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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 28, 2025 has been entered.
Response to Amendment
The amendments filed with the written response received on April 24, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 35 and 43 have been amended; claims 1-34, 37, 39-42 and 44-46 are canceled. Accordingly, claims 35, 36, 38 and 43 are pending in this application, with an action on the merits to follow.
Priority
Examiner acknowledges Applicants remarks regarding Priority in their April 24, 2025 response. However, according to the current record, there has been no granted petition regarding priority being corrected to establish benefit of priority to provisional application 91/997,161 for the present application’s abandoned parent application 14/718,372. The statements made by the previous examiner in the May 19, 2023 final Office Action remain applicable, with respect to priority and any options for correcting benefit claim to the above-mentioned provisional application. Since the new subject matter in the present CIP application has been removed from the claims (i.e. the sound producing device, such amendment was made on April 18, 2023) the present application’s claims receive benefit of the parent application 14/718,372, which was filed on May 21, 2015.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “strap extending away from the circular opening to a clip” (claim 43) must be shown or the feature(s) canceled from the claim(s). Examiner notes that there appears to be an unlabeled strap and clip pairing shown in Figs. 3-5, 7, 9-11. However, in these drawings, the strap does not “extend away from the circular opening”, nor does the strap appear to be associated with the circular opening at all. The only linear structure that is shown to extend from the circular opening appears to be a drawstring attached to an adjustment clip, as best as can be understood to be shown in Figs. 10-13, wherein the identified drawstring appears to constitute the “elastic cord” recited in the claims. No new matter should be entered.
As noted in the final Office Action mailed on May 19, 2023, the placement of the sound producing device 100 represents new matter, and this previously-applied objection is maintained, for the reasons identified in said May 19, 2023 Office Action. The illustrated placement of the sound producing deice 100 should be removed from the drawing in order to obviate this specific objection. Examiner acknowledges Applicant’s remarks in their April 24, 2025 response, requesting that “figure 10 be withdrawn”. However, this statement alone does not remove the presence of Fig. 10 within the drawings. Applicant’s Specification still references a Fig. 10, and the Specification has not been amended to reflect an absence of a Fig. 10, nor have any replacement Drawings been submitted to renumber existing Drawings to reflect the absence of a Fig. 10 (i.e. all figures must be numbered in sequence, with no gaps in figure numbering; if Applicant deletes current Fig. 10, then all subsequent figures would need to be renumbered so that there are no gaps in figure numbering, which in turn requires the Specification to be amended accordingly so that all updated Figure numberings are accurate).
The drawings are objected to because: Figs. 13-16 are grayscale and/or black and white photographs with little to no clarity with respect to the subject matter attempted to be depicted. Black and white photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. Photographs or photomicrograph printed on sensitized paper are acceptable as drawings, in lieu of India ink drawings, as are photographic images submitted via the USPTO patent electronic filing system, to illustrate inventions which are incapable of being accurately or adequately depicted by India ink drawings, e.g., electrophoresis gels, blots, (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, metallurgical microstructures, textile fabrics, grain structures and, in a design patent application, ornamental effects. The photographs or photomicrographs must show the invention more clearly than they can be done by India ink drawings and otherwise comply with the rules concerning such drawings. See MPEP 608.02(VII)(B).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. 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. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 43 (and claims 35, 36, and 38 at least due to dependency from claim independent 43) is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing 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.
Regarding claim 43, Applicant recites “at least one decorative element based on a style of plush toy resulting from the garment retained in the stored position” (emphasis added). First, the phrase “based on a style of plush toy” is unclear with respect to how the phrase is intended to further define the structure of the at least one decorate element. A plush toy can have several different styles in commerce, including various shapes and sizes. Further, the phrase “based on” is unclear because it does not effectively establish a meaningful definition for the intention for the structure of the at least one decorative element. Also, the phrase “the stored position”, at this point in the claim, lacks clear antecedent basis because no “stored position” is positively defined until later in the claim. Correction is required. For purposes of examination, “based on a style of plush toy” is not deemed to establish any particular specific further-defining structural requirement for the at least one decorative element, absent further clarification in the form of a structurally-defining limitation as to what constitutes “based on a style of plush toy” in the claim.
Further regarding claim 43, Applicant recites “a strap extending away from the circular opening to a clip”. As best as can be understood in light of the disclosure, the strap with the clip does not actually extend away “from” the circular opening, as recited in the claim, but instead extends away from the exterior of the pouch (see Fig. 10, for example, which shows the unlabeled strap as extending from an intermediate point on the exterior surface of the pouch, as opposed to extending from the circular opening. Correction is required. For purposes of examination, if the prior art extends away from the exterior of the equivalent pouch, it will be deemed to meet the limitations of the claim, as best as can be understood in light of Applicant’s disclosure.
