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
The amendment filed 8/18/25 has been entered. Claims 1-5, 8, 11, 12, 14,15, 24, 26-29, 32-36 remain pending in the application. Applicant’s amendments to the (Specification, Drawings, and Claims) have not overcome each and every objection and 112(b) rejections previously set forth in the Non-Final Office Action mailed 2/18/25.
Specification
The abstract of the disclosure is objected to because of the following:
The amendment filed 8/18/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the abstract. 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: Lines 9-11 “articulation channels facilitate the disc concealer moving with the reproductive region of the wearer as the wearer moves without the disc concealer protruding unnaturally within the garment”; examiner recommends, while staying within the 150 word limit, either:
Amending based on the support in specification page 28 Lines 11-15 to read “articulations channels in the disc concealer the concealer to conform to the reproductive region of the wearer to allow the wearer to move without the disc concealer protruding unnaturally within the garment” or,
Amending based on Claim 24 original disclosure to read “articulation channels permit the disc concealer to cover a sensitive area as the wearer moves without the disc concealer protruding unnaturally within the garment”
Applicant is required to cancel the new matter in the reply to this Office Action. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim(s) 1, 11 is/are objected to because of the following informalities:
Claim 1 Line 20 delete “conform” and substitute –conforms—
Claim 11 Line 14 delete “conform to with” and substitute –conforms to--
Disagreement with any of the aforementioned may warrant at least a 112(b) indefiniteness rejection without constituting a new rejection
Appropriate correction is required.
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.
Claim(s) 1-5, 11, 12, 14, 15, 24, 26-28, 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole (USPN 4557267).
Regarding Claim 1, Cole teaches a garment (see Figs. 2-4; abstract "molded brassiere formed of a thin fabric") comprising:
a stretchable, drapeable exterior fabric that forms an exterior portion of the garment (see Figs. 2-4; abstract "molded brassiere formed of a thin fabric"; as for thin, sheer--Col. 4 Lines 20-21 "patch 20 is not detected when sheer clothing is worn over the brassiere 16"; Col. 3 Line 68-Col. 4 Line 2 "breast cups 18 are typically unlined, thin, translucent, and made of a single layer of polyester tricot fabric"; Cole teaches the thin exterior fabric of polyester tricot which meets the structural limitations in the claims and performs the functions as recited such as being capable of some degree of stretchability and drapeability)
and structural seams that hold the exterior fabric to other sections of the garment (Col. 4 Lines 46-47 "the patch 20 is preferably adhered to the apex"; Col. 8 Lines 8-12 "molded cup 18b…suitably cut for assembly of a conventional brassiere with nipple covering and depressing means by sewing,…the cup 18 into a frame 26 having body-encompassing panels 28"; sewing indicates structural seams as claimed); and
a stretchable, drapeable disc concealer comprising at least one of a fabric or film material being secured to an interior portion of the garment without being connected at the structural seams to add a thin extra layer in an area of the interior portion of the garment where a reproductive region of a wearer is intended to reside (abstract "nipple patch or cover smoothly adhered to an apex portion of each breast cup"; for thin extra -- Col. 4 Lines 11-12 "patch 20 is typically thin-gauged for comfort, preferably 0.012" - 0.014""; for secured -- Col. 4 Lines 46-48 "patch 20 is preferably adhered to the apex portion 19 of each breast cup 18 with an adhesive coating applied"; herein Figs. 4 and 8 shows that concealer patch 20 is not located at the structural seams; Cole teaches the disc concealer which meets the structural limitations in the claims and performs the functions as recited such as being capable of being positioned at the reproductive region as recited, especially in light of Col. 3 Lines 58-63 "Fig. 2 shows a brassiere 16 in accordance with this invention as worn by a wearer. The brassiere 16 has two breast cups 18 including a nipple cover or patch 20 which covers and depresses the nipples of the wearer to effect a modest appearance and a smooth contour along the natural arc line of the wearer's breast"; Col. 4 Lines 22-24 "patch 20 is restrictively sized and shaped to smoothly cover the apex portion 19 of the cup 18 and, thus, conceal or mask the nipples"; inasmuch as the disc concealer is thin and exists, it provides a thin extra layer as recited; as for interior, see Fig. 4 for being the back view; inasmuch as the term disc has been defined by the applicant, the patch 20 in Fig. 4 is a thin object as further supported by Col. 4 Lines 11-12 and therefore a disc; as for stretchable and drapeable and fabric --Col. 4 Lines 11-15 "patch 20…made of non-stretchable material…made out of same material as the cup 18"; Col. 4 Lines 11-13 "patch 20…made of…cotton, tricot, polyester, or simplex"; Col. 3 Line 68-Col. 4 Line 2 "breast cups 18 are typically unlined, thin, translucent, and made of a single layer of polyester tricot fabric"; wherein the disc concealer is the same material as the exterior fabric such as polyester tricot fabric; Cole teaches the disc concealer of polyester tricot which meets the structural limitations in the claims and performs the functions as recited such as being capable of some degree of stretchability and drapeability).
