DETAILED ACTION
This is in response to a request for continued examination (RCE) filed on 4/2/26 in which claims 1-5, 8, 11, 12, 14, 15, 24, 26-29, 32-36 are presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/2/26 has been entered.
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 filed 4/2/26 have been fully considered but they are not persuasive.
At the outset—the majority of arguments presented herein have been repeated throughout prosecution, as have the examiner responses to said arguments. There have been no further follow-up remarks specifically directly addressing why examiner’s specific responses to those arguments are incorrect, only additional arguments or repeating arguments.
Pertaining to remarks on page 13 that previous applicant responses filed on August 18, 2025 are incorporated herein by reference—applicant responses were already addressed by examiner in the previous RCE final office action of 10/2/25 (pages 22-25). As aforementioned, there have been no direct follow-up remarks indicating how examiner responses to those specific arguments are incorrect.
Pertaining to remarks on page 13 that previous applicant responses filed on December 6th, 2024 are incorporated herein by reference—applicant responses were already addressed by examiner in the previous RCE non-final office action of 2/18/25 (pages 24-34). As aforementioned, there have been no direct follow-up remarks indicating how examiner responses to those specific arguments are incorrect.
Pertaining to remarks on page 13 that previous declarations (filed 12/6/24) are incorporated herein by reference—declarations were already addressed by examiner in the previous RCE non-final office action of 2/18/25 (pages 24-32). As aforementioned, there have been no direct follow-up remarks indicating how examiner responses to those specific arguments are incorrect.
Pertaining to remarks on page 13 that the specification and the drawings structurally differentiate the claimed limitations from the prior art of record—examiner respectfully disagrees. Structural amendments to the claims can structurally differentiate the claimed limitations from the prior art of record, but pointing to the specification and the drawings to differentiate the claims is not found persuasive. 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.
Pertaining to remarks on page 13 that Cole teaches “a molded cup in which the reproductive region of the wearer conforms to molded cup, not the other way around where the disc concealer conforms to the reproductive region of the wearer which the disc concealer covers”—examiner respectfully disagrees. First, the broadest reasonable interpretation of the claims do not require this interpretation. Furthermore, even if the claims were amended such that the interpretation were narrowed, the remark is untrue. Attention is directed to Cole Col. 2 Lines 51-59 (“nipple cover…sized and shaped to encompass the nipples…and in combination with the cup…the cover…smoothly conform to the three dimensional shape of the cup”) and Cole Fig. 9 which explicitly teaches otherwise.
Pertaining to remarks on page 13 that the articulation channels are a structural difference from what is taught in Cole—examiner respectfully disagrees. All of the claimed limitations are taught by prior art which meets the structural limitations in the claims and performs the functions as recited such as being capable of conforming and allowing as recited. No evidence has been provided that the performance is not the same.
Pertaining to remarks on page 13 that Cole is molded making it more rigid—examiner respectfully disagrees. This argument, and similar examiner response, has been previously reiterated multiple times throughout prosecution, that remarks misconstrue Cole. First, rigidity is relative. Second, the alleged rigidity, as recited in Cole Col. 2 Lines 59-61 (“adhesive utilized…imparts a rigidity”) is reciting rigidity regarding the adhesive, and not the cup or cover, let alone molding, as argued. This was initially addressed pages 27, 29 in previous final office action 6/6/24 and reiterated again on page 25 in the RCE final action of 10/2/25. As aforementioned, there have been no direct follow-up remarks indicating how examiner responses to those specific arguments are incorrect.
Pertaining to remarks on page 14 that Cole indentions are not deep enough to conform—examiner respectfully disagrees. This argument was already initially addressed by the examiner on pages 28-29 of the final office action 6/6/24, and again on page 23-25 of RCE final action 10/2/25. Examiner notes that actual values of the depth (DD) have not been claimed, and cannot be claimed because the values are not disclosed for elected embodiment Fig. 10. If applicant can persuasively indicate from the disclosure how the depth values are critical to the claimed function, Applicant can file a divisional to elect a different embodiment with actual value disclosures of DD, and/or file a continuation-in-part, as potential options, as claiming the depth DD may then be a structural limitation that may help move prosecution forward.
Pertaining to remarks on page 14 that, in direct response to examiner response that the depth (DD) has not been claimed, that the depth has been claimed in Claims 33-35—examiner respectfully disagrees. Examiner first clarifies-- when statements were made pertaining to depth not being claimed, it was meant that values of DD have not been claimed.
Furthermore, pertaining to Claim 33—pointing to a limitation of width to indicate depth is not found persuasive.
Furthermore, pertaining to Claims 34, 35-- these only recite depth DD without values of DD. These claims recite depth DD relative to other elements, such as DCE (Claim 34) and DCH (Claim 35). Though actual values of DCE and DCH have been disclosed in the specification for elected embodiment Fig. 10 (“about 0.25 inches” on page 31 Line 12 for DCE and “between about 0.125 and about 1 inch” on page 30 Lines 22-23 and “between about 0.25 inches and about 0.75 inches” on page 31 Lines 1-2 for DCH), these values have not yet been claimed relative to DD. Examiner notes—Claim 28 has recited DCH values, but not relative to DD. Even if values were added to Claims 34 and 35, a similar rejection to Claim 28 may be made without persuasive indication of criticality in the original disclosure. Examiner further notes that claiming “between about” will warrant 112(b) rejections for indefiniteness, so examiner suggests choose either “between” or “about”, and not the combination.
Pertaining to remarks on page 14 that evidence by the experts (pertaining to the declaration(s)) that modifying Cole with Morrissey would change the principles of operation of the molded cups—examiner respectfully disagrees. It is unclear which part of the declaration(s) is being referred to regarding principle of operation. If wrinkle/pleating is being referred to, this was already addressed on pages 26-27 of RCE non-final action of 2/8/25 pertaining to the declarations, and again on page 29 of the same office action, and again on page 25 of the RCE final action of 10/2/25. Regardless, as aforementioned, examiner has already responded to all the declarations, without further follow-up from applicant pertaining specifically to examiner response to the declarations. Examiner notes that the wrinkle/pleating remarks were also addressed outside of the declarations, initially page 32 of the RCE non-final action of 2/8/25 (refers back to the declarations) and again on page 24 of the RCE Final action of 10/2/25. Examiner notes that further “principle of operation” remarks were also already addressed on page 9 of the final action of 6/6/24, without further follow-up from applicant pertaining specifically to examiner response of the remark.
Pertaining to remarks on page 15 that there are not deep enough articulations—this was already addressed on page 24 of RCE non-final 2/18/25 pertaining to declarations, and again on pages 29, 31.
Pertaining to remarks on page 15 that there are “issues of molding that the lengths of the projections of the device taught in Morrissey as pointed out in the evidence provided by the experts, which the examiner dismisses out of hand with no evidence to the contrary”-- examiner respectfully disagrees. As aforementioned, content of declarations were all previously addressed in the RCE non-final of 2/8/25 pages 24-32. It is unclear which part of the declaration(s) is being referred to for this remark. If it is the molding effect on drape, this was addressed on page 25 of the RCE non-final of 2/8/25 regarding the declarations, and relatedly on pages 28-29 regarding length in the same office action, and page 32 regarding reach of the same office action; if pertaining to extent, see page 33 of same office action, and again page 25 of the RCE final action 10/2/25.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
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/GRACE HUANG/Primary Examiner, Art Unit 3732
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