Further regarding claim 43, Applicant recites “wherein the garment transitions between a deployed position and a stored position”. This limitation is an active method-of-use limitation within a product claim, which is improper. Correction is required. Examiner suggests “wherein the garment is configured to transition between a deployed position and a stored position”, as best as can be understood.
Further regarding claim 43, Applicant recites “wherein the garment is entirely retained within the hollow interior in the stored position, wherein when the pouch is a toy based on the at least one decorative element when the garment is in the stored position” (emphasis added). The emphasized phrase is confusing. Correction/clarification is required. For purposes of examination, the phrase is being interpreted as meaning the same as “wherein the garment is entirely retained within the hollow interior when the garment is in the stored position, and wherein the pouch is configured to appear as said style of said plush toy when the garment is in the stored position,” as best as can be understood.
Regarding claim 35, Applicant has amended the claim to depend from claim 443, which does not exist. Correction is required. Examiner suggests the claim depend from independent claim 43, as best as can be understood.
Further regarding claim 35, Applicant recites “the perimeter of the sealable opening”, which lacks antecedent basis. Correction is required. For purposes of examination, “the perimeter of the sealable opening” is being interpreted as “a perimeter of the circular opening”, as best as can be understood.
Further regarding claim 35, Applicant recites “wherein the elastic cord reduces a circumference of the perimeter”. This limitation is an active method-of-use limitation within a product claim, which is improper. Correction is required. Examiner suggests “wherein the elastic cord is configured to reduce a circumference of the perimeter”.
Regarding claim 36, Applicant recites the limitation “the sealable opening”, which lacks antecedent basis. Correction is required. For purposes of examination, “the sealable opening” is being interpreted as “the circular opening” as best as can be understood.
Further regarding claim 36, Applicant recites “wherein the sealable [i.e. circular, see above] opening is sealed by the elastic cord after the garment is stored entirely within the pouch”. This limitation is unclear, because Fig. 11 appears to illustrate an example of the garment being entirely stored within the pouch, but the opening is not sealed. A sealed opening implies that the opening has been reduced to zero (i.e. “sealed”). The opening in Fig. 11 appears to still be a measurable opening, which would not be sealed, as best as can be understood. Correction is required. While the following is not a suggestion of specific language for correction, for purposes of examination, the opening need not actually be completely sealed, but merely reduced to a minimal size that holds the garment within the pouch, when in the stored position, as best as can be understood.
An effort has been made to identify all indefinite language with the pending claims. However, Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 43*, 35* and 36*, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Opperman (US 2015/0320125) in view of Theodore (US 2012/0309256) and Rexroad et al. (hereinafter “Rexroad”) (US 2013/0232660).
*Examiner notes that the claims will be addressed below in order of dependency, rather than direct numerical order.
Regarding independent claim 43, Opperman discloses a garment system (garment #100 combined with 3D feature #104 is a garment system; the 3D feature #104 is a stuffed toy (¶ 0002 of Opperman); while a bear is illustrated, Opperman discloses in ¶ 0018 that other suitable plush toys may be used) comprising: a pouch (3D feature #104 itself is a pouch with an interior space #108 (¶ 0019 of Opperman)) comprising an opening of a hollow interior (interior space #108 has an opening into which the garment #100 is stowable; see Fig. 5 of Opperman), the opening affixed to a garment (opening is generally coincident with attachment site #106, which is an interface between the 3D feature #104 and the garment #100, wherein the feature #104 forms a pocket for storing the garment #100 (¶ 0019 of Opperman)); at least one decorative element based on a style of plush toy resulting from the garment retained in the stored position visible on an exterior of the pouch (as noted above; feature #104 is a 3D feature in the style of a plush toy; 3D feature #104 may be disposed at any suitable location on the exterior side #102 (¶ 0017); when the garment is stored, only the 3D feature is visible (end of ¶ 0015)); wherein the garment transitions between a deployed position (Figs. 1, 4 and 7) and a stored position (Figs. 3 and 6), wherein the garment is entirely retained within the hollow interior in the stored position, wherein when the pouch is a toy based on the at least one decorative element when the garment is in the stored position (as explained above). Opperman does not teach that the opening is circular with an elastic cord configured to bias the opening to a closed position, and silent to there being a strap extending away from the opening to a clip (however, see above in the 35 U.S.C. 112(b) rejection section regarding the interpretation of “extending away from the circular opening”, as best as can be understood in light of Applicant’s disclosure).
