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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/4/2025 has been entered.
Response to Amendment
In accordance with Applicant’s amendment filed 12/4/2025, claims 1 and 16 are amended. Claim 22 is new. Claims 2-3, 5-7, 13, 19-20 remain withdrawn. Claims 1, 9-12, 14, 16-18, 21-22 are presented for examination on the merits.
Response to Arguments
Applicant's arguments filed 12/4/2025 have been fully considered but they are not persuasive.
Applicant argues that the shape of the pad has criticality because “the specific shape currently recited in the independent claims provides specific functional advantages for tailbone protection, for example, by tailoring the shape of the pad to the specific curvature of the wearer’s body in that particular location” (Remarks, page 9). Examiner respectfully disagrees. The disclosure does not provide any evidence or reasoning to support that the specific “shield” shape that is currently claimed has any criticality or particular advantages that the other disclosed pad shapes do not have. All of the disclosed pads can be used for tailbone protection, and there is no description for why a “shield” shape as shown in figures 5A-5E would be preferred or specifically advantageous over the other disclosed shapes, let alone critical. The only disclosure regarding the alleged advantages of the embodiment shown in figures 5A-5E is about how the pad can be positioned on the wearer’s body (“the pad 414 may be worn so that the upper edge sits on the small of the wearer’s back while the lower edge 420 is positioned over the end of the wearer’s tailbone” instant specification, paragraph 51), and the positioning of the pad in reference to the wearer’s body is not specific to the particular shape “diamond or shield” shape. Notably, the disclosure does not describe any specific advantages or criticality related to the “diamond or shield” shape with the upper and lower triangles as claimed. A square or rectangular pad could have the same positioning that is described in paragraph 51, as the described positioning doesn’t require any particular shape aside from an upper edge and a lower edge. Examiner maintains that the “diamond or shield” shape is not critical.
Regarding the references, Applicant argues Burger and Jourde do not disclose the claimed S-curve tapering. In response, Examiner notes that Burger and Jourde were not relied upon to teach those features. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding Jourde, Applicant argues that Jourde does not disclose a pad focused on tailbone protection, which appears to be an argument that Jourde does not teach analogous art to the instant application. In response, Examiner respectfully disagrees and submits that Jourde teaches analogous art to the instant application in the field of protective pads for the body. Analogous art does not need to specifically be a pad for protecting a tailbone. See MPEP 2141.01(a)(I) which states, "The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’") (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016). Applicant describes the pads of the invention could protect many other areas of the body besides the tailbone (see paragraph 4 of the instant specification which also describes how the instant invention could protect the wearer’s lower/middle/upper back, elbows, and shoulders), so it would be improper to narrow the field of endeavor to only tailbone pads. Moreover, Examiner notes that Jourde discloses a pad for protecting the lower back, and the tailbone is essentially the lowest part of the spine/back. However, overall, Jourde is relied upon for teaching a pad with a shape that includes an upper triangular portion and a lower triangular portion (i.e., a diamond/shield shape as described by Applicant). Because the shape of the pad is not critical, as described in the above arguments, Examiner maintains that it is reasonable to change the shape of the prior art pad to any desired shape, such as the one taught by Jourde, for the reasons set forth in the rejection.
Regarding Hoshizaki, Applicant argues that Hoshizaki teaches a bladder and “the membranes forming the bladder are not a cushioning body” (Remarks, page 10). Examiner respectfully disagrees with Applicant’s characterization of what makes a “cushioning body” and submits that the pad of Hoshizaki as a whole can be and is considered a cushioning body. Applicant has not provided any explanation for why the pad of Hoshizaki cannot be considered a cushioning body. In fact, Hoshizaki describes the relied upon structure as “cushion 200” (see paragraph 42 of Hoshizaki), which clearly supports that the structure is a cushioning body insofar as claimed or described by Applicant. The “thickness” of the cushioning body as shown in Hoshizaki is therefore the distance defined between the two opposed sides, the first, upper side (which shows the tapering) and the second, lower side (which is generally flat), as shown in figure 7A of Hoshizaki below.
