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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
The present application, filed on August 12, 2025, in which claims 1 and 3-15, 17-18 were presented, of which claims 1, 3-6, and 12 were amended, are being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed August 12, 2025 have been fully considered but they are not persuasive.
Applicants 1st Argument: Furthermore, to support a conclusion that a feature is a "design choice," the Examiner must present a "convincing line of reasoning" as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Exparte Clapp, 227 USPQ 972, 973 (BPAI 1985). To present this "convincing line of reasoning," the Examiner may follow a two step process: the Examiner must (1) review the specification and determine whether the limitation in question is disclosed as serving any advantage or purpose, or whether it solves a stated problem and (2) explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. See id. Podhajny and Urbelis, taken alone or in hypothetical combination, fail to teach or suggest all of the elements of independent claim 1.
Examiners Response: Examiner respectfully disagrees. Examiner never states a design choice rationale in the rejection of claim 1, and claim 1 was solely rejected by Podhajny, not Podhajny in view of Urbelis.
Applicants 2nd Argument: The Examiner cited page 7 lines 4-6 of the present application, which discloses "a hydrophilic yarn mentioned herein may be formed from one or more of the group consisting of a polyamide (e.g. nylon), a polyester, rayon and modified polyvinyl alcohols, a yarn that has been chemically treated to be hydrophilic". The Examiner then asserted that the skilled person would recognize polyester as having hydrophilic properties. The Applicant respectfully disagrees with the Examiner's interpretation, not least because it conflicts with the Examiner's earlier interpretation above in that polyester is hydrophobic.
The skilled person would understand that polyester is inherently hydrophobic, but it can be chemically treated to become hydrophilic. The present application provides examples of hydrophilic yarns, which include various yarn materials that may be inherently hydrophobic but chemically treated to be hydrophilic. For example, a hydrophilic yarn may comprise polyester (that has been chemically treated), but it does not mean that polyester itself is hydrophilic.
Nevertheless, even if polyester can be chemically treated to become hydrophilic, this interpretation would conflict with the definition from Podhajny, which specifies "polyester is a hydrophobic material that also provides relatively high durability".
Examiners Response: Examiner agrees and has changed the rejection below. To make the record clear, Applicants Specification filed 08/03/2022 and Claims do not state polyester is chemically treated to be hydrophilic. In the Applicants disclosure, there are a list of materials that constitute a hydrophobic and hydrophilic yarn. Applicant states in at least claim 4 “the hydrophilic yarn of the first and second yarns is formed from one or more of the group consisting of: a polyamide, a polyester, cotton, [etc.]”, in claim 12 “the hydrophobic yarn of the spacer yarn is selected from a polyester”, in the Specification on Page 6, 3rd Paragraph, lines: 1-2 “Hydrophilic yarns that may be mentioned herein may be formed from one or more of the group consisting of a polyamide (e.g. a nylon), a polyester, cotton,” and in Page 7, 5th Paragraph, lines: 2-4 “the hydrophobic yarn in these embodiments may be independently selected from a polyester, which polyester may be selected from a recycled polyester, a recycled polyester with micro filaments, a polyester”. If what Examiner has previously said is incorrect then how can the Applicant include polyester, which is not noted as being chemically treated, to be hydrophobic and hydrophilic? Nonetheless, Examiner relies on new art, Shiue (US Patent 8,959,959), to cure the deficiencies of Podhajny, as explained below.
Specification
The specification is objected to as failing to provide proper antecedent basis for
the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction
of the following is required: “spacer yarn comprises different yarn materials from the first and second yarns (claim 1)”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-
AIA ), first paragraph, as failing to comply with the written description requirement. The
claim(s) contains subject matter which was not described in the specification in such a
way as to reasonably convey to one skilled in the relevant art that the inventor or a joint
inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time
the application was filed, had possession of the claimed invention. The disclosure as
originally filed has no support for the following newly added limitations: “spacer yarn comprises different yarn materials from the first and second yarns (claim 1)”
Claims 3-15 and 17-18 are rejected for depending directly or indirectly
from a rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 3-15 and 17-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the limitation “spacer yarn comprises different yarn materials from the first and second yarns” in lines: 10-11 is indefinite because it is unclear what the metes and bounds are that the Applicant is claiming, since the Specification does not explicitly disclose the spacer yarn, which is of a hydrophobic yarn, is of a different material from the first and second yarns, which are of hydrophilic yarns, and points to materials both share in Specification filed 08/03/2022, Page 6, 3rd Paragraph, lines: 1-2 and Page 7, 5th Paragraph, lines: 1-4. Examiner assumes the spacer yarn comprises different material properties from the first and second yarns, to a degree.
Claims 3-15 and 17-18 are rejected for depending directly/indirectly from a rejected claim.
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.
Claims 1, 3-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny (US Patent 8,959,959) in view of Shiue (US Patent 9,828,705) as best understood.