Cole Fig. 2 does not explicitly teach the disc concealer comprising:
a body having a circular shape with an outer circumference and a center portion; and
two or more articulation channels spaced around the outer circumference of the disc concealer that extend inward from the outer circumference toward the center portion to permit the disc concealer to conform to the reproductive region of the wearer without the disc concealer protruding unnaturally within the garment.
Col. Fig. 10 embodiment teaches the disc concealer (30) comprising:
a body having a circular shape with an outer circumference and a center portion (see Fig. 10); and
two or more articulation channels spaced around the outer circumference of the disc concealer that extend inward from the outer circumference toward the center portion to permit the disc concealer to conform to the reproductive region of the wearer without the disc concealer protruding unnaturally within the garment (Col. 4 Lines 31-32, 34-38 "preferable to design the patch 20 to be aesthetically pleasing…patch 30 in Fig. 10 shows an alternative patch configuration with meets the above-mentioned requirements; i.e. the patch 30 with eight symmetrically positioned petals 31 provides sufficient nipple coverage, resists pleating, and is aesthetically pleasing", wherein the V-shaped dip between petals indicate two or more articulation channels as recited; Cole teaches the channels which meets the structural limitations in the claims and performs the functions as recited such as being capable of articulating; Cole teaches the petals which meets the structural limitations in the claims and performs the functions as recited such as being capable of conforming as recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s Fig. 2 brassiere patch with the patch of Fig. 10 especially as Cole recites such a modification in order to provide sufficient nipple coverage, pleat resistance, and for aesthetic design choice (Col. 4 Lines 34-38).
Modified Cole further teaches the garment having drape and stretch for a form fit on the body of a wearer (see below; the garment has fabric and disc concealer, and the fabric and disc concealer have drape and stretch, indicating the garment with drape and stretch which meets the structural limitations in the claims and performs the functions as recited such as being capable of form fit on a wearer’s body)
the stretchable, drapeable exterior fabric and the disc concealer being secured to the interior portion of the garment so that the stretchable, drapeable disc concealer conforms to the reproductive region of the wearer to allow the wearer to move within the garment due to the articulation channels in the stretchable, drapeable disc concealer as the wearer moves without the disc concealer protruding unnaturally within the garment (modified Cole teaches the stretchable, drapeable exterior fabric, the disc concealer, and the articulation channels, and the securement as recited, which meets the structural limitations in the claims and performs the functions as recited such as being capable of the disc concealer conforming to the reproductive region of the wearer to allow the wearer to move within the garment due to the articulation channels in the stretchable, drapeable disc concealer as the wearer moves without the disc concealer protruding unnaturally within the garment; furthermore, at least the disc concealer is the same material as disclosed by applicant which meets the structural limitations in the claims and performs the functions as recited such as being capable of maintaining stretchability and drapeability when secured as stretchability and drapeability are material properties and the material does not change upon securing).
Regarding Claim 2, modified Cole teaches all the claimed limitations as discussed above in Claim 1.
Cole further teaches wherein each of the two or more articulation channels that extend inward from the outer circumference of the disc concealer comprise a V-shaped configuration with each of the two or more articulation channels having a wider width at the outer circumference and narrowing to a lesser width at a base of the respective articulation channel closer to the center portion of the disc concealer (see Fig. 10 where petals are separated by V-shape as recited).
Regarding Claim 3, modified Cole teaches all the claimed limitations as discussed above in Claim 1.
Cole further teaches wherein the two or more articulation channels comprise three or more articulation channels formed in the outer circumference of the disc concealer (see Fig. 10).
Regarding Claim 4, modified Cole teaches all the claimed limitations as discussed above in Claim 1.
Cole further teaches wherein the two or more articulation channels comprise four articulation channels formed in the outer circumference of the disc concealer (see Fig. 10),
with the four articulation channels being spaced about equidistant from adjacent articulation channels around the outer circumference of the disc concealer (Col. 4 Lines 36-37 "patch 30 with eight symmetrically positioned petals 31" indicates spaced equidistant).
