DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 24, 2025 has been entered.
Status of Claims
This office action is in response to arguments and amendments entered on March 24, 2025 for the patent application 14/947,165 originally filed on November 20, 2015. Claims 1, 8, and 16 are amended. Claims 2-5, 7, 9-12, 14, 15, 18, and 19 are canceled. Claims 1, 6, 8, 13, 16, 17, and 20 remain pending. The first office action of October 6, 2017, the second office action of April 19, 2018, the third office action of June 14, 2019, the fourth office action of February 6, 2020, the fifth office action of October 21, 2020, the sixth office action of January 5, 2023, the seventh office action of June 21, 2023, the eighth action of April 12, 2024, and the ninth office action of October 23, 2024 are fully incorporated by reference into this office action.
Response to Amendment
Applicant’s amendments to the claims have been noted by the Examiner.
Applicant’s amendments are sufficient to overcome the outstanding 35 USC 112 rejections, therefore the outstanding 35 USC 112 rejections are withdrawn.
The Applicant’s amendments to the claims are not sufficient to overcome the outstanding 35 USC 103 rejections, for reasons set forth below.
Claim Objections
Claims 1, 6, 8, 13, 16, 17, and 20 are objected to because of the following informalities: typographical errors.
In claim 1, and substantially similar limitations in claims 8 and 16, recites the limitation “each of the first strip and the second stripe.” The Examiner reasonably believes this is a typographical error and should be corrected to “each of the first stripe and the second stripe.” Appropriate correction is required.
Dependent claims 6, 13, 17, and 20 are also objected to based on their respective dependencies to claims 1, 8, and 16.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 6, 8, 13, 16, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cave et al. (hereinafter “Cave,” US 2017/0011651).
Regarding claim 1, and substantially similar limitations in claims 8 and 16, Cave discloses a garment (Cave Abstract, “a ballet and dance teaching system comprising physical elements that are worn on the body in a variety of forms including appliques on shoes, printed garments and instructions that improve the ability of instructors to teach and students to learn.”; also Cave [0029], “a leotard or other garment worn on upper body has appliques and images as markers that provide visual guides to assist in the proper placement and alignment of the torso.”; see also Cave Figs. 3 and 4, showing ballet shoe/slipper) comprising:
an article wearable by a user, the article including indicia positioned on the article that correspond to one or more anatomical features of the user when worn by the user (Cave Abstract, “physical elements that are worn on the body in a variety of forms including appliques on shoes, printed garments and instructions”; see also Cave Fig. 1 and corresponding [0037], “Applique and image 130 is at the forward part, inside the foot, and outside of the left shoe. Similarly, 140 is at the rearward part. 150 and 160 demonstrate the right shoe appliques and images.”; also Cave [0064], “410 shows a line that communicates to the dancer and the instructor that the leg is directed forward and vertically aligned. 420 shows that the rear or left leg is properly rotated and at a proper angle, with the top of the line pointing to the top of the other. 430 demonstrates a heart shaped applique or image at the rear of the shoe, inside. 430 shows that the rear or right foot is properly rotated and uprightly vertically aligned. 440 shows a heart shaped applique located on top and forward on the shoe. 440 shows that the front or right foot is properly lifted, oriented and positioned.”; also Cave [0029], “a leotard or other garment worn on upper body has appliques and images as markers that provide visual guides to assist in the proper placement and alignment of the torso. This includes posture.”; note that portions of the feet, lower legs, and torso are anatomical features of the user);
wherein an instructor can refer to the indicia to communicate to the user how to move the indicia to a certain position by moving the anatomical features of the user, thereby forming a certain image on the garment to correspond to a correct pose (see Cave Fig. 1, showing “flowers forward” to put the user in first position; also Cave [0021], “As an example, three images are on a foot. One image is on the front, and it serves as the positive image that is to be seen. Two images, one on either side of the shoe are the negative images that are to be hidden from view when the foot is in position. As another example, this is a solution to teach the student about “rolling in” also known as pronation, described as when the big toe is rolled over and allowing the pinky toe to come off of the floor, a common habit among ballet beginners. For example, the positive image on the side is encouraged to be seen and the negative images above and below are encouraged to be hidden,” the instructor can refer to the indicia to communicate to the user how to move the indicia [the flowers] to a certain position by moving the user’s anatomical features, e.g., insides of feet, thereby achieving a certain image on the garment [i.e., both flowers being forward] to correspond to a correct pose, e.g., first position in ballet, i.e., the