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 .
Response to Amendment
Applicant’s amendment of 10/10/2025 is acknowledged.
An abstract amendment is acknowledged. This amendment is acceptable.
Claims 1-2, 6-10, and 13-22 are presented and are previously presented.
The present office action is a final rejection.
Response to Arguments
Applicant’s Remarks of 10/10/2025 (see p. 7-20 of the reply) are fully considered.
Regarding Amendments to the Abstract (p. 8): Applicant’s arguments are fully considered. Applicant’s abstract amendments render the objection to the abstract as applied in the previous office action moot.
Regarding Rejections under 35 U.S.C. § 101 (see p. 8-11), Applicant’s arguments are fully considered and are not persuasive.
Applicant argues:
Step 1
Applicant respectfully submits that claim 1 is directed to a method of visualizing a speed of an athlete and, therefore, is directed to a statutory category. The Office has not shown or alleged otherwise.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. As stated in the office action of 06/18/2025, claim 1 is “rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, enumerated grouping of abstract models (ideas) to visualize a speed of an athlete by monitoring color and evaluating speed on the basis of color without significantly more” (see p. 4 lines 14-16 of the office action of 06/18/2025).
Applicant argues:
Step 2A - Prong One
Claim 1 is not directed to a judicial exception and, thus, the claim is eligible under 35 U.S.C. §101.
The Office incorrectly alleges that claim 1 recites an abstract idea in the "mental process" grouping because the claim recites monitoring the color of the at least one thermochromic dye during the sporting activity of the athlete and evaluating the speed of the athlete on the basis of the actual color of the at least one thermochromic dye. Office action, p. 7-8. The "mental processes" grouping includes "concepts performed in the human mind (including an observation, evaluation, judgement, opinion)." MPEP 2106.04(a)(2)(III)(A). Correspondingly, a claim with limitation(s) that cannot practically be performed in the human mind does not recite a mental process. Id. ("Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations."); see also SRIInt'l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019) (declining to identify the claimed collection and analysis of network data as abstract because "the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims"); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed. Cir. 2011) (citing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010), finding a method of rendering a digital image to not be a mental process as being directed to a method that that "could not, as a practical matter, be performed entirely in a human's mind") (Emphasis added).
In this case, the claims recite limitations that cannot practically be performed in the human mind, and, as such, do not recite a mental process (as alleged by the Office). For example, claim 1 recites "evaluating the speed of the athlete on the basis of the actual color of the at least one thermochromic dye." The human mind is not equipped to evaluate speed of an athlete on the basis of color alone. Therefore, claim 1 is not directed to a mental process.
For at least these reasons, the pending claims are directed to eligible subject matter under revised Step 2A, Prong One.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. Applicant’s argument that “the claims recite limitations that cannot practically be performed in the human mind, and, as such, do not recite a mental process” is fully considered and is not persuasive; as stated in the office action of 06/18/2025, claim 1 recites the step of monitoring the color of the at least one thermochromic dye during the sporting activity of the athlete, which is an act of monitoring information that can be practically performed in the human mind; claim 1 further recites the step of evaluating the speed of the athlete on the basis of the actual color of the at least one thermochromic dye, which is an act of evaluating information that can be practically performed in the human mind (see office action of 06/18/2025 in the paragraph spanning p. 7-8). Applicant’s specific argument that “The human mind is not equipped to evaluate speed of an athlete on the basis of color alone” is fully considered and is not persuasive if only because they argument is not commensurate with claim language. Claim 1 does not recite evaluation of speed on the basis of color “alone” as argued, and claim 1 does not include the term “alone”.
Applicant argues:
2A - Prong Two
Even if the claim was directed to an abstract idea, the claim further recites subject matter that is integrated into a practical application and, thus, the claim is eligible under 35 U.S.C. § 101.
The Office alleges that claim 1 recites additional elements that add insignificant extra- solution activity to the judicial exception because certain other limitations are either well-known or conventional. Office action, pp. 8-12. However, this reasoning is legally deficient because determining whether a claim recites subject matter that is "well-understood and conventional" is not relevant to determining whether extra-solution activity is insignificant as "[s]tep 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity." See MPEP § 2106.04(d).