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Annotated figure 7A of Hoshizaki
Further, Applicant argues that “the claimed S-curve taper must correspond to a cushioning pad body, not the outer boundary of a bladder”. Examiner submits that the S-curve taper does correspond to a cushioning pad body: the cushioning pad body of the pad of Burger, as modified by Hoshizaki. Nowhere in the rejection has the Examiner suggested that the pad of Burger be replaced by a bladder. Rather, the rejection has modified the upper exterior surface of the pad of Burger to have the shape of the tapering as shown in Hoshizaki. See MPEP 2145(III) which states “In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.")”.
Further regarding Hoshizaki, Applicant argues that Hoshizaki does not teach analogous art to the instant invention, focusing on how Hoshizaki discloses a helmet. Firstly, as previously stated, the field of endeavor is protective pads for the body. Secondly, while Hoshizaki does describe a helmet embodiment in detail, the overall inventive concept of Hoshizaki is not limited to helmets. Hoshizaki itself describes its field of endeavor as “The present disclosure relates to body impact protection equipment such as helmets” (paragraph 2) and states “Similar principles apply to body armor used for protecting other areas” (paragraph 6), indicating helmets are only one example and Hoshizaki has contemplated that its padding could be used for protecting other body parts as well, not exclusively the head. Given that disclosure, Examiner submits that one of ordinary skill in the art would reasonably apply the teachings of Hoshizaki, in particular the teachings regarding the tapering of the exterior surface of a pad, to a pad for protecting any area of the body, such as the pad of Burger, for the reasons described in the rejection. See also MPEP 2141.03(I) which states, "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
Applicant further argues “the curve in Hoshizaki arises from fluid dynamics and membrane flexibility of a liquid-bladder system” (Remarks, page 10). Examiner respectfully disagrees and submits this is attorney argument not supported by sufficient evidence in the record (See MPEP 2145(I)Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)”). Figure 7A of Hoshizaki shows the pad of Hoshizaki with no forces acting upon it (in contrast to figures 7B and 7C, for example). Thus, it can reasonably be concluded by one of ordinary skill in the art that the shape shown in figure 7A is the shape of the pad in a neutral state, therefore the curvature shown is representative of the shape of the pad and can be relied upon to teach a tapering curvature as described in the rejection.
Applicant further argues that “the office Action does not explain why one of skill in the art would not just use Wiener’s simple bevel design, rather than trying to incorporate Hoshizaki’s edge profile” (Remarks, page 11). In response, Examiner submits that the Office is not required to explain why one of ordinary skill would NOT do something, and the simplicity of the design of Wiener is not relevant to the rejection, which does not rely on the specific design of Wiener.
In response to Applicant’s argument that “Applicant’s invention is focused on friction reduction during active exercise movement, not on cosmetic appearance like the pad of Wiener” (Remarks, page 11), Examiner notes that it is not necessary to modify the references for the same reason as Applicant. See MPEP 2144(IV) which states, “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)”.
Applicant further argues that “using four references from disparate fields evidences improper hindsight” (Remarks, page 11). In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). In response to the Applicant’s allegation that the references are from “disparate fields”, Examiner respectfully disagrees. Applicant has provided no evidence or explanation for why Applicant believes all four references (Burger, Jourde, Hoshizaki, and Wiener) are from allegedly “disparate fields” when they all teach pads that protect the body of a user. All of the references teach protective pads, so Examiner maintains that they all constitute analogous art to the instant invention as previously described. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant alleges that the dependent claims are allowable based on their dependency from the independent claims. However, as described in the arguments above and rejections below, the independent claims are not allowable over the prior art. Therefore, the rejections of the dependent claims are maintained.
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.
Claims 1, 9-12, 14, 16-18, 21-22 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 claim recites the limitation “a thickness of the cushioning body is defined between the two opposed sides” followed by “the thickness of the pad tapers in an S-curve from a thickest portion of the pad to a terminal edge where the two opposed sides meet at a point, whereby the top side transitions from the thickest portion of the pad to the terminal edge along the S-curve including a curved profile having a concave inflection portion between the first and second convex portions, the terminal edge extending around a perimeter of the pad, the thickest portion of the pad being spaced from the terminal edge, wherein the thickness of the pad includes a height-wise thickness and a width-wise thickness, wherein a majority of the height-wise thickness and width-wise thickness of the pad has a constant thickness”. Because the “thickness” is now being defined as a trait of the “cushioning body” and not the “pad”, it is unclear whether the latter recitations of thickness in regards to “the pad” should actually now be referring to “the cushioning body” or if Applicant intends for the thickness of the pad to be different from the thickness of the cushioning body. For the purposes of examination, the thickness of the pad and the thickness of the cushioning body have been interpreted as the same.
