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 .
The applicant argument, amendment, and revised reproductions received 01 July 2026 are acknowledged. Applicant’s amendment and revised reproductions have been carefully considered, and while some of the objections and issues of the previous rejection have been overcome, applicant’s revised reproductions continue to show areas of indefiniteness as well as not being compliant with the description requirement in that the new reproduction views include information and features that do not have basis within the originally filed documents and reproductions. As such, a final rejection under 35 U.S.C. 112 (a) and 35 U.S. C. 112(a) and (b) is made as follows.
Reproduction Objection
The reproductions are objected to because Figure 1.1 shows the laces overlapping in a different configuration than what is shown in Figure 1.2. The top lace in Figure 1.1 is shown adjacent to the second lace and should overlap it.
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The replacement drawing set received 01 July 2026 is also objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the amended subject matter at the time the application was filed. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, the below areas of objectionable new matter are noted with a comparison of the original disclosure and the most recent replacement drawing set:
The configuration of the broken line features in Figure 1.2 is shown differently, with less space between features.
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Specification Objection
The specification is objected to for the following:
1. The examiner objects to the broken line statement for describing the broken lines as illustrating environmental structure, which is when the broken lines are depicting objects outside the description of the title. Since the broken lines are depicting portions of the shoe, they are encompassing part of what is considered in the title, and therefore, the use of the term “environmental structure” in the description is not accurate. The examiner suggests amending the broken lines statement to read as the following:
---The broken lines shown in the drawings illustrate features of the sports shoe that form no part of the claimed design.---
2. The reproductions include the presence of trademarked material and requires a statement to be included acknowledging the applicant’s ownership.
The “V” forming part of the claimed design is a registered trademark of Velites Fitness, S.L. The specification must be amended to include a statement preceding the claim identifying the trademark material forming a part of the claimed design and the name of the owner of the trademark.
Final Rejection under 35 U.S.C. 112(a)
In view of the new reproductions submitted on 01 July 2026, the claim is now FINALLY REJECTED under 35 U.S.C. 112 (a), [pre-AIA 35 U.S.C. 112, first paragraph], as failing to comply with the description requirement thereof since the new figure views introduces new matter not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed, In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981); In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998).
While it is understood the applicant was attempting to make the views consistent in order to overcome the previous rejection, applicant is advised that there is no support in the original disclosure to allow one skilled in the art to extract the information provided in the new reproductions views that show the overall new distorted shape and appearance of the revised Figures 1.2, 1.4 and 1.5.
Figure 1.2 now shows the toe box producing past the midsole / outsole, linear features linear that adorn the surface with new configuration and sharp corners, a new shape to the toe cap, and spacing differences between features on the outsole.
Figure 1.3 shows two new features on the upper near the tongue, a completely different shape to the heel portion of the shoe on both the upper and sole areas that now show a smooth flush curvature with the sole area smaller than the upper portion.
Figure 1.5 shows the toe box area of the shoe with an overall new distorted shape.
Please see the annotated reproductions below.
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To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that the original figure views contain the newly flush configuration, and the information it conveys was disclosed in the original application; or remove any new matter that was introduced as a response to overcome the previous rejection.
Final Rejection under 35 U.S.C. 112, (a) and (b)
In view of the new reproductions submitted on 01 July 2026, the claim is again and FINALLY 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 regards as the invention.
The claim is indefinite and nonenabling because the shape, appearance, and description of some portions of the design are unclear due to inconsistent and insufficient disclosure of the claimed design as currently depicted. Specifically, the following are noted:
1. The shape and appearance of the outsole cannot be determined based on the limited disclosure provided in Reproduction 1.6. The three-dimensionality of the features on the bottom of the shoe sole consisting of parallel lines, “V” shapes, a curved inline around the entire outsole as well as all of the spaces cannot be determined, resulting in multiple possible interpretations of the design being possible. For example, it is unclear if the features are coplanar, protruding, receding, or if they are surface indicia. As the exact depth and dimensions cannot be clearly understood, applicant should place these features in broken lines.
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2. The appearance of the outsole shown in Figure 1.2 cannot be reconciled with what is shown in Figure 1.6 that shows another solid edge line feature inside the perimeter of the outsole.
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3. The appearance of the heel portion of Figure 1.5 is not understood due to there being eight relatively evenly spaced visible edge lines while Figure 1.3 shows seven features that would translate into edge lines with more irregular spacing.
4. The shape and features of the heel shown in Figure 1.5 does not show a “V” shaped feature while Figure 1.3 shows a prominent “V” shaped feature on the side of the heel.
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While the application contains reproductions of the invention in multiple views, the inconsistencies in the different figures present confusing and contradictory conditions along with insufficient disclosures that require 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 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 reproductions.
The reproductions must consistently depict the claimed design.
Correction of the reproductions 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 suggested 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 suggested corrective action in the next Office action.
Hague – Reply Reminder
Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP § 713. The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or in person interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO ("registered practitioner") or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become "of record," a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 "Power of Attorney to Prosecute Applications Before the USPTO," available at www.uspto.gov/ patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP § 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an "Applicant Initiated Interview Request Form" (PTOL-413A) (available at the USPTO web page indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communications is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
Responding to Official USPTO Correspondence
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office of actions only by: • Online via USPTO’s Electronic Filing System-Web (EFS-Web) (Registered eFilers only) https://www.uspto.gov/patents/apply • Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450 • Facsimile to the USPTO’s Official Fax Number (571-273-8300) • Hand-carry to USPTO’s Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents/maintain/responding-office-actions.
Summation
Applicant’s amendment necessitated the new ground(s) of rejection under 35 U.S.C. 112 (a) presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Conclusion
Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON H SCHWARTZ whose telephone number is (703)756-1194. The examiner can normally be reached M-F 9 to 5.
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 E 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.
/S.H.S./Examiner, Art Unit 2912
/T Chase NELSON/Primary Examiner, Art Unit 2912
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