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive if only because they are not commensurate with the rejection as applied. Applicant’s argument that the Office “alleges that claim 1 recites additional elements that add insignificant extra- solution activity to the judicial exception because certain other limitations are either well-known or conventional” fails to note that the Office does not allege that the recited additional elements add insignificant extra-solution activity exclusively because “certain other limitations are either well-known or conventional” but rather that the additional claim limitation(s) “adds insignificant extra-solution activity” (p. 9 line 19) and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use...does not alter or affect how the mental process steps...are performed” (p. 11 lines 1-6). Accordingly, Applicant’s argument that “this reasoning is legally deficient because determining whether a claim recites subject matter that is "well-understood and conventional" is not relevant to determining whether extra-solution activity is insignificant as "[s]tep 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity."” is unpersuasive if only because it is not commensurate with the rejection as applied.
Applicant argues:
To the extent the Office (erroneously) argues that the claim is directed to a judicial exception, "implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim" is indicative that the exception has been integrated into a practical application. Id. at § 2106.04(d)(I). In this case, the limitation of providing a piece of garment is not nominal or tangential to the claimed method for visualizing a speed of an athlete, it is a key aspect of the method that cannot be disregarded. For example, the claim further specifies that the garment includes thermochromic dye and elements to influence an airstream to stabilize a color of the at least one thermochromic dye. At the very least this provides clear evidence that any judicial exception that that Office (improperly) alleges to exist, is used in conjunction with a garment (i.e., a manufacture) that is integral to the claim and does more than generally link the use of a judicial exception to a particular technological environment or field of use. Cf Office action, p. 10-11. Thus, any alleged judicial exception is integrated into a practical application, and the pending claims are directed to eligible subject matter under revised Step 2A.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. Applicant’s specific argument that “the limitation of providing a piece of garment is not nominal or tangential to the claimed method for visualizing a speed of an athlete, it is a key aspect of the method that cannot be disregarded. For example, the claim further specifies that the garment includes thermochromic dye and elements to influence an airstream to stabilize a color of the at least one thermochromic dye. At the very least this provides clear evidence that any judicial exception that that Office (improperly) alleges to exist, is used in conjunction with a garment (i.e., a manufacture) that is integral to the claim and does more than generally link the use of a judicial exception to a particular technological environment or field of use” is fully considered and is not persuasive in that the additional claim limitation(s) does no more than generally link the use of a judicial exception to a particular technological environement or field of use; limiting the abstract idea to a piece of garment worn by an athlete as claimed limits the use of the abstract idea to the particular technological environment and does not alter or affect how the mental process steps of monitoring and/or evaluating is/are preformed; see office action of 06/18/2025, the paragraph spanning p. 10-11).
Applicant argues:
Step 2B
Even if claim 1 was directed to a judicial exception, the claim as a whole amounts to "significantly more" than the exception and, thus, the claim is eligible under 35 U.S.C. §101.
The Office alleges that claim 1 does not contain any "inventive" concept. See Office action, p. 12-13. A consideration for evaluating inventive concept is whether a claim adds "a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application." See MPEP §2106.05(d). The Office admits that there is no art-recognized correlation between the speed of the athlete and the actual color of a thermochromic dye. See Office action, p. 24. Thus, claim 1 includes an inventive concept that is unconventional, not well-understood, and not routine.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive if only because it is not commensurate with the rejection as applied. The Office does not allege that “claim 1 does not contain any "inventive" concept. See Office action, p. 12-13” as argued but rather states “the additional elements...do not contain any “inventive concept”, and the claimed step of “providing a piece of garment, which is worn by the athlete during a sporting activity, wherein the piece
of garment includes a plurality of elements configured to influence aerodynamic drag and at least one
thermochromic dye, wherein the at least one thermochromic dye is provided in a first region of the
piece of garment and the plurality of elements are provided on a second region of the piece of garment
that is different from the first region, the plurality of elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at
least one thermochromic dye in the first region, and wherein the first region includes at least one of a
chest region and a front sleeve region of the piece of garment” adds insignificant extra-solution activity
to the judicial exception; it is noted the claimed step does not recite “correlation between the speed of the athlete and the actual color of a thermochromic dye” as argued.
Applicant argues:
Furthermore, to the extent the Office erroneously argues that the claim is directed to a judicial exception, the pending claims recite "significantly more" than a mere abstract idea. As described above, providing a piece of a garment is not extra-solution activity. In order for an apparatus to add significantly more, it must "play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly." See MPEP § 2106.5(b) (quoting Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). Here, the garment plays a significant role because the garment includes the thermochromic dye having the color that is being monitored, and because the garment includes the plurality of elements that are configured to influence an airstream to stabilize the color of the thermochromic die.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive because the step of “providing a piece of garment, which is worn by the athlete during a sporting activity, wherein the piece of garment includes a plurality of elements configured to influence aerodynamic drag and at least one thermochromic dye, wherein the at least one thermochromic dye is provided in a first region of the piece of garment and the plurality of elements are provided on a second region of the piece of garment that is different from the first region, the plurality of elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at least one thermochromic dye in the first region, and wherein the first region includes at least one of a chest region and a front sleeve region of the piece of garment” adds insignificant extra-solution activity to the judicial exception (see office action of 06/18/2025 in the paragraph spanning p. 9-10).