Regarding Claim 5, modified Cole teaches all the claimed limitations as discussed above in Claim 4.
Cole does not explicitly teach wherein each of the four articulation channels have a width at the outer circumference of about 0.25 inches.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure the width as recited and get the recited range. Even if the range measured did not overlap but was merely close, a prima facie case of obviousness still exists. See MPEP 2144.05, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s width to be of about 0.25 inches for aesthetic design choice, especially as applicant’s specification indicates no criticality (page 30 Line 18-page 31 Line 4) and the modification would be without unexpected results.
A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding Claim 11, Cole teaches a garment (see Figs. 2-4; abstract "molded brassiere formed of a thin fabric") comprising:
a stretchable, drapeable exterior fabric that forms an exterior portion of the garment (see Figs. 2-4; abstract "molded brassiere formed of a thin fabric"; as for thin, sheer--Col. 4 Lines 20-21 "patch 20 is not detected when sheer clothing is worn over the brassiere 16"; Col. 3 Line 68-Col. 4 Line 2 "breast cups 18 are typically unlined, thin, translucent, and made of a single layer of polyester tricot fabric"; Cole teaches the thin exterior fabric of polyester tricot which meets the structural limitations in the claims and performs the functions as recited such as being capable of some degree of stretchability and drapeability)
and structural seams that hold the exterior fabric to other sections of the garment (Col. 4 Lines 46-47 "the patch 20 is preferably adhered to the apex"; Col. 8 Lines 8-12 "molded cup 18b…suitably cut for assembly of a conventional brassiere with nipple covering and depressing means by sewing,…the cup 18 into a frame 26 having body-encompassing panels 28"; sewing indicates structural seams as claimed); and
a disc concealer being secured to an interior portion of the garment without being connected at the structural seams to add a thin extra layer in an area of the interior portion of the garment where a reproductive region of a wearer is intended to reside (abstract "nipple patch or cover smoothly adhered to an apex portion of each breast cup"; for thin extra -- Col. 4 Lines 11-12 "patch 20 is typically thin-gauged for comfort, preferably 0.012" - 0.014""; for secured -- Col. 4 Lines 46-48 "patch 20 is preferably adhered to the apex portion 19 of each breast cup 18 with an adhesive coating applied"; herein Figs. 4 and 8 shows that concealer patch 20 is not located at the structural seams; Cole teaches the disc concealer which meets the structural limitations in the claims and performs the functions as recited such as being capable of being positioned at the reproductive region as recited, especially in light of Col. 3 Lines 58-63 "Fig. 2 shows a brassiere 16 in accordance with this invention as worn by a wearer. The brassiere 16 has two breast cups 18 including a nipple cover or patch 20 which covers and depresses the nipples of the wearer to effect a modest appearance and a smooth contour along the natural arc line of the wearer's breast"; Col. 4 Lines 22-24 "patch 20 is restrictively sized and shaped to smoothly cover the apex portion 19 of the cup 18 and, thus, conceal or mask the nipples"; inasmuch as the disc concealer is thin and exists, it provides a thin extra layer as recited; as for interior, see Fig. 4 for being the back view; inasmuch as the term disc has been defined by the applicant, the patch 20 in Fig. 4 is a thin object as further supported by Col. 4 Lines 11-12 and therefore a disc),
the disc concealer comprising: a body with an outer shape with an outer perimeter and a center portion (Cole teaches the disc concealer which indicates the existence of a body with an outer shape, outer perimeter, and center portion).
Cole Fig. 2 does not explicitly teach the disc concealer comprising:
two or more articulation channels in the disc concealer to permit the disc concealer to conform to the reproductive region of the wearer without the disc concealer protruding unnaturally within the garment.
Cole Fig. 10 embodiment teaches the disc concealer (30) comprising:
a body with an outer shape with an outer perimeter and a center portion (see Fig. 10); and
two or more articulation channels in the disc concealer to permit the disc concealer to conform to the reproductive region of the wearer without the disc concealer protruding unnaturally within the garment (Col. 4 Lines 31-32, 34-38 "preferable to design the patch 20 to be aesthetically pleasing…patch 30 in Fig. 10 shows an alternative patch configuration with meets the above-mentioned requirements; i.e. the patch 30 with eight symmetrically positioned petals 31 provides sufficient nipple coverage, resists pleating, and is aesthetically pleasing", wherein the V-shaped dip between petals indicate two or more articulation channels as recited; Cole teaches the channels which meets the structural limitations in the claims and performs the functions as recited such as being capable of articulating; Cole teaches the petals which meets the structural limitations in the claims and performs the functions as recited such as being capable of conforming as recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s Fig. 2 brassiere patch with the patch of Fig. 10 especially as Cole recites such a modification in order to provide sufficient nipple coverage, pleat resistance, and for aesthetic design choice (Col. 4 Lines 34-38).
