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 .
Status of Claims
Claims 1-8 are rejected. Claims 9-12 are withdrawn.
Response to Arguments
Drawings
The previous drawing objections have been withdrawn in view of the Replacement Sheet.
Claim Rejections - 35 USC § 112
The previous 112(a) rejection regarding “scaffold layer” has been maintained since the as-filed specification did not have support for the amended limitation in claim 1. Applicant’s response to amend the specification by adding “scaffold layer” does not cure the deficiency of the as-filed specification lacking the support for “scaffold layer” and introduces a new matter issue for the specification as set forth in the Office action below.
Specification
The amendment filed 12/16/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “scaffold layer” in ¶30.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claim 1 is objected to because of the following informalities: the word “and” should be located after “a wicking layer removably attached to the scaffold layer;” so that the claim reads “…removably attached to the scaffold layer; and a printed circuit board…”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: “the sensing modules” should recite –the at least one sensing module—as claim 1 states there could only be one. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
sensing module in claims 1 and 4; and
a communications module in claims 1 and 5.
For sensing module in claims 1 and 4, claim 4 recites “wherein the sensing modules are at least one of a thermal sensor, an accelerometer, and a pulse meter.” Therefore, the Examiner is interpreting the sensing module to be at least one of a thermal sensor, an accelerometer, and a pulse meter.
For a communications module in claims 1 and 5, claim 5 recites “the communications module is Bluetooth Low Energy or Wi-Fi.” Therefore, the Examiner is interpreting the communications module to be Bluetooth Low Energy or Wi-Fi.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended limitation of “scaffold layer” is not recited in the specification and therefore is new matter.
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 5 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.
Claim 5 contains the trademark/trade name “Wi-Fi”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe wireless network communication and, accordingly, the identification/description is indefinite.
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 1-2, 4, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Staton (US 20180341114 filed on 7/13/18) in view of Schultz (US 5157788 filed on 5/17/91).
Regarding claim 1, Staton teaches a hydrothermal sensing device, wherein the hydrothermal sensing device comprises: a printed circuit board having at least one sensing module, a microcontroller, a communications module, and power source (¶48-the HID control and power circuitry may be contained within the hat and/or bill to provide power; ¶8-a sensor is secured to the hat, the hat further includes…a processor; ¶47-the hat and/or bill may contain a variety of components such as…communication), the printed circuit board integral or coupled to the band (¶47-the hat and/or bill may contain a variety of components such as a battery, central processing unit (CPU), random-access memory (RAM), communication, mixed-mode video processing circuitry, and human interface device (HID) drivers). However, Staton does not teach an outer reflective layer; a mesh layer coupled to the reflective layer; a scaffold layer comprising a band and a frame; and a wicking layer removably attached to the scaffold layer.
Schultz relates to ventilated, heat attenuating headwear and, more particularly, to a hat designed to keep the wearer cool and dry, particularly during outdoor activities (col. 1, lines 6-9). Schultz further teaches the invention using the following steps:
an outer reflective layer (col. 1, lines 49-50-an outer, radiation reflecting mesh layer); a mesh layer coupled to the reflective layer (col. 2 and lines 4-6-the outer mesh section includes means for reflecting away from the headwear a portion of solar radiation that strikes the outer mesh section); a scaffold layer comprising a band and a frame (col. 5 and lines 13-16-provide hat 10 with some degree of rigidity and a relatively permanent shape, a support grid 42 is disposed between the inner mesh section 26 and the outer mesh section 12; col. 5 and lines 30-34-support grid 42 is located between the mesh sections such that lower edge 46 extends generally along the brim of hat 10 and upper edge 44 extends generally along the upper edge of side portion 14; Figs. 2-3); and a wicking layer removably attached to the scaffold layer (col. 1 and lines 66-68-the inner mesh section includes a wicking and evaporative material that may comprise a hydrophobic fabric; MPEP 2114 states: "[A]pparatus claims cover what a device is, not what a device does,” therefore the structure of the wicking layer is capable of being removable).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include an outer reflective layer; a mesh layer coupled to the reflective layer; a scaffold layer comprising a band and a frame; and a wicking layer removably attached to the scaffold layer of Schultz in order to provide the hat with some degree of rigidity and a relatively permanent shape (Schultz, col. 5 and lines 14-15) and keep the wearer cool and dry, particularly during outdoor activities (Schultz, col. 1 and lines 8-9).
Regarding claim 2, the combination of Staton and Schultz teaches the device of claim 1, wherein the reflective layer is porous and UV resistant (Schultz, col. 1 and lines 49-52-an outer, radiation reflecting mesh layer for repelling away from the wearer's head a majority of the solar radiation that strikes the outer mesh layer; col. 3 and lines 18-21-the mesh reflects a significant portion of the solar radiation striking the hat and, at the same time, permits air to pass through the outer section to aid in ventilating the wearer).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include wherein the reflective layer is porous and UV resistant of Schultz in order to keep the wearer cool and dry, particularly during outdoor activities (Schultz, col. 1 and lines 8-9).