Moreover, the mere presence of allegedly patent-ineligible subject matter is not sufficient to prove that a claim is directed to patent-ineligible subject matter when that subject matter arises as a result of unconventional use of structural limitations. See Thales Visionix Inc. v. US, 850 F. 3d 1343, 1348-1349 (Fed. Cir. 2017) (holding that a method of calculating the position and orientation of an object on a moving platform was not directed to an abstract idea because the calculations relied on data from a novel configuration of sensors). Claim 1 includes a novel use of thermochromic dye and a plurality of elements configured to influence an airstream that are part of a garment. Therefore, claim 1 is directed to patent-eligible subject matter.
Accordingly, independent claim 1 is directed to a method of visualizing a speed of an athlete based on a color of a thermochromic dye of a garment and recites significantly more than an abstract idea. As such, the pending claims are eligible under 35 U.S.C. § 101, and Applicant respectfully requests that the rejections of independent claim 1, and all claims dependent thereon, be withdrawn and the claims allowed.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive; claim 1 is directed to a judicial exception, enumerated grouping of abstract models (ideas) to visualize a speed of an athlete by monitoring color and evaluating speed on the basis of the color without significantly more, as set forth in the rejection of 06/18/2025 (see p. 4-13). Applicant’s reference to allegedly pertinent case law is acknowledged; it is noted that Applicant does not point to MPEP or statutory support for Applicant’s statements regarding said case law. It is noted that term “unconventional use” does not appear in MPEP 2106 or in the 2019 Revised Patent Subject Matter Eligibility Guidance; claim 1 is rejected under 35 USC 101 for the reasons set forth in the previous office action.
Regarding Rejections under 35 U.S.C. § 112(a) (see p. 11-14), Applicant’s arguments are fully considered and are not persuasive.
Applicant argues:
Claims 1, 2, 6-10, and 13-22 stand rejected under 35 U.S.C. § 112(a) as allegedly failing to comply with the written description requirement. Applicant traverses these rejections.
Independent claims 1 and 6
Correlation between speed and color
The Office alleges that there is no described correlation between athlete speed and the color of a thermochromic dye. See Office action, p. 17. "[T]he written description requirements can be met by 'show[ing] that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics....i.e., a complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics. See Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d at 964, 63 USPQ2d at 1613 (quoting Guidelines for Examination of Patent Applications Under the 35 U.S.C. 112, 1 "Written Description" Requirement, 66 Fed. Reg. 1099, 1106 (Jan. 5, 2001)) (emphasis original). Thus, it is sufficient that a correlation between function and structure is disclosed within the specification. As admitted in the Office action, the specification presents an example where thermochromic dye in a piece of a garment is configured to change colors at 30 km/h, 34 km/h, and 38 km/h in the context of a 100 meter running contest, where the exemplary garment is blue at 30 km/h and green at 34 km/h. See Office action, 17-18. This is more than sufficient to disclose a correlation between athlete speed and the color of the thermochromic dye, which is sufficient to meet the written description requirements of 35 U.S.C. § 112(a) as a matter of law.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. The claimed invention is not described in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention, as set forth in the rejection (see p. 18 line 5- p. 21 line 6 of the office action of 06/18/2025). Applicant’s specific argument that “it is sufficient that a correlation between function and structure is disclosed within the specification” is fully considered and is not persuasive if only because the MPEP states that “the written description requirement may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function” (see MPEP 2163 I. A. and interference to the case law and quotation that Applicant provided in the argument; emphases provided by Examiner); as set forth in the rejection, there is no described or art-recognized correlation between either or both of the disclosed mental steps of monitoring color and evaluating speed and the structure of the garment; there is no art-recognized correlation between mentally monitoring a color and/or mentally evaluating an athlete speed and what the actual color of a thermochromic dye is (see office action of 06/18/25; first paragraph of p. 15) and there is no described correlation between the disclosed mental steps and the structure responsible for the steps (see office action of 06/18/2025, p. 17-p. 21) in relation to claim 1; in addition, there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function in relation to claim 6 (see p. 24 – p. 29 of the office action of 06/18/2025).