Modified Cole further teaches the stretchable, drapeable exterior fabric and the disc concealer being secured to the interior portion of the garment so that the stretchable, drapeable disc concealer conforms to the reproductive region of the wearer to allow the wearer to move within the garment due to the articulation channels in the stretchable, drapeable disc concealer as the wearer moves without the disc concealer protruding unnaturally within the garment (modified Cole teaches the stretchable, drapeable exterior fabric, the disc concealer, and the articulation channels, and the securement as recited, which meets the structural limitations in the claims and performs the functions as recited such as being capable of the disc concealer conforming to the reproductive region of the wearer to allow the wearer to move within the garment due to the articulation channels in the stretchable, drapeable disc concealer as the wearer moves without the disc concealer protruding unnaturally within the garment; furthermore, at least the disc concealer is the same material as disclosed by applicant which meets the structural limitations in the claims and performs the functions as recited such as being capable of maintaining stretchability and drapeability when secured as stretchability and drapeability are material properties and the material does not change upon securing).
Regarding Claim 12, modified Cole teaches all the claimed limitations as discussed above in Claim 11.
Cole further teaches wherein the two or more articulation channels comprise three or more articulation channels formed in the disc concealer (see Fig. 10),
and the three or more articulation channels extend inward from the outer perimeter toward the center portion (see Fig. 10).
Regarding Claim 14, modified Cole teaches all the claimed limitations as discussed above in Claim 12.
Cole further teaches wherein each of the two or more articulation channels in the outer perimeter of the disc concealer comprise a V-shaped configuration with each of the two or more articulation channels having a wider width at the outer perimeter and narrowing to a lesser width at a base of the respective articulation channel closer to the center portion of the disc concealer (see Fig. 10).
Regarding Claim 15, modified Cole teaches all the claimed limitations as discussed above in Claim 11.
Cole further teaches wherein the two or more articulation channels comprise four articulation channels formed in the outer perimeter of the disc concealer (see Fig. 10),
with the four articulation channels being spaced about equidistance from adjacent articulation channels around the outer perimeter of the disc concealer (as best understood in light of the 112(b) rejections--Col. 4 Lines 36-37 "patch 30 with eight symmetrically positioned petals 31" indicates spaced equidistant).
Regarding Claim 24, Cole teaches a concealer (30) for use on an interior portion of a garment in a region of the garment where a reproductive region of a wearer will reside (see Fig. 10; Col. 4 Lines 34-38 “patch 30 in Fig. 10 shows an alternative patch configuration with meets the above-mentioned requirements; i.e. the patch 30 with eight symmetrically positioned petals 31 provides sufficient nipple coverage, resists pleating, and is aesthetically pleasing"; Cole teaches the concealer which meets the structural limitations in the claims and performs the functions as recited such as being capable of being for utilized on an interior of a garment where a reproductive region is as recited, especially in light of Fig. 4 indicating a back view-- although directed to a different patch embodiment, the functionality clearly applies), the concealer comprising:
a body having a shape with an outer perimeter and a center portion (see Fig. 10); and
two or more articulation channels that extend inward from the outer perimeter toward the center portion in the concealer to permit the concealer to conform to the reproductive region of the wearer (see Fig. 10 wherein the petals are separated by articulation channels; Cole teaches the channels which meets the structural limitations in the claims and performs the functions as recited such as being capable of articulating; Cole teaches the two or more articulation channels which meets the structural limitations in the claims and performs the functions as recited such as being capable of conforming as recited),
each of the two or more articulation channels in the outer perimeter of the disc concealer having a depth extending into the disc concealer that is greater than a width of the center portion of the disc concealer (see Fig. 10; inasmuch as center portion has been structurally defined, there is a width of a center portion that meets this recitation); and
the body of the concealer being configured to be secured to the interior portion of the garment without being connected at a structural seam of the garment to add an extra layer in an area of the interior portion of the garment where the reproductive region of the wearer is intended to reside with the two or more articulation channels in the concealer permitting the concealer to cover a sensitive area of the reproductive region while the concealer moves with the reproductive region of the wearer as the wearer moves without the concealer protruding unnaturally within the garment (Cole teaches the body of the concealer which meets the structural limitations in the claims and performs the functions as recited such as being capable of being secured as recited, especially in light of abstract "nipple patch or cover smoothly adhered to an apex portion of each breast cup"; especially in light of for secured -- Col. 4 Lines 46-48 "patch 20 is preferably adhered to the apex portion 19 of each breast cup 18 with an adhesive coating applied"; herein Figs. 4 and 8 shows that concealer patch 20 is not located at the structural seams; Col. 3 Lines 58-63 "Fig. 2 shows a brassiere 16 in accordance with this invention as worn by a wearer. The brassiere 16 has two breast cups 18 including a nipple cover or patch 20 which covers and depresses the nipples of the wearer to effect a modest appearance and a smooth contour along the natural arc line of the wearer's breast"; Col. 4 Lines 22-24 "patch 20 is restrictively sized and shaped to smoothly cover the apex portion 19 of the cup 18 and, thus, conceal or mask the nipples"; especially in light of inasmuch as the concealer exists, it provides an extra layer as recited; especially in light of for interior, see Fig. 4 for being the back view).
