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 of 20 October 2025 is acknowledged. Claims 1 and 9 is/are amended. Claims 2, 10, and 20 remain canceled. Claims 3-7, 11, and 14-18 remain withdrawn. Applicant’s amendments to the claims overcame each and every claim objection, specification objection, 35 U.S.C. 112(a) rejection, and 35 U.S.C. 112(b) rejection previously set forth in the Non-Final Office Action mailed 18 June 2025. Claims 1, 8-9, 12-13, and 19 are presented for examination for Species 1: Fig. 1 and Subspecies b: Fig. 2B.
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:
Claim 1 recites the following limitation: “configured to removably couple via a non-destructive attachment mechanism”. After a complete review of Applicant’s instant specification, such limitation lacks antecedent basis from the instant written specification.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim(s) 1, 8-9, 12-13, and 19 is/are 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.
Claim 1 recites “a heat-resistant liner comprising silicone configured to removably couple via a non-destructive attachment mechanism”. After a full review of Applicant’s disclosure, it appears there is no support for such claim limitations. The originally filed disclosure does not discuss one or both the outer layer and the inner layer comprise a towel material. For these reasons, the claim limitation fails to comply with the written description requirement. The new matter is “configured to removably couple via a non-destructive attachment mechanism”.
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(s) 1, 8-9, 12-13, and 19 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 1 is rejected as being indefinite or failing to particularly point out and distinctly claim whether Applicant intends to positively claim “a non-destructive attachment mechanism” that removably couples the heat-resistant liner to the exterior surface of the outer layer or to the interior surface of the inner layer. As currently claimed, the recitation “a heat-resistant liner comprising silicone configured to removably couple via a non-destructive attachment mechanism to the exterior surface of the outer layer or to the interior surface of the inner layer” structurally limits the heat-resistant liner after the heat-resistant liner has been clearly set forth as a functional limitation with the recitation “configured to removably couple via a non-destructive attachment mechanism to the exterior surface of the outer layer or to the interior surface of the inner layer”, rendering it unclear if a non-destructive attachment mechanism is a functional or structural limitation. As currently claimed, all references in the claim drawn to a non-destructive attachment mechanism are not considered to be further structurally limiting with respect to the heat-resistant liner. Applicant is respectfully advised to provide clarification of the scope of the claim, regarding whether Applicant intends to claim a non-destructive attachment mechanism. For examination purposes, reference to a non-destructive attachment mechanism is merely Applicant’s statements of intended use of the heat-resistant liner because the non-destructive attachment mechanism is not currently positively claimed. Additionally, and for the sake of interpreting that the non-destructive attachment mechanism was intended to be positively claimed (although requiring a further amendment to the claim language), Examiner has provided a rejection of the limitation on pages 7-8 if this final rejection. Claim 1 is rejected as best understood by Examiner.
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.
Claim(s) 1, 8-9, and 12-13, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nunez (US 2009/0300815 A1), in view Korkor (US 2003/0196242 A1), and in further view of Tempelhof (US 3,370,303 A).
Regarding claim 1, insofar as is definite, Nunez discloses a securable cover (1) comprising: an outer layer (16; para. 13, where 16 is on top of 4) comprising an exterior surface (21a, 21b); an inner layer (4; para. 13, where 16 is on top of 4) comprising an interior surface opposite the exterior surface (Figs. 5A-5B, where the interior surface is adjacent to the wearer and opposite of 21a and 21b), wherein one or both the outer layer and the inner layer comprise an absorbent fabric (para. 13, “The first sheet 4 may be a towel, such as a towel made cotton”, and therefore, one layer- “the inner layer comprise an absorbent fabric”; Examiner notes Applicant’s specification in para. 9 discloses the inner layer comprising a material such as cotton);
at least one attachment mechanism (12, 18) comprising: a first connector (18) disposed at a first location on the securable cover (Fig. 2; where 18 is on a first location as shown on 16); and a second connector (12) disposed at a second location on the securable cover (Fig. 1, where 12 is on a second location as shown on 4), wherein the first connector is configured to removably couple to the second connector to affix the securable cover around the torso of a user (para. 16).
Nunez does not directly disclose a heat-resistant liner configured to removably couple via a non-destructive attachment mechanism to the exterior surface of the outer layer or to the interior surface of the inner layer.