Regarding claim 16, the claim recites the limitation “the pad comprises a cushioning body having a thickness, a height-wise thickness profile and a width-wise thickness profile of the cushioning body is defined between the two opposed sides” followed by “wherein a majority of the height-wise thickness profile and the width-wise thickness profile of the pad has a constant thickness, and the pad tapers in an S-curve from a thickest portion of the pad to a terminal edge where the two opposed sides meet at a point, whereby the top side transitions from the thickest portion of the pad to the terminal edge along the S-curve having a curved profile having a concave inflection portion between first and second convex portions”. Because the “thickness” is now being defined as a trait of the “cushioning body” and not the “pad”, it is unclear whether the latter recitations of thickness/thickest portion in regards to “the pad” should actually now be referring to “the cushioning body” or if Applicant intends for the thickness of the pad to be different from the thickness of the cushioning body. For the purposes of examination, the thickness of the pad and the thickness of the cushioning body have been interpreted as the same.
Regarding claim 22, the claim recites the limitation “The pad of claim 1, wherein the cushioning body is a continuous body that tapers along the S-curve”. The phrase “tapers along the S-curve” is unclear. Tapers in what way? What direction? Additionally, the tapering of the pad/cushioning body was already described in detail in claim 1 including the “S-curve” aspect, so it is unclear what this additional recitation of the tapering and S-curve is adding to the limitations of claim 1. For the purposes of examination, if the prior art reads on the more detailed description of the tapering that is found in claim 1, it will be held to read on claim 22 as well.
The dependent claims inherit the deficiency by nature of dependency.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 10, 12, 14, 16, 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burger (US 2015/0196070) in view of Jourde (US 2011/0252549) and Hoshizaki (US 2019/0335838) and as evidenced by Wiener (US 5636377).
Regarding claim 1, Burger discloses: A pad for protecting a wearer's skin during exercise (tailbone pad 103), the pad including: two opposed sides, including a top side and a skin facing bottom side (the pad necessarily has two opposed sides, an inner side which faces the user when worn and an outer side which faces away from the user when worn), the two opposed sides extending across a height along a central longitudinal axis defined between first and second ends of the pad (see figure 2 showing the height and first and second ends), and a greatest width along a transverse axis defined between third and fourth ends of the pad, the transverse axis being perpendicular to the central longitudinal axis and located closer to the first end than the second end of the pad (see figure 2 showing the width and third and fourth ends), wherein the pad comprises a cushioning body (see figure 2 below) a thickness of the cushioning body is defined between the two opposed broad sides, wherein the thickness of the pad includes a height-wise thickness and a width-wise thickness (the pad necessarily has a height-wise thickness and width-wise thickness because it is three dimensional), wherein when the pad is operatively worn the terminal edge at the first end sits on the small of the wearer’s back while the terminal end at the second end is positioned over the wearer’s tailbone (Examiner notes that the pad 103 is a “tailbone pad 103 designed and placed to protect the coccyx or tailbone of the user” (paragraph 26), so it is understood that when worn it will be located in a position over the wearer’s tailbone; further, the italicized limitations are intended use limitations and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114(II). Further, the positioning of the pocket/pad with respect to the body of the user is entirely dependent on the size and shape of the user’s body as well as how the user chooses to wear the garment. Different people may choose to wear their pants with the waistband, and therefore the pocket with the pad, pulled higher or sagged lower or even folded over depending on their comfort and personal style. Moreover, whether an entire side of the pad would be able to press against the floor when a person lays down on the floor is entirely dependent on the curvature of a person’s back and buttocks. As Burger has the claimed structural limitations, it reads on the claim).
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Annotated figure 2 of Burger showing the height, width, and first, second, third, and fourth ends
Burger does not explicitly disclose: a greatest height along a central longitudinal axis defined between a first apex point at a first end of the pad and a second apex point at a second end of the pad, an upper triangular portion is defined by the first apex point and the transverse axis along the greatest width and a lower triangular portion defined by the second apex point and the transverse axis along the greatest width, the lower triangular portion having curved side portions.
