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 .
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 is objected to for having multiple periods. Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. See: Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). See: MPEP 608.01(m).Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-10 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-9 of co-pending Application No. 15/341,802 (reference application); now US patent 10,905,184. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims are presented that are simply broader in one aspect and in another aspect adds a duplicate part. More specifically instant claim 1 is broader as it omits various shape limitations regarding the flat horizontal wings and their flat horizontal front sections; upper and lower brimcloth sections; and additional structural and functional limitations regarding claimed brim and stiffener sections and how they are sewn.
It is axiomatic to patent law and the MPEP that broader or genus claims are always anticipated by the species or more specific claims thereby establishing a case of prima facie obviousness that one of ordinary skill in the art of hat design and manufacture would have had within his knowledge from a species at the time of filing the invention to produce the genus.
With respect the added stiffener sections, the instant limitations are simply and addition of another pair of stiffener sections simply given new nomenclature (temple brace sections). The MPEP is clear: Duplication of Parts
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fillsthe joints which form between adjacent pours of concrete. The claimed water seal has a “web” which lies in the joint, and a plurality of “ribs” projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).”
Therefore one of ordinary skill in the art of hat design and manufacture would have had within his knowledge at the time of filing the invention to simply add additional brim stiffener sections as the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
The remaining claims correlate as per the table below:
New claims
Patented claims and any additional prior art/legal recitations pursuant current claims.
1
1 broader and prima facie obvious as above
2
2
3
3
4
4
5
5
6
6
7
7
8
Addition of a removable chin strap should be conceded by all parties as prima facie obvious that one of ordinary skill in the art of body worn devices would have had within their skill and knowledge that it is widely known and common to use removable chinstraps on head worn articles to provide simple, economic size adjustability, securement and fit of the head worn article on the user.
9
New claim 9 is near verbatim to claims 1 and 3 of abandoned parent application 16/105,972 that were rejected over US 20020162160 by office action dated 9/23/2020. Current obviousness type double patenting rejection would be over US 10,905,184 in view of US 2002162160 because ‘184 discloses all of claim 1 as above and ‘160 does teach all of new claim 9 (claims 1 and 3 from application 16/105,972) as recited in the rejection dated 9/23/2020.
Therefore it would have been obvious to one of ordinary skill in the art of garment design and manufacture at the time of filing the invention to modify the strap attachment already taught by ‘160 to further use a clip, hook clip, and/or alligator clip so that the user can attach the strap attachment easily and effectively so that the strap is readily available so as not to become cumbersome/in the way’, or lost during use.
Further the only additional difference between ‘160 and the claimed arrangement is that the strap and strap slots of ‘160 are at a lower edge of the crown of the hat and not the brim as claimed.
However, figs. 3 and 6 from ‘160 show the strap and strap slots very close to if not only millimeters away from the brim of the hat.
There is no showing of different operation, criticality nor unexpected result from the straps being attached at the brim rather than the lower edge of the crown portion of a hat.
The MPEP states:
Rearrangement of Parts
Inre Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
It is the examiner’s position that the mere changing of the position of the attachment of the straps on a hat’s lower crown perimeter to the brim which extends from and is adjacent to the lower crown perimeter would not have modified the operation of the hat; therefore the particular placement of a strap/strap slots for attachment to a strap to a hat was held to be an obvious matter of design choice.
Therefore it would have been obvious to one of ordinary skill in the art of garment design and manufacture at the time of filing the invention to modify the strap attachment already taught by ‘160 to simply modify the attachment point of the strap/strap slots from the lower edge perimeter of the crown portion of the hat to the brim portion of the hat as a matter of obvious design choice so as to provide a hat with a removable chin strap in the desired location during use.
10
Verbatim to claim 5 from application 16/105,972.
‘160 fully discloses claim 5 as the element 80 is disclosed as including 82 which is disclosed as a spring loaded release clamp.
Therefore it would have been obvious to one of ordinary skill in the art of garment design and manufacture at the time of filing the invention to modify the strap attachment already taught by ‘160 to simply modify the attachment point of the strap/strap slots from the lower edge perimeter of the crown portion of the hat to the brim portion of the hat as a matter of obvious design choice so as to provide a hat with a removable chin strap in the desired location during use.
Response to Arguments
Applicant's arguments and papers filed 12/29/2025 have been fully considered but they are not persuasive.
Double patenting rejections have not been overcome. The terminal disclaimer(s) filed was/were disapproved as per the paper “DISQ” dated 7/22/2022; again in paper “DISQ” dated 4/7/21; again in paper “DISQ” dated 12/9/2021; and further once again in “DISQ” dated 7/11/2022; all in the file wrapper of the application.
The rejection can be overcome by a properly executed Terminal disclaimer to the cited patent above as laid out clearly in the DISQ 7/11/2022 papers in the file wrapper. The Examiner has called applicant and highly suggests the use of the “E-TD” form available on the PAIR system as it provides real-time to the applicant whether the Terminal Disclaimer filed is approved or disapproved. Phone calls and messages to applicant have not received any response.
It is unclear why applicant would reply, “In response, Applicant submits that a Terminal Disclaimer that has been submitted is sufficient.”; when three Terminal disclaimers filed by applicant have been disapproved per “DISQ” papers cited above.
The only proper response to overcome the obviousness type double patenting rejections are, as repeatedly stated by the examiner, a properly executed terminal disclaimer.
The paper “DISQ” dated 7/11/2022 in the file wrapper explicitly states:
“The terminal disclaimer identifies a party who is not the applicant (only for applications filed on or after September 16, 2012; See FP 14.26.10): For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that only the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant’s ownership.
To remedy this: A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is:
(1) a request, signed by a 1.33(b) party,
(2) a corrected ADS (37 CFR 1.76(c)) that identifies the “new” applicant in the applicant information, and is underlined since it is new, and
(3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
Please resubmit td. No fee required. Thanks.”.
Until a properly executed Terminal disclaimer is filed the rejection remains and is considered to be proper.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H MUROMOTO JR whose telephone number is (571)272-4991. The examiner can normally be reached M-Th 730-1730.
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, Alissa Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H MUROMOTO JR/Primary Examiner, Art Unit 3732