Cole Fig. 10 does not explicitly teach that the concealer is a disc.
However, Cole Figs. 2, 4 teaches a disc concealer (see Fig. 2; inasmuch as the term disc has been defined by the applicant, the patch 20 in Fig. 4 is a thin object as further supported by Col. 4 Lines 11-12 "patch 20 is typically thin-gauged for comfort, preferably 0.012" - 0.014""; and is therefore a disc).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Col. Fig. 10’s patch 30 to be thin as indicated for patch 20 in Fig. 2 as Cole teaches such a disc for the purposes of comfort (Col. 4 Lines 11-12).
Regarding Claim 26, modified Cole teaches all the claimed limitations as discussed above in Claim 24.
Cole further teaches wherein each of the two or more articulation channels in the outer perimeter of the disc concealer comprise a V-shaped configuration with each of the two or more articulation channels having a wider width at the outer perimeter and narrowing to a lesser width at a base of the respective articulation channel closer to the center portion of the disc concealer (see Fig. 10).
Regarding Claim 27, modified Cole teaches all the claimed limitations as discussed above in Claim 24.
Cole further teaches wherein the two or more articulation channels comprise four articulation channels formed in the outer perimeter of the disc concealer (see Fig. 10),
with the four articulation channels being spaced about equidistant from adjacent articulation channels around the outer perimeter of the disc concealer (Col. 4 Lines 36-37 "patch 30 with eight symmetrically positioned petals 31" indicates spaced equidistant).
Regarding Claim 28, modified Cole teaches all the claimed limitations as discussed above in Claim 27.
Cole does not explicitly teach wherein each of the four articulation channels have a width at the outer perimeter of about 0.25 inches.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to measure the width as recited and get the recited range. Even if the range measured did not overlap but was merely close, a prima facie case of obviousness still exists. See MPEP 2144.05, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s width to be of about 0.25 inches for aesthetic design choice, especially as applicant’s specification indicates no criticality (page 30 Line 18-page 31 Line 4) and the modification would be without unexpected results.
A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding Claim 32, modified Cole teaches all the claimed limitations as discussed above in Claim 24.
Cole further teaches wherein the shape of the disc concealer comprises at least one of a triangular shape, a circular shape, or an oval shape (see Fig. 10 for at least circular shape).
Claim(s) 8, 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole (USPN 4557267) in view of Zhang (USPN 8827765).
Regarding Claim 8, modified Cole teaches all the claimed limitations as discussed above in Claim 4.
Cole does not explicitly teach wherein the disc concealer has a notch in the outer circumference,
the notch providing information relating to at least one of orientation of the disc concealer and its placement in the garment.
Zhang teaches wherein the concealer has a notch in the outer circumference (see Fig. 2; Col. 4 Lines 8-10 "concave portion 19 enables the pad 12 to conform to the molded shape of the breast cup 1 without forming wrinkles when in use"),
the notch providing information relating to at least one of orientation of the disc concealer and its placement in the garment (Zhang teaches the notch which meets the structural limitations in the claims and performs the functions as recited such as being capable of providing information to at least one of orientation or placement as recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s disc concealer with the notch of Zhang in order to prevent wrinkles in use (Col. 4 Lines 8-10).
