the claimed design. ---
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If the midsole periphery is unclaimed and the outsole bottom is claimed (it is noted that copending application 29/975,299 claims only a portion of the same outsole bottom configuration, so applicant should keep this in mind if the scope of the outsole bottom is modified):
--In the Figure 1 through 7 views, the dashed lines between the midsole periphery and lightened upper should be removed. Additionally, the midsole periphery should be lightened in a manner similar to, and continuous with the upper.
-The feature/broken line description should be amended to:
--- The broken lines define the boundaries of the claimed design and also indicate portions of the shoe sole and environmental structure that form no part thereof. The broken lines and lightened areas of the photographs indicate portions that form no part of the claimed design. ---
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If the outsole bottom is part, or all, of the claim, the structure within the grooves of the outsole cannot be understood as it is obscured by the blurred view. See below:
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While the application contains drawings of shoe sole in multiple views, the inconsistencies and lack of clarity in the definition of scope of the claimed design present confusing and contradictory conditions that require the examiner to rely on conjecture to understand the intention of the applicant.
For those portions of Figure 7 that cannot be discerned, these continuous dark portions should be removed from the claim as described above. If this is done, this roughly L-shaped portion should be clearly removed from the claim in all views in which it is shown. As there is no basis for just removing what is identified as unclear, the removal from the claim should be along evident boundaries in order to avoid the introduction of new matter.
Applicant is reminded to be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Summation
The claim stands rejected for the reasons set forth above.
The references cited but not applied, are considered cumulative art related to the claimed design.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. Chase Nelson whose telephone number is 571-272-2641. The examiner can normally be reached Monday through Friday from approximately 11:00 AM to 7:00 PM and at various times throughout the week and weekend.
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.
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/T Chase NELSON/Primary Examiner, Art Unit 2926