Applicant argues:
The Office appears to allege that because the word "proposed" is found in the specification, Applicant did not have possession at the time of filing. Id. at 18. This rejection finds no basis in the law and cuts against the most basic tenants of the MPEP, that "[p]ossession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was 'ready for patenting' such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention."MPEP § 2163.02. The fact that a patent application proposes an illustrative embodiment evidences the exact opposite-that an Applicant does have possession. For without possession, there is nothing to be proposed.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. The Office does not allege that the usage of the term “proposed” means that the Applicant did not have possession; rather, the Office states the usage of the term “suggests” (emphasis provided by Examiner) “that the “proposed garment and respective method” are not an actual garment and an actual method but rather a proposed, hypothetical garment and method” (p. 18 lines 3-4 of the office action of 06/18/2025). It is noted the term “propose” has multiple meanings, including senses in which what is proposed is expressed in the sense of intent and/or desire as opposed to actual realization; see e.g. “to form an intention”; “To set...as something to be done; to intend”; “To put forward or suggest as a scheme, plan, or course of action; to recommend or advocate that something be done”; “To put forward as something to be attained; to state or have as an aim, end, or object”; “To represent to one's imagination; to envisage, hold in mind; esp. to anticipate as an outcome, to expect, look for”; senses 1a, 1b, 1c, 2c, 2d, respectively, Oxford English Dictionary, “propose (v.)” September 2025, https://doi.org/10.1093/OED/1711503604.
Applicant argues:
Convection cooling effect of airflow produced during running
The Office further alleges that the specification does not describe in sufficient detail "the airflow which is produced during running" and "the convection cooling effect." See Office action, p. 18. However, the specification clearly states that, due to "the airflow which is produced during running[,]...the temperature of the coating 3 in the chest region 5 is decreasing the faster the athlete 1 runs." See As-filed application, [0039]. This alone is sufficient to disclose a correlation between running, airflow, and convection cooling effect and, therefore, to meet the written description requirements of 35 U.S.C. § 112(a). See Enzo Biochem, 323 F.3d at 964.
Despite this, the Office appears to allege that, by not describing every possible hypothetical effect or cause of cooling and heating an athlete, the specification does not describe in sufficient detail the essential or critical features. See Office action, p.18-19. The Office "has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant's disclosure a description of the invention defined by the claims." MPEP § 2163 (citing In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976)). However, the Office has not provided evidence as to why a person skilled in the art would not recognize the described invention in the claims. The external factors described by the Office, such as atmospheric pressure and a hypothetical use of a sauna, form no part of the claimed method or garment of claims 1 and 6 and need not be described to satisfy the written description of requirements of 35 U.S.C. § 112(a).
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive because the specification does not describe in sufficient detail the essential or critical features not adequately described in the specification and not conventional or known in the art, as set forth in the rejection (see office action of 06/18/2025; p. 18 line 5 – p. 21 line 6 in relation to claim 1; see same at p. 24 - p. 29 in relation to claim 6). Applicant’s specific argument that “the specification clearly states that, due to "the airflow which is produced during running[,]...the temperature of the coating 3 in the chest region 5 is decreasing the faster the athlete 1 runs." See As-filed application, [0039]. This alone is sufficient to disclose a correlation between running, airflow, and convection cooling effect and, therefore, to meet the written description requirements” is fully considered and is not persuasive in that the specification does not describe in sufficient detail the essential or critical features, as set forth in the office action (see office action of 06/18/2025; p. 18 line 5 – p. 21 line 6; in relation to claim 1; see same at p. 24 - p. 29 in relation to claim 6).
