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 .
OFFICE ACTION
Claim Rejection - 35 USC § 112 (a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, 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 of the following reasons:
a). The cuff of the shoe in view 1.1 is shown with three solid lines on one side edge, but in view 1.6 only two solid lines form the top of the cuff. Please see annotated print alphabet letter A for views 1.1 and 1.6. All reproduction views should be made clear and consistent in order to understand the claimed design. Correction is needed.
Annotated Print A:
Views 1.1 and 1.6:
PNG
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736
963
media_image1.png
Greyscale
PNG
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589
1069
media_image2.png
Greyscale
b). A single solid line forms the top edge of the shoe tongue in view 1.1, but double solid lines are shown in view 1.6. Please see annotated print alphabet letter B for views 1.1 and 1.6. All reproduction views should be made clear and consistent in order to understand the claimed design. Correction is needed.
Annotated Print B:
Views 1.1 and 1.6:
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726
956
media_image3.png
Greyscale
PNG
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427
1046
media_image4.png
Greyscale
c). The side panels that contain where the shoelaces connect to the shoe are shown in full broken lines. However, views 1.2,1.3,1.4, and 1.6 show shading within the full broken line panels. View 1.1 does not show shading. It is unclear if this surface area within the panels are intended to be claimed or unclaimed. Surface shading is reserved for claimed areas of the design and should not be shown on any unclaimed surface. Please see annotated print alphabet letter C for view 1.6 as an example of shading shown on the unclaimed panels in broken lines. Clarification and correction are needed.
Annotated Print C:
View 1.6:
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483
1342
media_image5.png
Greyscale
d). The front edges of the two flaps that contain the shoelaces are shown in solid lines in views 1.1, 1.4, and 1.6, but in views 1.2 and 1.3 the solid line edges appear missing. Please see annotated print alphabet letter D for views 1.2,1.3, and 1.6 as an example of this inconsistency in views 1.1-1.4 and 1.6. All reproduction views should be made clear and consistent in order to understand the claimed design. Correction is needed.
Annotated Print D:
Views 1.2, 1.3, and 1.6:
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445
1071
media_image6.png
Greyscale
PNG
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414
1093
media_image7.png
Greyscale
PNG
media_image8.png
432
1064
media_image8.png
Greyscale
e). Two solid lines form the top of the curved panel on the lower mid-section of the shoe in view 1.1. A single curved solid line is shown in both views 1.2 and 1.3. In view 1.5, two solid lines form the top of the curved panel on one side and the opposite side shows a single solid line. Please see annotated print alphabet letter E for views 1.1, 1.2, 1.3 and 1.5. Correction is needed to make the reproduction views consistent.
Annotated Print E:
Views 1.1, 1.2, 1.3, and 1.5:
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662
982
media_image9.png
Greyscale
PNG
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458
1084
media_image10.png
Greyscale
PNG
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435
1111
media_image11.png
Greyscale
PNG
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431
656
media_image12.png
Greyscale
f). In view 1.1, the top edge of the heel shows a solid line with horizontal lines adjacent to the solid line. In views 1.2 and 1.3, double zig zag solid line edges are shown with an inner broken line. In view 1.5, a wavy edge line and a broken line form the side edges of the top of the back heel. In view 1.6, a single solid line and an uneven zig zag line form the top edges at the heel. Please see annotated print alphabet letter F for views 1.1-1.3, 1.5 and 1.6. Correction is needed to make the views consistent.
Annotated Print F:
Views 1.1, 1.2, 1.3,1.5 and 1.6:
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741
1193
media_image13.png
Greyscale
PNG
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498
1269
media_image14.png
Greyscale
PNG
media_image15.png
492
1279
media_image15.png
Greyscale
PNG
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640
441
media_image16.png
Greyscale
PNG
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450
1054
media_image17.png
Greyscale
g). View 1.1 shows no solid line edge at the back heel. However, a solid line edge at the back heel is shown in view 1.3. Please see annotated print alphabet letter G for views 1.1 and 1.3. Correction is needed to make the views consistent.
Annotated Print G:
View 1.1 and 1.3:
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664
979
media_image18.png
Greyscale
PNG
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465
1084
media_image19.png
Greyscale
h). View 1.1 shows only one solid line along the bottom side edge of the sole. However, view 1.3 shows two solid lines. Please see annotated print alphabet letter H for views 1.1 and 1.3. Correction is needed to make the views consistent.
Annotated Print H:
View 1.1 and 1.3:
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661
960
media_image20.png
Greyscale
PNG
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454
1110
media_image21.png
Greyscale
i). View 1.1 shows no shading within the mid-section curved panel, but shading is shown in view 1.3. Please see annotated print alphabet letter I for views 1.1 and 1.3. Correction is needed to make the views consistent.
Annotated Print I:
View 1.1 and 1.3:
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667
955
media_image22.png
Greyscale
PNG
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469
1056
media_image23.png
Greyscale
j). A series of triangles are shown on the side edges of the sole in views 1.1-1.3 and a series of oblong shapes are shown on the bottom heel in view 1.5 that appear non-enabled as the exact depth and dimensions of these shapes cannot be clearly understood. It is unclear if these shapes are flat, recessed or raised on the surface. As the exact depth and dimensions cannot be clearly understood, applicant should place these shapes (J) in broken lines. Please see annotated print alphabet letter J for views 1.1-1.3 and 1.5. It should be noted that the interior of the sole in view 1.4 is shown in full broken lines which would indicate that the bottom features of the sole are unclaimed. Clarification and correction are needed.