However, Jourde teaches a pad (“a lower back pad disposed within the lower back pad pocket 58” paragraph 40) with a greatest height along a central longitudinal axis defined between a first apex point at a first end and a second apex point at a second end of the pad, a greatest width along a transverse axis defined between third and fourth ends of the pad, the transverse axis being perpendicular to the central longitudinal axis and located closer to the first end than the second end of the pad such that an upper triangular portion is defined by the first apex point and the transverse axis along the greatest width and a lower triangular portion defined by the second apex point and the transverse axis along the greatest width, the lower triangular portion having curved side portions (see annotated versions of figure 2 below).
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Jourde teaches analogous art to the instant application in the field of pads for garments. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the pad of Burger in the shape of the pad taught by Jourde because 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., 146 USPQ 146. See MPEP 2144.04. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to change the shape in order to customize the pad to the user’s preferences for aesthetic designs, as some people may prefer an angular design such as the one found in Jourde over a more rounded design as disclosed in Burger. Examiner notes that the particular shape of the pad is not disclosed as critical in the instant disclosure (see Response to Arguments above).
Burger as modified does not explicitly disclose: the thickness of the pad tapers in an S-curve from a thickest portion of the pad to a terminal edge where the two opposed sides meet at a point, whereby the top side transitions from the thickest portion of the pad to the terminal end along the S-curve including a curved profile having a concave inflection portion between first and second convex portions, the terminal edge extending around a perimeter of the pad, the thickest portion of the pad being spaced from the terminal edge, wherein a majority of the height-wise thickness and width-wise thickness of the pad has a constant thickness.
However, Hoshizaki teaches a pad for protecting a wearer (200) wherein the thickness of the pad tapers in an S-curve from a thickest portion of the pad to a terminal edge where the two opposed sides meet at a point, whereby the top side transitions from the thickest portion of the pad to the terminal end along the S-curve including a curved profile having a concave inflection portion between first and second convex portions, the terminal edge extending around a perimeter of the pad, the thickest portion of the pad being spaced from the terminal edge, wherein a majority of the height-wise thickness and width-wise thickness of the pad has a constant thickness (see figure 7A annotated below; Examiner notes that the tapering is in an “S-curve” as defined by Applicant because it has the concave and convex portions as claimed).
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Hoshizaki teaches analogous art to the instant application in the field of protective pads. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to taper all of the perimeter edges of the pad of Burger/Jourde using the curvature profile as taught by Hoshizaki, as evidenced by Wiener which teaches that tapering the edges of a protective pad has the advantage of making the pad “easily ‘blend’ in with the natural body contour and thus be less noticeable when worn” (Wiener, column 11, lines 12-14) which would “provide improved cosmetic appearance when worn” (Wiener, column 11, line 9). Examiner notes that the curvature profile of Hoshizaki includes the majority of the pad being a constant thickness, as shown in figure 7a and more clearly as shown in figure 10.
Regarding claim 10, Burger as modified discloses: An apparel kit including: the pad of claim 1 (see 35 USC 103 rejection of claim 1 above); and a garment (Burger, garment 10) including a pocket sized and shaped to removably receive the pad (“garment 10 includes integrated padding to protect the wearer. This padding can be […] removable and located within a sleeve on either an exterior or an interior side of the garment 10” Burger, paragraph 25).
Regarding claim 12, Burger as modified discloses: The kit of claim 10, wherein the garment is a garment for the lower body (“the garment is provided in a length extending from the waist of a wearer to the lower legs” Burger, paragraph 8; see figure 2 showing the garment as a pair of pants) having a waistband location and a top of inseam location, and the pocket is located on a back side of the garment between the top of inseam location and waistband location (see figure 2 of Burger, which is a rear view, annotated below; Examiner notes that the pad is removably located in a sleeve (pocket), which means the pocket must be located where the pad is located).
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Figure 2 of Burger showing the location of the pad/pocket compared to the waistband and top of the inseam
Regarding claim 14, Burger as modified discloses: The pad of claim 1, wherein the thickest portion of the pad extends across at least 60% of the width and the height of the pad (as modified, only the ends are tapered and the rest of the pad is a consistent thickness, therefore the thickest part of the pad (i.e., the part of the pad that is not tapered) extends across at least 60% of the width and height of the pad).