Regarding Claim 29, modified Cole teaches all the claimed limitations as discussed above in Claim 24.
Cole does not explicitly teach wherein the disc concealer has a notch in the outer perimeter,
the notch providing information relating to orientation of the disc concealer and its placement in the garment.
Zhang teaches wherein the disc concealer has a notch in the outer perimeter (see Fig. 2; Col. 4 Lines 8-10 "concave portion 19 enables the pad 12 to conform to the molded shape of the breast cup 1 without forming wrinkles when in use"),
the notch providing information relating to orientation of the disc concealer and its placement in the garment (Zhang teaches the notch which meets the structural limitations in the claims and performs the functions as recited such as being capable of providing information to at least one of orientation or placement as recited).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s disc concealer with the notch of Zhang in order to prevent wrinkles in use (Col. 4 Lines 8-10).
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole (USPN 4557267) in view of Weber-Unger (USPN 10334891), herein Weber.
Regarding Claim 33, modified Cole teaches all the claimed limitations as discussed above in Claim 4.
Cole does not explicitly teach wherein each of the four articulation channels in the outer circumference of the disc concealer extend inward to a channel base such that the center portion of the disc concealer has a width of about 0.25 inches as measured from opposing channel bases.
Weber at least suggests wherein each of the four articulation channels in the outer circumference of the disc concealer extend inward to a channel base such that the center portion of the disc concealer has a width of about 0.25 inches as measured from opposing channel bases (Col. 2 Lines 44-49; Col. 2 Line 54 "element is usually larger than 1 cm2" when wanting to cover at least the wearer's breast tip region such as recited in Col. 2 Line 47, wherein 1 cm2 results in a diameter/width of 0.44 inches which meets the recitation of about 0.25 inasmuch as the term “about” has been defined; Col. 3 Lines 10-15 "elements ...have a star-shaped...form...form...can be chosen in dependence on the desired size of the perspiration area and/or according to the shape and/or size of the wearer's breast").
A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Nevertheless, in the case that the prior art of Weber lacks sufficient specificity, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Weber’s range of 0.44 inches from 0.44 inches into about 0.25 inches and thereby meet the range of about 0.25 inches as claimed, as applicant appears to have placed no criticality on the claimed range (see applicant specification page 31 Line 12) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), especially as Weber teaches that anatomy size varies and it would have been well within the skill of one of ordinary skill in the art to modify the range accordingly. It is noted that the center portion will fit differently sized breasts in different manners and an intended relative position of the center portion to the wearer's breast anatomy is functional and not patentably significant.
As such, it would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s center portion to have a width of about 0.25 inches as taught by Weber based on the size of the wearer and the amount of coverage desired (Col. 2 Lines 45-48; Col. 3 Lines 10-15).
Claim(s) 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole (USPN 4557267) in view of Morrissey et al (US Publication 2003/0073930), herein Morrissey.
Regarding Claim 34, modified Cole teaches all the claimed limitations as discussed above in Claim 1.
Cole does not explicitly teach wherein each of the two or more articulation channels in the outer circumference of the disc concealer has a depth extending into the disc concealer that is greater in distance than a width of the center portion of the disc concealer.
However, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Nevertheless, Morrissey at least suggests wherein each of the two or more articulation channels in the outer circumference of the disc concealer has a depth extending into the disc concealer that is greater in distance than a width of the center portion of the disc concealer (see embodiments of Figs. 4, 8A, 9A, 11A, 12A, 12B, 17; see Fig. 4-- [0045] "base 2b includes an outer rim 13 connected to the projection 7b (having nipple-contacting region 6b) with a plurality of arms 15 to produce a very lightweight device"; see Fig. 8A-- [0049] "base 2d…provided with a plurality of channels 19 which may be used alone…to allow air circulation around the nipple and areolar region of breast B"; [0039] "base...2d...having a region...7d...which places pressure on at least a portion of the nipple and areolar region of the breast...promotes the healing process"; see Fig. 9A-- [0051] "the pressure region is a star-shaped projection 7e formed in the center of base 2e having a size approximating a human female nipple and areolar region").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s two or more articulation channels to have a depth greater than a width of the center portion as suggested by Morrissey, as modifying the depth of the articulation channels/size of base depends on amount of air circulation desired ([0049]), the size of the breast ([0045] "base 2...conforming to larger...areas of breast B"; [0049] "channels 19 also provide a flexible base 2 which can be used on breasts B of different sizes") and amount of suction desired ([0044]), and as modifying the width of the center portion depends on the size of wearer's areola and desired pressure and protected region ([0039]). In other words, it would have been well within the skill of one of one of ordinary skill in the art and obvious to modify depending on the balance of air circulation, suction, and size of user as aforementioned.