Applicant argues:
A plurality of elements configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of an at least one thermochromic dye
Additionally, the Office alleges that the elements to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color (herein after "drag elements") are not described in sufficient detail. See Office action, p. 19-20. However, the drag elements are sufficiently described and shown in the application, including a range of exemplary geometries and materials for the elements. See As-filed application, FIGS. 4 and 5, and 77 [0041]-[0044]. As described above, the specification adequately discloses a correlation between running speed and the color of the thermochromic dye, as well as a correlation between running, airflow, and convection cooling effect. Id. 77 [0039], [0051]. Further, the specification discloses that the drag elements stabilize "the correlation between the running speed of the athlete and the color of the thermochromic dye during running." Id. [0012]. Again, this disclosed correlation between function and structure is more than sufficient to meet the written description requirements of 35 U.S.C. § 112(a). See Enzo Biochem, 323 F.3d at 964.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive because the specification does not describe in sufficient detail the essential or critical features not adequately described in the specification and not conventional or known in the art, as set forth in the rejection (see office action of 06/18/2025; p. 18 line 5 – p. 21 line 6). Applicant’s specific argument that “the specification discloses that the drag elements stabilize "the correlation between the running speed of the athlete and the color of the thermochromic dye during running." Id. [0012]. Again, this disclosed correlation between function and structure is more than sufficient to meet the written description requirements” is fully considered and is not persuasive in that the specification does not describe in sufficient detail the essential or critical features, as set forth in the office action (see office action of 06/18/2025; p. 19-21).
Applicant argues:
Even so, the Office then alleges that claim 1 recites new matter by reciting a "plurality of elements being configured to reduce an aerodynamic drag." See Office action, p. 21-22. The Office points to the specification which describes "elements to influence the aerodynamic drag" as proof that the specification does not recite the exact language of the claim. Id. There is no in haec verba requirement for claim limitations, but rather claim limitations can be supported through express, implicit, or inherent disclosure. See MPEP § 2163. Even so, the specification states that "[b]y the combination of the elements for influencing the aerodynamic drag and the use of thermochromic ink the desired effect, i. e. to achieve a correlation between the running speed of the athlete and the color of the thermochromic dye during running, is stabilized because the aerodynamic effects are reduced." As-filed Specification, [0012]. Thus, there is support for the limitation.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive in that the plurality of elements as described are not configured to reduce an aerodynamic drag as claimed and as argued; rather, the plurality of elements as described in the specification as filed “influence”, are “for influencing” drag, and are “to influence” drag (see office action of 06/18/2025, the paragraph spanning p. 21-22; see also specification p. 3, p. 4, p. 6-8, p. 11). In addition, while not specifically argued by Applicant, it is noted that the specification does not recite any color being stabilized but rather an “effect” being stabilized (see office action of 06/18/2025, the paragraph spanning p. 21-22; see also specification p. 3, p. 8).
Applicant argues:
For at least these reasons, independent claims 1 and 6 are described sufficiently to meet the requirements of 35 U.S.C. § 112(a). Accordingly, Applicant requests that the rejections of claims 1 and 6, and all claims dependent thereon, be withdrawn and the claims allowed.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. Applicant’s specific arguments directed to claims 1 and 6 are addressed hereinabove and, as described above, are not persuasive.
Regarding Rejections under 35 U.S.C. § 112(b) (see p. 14-15), Applicant’s arguments are fully considered and are not persuasive.
Applicant argues:
Claims 1-2, 6-10, and 13-22 stand rejected under 35 U.S.C. § 112(b) as allegedly failing to point out and distinctly claim the subject matter which the inventor regards as the invention. Applicant traverses these rejections.
Independent claim 1
The Office alleges that "the plurality of elements are provided on a second region of the piece of garment that is different from the first region, the plurality of elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at least one thermochromic dye in the first region" is not understood. See Office action, p. 30 and 31. More specifically, the Office alleges that it is not understood what is meant by "to influence an airstream to stabilize a color." Id.
The Office appears to be confused that the plurality of drag elements can influence an airstream to stabilize the color of the thermochromic dye when hypothetical influencing factors may be present. Id. Regardless of whether the Office "understands" the exact method of stabilization, the Office has not presented evidence that the claim is indefinite. In fact, the Office has done the opposite in recognizing that, for example, "the airstream [can be] influenced so as to provide more and/or less cooling and/or heating of a part of the garment the air." Id. at p. 31. The exact influence need not be specified for a claim to be definite under § 112(b), as the specific influence may change depending on the particular use case, such as the Office's hypothetical where an athlete decides to use a sauna before they run, see id., at p. 19.
To that end, a decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. MPEP § 2173.02 (referencing Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350, 94 USPQ2d 1241, 1245 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 USPQ2d 1081 (Fed. Cir. 1986)). The specification provides clear examples: airflow is "produced by running;" the cooling effect increases (and thus the temperature decreases) "the faster [an] athlete 1 runs;" the color of the thermochromic dye changes "depending on the running speed v of the athlete 1;" and this "effect is improved and stabilized if elements 7 to influence aerodynamic drag are used." See As-filed application, f [0039]-[0041]. Further, the claim itself recites that the drag elements are configured to influence drag, and the drag elements provided on the second region of the garment are configured to reduce an aerodynamic drag of the piece of a garment and to influence the airstream to stabilize color.
