DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendments, filed 2/25/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims. Claim 26-27 are cancelled. Claims 15-18, and 20 are pending.
Response to Arguments
Applicant’s arguments, filed 2/25/2025, have been fully considered but they are not persuasive as they are directed towards newly added claim requirements addressed in the rejections hereinafter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15-17, 20 are is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 requires “applying . . . to the flat surface of the garment weight”; however, there is no requirement that the garment weight has a flat surface and thus this requirement lacks antecedent basis. The prior recitation should “stamping out the garment weight from a sheet composted of clay such that the garment weight comprises a flat surface”
Claim 17 requires “the non-pre-laminated adhesive layer”; however, this requirement lacks antecedent basis in the claims as there is no requirement that there exists a non-pre-laminated adhesive layer. This should more reasonably be “the pressure-sensitive adhesive layer”
Claim 17 requires “the flat one of the surfaces” which would infer that there must be only one flat surface; however, claim 15 merely requires “the flat” surface surfaces and therefore due to the amendment to claim 15, this requirement now lacks antecedent basis in the claims (as there is no requirement that there is a “flat one of the surface” and should more reasonably be “application to the flat surface”
Claim 20 requires “stamping occurs prior to firing the clay”; however, firing is not required by claim 18 and therefore this requirement lacks antecedent basis in the claims. This claim should be amended to positively require firing, such as “The method of claim 18, further comprising firing the garment weight after stamping out the garment weight from the sheet material.”
Dependent claims do not cure the deficiencies of the claims from which they depend and are thus also rejected.
Applicant is required to review the claim amendment to verify that they comply with the requirements, the examiners proffered suggests are merely related to the claims as currently presented, any amendments may adjust the language such that the offered suggestion results in different rejection.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 20170157447 by Brown taken with US Patent 970175 by Brooks, US Patent 1084233 by Roarke, US Patent 8153221 by MacKinnon et al., KR 20080039365 A, hereinafter KR 365, US Patent 10322309 by Feldman and JP 2004099805, hereinafter JP 805.
Brown discloses a method of manufacturing a garment weight comprising:
providing a garment weight (0046);
applying a surface coating to the garment weight (0074, 0076) Brown discloses coating with a plastic/rubber (0074); and
applying an adhesive layer to a flat one of the surfaces of the garment weight (0066).
Brown discloses a metal weight material, including steel, iron, lead and various alloys (0070) and various shapes and configurations (0080); however, the reference fails to disclose stamping. However, Brooks discloses a garment weight and discloses such are stamped from a sheet (page 1, lines 80-85). Additionally, Roark, also in formation of garment weights discloses the weight is formed by stamping (page 1, lines 90-95).
Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Brown to provide the metal weight by stamping as such is taught by Brooks or Roark as a well-known method for providing metal weight for garments. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Brown with Brooks and Roarke alone or with Parsons as applied above and Brown discloses removable weights using an adhesive layer; however, fails to explicitly disclose the application of a protective covering onto the adhesive. However, MacKinnon, also in the art for providing an adhesive for clothing discloses the adhesive is backed by a protective layer and such is peeled away to secure the device to the fabric using the adhesive (column 4, lines 26-42). MacKinnon discloses using a pressure sensitive acrylate adhesive that can adhere to woven and non-woven fabrics (column 3, lines 38-44). Therefore taking the references collectively it would have been obvious to provide a backing material on the adhesive to be peeled away for use as Brown discloses applying adhesive to a metal garment weight to be adhered to clothing and MacKinnon discloses providing a protective coating on the adhesive such that it can be removed prior to application to clothing.
While the examiner maintains the position as set forth above, the examiner cites here MacKinnon which explicitly discloses the use of pressure sensitive acrylate as such will adhere to both woven and non-woven fabric and one would desire to provide the garment weight with the adhesion to various materials, including woven and non-woven.
Brown, Brooks, Roarke and Parsons discloses the individual steps as specifically discussed above and make obvious such for the reasons outlined above. The references generally disclose weights and Brown discloses iron, steel, lead as metal (0070); however, fails to disclose the claimed clay. However, KR 365, also in the art of forming a weight for clothing (abstract, Tech-Problem) discloses weights formed from various materials including a metal or ceramics (ceramics are known to be fired clay). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use the known material for the garment weight, such as metal or ceramic, as Brown disclose metal and KR 365 discloses an alternative to metal for garment weights is ceramics, where ceramics are final products of materials made from clay. Therefore, it would have been obvious to have used clay starting material to achieve the ceramic weight.
As for the requirement of silicone, Brown discloses coating with e.g. rubber; however, fails to disclose silicone. However, Feldman, also in the art of garment weights, discloses coating with rubber or silicone (column 5, lines 45-53) and therefore taking the references collectively it would have been obvious to have used a well-known coating, silicone, for the garment weight as Feldman discloses such is a known substitute for rubber coatings of garment weights.
As for the specific pressure sensitive layer, the examiner notes the cited prior art generally discloses pressure sensitive adhesive; however, fails to disclose the claimed methacrylates or epoxy diacrylates. However, JP 805 discloses known pressure sensitive adhesive comprise methacrylates and such is excellent in self-adhesive properties and good in peelability (abstract, method for solving problem, 0040) and therefore taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to use known pressure sensitive adhesives, including those with methacrylates, as MacKinnon discloses using a pressure sensitive acrylate adhesive that can adhere to woven and non-woven fabrics (column 3, lines 38-44) and JP 805 discloses pressure sensitive acrylate adhesive encompass and comprise methacylates are excellent in self-adhesive properties and good in peelability.
As for the requirement “designed to hold garments in place and prevent them from being displaced by wind gusts, thereby avoiding embarrassment for the wearer” is noted, but the claims do not quantify positive steps related to the design and thus the prior art design would meet these requirements, i.e. intended use of the design. Absent a specific positively recited design step,
Claim 17: MacKinnon discloses the adhesive is backed by a protective layer and such is peeled away to secure the device to the fabric using the adhesive (column 4, lines 26-42), and thus would be applied after the application.
Allowable Subject Matter
Claim 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 18 is allowable.
Claim 20 are would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
None of the prior art, alone or in combination, reasonably discloses or makes obvious the formation of a garment weight by stamping from a sheet composed of clay, smoothing via sandblasting, and applying a coating comprising silicone in combination with the remaining claim requirements. Specifically, in the art of garment weights, the sandblasting of a stamped clay and coating with silicone is nonobvious over the cited and reviewed prior art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718