Regarding Claim 35, modified Cole teaches all the claimed limitations as discussed above in Claim 1.
Cole does not explicitly teach wherein each of the two or more articulation channels in the outer circumference of the disc concealer has a depth extending into the disc concealer that is greater in distance than a width of the articulation channel at the outer circumference of the disc concealer.
However, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Nevertheless, Morrissey teaches wherein each of the two or more articulation channels in the outer circumference of the disc concealer has a depth extending into the disc concealer that is greater in distance than a width of the articulation channel at the outer circumference of the disc concealer (see embodiments of Figs. 8A, 9A, 11A, 12A, 12B, 17; see Fig. 8A-- [0049] "base 2d…provided with a plurality of channels 19 which may be used alone…to allow air circulation around the nipple and areolar region of breast B”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s two or more articulation channels to have a depth greater than a width of the articulation channel at the outer circumference as taught by Morrissey as a known arrangement for desired air circulation ([0049]).
Regarding Claim 36, modified Cole teaches all the claimed limitations as discussed above in Claim 11.
Cole does not explicitly teach wherein each of the two or more articulation channels in the outer perimeter of the disc concealer has a depth extending into the disc concealer that is greater in distance than a width of the center portion of the disc concealer.
However, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Nevertheless, Morrissey at least suggests wherein each of the two or more articulation channels in the outer perimeter of the disc concealer has a depth extending into the disc concealer that is greater in distance than a width of the center portion of the disc concealer (see embodiments of Figs. 4, 8A, 9A, 11A, 12A, 12B, 17; see Fig. 4-- [0045] "base 2b includes an outer rim 13 connected to the projection 7b (having nipple-contacting region 6b) with a plurality of arms 15 to produce a very lightweight device"; see Fig. 8A-- [0049] "base 2d…provided with a plurality of channels 19 which may be used alone…to allow air circulation around the nipple and areolar region of breast B"; [0039] "base...2d...having a region...7d...which places pressure on at least a portion of the nipple and areolar region of the breast...promotes the healing process"; see Fig. 9A-- [0051] "the pressure region is a star-shaped projection 7e formed in the center of base 2e having a size approximating a human female nipple and areolar region").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cole’s two or more articulation channels to have a depth greater than a width of the center portion as suggested by Morrissey, as modifying the depth of the articulation channels/size of base depends on amount of air circulation desired ([0049]), the size of the breast ([0045] "base 2...conforming to larger...areas of breast B"; [0049] "channels 19 also provide a flexible base 2 which can be used on breasts B of different sizes") and amount of suction desired ([0044]), and as modifying the width of the center portion depends on the size of wearer's areola and desired pressure and protected region ([0039]). In other words, it would have been well within the skill of one of one of ordinary skill in the art and obvious to modify depending on the balance of air circulation, suction, and size of user as aforementioned.
Response to Arguments
Applicant’s arguments with respect to claims 1-5, 8, 11, 12, 14, 15 have been considered but are moot because of the new grounds of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations. Applicant's arguments filed 8/18/25 directed to Claim 24 (and therefore Claims 26-36) have been fully considered but they are not persuasive.
Pertaining to remarks on pages 32-33, examiner notes that these remarks were introduced into the remarks 4/18/24 and seem to be irrelevant to the previous office action 2/18/25.
Pertaining to remarks on page 34 that the abstract is not new matter because it is supported by language in original claim 24—examiner respectfully disagrees. Originally claim 24 indicates that the articulation channels permit the disc concealer to cover, such cover being permitted while a concealer/wearer moves. However, the current abstract says that the articulation channels facilitate the disc concealer to move while the wearer moves. These are two different functional recitations, and the current abstract is considered new matter.
Pertaining to remarks on pages 34-35 that the claims have been amended per examiner recommendation for the 112(a) rejection— examiner notes that the amendment are not that which examiner recommended, but are acceptable.
Summarily as a response to the remarks on the 103 rejections-- claims have not structurally differentiated the claimed limitations from the prior art of record. In other words, the remarks presented are not persuasive without claimed structural differentiation.