For at least these reasons, claim 1 is definite and meets the requirements of 35 U.S.C. § 112(b). Accordingly, Applicant requests that the rejections of claim 1, and all claims dependent thereon, be withdrawn and the claims allowed.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. As stated in the rejection (see the only full paragraph of p. 31), the specification does not recite that a color is stabilized but rather an “effect”, and it is not understood whether and how to influence an airstream to stabilize a color. Applicant’s argument that “"the airstream [can be] influenced so as to provide more and/or less cooling and/or heating of a part of the garment the air" is fully considered but is not persuasive in that even if the airstream were influenced so as to provide more and/or less cooling and/or zero net heating or cooling, it is not understood how such influencing would stabilize color insofar as color would be influenced by factors other than airstream direction, as set forth in the rejection (see the only full paragraph of p. 31).
Applicant argues:
Independent claim 6
The Office alleges that "the elements that are configured to reduce an aerodynamic drag of the piece of garment and to direct an airstream to the first region to stabilize a color of the thermochromic dye in the first region" are not understood. See Office action, p. 32. For at least the reasons described in relation to claim 1 above, claim 6 is definite and meets the requirements of 35 U.S.C. § 112(b). Accordingly, Applicant requests that the rejections of claim 6, and all claims dependent thereon, be withdrawn and the claims allowed.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. Applicant’s specific arguments directed to the 35 USC 112(b) rejection of claim 1 are addressed above and are not persuasive; see above.
Applicant argues:
Independent claim 6
Interpretation under 35 U.S.C. §112(f)
The Office has indicated that the terms "elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at least one thermochromic dye in the first region,""elements that are configured to reduce an aerodynamic drag of the garment and to direct an airstream to the first region to stabilize the color of the thermochromic dye in the first region," and "venting elements" recited in claims 1, 6, and 17, respectively, are interpreted under 35 U.S.C. § 112(f). Applicant respectfully submits that interpretation under §112(f) is improper.
Interpretation under §112(f) is in error because (1) the Office has not met the burden required to apply such an interpretation and (2) the burden cannot be met. MPEP § 2181 states that "[a] claim limitation is presumed to invoke 35 USC 112(f) when it explicitly uses the term 'means' or 'step' and includes functional language." MPEP § 2181(I). By contrast, MPEP § 2181 further explains that "a claim limitation that does not use the term 'means' or 'step' will trigger the rebuttable presumption that 35 U.S.C. 112(f) does not apply." Id. (emphasis added). Here, the claims do not include "means" or "step" elements, and so, there is a rebuttable presumption that §112(f) does not apply.
The Office attempts to overcome this presumption by alleging that terms "elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at least one thermochromic dye in the first region,""elements that are configured to reduce an aerodynamic drag of the garment and to direct an airstream to the first region to stabilize the color of the thermochromic dye in the first region," and "venting elements" are generic placeholders that are "coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier." See Office action, p. 34. However, this ignores "[t]he standard [inquiry of] whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015; accord MPEP § 2181).
To that end, "claim terms 'need not connote a single, specific structure,' and may instead 'describe a class of structures' and still recite 'sufficiently definite structure' to not invoke § 11216 6." Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1366 (Fed. Cir. 2022) (quoting Apple Inc..Motorola, Inc., 757 F.3d 1286, 1300 (Fed. Cir. 2014)). For example, in Dyfan, the Federal Circuit further explained that terms of art, when coupled with language describing their operation, can connote structure. See Id. at 12. Some examples of generic place holders that are preceded by structural modifiers and have been held not to invoke 35 U.S.C. § 112(f) include:"circuit, detent mechanism, digital detector, reciprocating member, connector assembly, perforation, sealingly connected joints, and eyeglass hanger member." MPEP § 2181(I)(A) (internal quotes removed); see also Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350, 99 USPQ2d 1112 (Fed. Cir. 2011) (holding that the claim terms "modernizing device" and "computing unit" when read in light of the specification connoted sufficient, definite structure to one of skill in the art to preclude application of 35 U.S.C. 112, sixth paragraph).