flowers being forward indicates that the correct pose has been accomplished. Two additional images on the sides contribute to the correct image to be formed: not seeing the side images and seeing the flowers mean the correct pose is being performed, i.e., the feet are level and not overpronated; also Cave [0029], “a leotard or other garment worn on upper body has appliques and images as markers that provide visual guides to assist in the proper placement and alignment of the torso. This includes posture.”; also Cave [0018], “appliques and images include at least one line, circle, or other geometric shape having intrinsic alignment properties to assist with aligning the dancer's body.”; also Cave [0021], “multiple images are attached to define a bodily position”; also Cave Fig. 4 and [0064], “410 shows a line that communicates to the dancer and the instructor that the leg is directed forward and vertically aligned. 420 shows that the rear or left leg is properly rotated and at a proper angle, with the top of the line pointing to the top of the other. 430 demonstrates a heart shaped applique or image at the rear of the shoe, inside. 430 shows that the rear or right foot is properly rotated and uprightly vertically aligned. 440 shows a heart shaped applique located on top and forward on the shoe. 440 shows that the front or right foot is properly lifted, oriented and positioned.”; also Cave [0055-0062], describing each position shown in Fig. 2 having multiple indicia contributing to the certain image. Further, any garment with a plurality of indicia is capable of this intended use).
Cave does not explicitly teach every limitation of wherein the indicia include a first stripe positioned on the article extending horizontally under the bust of the user, a second stripe positioned on the article extending horizontally across the hips of the user, an upper triangle positioned adjacent the first stripe, a lower triangle positioned adjacent the second stripe, wherein the first stripe, the second stripe, the upper triangle, and the lower triangle, are visible when the user is facing a first direction, wherein the indicia further include a first bar positioned on the article extending along a left side of the user, and a second bar positioned on the article extending along a right side of the user, wherein the first bar and the second bar are only partially visible when the user is facing the first direction, wherein each of the first bar and the second bar overlap with each of the first strip and the second stripe, wherein the upper triangle and the lower triangle are configured to touch when worn by the user and the user is in a first position.
Cave does disclose that “appliques and images include at least one line, circle, or other geometric shape having intrinsic alignment properties to assist with aligning the dancer's body” (Cave [0018]). Cave also discloses “a leotard or other garment worn on upper body has appliques and images as markers that provide visual guides to assist in the proper placement and alignment of the torso. This includes posture” (Cave [0029]). However, Cave does not disclose the exact arrangement of shapes of the printed indicia, and the specific positioning of these indicia to establish the exact same poses as outlined in the instant claim 1. That is, Cave does not explicitly teach the specific shapes and arrangement of the indicia on the garment.
However, the Applicant’s use of the specific shapes and positioning of the indicia, including overlapping indicia, on the garment is an obvious design choice. Applicant has not disclosed that using the specific shapes and positioning of the indicia on the garment solves any stated problem or is for any particular purpose that cannot be performed by any other configuration of shapes and positioning of indicia. Moreover, it appears that any configuration of shapes and positioning of indicia on the garment of Cave or the Applicant would perform equally well. Therefore, it would have been prima facie obvious to modify Cave to obtain the garment as specified in claim 1, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Cave.
Applicant is respectfully reminded that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the garment of the prior art reference has met the structural limitations of the claim, and would therefore be expected to be capable of performing the intended use claimed, e.g. the indicia are configured such that the correctness of the poses performed by the garment wearer may be ascertained by the instructor. That is, the garment disclosed by Cave may be used in the manner recited in instant claim 1 with a reasonable expectation of success.
It would have also been obvious to one of ordinary skill in the art at the time the invention was effectively filed to include the specific shapes and positions of the indicia on the garment since it has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In this case, it appears the Applicant has claimed that the positioning and shapes of the indicia has some significance as reference points. The fact that the content of the printed matter placed on the substrate may render the garment more useful for instructors by providing specific types and positions of indicia does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g. indicia) and the substrate (e.g. the garment) which is required for patentability. See MPEP 2111.05.