Pertaining to remarks on page 36 that the declarations establish that the functional movement without protrusion as claimed is due to the depth of the disc concealer and refutes Examiner’s position utilizing Cole’s shallow indentions—examiner respectfully disagrees. No values to the depth have been disclosed, let alone claimed, to provide a non-relative definition for the term “shallow.” Though remarks say that there are 30 species, Examiner directs attention to the restriction requirement of 5/26/23 where there were eleven concealer types, wherein applicant elected Subspecies F type 3, Figure 10. The disclosure for Fig. 10 does not disclose a value to the depth DD, but only discloses values for DCH and DC (page 31), and for DA (page 32). If the value of the depth is critical to the invention, a continuation-in-part application seems necessary to bring in the value; and the value would have to be claimed and not merely disclosed-- Examiner notes that the claims can be read in light of the specification to help disclose what is included within broadest reasonable interpretation of the claims, but that limitations of the specification cannot be read into the claims. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969), MPEP 2111.
At the outset, examiner notes that the majority of remaining remarks on pages 38-43 were already addressed by the examiner at the least in the response to arguments section of the previous office action 2/18/25 such as pages 24-34, and that the remarks of 8/18/25 herein do not address the previous examiner responses therein. As such, attention is redirected to the previous responses herein.
Pertaining to remarks on page 38 that Cole is to reduce pleating and therefore do not facilitate articulation—examiner respectfully disagrees. These remarks were already addressed on page 32 of the previous office action 2/18/25. There is no evidence for such a statement; modified Cole meets the structural limitations in the claims and performs the functions as recited such as being capable of articulation.
Pertaining to remarks on page 39 that the patch of Cole are specifically shallow, and as set forth in the declarations, would increase the likelihood of pleating and wrinkling that Cole is trying to avoid—examiner respectfully disagrees. These remarks were already addressed on page 32 of the previous office action 2/18/25, including that the reduction or lack of pleating and wrinkling is due to the symmetry (Col. 4 Lines 26-30, 37-38) and/or the mold time and/or single mold step (Col. 7 Lines 8-12, 51-56; Col. 8 Lines 28-33), and is not attributed to the depth. No evidence is found for remarks. Furthermore, the terms “shallow” and “decrease” used by the remarks are relative terms, and there is no modification to make Cole’s depths “longer” until Claims 34-36.
Pertaining to remarks on page 39 that Cole does not have the depth to provide the intended articulations—examine respectfully disagrees. The metes and bounds of the term “intended” is unclear, relative, and not claimed; if the term is being utilized to mean the functional movement limitation, no physical evidence has been provided of how the physical structure cannot functionally perform as recited. To be persuasive, the claim would have to be structurally differentiated from the prior art, but the claims seem unable to do so without any depth DD values disclosed.
Pertaining to remarks on page 39 that Cole doesn’t teach channels due to the space’s shallowness—examiner respectfully disagrees. These remarks were already addressed on pages 32-33 of the previous office action 2/18/25, and there is no claimed structure that supports such a narrow interpretation of the claim terms.
Pertaining to remarks on page 39 that one would not look to Cole to change the shallow indentions—examiner notes that Cole is not utilized to change shallow indentions; no changes to Cole’s depth is made until Claims 34-36 with Morrissey, and even then Cole is not utilized as a secondary reference to do so.
Pertaining to remarks on page 39 that declarations indicate that Cole is stiff and rigid and therefore cannot be applied—examiner respectfully disagrees. These remarks were already addressed on page 27 of a prior office action 6/6/24.
Pertaining to remarks on page 42 that Morrisey does not appear to extend beyond the opposing end of the projection—examiner respectfully disagrees. These remarks were already addressed on page 33 of the previous office action of 2/18/25.
Pertaining to remarks on page 43 that declarations indicate how Morrissey cannot modify the patch of Cole based on airflow channels as air circulation would not be viewed as being [increased] with the longer indentions—examiner respectfully disagrees. These remarks were already addressed on page 33 of the previous office action 2/18/25, including how not all declarations seem to indicate such a remark.
Pertaining to remarks on page 43 that declarations indicate that lengthening indentions with Morrissey would increase pleats and wrinkles due to overlap—examiner respectfully disagrees. These remarks were already addressed page 33 of previous office action 2/18/25 pertaining to Cole, and that no evidence has been provided as to such overlap occurring, especially if the disc concealer is secured to the garment as opposed to the depths freely moving around for overlap.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/GRACE HUANG/Primary Examiner, Art Unit 3732