A term or phrase can be shown to have sufficient structure by reviewing the specification, subject matter dictionaries, and/or prior art tying the term or phrase to structure. See MPEP § 2181(I)(C). The "elements being configured to reduce an aerodynamic drag" and "venting elements" are structures that are described and shown in the application. See As-filed application, FIGS. 4-6, and 77 [0019], [0020], and [0041]-[0046]. Additionally, much in the same way that "reciprocating member" and "detent mechanism" have been held to convey sufficient structure to those skilled in the art, so do the terms "elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at least one thermochromic dye in the first region,""elements that are configured to reduce an aerodynamic drag of the garment and to direct an airstream to the first region to stabilize the color of the thermochromic dye in the first region," and "venting elements." Thus, Applicant respectfully submits that the interpretation of claims 1, 6, and 17 under 35 U.S.C. § 112(f) is improper and must be with withdrawn.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive. The argued claims include one or more limitations that do not used the word “means” but are nonetheless being interpreted under 35 USC 112(f) because the limitations use a generic placeholder coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier (see p. 34-35 of the office action of 06/18/2025). Applicant’s specific argument that “The "elements being configured to reduce an aerodynamic drag" and "venting elements" are structures that are described and shown in the application. See As-filed application, FIGS. 4-6, and 77 [0019], [0020], and [0041]-[0046]. Additionally, much in the same way that "reciprocating member" and "detent mechanism" have been held to convey sufficient structure to those skilled in the art, so do the terms "elements being configured to reduce an aerodynamic drag of the piece of garment and to influence an airstream to stabilize a color of the at least one thermochromic dye in the first region,""elements that are configured to reduce an aerodynamic drag of the garment and to direct an airstream to the first region to stabilize the color of the thermochromic dye in the first region," and "venting elements."” is fully considered and is not persuasive if only because it amount to a mere conclusory statement; the limitations use a generic placeholder coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier (see p. 34-35 of the office action of 06/18/2025), regardless of the meaning(s) of the argued, extraneous, terms “circuit, detent mechanism, digital detector, reciprocating member, connector assembly, perforation, sealingly connected joints, and eyeglass hanger member”.
Applicant argues:
Rejections under 35 U.S.C. § 103
Independent Claim 1
Claim 1 recites, in part, a method for visualizing a speed of an athlete including providing a piece of a garment that includes at least one thermochromic dye, monitoring the color of the at least one thermochromic dye during a sporting activity of the athlete, and evaluating the speed of the athlete on the basis of the actual color of the at least one thermochromic dye.
Chu, Tanda, and Jacobs, alone or in combination, fail to teach or suggest a method for visualizing a speed of an athlete including providing a piece of a garment that includes at least one thermochromic dye, monitoring the color of the at least one thermochromic dye during a sporting activity of the athlete, and evaluating the speed of the athlete on the basis of the actual color of the at least one thermochromic dye. To support aprimafacie case of obviousness under 35 U.S.C. § 103, the Office must establish "a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference." MPEP § 2143(A) (citing KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). Accordingly, to overcome the rejection, Applicant need only identify a single limitation that is not arranged or combined in the prior art in the same way as recited in the claim.
The Office relies on Chu to teach a method of monitoring changes in temperature of a human subject by providing a garment with a thermochromic pigment and monitoring a change in color of the garment, wherein a change in color corresponds to a change in temperature of the human subject. See Office action, p. 36-37; see also Chu, [0066]. However, as admitted by the Office, Chu does not teach or suggest evaluating a speed of the athlete on the basis of the actual color of the at least one thermochromic dye as recited in claim 1. See Office action, p. 37. Instead, the Office looks to Tanda to teach the missing elements of claim 1. Id.
The Office asserts that Tanda teaches that a runner is capable of managing their heat by adjusting their speed. See Office action, p. 38. However, this does not relate to evaluating a speed of an athlete, much less evaluating a speed of an athlete on the basis of the actual color of at least one thermochromic dye. Accordingly, to support the rejection, the Office must improperly conflate an athlete slowing down due to overheating with evaluating a speed of the athlete. See Office action, p. 38. But this reasoning, again, necessarily presupposes the information being sought, i.e., the speed of the athlete, and amounts to no more than logical fallacy.
Looking at the reference for what it reasonably and fairly teaches, Tanda only describes a method of measuring a skin temperature, and in no way contemplates how such a skin temperature can be used to determine speed. This aligns with Office's admission that "there is no art-recognized correlation between athlete speed and color of a thermochromic dye." Office action, p. 24.