Regarding claim 6, and substantially similar limitations in claims 13 and 20, Cave discloses wherein the article is a leotard (Cave [0029], “a leotard or other garment worn on upper body has appliques and images as markers that provide visual guides to assist in the proper placement and alignment of the torso”).
Regarding claim 17, Cave discloses providing written instructions for instructing the user to move their anatomical features to a certain position to create the certain image on the garment (Cave Abstract, “Flowers forward is a ballet and dance teaching system comprising physical elements that are worn on the body in a variety of forms including appliques on shoes, printed garments and instructions that improve the ability of instructors to teach and students to learn.” [emphasis added], furthermore, providing the instructions in written form does not provide any new and unobvious functional relationship with the known method or substrate).
Response to Arguments
The Applicant’s arguments are fully considered, but are not persuasive.
The Applicant respectfully argues that “Cave is completely silent with two of the appliques, on the same garment, overlapping.”
The Examiner respectfully disagrees. The Examiner notes that overlapping of indicia on the garment provides no functional difference. That is, for example, a single X-shaped indicia has the same functionality as two bar-shaped indicia overlapping each other in the shape of an X. The shape of the indicia, and whether the shapes are formed by overlapping or not, are matters of design choice that do not affect the functionality of the indicia.
Furthermore, the Applicant’s disclosure does not mention overlapping indicia, or how such overlapping might change the functionality of the indicia. Applicant’s only disclosure of overlapping indicia is in the Figures, such as Figs. 1, 2, 4, and 5, which show overlapping indicia. However, there is no explanation in the disclosure of why such overlapping of indicia is beneficial to the invention. Thus, the Examiner concludes that it is an obvious design choice to overlap the indicia, since overlapped indicia bears the same functionality as non-overlapped indicia on a garment.
The Applicant further respectfully argues that “’design choice’ is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function… This is not the case in the present application. More particularly, the claimed indica on the leotard serve a function. For example, the upper and lower triangles 110 and 112, respectively, serve as directional indicators or arrows to communicate to a wearer how or which direction to move their anatomical features. Further, the specific position of the first and second stripes 106 and 108, respectively, and the left and right side bars 114 and 16, respectively, similarly provide a wearer with visual markers or landmarks corresponding to anatomical features that a user or instructee can manipulate to achieve the desired pose or anatomical configuration. Based on at least the foregoing, Applicant respectfully submits that the obviousness rejection based on design choice is improper and should be withdrawn.”
The Examiner respectfully disagrees. The garment indicia of Cave serves the same function as the garment indicia of the instant claimed invention. For example, in the instant invention, “indicia positioned on the wearable article to correspond to a feature of the human body when worn by an instructee. An instructor can refer to the indicia to communicate to the instructee how to move the indicia to a desired position by moving the trainee's anatomical features, thereby achieving a desired anatomical configuration” (see instant Abstract). Similarly, Cave discloses a “dance teaching system comprising physical elements that are worn on the body in a variety of forms including appliques on shoes, printed garments and instructions that improve the ability of instructors to teach and students to learn” (see Cave Abstract). Both the instant Application and Cave disclose providing indicia on garments with the function of facilitating communication of how to adjust the body to a correct position. That is, the function of the indicia remains the same between the instant application and the Cave prior art reference. Furthermore, even if arguendo the indicia of the instant application serves a different purpose from the indicia of Cave, the indicia of Cave is capable of performing the same functions as the indicia of the instant application.
As such, the argument is not persuasive. Therefore, rejection of the claims based on the prior art reference Cave is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Waller et al. (GB 2482760 A) Sporting Garments Or Articles Comprising Position Markers
Tawil (GB 2486446 A) System For Assessing The Posture Of A Rider On A Horse
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen Alvesteffer whose telephone number is (571)272-8680. The examiner can normally be reached M-F 8:00-6:00.
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/SA/ Examiner, Art Unit 3715
/PETER S VASAT/ Supervisory Patent Examiner, Art Unit 3715