Annotated Print J:
Views 1.1, 1.2, 1.3 and 1.5:
PNG
media_image24.png
738
978
media_image24.png
Greyscale
PNG
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478
1056
media_image25.png
Greyscale
PNG
media_image26.png
517
1075
media_image26.png
Greyscale
PNG
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492
530
media_image27.png
Greyscale
k). In view 1.5, curved, semi-zig zag solid lines with an inner broken line show the side edges of the back strip on the heel. In views 1.2 and 1.3, straighter double solid lines form these edges of the back strip on the heel. Please see annotated print alphabet letter K for views 1.2, 1.3, and 1.5 that illustrate this inconsistency between the views. Correction is needed to make the views clear and consistent.
Annotated Print K:
Views 1.2, 1.3, and 1.5:
PNG
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538
1221
media_image28.png
Greyscale
PNG
media_image29.png
475
1053
media_image29.png
Greyscale
PNG
media_image30.png
683
425
media_image30.png
Greyscale
Due to the numerous inconsistencies stated above, careful review of any amended reproductions is needed to make sure that all views are clear and consistent so that the claimed design may be understood and capable of reproduction. Any amended reproductions submitted to overcome the refusal must comply with Part Four of the Administrative Instructions, pursuant to 37 CFR 1.1026. Correction is needed.
The necessity for good reproductions in a design patent application cannot be overemphasized. As the reproductions constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient reproduction may be fatal to validity (35 U.S.C. 112,(a)). Moreover, an insufficient reproductions may have a negative effect with respect to the effective filing date of a continuing application.
Replacement Reproductions
Any amended replacement reproduction sheets should include all of the views appearing
on the immediate prior version of the sheet, even if only one view is being amended. The view
or view number of an amended reproduction should not be labeled as “amended.” If a
reproduction is to be canceled, the appropriate view must be removed from the replacement
sheet, and where necessary, the remaining views must be renumbered and appropriate changes
made to the brief description of the several views of the reproductions for consistency.
Additional replacement sheets may be necessary to show the renumbering of the remaining
views. Each reproduction 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 reproductions 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.
It is suggested that applicant may submit large, clear formal reproductions which show the details of the design clearly, accurately, and consistently in order that the examiner may be in a position to determine if the claim may be clarified without the addition of new matter (35 U.S.C. 132, 37 CFR 1.121). In the alternative, applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling by converting them to broken lines.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the reproduction disclosure set forth above, or an explanation why the reproduction corrections or additional reproduction views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
Clarity, consistency and correction of the claim are required in order to obviate this rejection.
The claim stands rejected under 35 U.S.C. 112, (a) and (b) paragraphs.
Objection to the Specification
Descriptions of Reproductions
All Hague applications should have brief figure descriptions as per rule 37 CFR 1.1067. (MPEP 2920.04(a)(II). The descriptions of the reproductions are not required to be written in any particular format; however they should describe the views of the reproductions clearly and accurately. See Hague Rule 7(5)(a) and 37 CFR 1.1024. The following description is suggested for the reproduction view of 1.1:
1.1 is a perspective view of a shoe
Broken Line Statement
The broken line statements, “The broken lines on the shoe represent the stitching; concerning the shoe lace, the broken lines are for illustrative purposes only and form no part of the claimed design,” should be amended to read:
--The broken lines on the shoe represent stitching. The broken lines of the shoelaces and bottom of the shoe sole represent unclaimed subject matter and form no part of the claimed design.--
This statement should be placed after the descriptions of the reproductions but preceding the claim.
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.
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 https://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. If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at Elizabeth.Oswecki@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule (M-F 9-5 EST) indicated in the last paragraph of this communication.
Email Communication
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication 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.
When Responding to Official USPTO Correspondence
When responding to official correspondence issued by the USPTO, including a notification of refusal, please note the following:
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 actions only by:
[Symbol font/0xB7] Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
[Symbol font/0xB7] Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
[Symbol font/0xB7] Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
[Symbol font/0xB7] Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents/maintain/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. 112, (a) and (b) paragraphs.
The claimed design is patentable over the references cited. The art of record not relied upon is cited as cumulative art.
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Patentability Contact:
Inquiries concerning PATENTABILITY/EXAMINATION of this application should be directed to Elizabeth Oswecki whose telephone number is 571-272-4335. The examiner can normally be reached on M-F 9-5 pm EST. Please note that, at this time, the examiner is prohibited from initiating or returning international telephone calls. If applicant wishes to communicate by telephone, the examiner may be reached by email, elizabeth.oswecki@uspto.gov to arrange a time for applicant to initiate a telephone interview.
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.
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Applicants should contact the IAC concerning payment of FEES, schedule of PRINTING of patents, RECEIPTS, and any other administrative issues. IAC is available M-F 8:30 am-5:00pm EST at 1-800-786-9199 or 703-308-4357 or for TTY 703-305-7785 for customer assistance.
/ELIZABETH J OSWECKI/Primary Examiner, Art Unit 2912
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