The Office only uses Jacobs to teach a garment with a plurality of elements configured to influence aerodynamic drag. See Office action, p. 39. Jacobs is silent with regards to evaluating a speed of an athlete. Therefore, Jacobs does not teach or suggest evaluating a speed of an athlete on the basis of the actual color of at least one thermochromic dye. Therefore, Jacobs fails to teach or suggest the method of claim 1.
For at least these reasons, the cited art fails to render claim 1 obvious. Accordingly, Applicant requests that the rejections of claim 1, and all claims dependent thereon, be withdrawn and the claims allowed.
Examiner’s reply:
Applicant’s argument is fully considered and is not persuasive.
Applicant’s specific argument that “The Office asserts that Tanda teaches that a runner is capable of managing their heat by adjusting their speed. See Office action, p. 38. However, this does not relate to evaluating a speed of an athlete, much less evaluating a speed of an athlete on the basis of the actual color of at least one thermochromic dye. Accordingly, to support the rejection, the Office must improperly conflate an athlete slowing down due to overheating with evaluating a speed of the athlete. See Office action, p. 38. But this reasoning, again, necessarily presupposes the information being sought, i.e., the speed of the athlete, and amounts to no more than logical fallacy” is fully considered and is not persuasive. The rejection does not rely on Tanda for the claim term “evaluating”; rather, the primary reference Chu discloses the evaluating (see p. 37 lines 1-6 of the office action of 06/18/2025). Prior art Tanda teaches athlete speed influences both heat production by the body during a sports activity and also the convective heat transfer rate; Tanda further teaches a runner is capable of managing his or her heat by adjusting his or her speed for the purpose of preventing physical exhaustion (see same office action p. 37-38 and specifically 38 lines 7-14). And the modification as applied in the rejection is not an improper conflation of “an athlete slowing down due to overheating with evaluating a speed of the athlete” as argued but rather a modification of the method of Chu such that its method for visualizing is a method for visualizing speed of an athlete and such that its step of evaluating is a step of evaluating the speed of the athlete (see p. 38 lines 15-21 of the office action of 06/18/2025). In other words, primary reference Chu discloses visualizing and evaluating, and Chu is modified such that what is visualized and evaluated is speed in order to determine whether said athlete’s speed is or is not leading to physical exhaustion and/or needs to be adjusted so as to prevent physical exhaustion; see p. 38 lines 15-21 of the office action of 06/18/2025.
Applicant argues:
Independent claim 6
Claim 6 recites, in part, an athletic garment including a section that is configured to cover a part of a body of an athlete. The section includes a first region that is provided with a coating or is made of a material which comprises at least one thermochromic dye having a color that is correlated with a speed of the athlete to provide a visual indication of the speed of the athlete, such that the color is a first color at a first speed of the athlete and changes to a second color at a second speed that is different from the first speed.
The Office relies on Chu to teach an athletic garment including a section that is configured to cover a part of a body of an athlete. The section includes a first region that is provided with a coating or is made of a material which comprises at least one thermochromic dye having a color. See Office action, p. 42. However, as admitted by the Office, Chu does not teach or suggest a garment having at least one thermochromic dye having a color that is correlated with a speed of the athlete to provide a visual indication of the speed of the athlete, such that the color is a first color at a first speed of the athlete and changes to a second color at a second speed that is different from the first speed. Id. at p. 43. Instead, the Office looks to Tanda to teach the missing elements of claim 1. Id. at p. 44.
For similar reasons as above, Tanda fails to teach or suggest a garment having at least one thermochromic dye having a color that is correlated with a speed of the athlete to provide a visual indication of the speed of the athlete, such that the color is a first color at a first speed of the athlete and changes to a second color at a second speed that is different from the first speed. For example, Tanda does not contemplate how skin temperature can be used to determine speed. Further, by the Office's own admission, "there is no art-recognized correlation between athlete speed and color of a thermochromic dye." See Office action, p. 24.
The Office only uses Jacobs to teach a garment provided with elements that are configured to reduce an aerodynamic drag of the garment. See Office action, p. 46. Jacobs is silent with regards to correlating a color with a speed of the athlete.
Thus, Chu, Tanda, and Jacobs, alone or in combination, fail to teach or suggest a garment having at least one thermochromic dye having a color correlated with a speed of an athlete to provide a visual indication of the speed of the athlete. For at least the foregoing reasons, Applicant submits that independent claim 6 and all claims that depend therefrom are patentable over Chu, Tanda, and Jacobs, alone or in combination. Accordingly, Applicant respectfully requests that the rejections be withdrawn and the claims allowed.
Examiner’s reply:
Applicant’s argument is fully