Regarding claim 16, Burger discloses: Apparel for the lower body of a wearer comprising: a garment for the lower body (garment 10, “the garment is provided in a length extending from the waist of a wearer to the lower legs”, paragraph 8; see figure 2 showing the garment as a pair of pants) including a pocket (“garment 10 includes integrated padding to protect the wearer. This padding can be […] removable and located within a sleeve on either an exterior or an interior side of the garment 10” Burger, paragraph 25), a waistband location, and a top of inseam location, the pocket being located on a back side of the garment between the waistband location and the top of inseam location (see figure 2 of Burger, which is a rear view, provided with the 35 USC 103 rejection of claim 12 above; Examiner notes that the pad is removably located in a sleeve (pocket), which means the pocket must be located where the pad is located); and a pad (tailbone pad 103) including: two opposed sides, including a top side and a skin facing bottom side (the pad necessarily has two opposed sides, an inner side which faces the user when worn and an outer side which faces away from the user when worn), the two opposed sides extending across a height along a central longitudinal axis defined between first and second ends of the pad (see figure 2 provided with the 35 USC 103 rejection of claim 1 above showing the height and first and second ends), and a greatest width along a transverse axis defined between third and fourth ends of the pad, the transverse axis being perpendicular to the central longitudinal axis and located closer to the first end than the second end of the pad (see figure 2 provided with the 35 USC 103 rejection of claim 1 above showing the width and third and fourth ends), wherein the pad comprises a cushioning body having a thickness (see figure 2 provided with the 35 USC 103 rejection of claim 1 above showing the cushioning body; the cushioning body necessarily has a thickness), a height-wise thickness profile and a width-wise thickness profile of the cushioning body is defined between the two opposed broad sides (the pad/cushioning body 103 necessarily has a height-wise thickness and width-wise thickness because it is three dimensional), wherein when the pad is operatively worn the terminal edge at the first end sits on the small of the wearer’s back while the terminal end at the second end is positioned over the wearer’s tailbone (Examiner notes that the pad 103 is a “tailbone pad 103 designed and placed to protect the coccyx or tailbone of the user” (paragraph 26), so it is understood that when worn it will be located in a position over the wearer’s tailbone; further, the italicized limitations are intended use limitations and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114(II). Further, the positioning of the pocket/pad with respect to the body of the user is entirely dependent on the size and shape of the user’s body as well as how the user chooses to wear the garment. Different people may choose to wear their pants with the waistband, and therefore the pocket with the pad, pulled higher or sagged lower or even folded over depending on their comfort and personal style. Moreover, whether an entire side of the pad would be able to press against the floor when a person lays down on the floor is entirely dependent on the curvature of a person’s back and buttocks. As Burger has the claimed structural limitations, it reads on the claim).
Burger does not explicitly disclose: a greatest height along a central longitudinal axis defined between a first apex point at a first end of the pad and a second apex point at a second end of the pad, an upper triangular portion is defined by the first apex point and the transverse axis along the greatest width and a lower triangular portion defined by the second apex point and the transverse axis along the greatest width, the lower triangular portion having curved side portions.
However, Jourde teaches a pad (“a lower back pad disposed within the lower back pad pocket 58” paragraph 40) with a greatest height along a central longitudinal axis defined between a first apex point at a first end and a second apex point at a second end of the pad, a greatest width along a transverse axis defined between third and fourth ends of the pad, the transverse axis being perpendicular to the central longitudinal axis and located closer to the first end than the second end of the pad such that an upper triangular portion is defined by the first apex point and the transverse axis along the greatest width and a lower triangular portion defined by the second apex point and the transverse axis along the greatest width, the lower triangular portion having curved side portions (see annotated versions of figure 2 provided with the 35 USC 103 rejection of claim 1 above).
Jourde teaches analogous art to the instant application in the field of pads for garments. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to make the pad of Burger in the shape of the pad taught by Jourde because 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., 146 USPQ 146. See MPEP 2144.04. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to change the shape in order to customize the pad to the user’s preferences for aesthetic designs, as some people may prefer an angular design such as the one found in Jourde over a more rounded design as disclosed in Burger. Examiner notes that the particular shape of the pad is not disclosed as critical in the instant disclosure (see Response to Arguments above).