Regarding claim 1, Podhajny discloses a knitted functional fabric (1200, Fig. 12) for wicking moisture away from the body of a user, the fabric comprising:
a technical face (see annotated Fig. 12 below) formed from a first yarn (combination of 1201 and 1203) arranged to be in contact with the user's body (“to be…body” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function), the first yarn comprising an individual yarn (1201);
a technical back (see annotated Fig. 12 below) formed from a second yarn (combination of 1202 and 1204) arranged opposite to the technical face (examiner notes as shown in annotated Fig. 12 below), the second yarn comprising an individual yarn (1202); and
a spacer (see annotated Fig. 12 below) formed from a spacer yarn (combination of 1205 and 1206) that connects the technical face to the technical back (examiner notes as shown in Fig. 12), the spacer yarn (combination of 1205 and 1206) comprising a hydrophobic yarn (1205, Col. 18, lines: 35-45 (explains all yarns of 1200 are made of the same material, due to using a single feeder), Col. 8, lines: 1-7 and 11-12. Examiner notes it is well known in the art that “stretch polyester” is hydrophobic) to reduce moisture absorption and facilitate wicking of moisture from the technical back to the technical face (“to reduce…face” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
PNG
media_image1.png
387
1122
media_image1.png
Greyscale
Fig. 12-Examiner Annotated
Podhajny explains a yarn forming the knitted structure may include different materials (Col. 8, lines: 15-20).
Podhajny does not explicitly disclose the first and second yarn each comprising a hydrophilic yarn, and the spacer yarn comprises different yarn materials from the first and second yarns.
However, Shiue teaches yet another layered knit structure (Abstract), wherein Shiue teaches a technical face (1, Fig. 1-2) formed from a first yarn (11, Col. 2, lines: 7-12), the first yarn (11) comprising a hydrophilic yarn for absorbing moisture from the user's body (Col. 2, lines: 17-23 and lines: 45-48, examiner notes Nylon, also known as polyamide, is well known in the art to be “hydrophilic”. Examiner notes the limitation “for absorbing…body” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function), a technical back (2) formed from a second yarn (Col. 2, lines: 54-55), the second yarn comprising a hydrophilic yarn for wicking moisture to an ambient environment (Col. 2, lines: 54-58, “for wicking…environment” is considered as a functional limitation, the device of the prior art discloses substantially all of the claimed structural elements and therefore it is fully capable to perform the claimed function).
Therefore, it would have been obvious for a person of ordinary skill in the art at the time of the effective filing date of the claimed invention to use a hydrophilic yarn (i.e nylon/polyamide) as taught by Shiue as the material for the individual yarns that form the first yarn and second yarn of Podhajny. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, because hydrophilic yarn (i.e nylon/polyamide) was a well-known material for a knitted fabric as taught by Shiue, in order to keep the wearer dry and comfortable with cold of “chill” feeling (Abstract, Col. 2, lines: 18-28). Examiner notes with this combination, the limitation “the spacer yarn comprises different yarn materials from the first and second yarns” is taught since Podhajny has a spacer yarn that is hydrophobic and Shiue has a first and second yarn that are hydrophilic.
Regarding claim 3, Podhajny in view of Shiue disclose each of the first (combination of 1201 and 1203 of Podhajny) and second yarns (combination of 1202 and 1204, examiner notes the material of elements 1201 and 1202 are modified to be hydrophilic as taught by Shiue, as presented in claim 1) comprises a hydrophobic yarn (elements 1203 and 1204 of Podhajny are noted as being hydrophobic, as explained in claim 1 due to all yarns being made of “stretch polyester”, and were not modified in the combination presented in claim 1) plaited together with the respective hydrophilic yarn (as shown in Fig. 12 of Podhajny where elements 1201 and 1202, which are modified by Shiue to be hydrophilic, are plaited with originally hydrophobic yarns 1203 and 1204, respectively), the respective hydrophobic yarn of the first and second yarns (1203 and 1204, respectively) arranged to face the spacer (as shown in annotated Fig. 12 above where elements 1203 and 1204 are shown facing in the direction towards the spacer).
Regarding claim 4, Podhajny in view of Shiue disclose the hydrophilic yam of the first and second yarns (11, Col. 2, lines: 45-48 and Col. 2, lines: 54-58 of Shiue) is formed from one or more of the group consisting of polyamide (Col. 2, lines: 45-48 and Col. 2, lines: 54-58, examiner notes Nylon is another name for polyamide).
Regarding claim 5, Podhajny in view of Shiue disclose the hydrophilic yam of the first and second yarns (11, Col. 2, lines: 45-48 and Col. 2, lines: 54-58 of Shiue) is formed from one or more of the group consisting of polyamide (Col. 2, lines: 45-48 and Col. 2, lines: 54-58, examiner notes Nylon is another name for polyamide).