Regarding claim 4, the combination of Staton and Schultz teaches the device of claim 1, wherein the sensing modules are at least one of a thermal sensor and an accelerometer (Staton, ¶60-the hat may sense when a user is outdoors (e.g., though a temperature differential identified by one or more of the sensor); ¶64-temperature sensor; ¶34-the item of headwear may be equipped with…an accelerometer).
Regarding claim 8, the combination of Staton and Schultz teaches the device of claim 1, wherein the hydrothermal sensing device is a hat (Staton, ¶9-an item of headwear has a hat worn by a user).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Staton in view of Schultz as applied to claims 1-2, 4, and 8 above, and further in view of Olcese (US 20170079362 filed on 9/22/15).
Regarding claim 3, the combination of Staton and Schultz teaches the device of claim 1, wherein the mesh layer further comprises a brim (Schulz, col. 5 and lines 31-33-the mesh sections such that lower edge 46 extends generally along the brim of hat 10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include wherein the mesh layer further comprises a brim of Schultz in order to keep the wearer cool and dry, particularly during outdoor activities (Schultz, col. 1 and lines 8-9).
While Schultz teaches that fasteners may comprise plastic, Velcro, a drawstring or an elastic sewn into the brim of the hat (Schultz, col. 3 and lines 62-64), the combination of Staton and Schultz does not teach an adjustable snap closure.
Olcese teaches an adjustable snap closure (¶44-snap portion, the circumference of the hat can then be re-adjusted based on the desired circumference for a wearer's head; Fig. 2B).
Olcese relates to adjustment mechanisms for headwear, and to headwear having such adjustment mechanisms (¶1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include an adjustable snap closure of Olcese in order to adjust for variations in head circumference (Olcese, ¶27).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Staton in view of Schultz as applied to claims 1-2, 4, and 8 above, and further in view of Yuan (CN 105105724 published on 9/14/15).
Regarding claim 5, the combination of Staton and Schultz teaches the device of claim 1. While Staton teaches wireless communication (¶48), the combination of Staton and Schultz does not teach wherein the communications module is Bluetooth Low Energy or Wi-Fi.
Yuan teaches wherein the communications module is Bluetooth Low Energy or Wi-Fi (¶26-communication module comprises: Wireless Fidelity (Wi-Fi); ¶12- communication module…assembled on cap body).
Yuan relates to health custodial care facility field, more particularly, relate to a kind of solar energy wearable computing formula measuring of human health cap (¶2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include wherein the communications module is Bluetooth Low Energy or Wi-Fi of Yuan in order to transfer the human health information (Yuan, ¶20).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Staton in view of Schultz as applied to claims 1-2, 4, and 8 above, and further in view of Duda (US 20100138980 filed on 12/4/09).
Regarding claim 6, the combination of Staton and Schultz teaches the device of claim 1, and to wick away fluid from the user's body (Schultz, col. 2 and lines 59-63the inner mesh section is designed to provide an optimum degree of ventilation and dryness for the wearer. Preferably, it should be composed of a woven or knitted hydrophobic fabric that wicks perspiration away from the skin of the wearer).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include wicking away fluid from the user’s body of Schultz in order to keep the wearer cool and dry, particularly during outdoor activities (Schultz, col. 1 and lines 8-9).
However, the combination of Staton and Schultz does not teach wherein the wicking layer can retain fluid.
Duda teaches wherein the wicking layer can retain fluid (¶11-wicking fabric absorbs perspiration).
Duda relates to wearing a sports cap baseball-type either for a sporting activity or just keeping the sun out of your eyes (¶11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include wherein the wicking layer can retain fluid of Duda in order to keeps perspiration from the skin locked into the fabric preventing perspiration from absorbing through the front crown and rim of the sports cap baseball-type showing up on the exterior side (Duda, claim 1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Staton in view of Schultz as applied to claims 1-2, 4, and 8 above, and further in view of Waters (US 20080130272 filed on 11/16/07).
Regarding claim 7, the combination of Staton and Schultz teaches the device of claim 1. While Staton teaches power circuitry (¶84), the combination of Staton and Schultz does not teach wherein the printed circuit board is flexible.
Waters teaches wherein the printed circuit board is flexible (¶173-flexible printed circuit board (FPCB)).
Waters relates to hands-free lighting devices and, in particular, to lighted hats, lighted eyeglass frames, and lighted clothing items (¶2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Staton to include wherein the printed circuit board is flexible of Waters in order to bens or flex in order to conform to the shape of the brim member (Waters, ¶114).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA HODGE whose telephone number is (571) 272-7101. The examiner can normally be reached M-F: 8:00 am-5:00 pm.
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/L.N.H./Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792