Burger as modified does not explicitly disclose: the thickness of the pad tapers in an S-curve from a thickest portion of the pad to a terminal edge where the two opposed sides meet at a point, whereby the top side transitions from the thickest portion of the pad to the terminal end along the S-curve including a curved profile having a concave inflection portion between first and second convex portions, the terminal edge extending around a perimeter of the pad, the thickest portion of the pad being spaced from the terminal edge, wherein a majority of the height-wise thickness and width-wise thickness of the pad has a constant thickness.
However, Hoshizaki teaches a pad for protecting a wearer (200) wherein the thickness of the pad tapers in an S-curve from a thickest portion of the pad to a terminal edge where the two opposed sides meet at a point, whereby the top side transitions from the thickest portion of the pad to the terminal end along the S-curve including a curved profile having a concave inflection portion between first and second convex portions, the terminal edge extending around a perimeter of the pad, the thickest portion of the pad being spaced from the terminal edge, wherein a majority of the height-wise thickness and width-wise thickness of the pad has a constant thickness (see figure 7A annotated with the 35 USC 103 rejection of claim 1 above; Examiner notes that the tapering is in an “S-curve” as defined by Applicant because it has the concave and convex portions as claimed).
Hoshizaki teaches analogous art to the instant application in the field of protective pads. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to taper all of the perimeter edges of the pad of Burger/Jourde using the curvature profile as taught by Hoshizaki, as evidenced by Wiener which teaches that tapering the edges of a protective pad has the advantage of making the pad “easily ‘blend’ in with the natural body contour and thus be less noticeable when worn” (Wiener, column 11, lines 12-14) which would “provide improved cosmetic appearance when worn” (Wiener, column 11, line 9). Examiner notes that the curvature profile of Hoshizaki includes the majority of the pad being a constant thickness, as shown in figure 7a and more clearly as shown in figure 10.
Regarding claim 21, Burger as modified discloses: The pad of claim 1, wherein the pad is one uniform material (“the padding is formed of an individual gel or foam cell” Burger, paragraph 25).
Regarding claim 22, Burger as modified discloses: The pad of claim 1, wherein the cushioning body is a continuous body (the pad 103 of Burger is a continuous body; see figure 2 of Burger) that tapers along the S-curve (as modified, the pad 103 of Burger tapers along the S-curve as described in the 35 USC 103 rejection of claim 1 above).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burger/Jourde/Hoshizaki/Wiener, and further in view of Dobkin (US 2006/0277644).
Regarding claim 9, Burger as modified does not explicitly disclose: The pad of claim 1, having an adhesive layer on the skin facing bottom side.
However, Dobkin teaches a protective pad (14) having an adhesive layer on at least one side (“the padding element 14 is secured within the pocket 24, such as by being affixed to the inner liner layer 12 and/or the flexible cover 22. In such embodiments, the padding element is secured by using an adhesive” paragraph 35).
Dobkin teaches analogous art to the instant application in the field of protective pads. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add an adhesive layer on the skin-facing side of the pad of Burger in order to affix the pad to the garment of Burger (a configuration which is contemplated in paragraph 25 of Burger) as taught by Dobkin because “this configuration advantageously reduces the likelihood that the padding element 14 has excessive movement within the pocket 24, or becomes folded onto itself, or is otherwise disturbed in the pocket 24” (Dobkin, paragraph 35), which would thus increase the comfort for the wearer because the pad would stay in the proper location.
Claim(s) 11, 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burger/Jourde/Hoshizaki/Wiener, and further in view of Dugan (US 2003/0051288).
Regarding claim 11, Burger as modified is silent as to the specific shape of the pocket, and therefore does not explicitly disclose: The kit of claim 10, wherein the pocket includes an opening and an edge opposite the opening, and the edge opposite of the opening has a non-linear profile matching a portion of the perimeter of the pad.