Regarding claim 6, Podhajny in view of Shiue disclose the hydrophobic yam of the first and second yarns (1203 and 1204 of Podhajny) is selected from a hydrophobic monofilament yarn (Col. 8, lines: 1-7 and Col. 18, lines: 2-8).
Regarding claim 7, Podhajny in view of Shiue disclose the (yarn of 1201 and 1202 of Podhajny, modified to be hydrophilic by Shiue as explained in claim 1) has a diameter (D1) that is larger than the respective hydrophobic yarn (1203 and 1204, Col. 17, lines: 2-4 and Col. 18, lines: 27-35, examiner notes D2 is approximately 0.125mm and D2, diameter of 1203, is approximately 0.08mm).
Regarding claim 8, Podhajny in view of Shiue disclose the diameter: diameter ratio of the respective hydrophilic yarn (yarn of 1201 and 1202 of Podhajny, modified to be hydrophilic by Shiue as explained in claim 1) to the respective hydrophobic yarn (yarn 1203 and 1204 of Podhajny) is from 8:1 to 1.5:1 (examiner notes D1 is approximately 0.125mm, Col. 17, lines: 2-3, and D2 is approximately 0.08mm, Col. 17, line: 3, which is a ratio of 1.56:1, and falls within the applicants noted range).
Regarding claim 9, Podhajny in view of Shiue disclose the hydrophobic yarn of the spacer (1205 of Podhajny) is selected from a hydrophobic monofilament yarn (Col. 8, lines: 1-7 and Col. 18, lines: 2-8).
Regarding claim 10, Podhajny in view of Shiue disclose the hydrophobic yam (yarn of spacer, 1205 of Podhajny) is an elastic yarn (1205) covered by a hydrophobic yam (1206, examiner notes element 1205 is shown covered by a yarn placed above it, 1206. In addition, Col. 18, lines: 35-45, explains all yarns of 1200 are made of the same material, due to using a single feeder, and Col. 8, lines: 1-7 explains the material of the yarn is “stretch polyester” which is well known in the art as being hydrophobic).
Regarding claim 11, Podhajny in view of Shiue disclose the elastic yarn is elastane (Col. 8, lines: 1-7 of Podhajny, examiner notes one of ordinary skill in the art would recognize “stretch polyester” behaves similar to “elastane”).
Regarding claim 12, Podhajny in view of Shiue disclose hydrophobic yarn of the spacer yarn (combination of 1205 and 1206 of Podhajny) is selected from a polyester (Col. 8, lines: 1-7).
Regarding claim 13, Podhajny in view of Shiue disclose a garment (Fig. 1-5 of Podhajny, examiner notes the garment is shown as “footwear”) formed from the knitted functional fabric according to Claim l (Col. 17, lines: 20-28, examiner notes Fig. 12 shows an embodiment of a knit structure used to make the footwear in Fig. 1-5).
Regarding claim 14, Podhajny in view of Shiue disclose the garment is the whole of a protective garment (Fig. 1-5 of Podhajny, examiner notes “footwear” is considered to be “protective garment” for a wearer’s feet).
Regarding claim 15, Podhajny in view of Shiue disclose the hydrophilic yarn of the first and second yarns (11, Col. 2, lines: 45-48 and Col. 2, lines: 54-58 of Shiue) is a nylon (Col. 2, lines: 45-48 and Col. 2, lines: 54-58).
Regarding claim 17, Podhajny in view of Shiue disclose a polyester yarn with a circular filament cross-section (examiner notes one of ordinary skill in the art would recognize yarn (combination of 1205 and 1206 of Podhajny) has a specific cross section of a circle, since those elements have a noted diameter, Col. 17, lines: 2-4)
They disclose the claimed invention except for a polyester yarn with a star-like filament cross-section.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a yarn with a star-like cross-section, in order to enhance the aesthetic appeal of the knitted fabric, since 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. Examiner notes Applicants Specification has not expressed criticality of have a “polyester yarn with a star-like filament cross-section”.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Shiue, further in view of Urbelis (US Patent 11,208,744), hereinafter Urbelis, as best understood.
Regarding claim 18, Podhajny in view of Shiue disclose the protective garment is footwear (Fig. 1-5 of Podhajny, examiner notes “footwear” is considered to be “protective garment” for a wearer’s feet).
They do not disclose head gear, knee guard, or an elbow guard.
However, Urbelis teaches yet another knitted fabric (Fig. 1 and 2, Col. 10, lines: 23-26), wherein Urbelis teaches a protective garment that is headgear (Col. 8, lines: 57-60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the garment as disclosed by Podhajny in view of Shiue, by being a head gear, as taught by Urbelis, in order to provide protection to a wearers head.
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 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.
The prior art made of record and not relied upon is considered pertinent (See PTO-892) to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAKOTA MARIN whose telephone number is (571)272-3529. The examiner can normally be reached Mon.-Fri., 9:00AM-6:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ALISSA TOMPKINS can be reached on (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAKOTA MARIN/Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732