Rexroad teaches a garment stowable within a pouch, wherein the interface between the garment and the pouch is defined by a circular opening with an elastic band #422 that serves as a pouch closure mechanism (see Fig. 6, ¶ 0038 of Rexroad).
Theodore teaches a stuffed toy #10 that has straps #24 with clips #28 at their respective ends, to permit the clips #28 to be attached to associated clips #28, so that the toy can be carried over the shoulders or across the back by the wearer (¶ 0039 of Theodore).
Opperman and Rexroad teach analogous inventions in the field of garments stowable in pockets, and Opperman and Theodore teach analogous inventions in the field of stuff toys. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used the elastic band, circular opening closure mechanism of Rexroad as the closure device #110 of choice for the Opperman garment system in order to provide an alternative known closure mechanism that can securely hold the garment within the interior space of the pocket, which would have a benefit of biasing closed when the garment is stowed therein, without a need to manipulate a zipper or other mechanical fastener to render the opening to the closed position. It would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added the straps and clips #28 of Theodore to the plush toy of Opperman in order to provide the user with capability to carry the stuffed animal over their shoulders or on their back, as taught by Theodore, thus providing a benefit of freeing the user’s arms when carrying the stuffed toy while the garment is stowed within the pocket of the stuffed toy. As a result of the modifications, the opening would be circular and include an elastic cord at the opening’s periphery (via the teachings of Rexroad incorporated into modified Opperman) and there would be a strap extending away from the circular opening to a clip (via the added straps with clips incorporated into modified Opperman from the teachings of Theodore).
Regarding claim 35, the modified garment system of Opperman (i.e. Opperman in view of Rexroad and Theodore, as applied to independent claim 43 above) renders obvious that the elastic cord is disposed within the perimeter of the sealable opening of the pouch, wherein the elastic cord reduces a circumference of the perimeter (see Fig. 6 of Rexroad, which shows the elastic band disposed within the perimeter of the circular opening, as it would appear in the modified garment system of Opperman).
Regarding claim 36, the modified garment system of Opperman (i.e. Opperman in view of Rexroad and Theodore, as applied to claims 43 and 35 above) renders obvious that the sealable opening is sealed by the elastic cord after the garment is stored entirely within the pouch (Opperman teaches that the entire garment is storable within the pocket in the stuffed 3D feature #104, as noted above; the elastic band (i.e. elastic cord) would seal the opening to the same amount as Applicant’s Figs. 10 and 11 show a sealed opening, as best as can be understood).
Claim 38, as best as can be understood, is rejected under 35 U.S.C. 103 as being unpatentable over Opperman in view of Rexroad and Theodore as applied to claim 36 above, and further in view of Waldman et al. (hereinafter “Waldman”) (USPN 5,564,125).
Regarding claim 38, the modified garment system of Opperman (i.e. Opperman in view of Rexroad and Theodore, as applied to claims 43, 35 and 36 above) renders obvious all the limitations of claim 36, as set forth above, but is silent to specifying what whether the garment #100 is waterproof.
Waldman teaches a combination outerwear garment and carrier pack, wherein the outerwear garment is stowable within the carrier pack (see Figs. 6-9 and Abstract of Waldman), and further teaches that the outerwear garment may be made of waterproof material (Col. 4, Lines 47-51 of Waldman).
Modified Opperman and Waldman teach analogous inventions in the field of garments stowable within pockets affixed to the garment. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used waterproof material to form the garment #100 in Opperman, as taught by Waldman, in order to provide the garment with capability to resist water during wet inclement weather or other wet environments, and further since the concept of waterproof garments is very well-known in the art.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new/different prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Regarding the remarks on Priority, Examiner notes that, as of the time of preparing this Office Action, the parent application’s (14/718,372; hereinafter “the ‘372 application”) claim of benefit to the provisional application 61/997,161 (filed May 23, 2014) has not yet been corrected. As of now, all of the attempted petitions in the ‘372 application to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of priority to the prior-filed provisional application have been determined to be “DISMISSED”. It is noted that the Examiner of this application (signed below) has no authority to grant or dismiss petitions, and Applicant should reach out to the individual(s) or office(s) listed in the petition decisions for further assistance in such matters.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of garments and/or stuffed toys that are stowable within pouches that are integral with or connected thereto.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON OSTRUP can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732