However, Dugan teaches a garment (1) that includes a pocket (4) which is sized and shaped to removably receive a pad (7), wherein the pocket includes an opening (see how the upper side of the pocket is open so the pad can be inserted as shown in figures 4 and 5; Examiner notes that in figure 2, the number 17 refers to the upper flap which covers the opening on the top of the pocket as described in paragraph 19) and an edge opposite the opening (see figure 2, the opposite edge to the opening is the edge that is not covered by the upper flap 17), and the edge opposite the opening has non-linear profile matching a portion of an outer perimeter of the pad (see figure 2 showing the non-linear profile of the edge, and see paragraph 20 which describes how the dotted lines in figure 2 labeled with the number 7 illustrates the location of the pad within the pocket 4, which shows that the profile of the pocket edge matches the outer perimeter of the pad).
Dugan teaches analogous art to the instant application in the field of protective pads for garments. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to change the shape of the pocket of Burger such that the shape of the pocket matches the shape of the pad, as taught by Dugan, because 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. See MPEP 2144.04. Further, making the shape of the pocket match the shape of the pad would make it easier for a user to identify which pad goes in which pocket on the garment.
Regarding claim 17, Burger as modified is silent as to the specific shape of the pocket, and therefore does not explicitly disclose: The apparel of claim 16, wherein the pocket includes a lower edge, an upper edge, and two opposed lateral edges, and wherein the lower edge of the pocket is located at a position separated from the waistband location by at least two thirds of a distance between the waistband location and the top of inseam location, and the upper edge of the pocket is located at a position separated from the waistband location by a distance that is less than 10% of the distance between the waistband location and the top of inseam location; and the pad is sized and shaped to fit snugly between the two lateral edges of the pocket and against an entire width of the lower edge of the pocket.
However, Dugan further teaches a garment (1) that includes a pocket (4) which is sized and shaped to removably receive a pad (7), wherein the pocket includes a lower edge, an upper edge, and two opposed lateral edges (see figure 2 annotated below showing the lower edge, upper edge, and two opposed lateral edges), and the pad is sized and shaped to fit snugly between the two lateral edges of the pocket and against an entire width of the lower edge of the pocket (see figure 2 showing the non-linear profile of the edge, and see paragraph 20 which describes how the dotted lines in figure 2 labeled with the number 7 illustrates the location of the pad within the pocket 4, which shows that the profile of the pocket edge matches the outer perimeter of the pad, therefore the pad fits snugly insofar as has been claimed and demonstrated by Applicant).
Dugan teaches analogous art to the instant application in the field of protective pads for garments. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to change the shape of the pocket of Burger such that the shape of the pocket matches the shape of the pad, as taught by Dugan, because 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. See MPEP 2144.04. Further, making the shape of the pocket match the shape of the pad would make it easier for a user to identify which pad goes in which pocket on the garment. Examiner notes that changing the shape of the pad/pocket has not changed the location of the pad/pocket on the pants of Burger. Therefore, as can be seen in figure 2 of Burger below, the pocket/pad as modified would still have the lower edge of the pocket is located at a position separated from the waistband location by at least two thirds of a distance between the waistband location and the top of inseam location, and the upper edge of the pocket is located at a position separated from the waistband location by a distance that is less than 10% of the distance between the waistband location and the top of inseam location.
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Modified figure 2 of Burger showing the relative distances between the upper and lower edges of the pocket and the waistband as compared to the distance from the waistband to the top of the inseam
Regarding claim 18, Burger as modified discloses: The apparel of claim 17, wherein the pocket is shaped and sized such that, when the pad is disposed within the pocket snugly against the lower edge and both lateral edges of the pocket, an entire side of the pad would press against a planar floor if a wearer of the garment would lie on the floor with a flat back, an area of the pad pressed against the floor would decrease as the wearer sits up, and half or less of the pad would remain pressed between the wearer and the floor when the wearer reaches a sitting position (Examiner notes that the italicized limitations are intended use limitations, and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114(II). Further, the positioning of the pocket/pad with respect to the body of the user is entirely dependent on the size and shape of the user’s body as well as how the user chooses to wear the garment. Different people may choose to wear their pants with the waistband, and therefore the pocket with the pad, pulled higher or sagged lower or even folded over depending on their comfort and personal style. Moreover, whether an entire side of the pad would be able to press against the floor when a person lays down on the floor is entirely dependent on the curvature of a person’s back and buttocks. As Burger as modified has all of the claimed structural limitations, it reads on the claim as written.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732