However, Korkor teaches a securable cover (10, 14, 26) with a heat-resistant liner (28; para. 36, where 28 is a backing/liner of 26) comprising silicone (para. 36, where 28 is made of silicone) configured to removably couple via an attachment mechanism to the exterior surface of the outer layer (para. 36, where the bottom edge of the outer layer of 10 is sewn to 26 and 28; Fig. 1 shows the exterior surface of the outer layer as the surface of 10 facing the reader; It is noted that the recitation “configured to removably couple … to the exterior surface of the outer layer or to the interior surface of the inner layer” is functional and does not positively recite a structural limitation, but instead requires an ability to so perform and/or function, such as the sewn 14, 26, and 28 structures being capable of being removed when the stitching is loosened or cut and coupled when the structures are sewn to 10 at the exterior surface. Korkor discloses the silicone heat-resistant liner structure as claimed and therefore would have a reasonable expectation of performing such function; Examiner notes that “a non-destructive attachment mechanism” is not a positively claimed structure).
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 securable cover of Nunez to include a heat-resistant liner comprising silicone configured to removably couple via an attachment mechanism to the exterior surface of the outer layer, as taught by Korkor, in order to adjust the level of comfort to the wearer.
If a non-destructive attachment mechanism was intended to be positively claimed, Nunez and Korkor do not directly disclose a heat-resistant liner configured to removably couple via a non-destructive attachment mechanism to the exterior surface of the outer layer or to the interior surface of the inner layer.
However, Tempelhof teaches a liner (1) configured to removably couple via a non-destructive attachment mechanism (col. 2 lines 21-30, “stitching or other securement”, and “other securement” as shown in Fig. 1 is an obvious variant of stitches) to the exterior surface of the outer layer (col. 2 lines 29-30 & Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the securement system of Korkor with the securement system taught by Tempelhof, as a simple substitution of one well known securement system for another would yield the predictable result of providing a layered garment that maintains its position when the wearer is moving. When in combination, Nunez, Korkor, and Tempelhof disclose a heat-resistant liner configured to removably couple via a non-destructive attachment mechanism to the exterior surface of the outer layer.
Regarding claim 8, modified Nunez further discloses the securable cover of Claim 1, wherein the attachment mechanism comprises: a snap-fit element, a clip, a clamp, a clasp, a hook, a pin, a hole, or a hook-and-loop fastener (para. 16 & Figs. 5A-5B, hook-and-loop fastener).
Regarding claim 9, modified Nunez further discloses the securable cover of Claim 1, except for wherein the at least one attachment mechanism comprising a plurality of attachment mechanisms.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add a plurality of attachment mechanisms to the securable cover of Nunez in order to better secure and adjust the securable cover to the wearer, since such a modification would amount to a mere duplication of parts. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See MPEP 2144.04.
Regarding claim 12, modified Nunez further discloses the securable cover of Claim 1, wherein the securable cover at least partially comprises an absorbent material (para. 13, where 4 is an absorbent material).
Regarding claim 13, modified Nunez further discloses the securable cover of Claim 1, wherein the outer layer at least partially comprises a hydrophobic material (para. 13, where 16 is waterproof).
Regarding claim 19, Korkor further teaches the securable cover of Claim 1, wherein the liner is configured to removably couple to the exterior surface of the outer layer (para. 36, where the bottom edge of the outer layer of 10 is sewn to 26 and 28; Fig. 1 shows the exterior surface of the outer layer as the surface of 10 facing the reader; It is noted that the recitation “configured to removably couple to the exterior surface of the outer layer or to the interior surface of the inner layer” is functional and does not positively recite a structural limitation, but instead requires an ability to so perform and/or function, such as the sewn 14, 26, and 28 structures being capable of being removed when the stitching is cut and coupled when the structures are sewn to 10 at the exterior surface. Korkor discloses the structure as claimed and therefore would have a reasonable expectation of performing such function).
Response to Amendment
Applicant’s arguments filed 10 October 2025 have been fully considered but they are not persuasive. Applicant’s arguments appear to be directed to the amended limitations, in which additional consideration and reinterpretation has been given for new grounds of rejection, as stated above.
Conclusion
15158. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIAO QT HOANG whose telephone number is (571)272-7557. The examiner can normally be reached Monday-Friday, 9 am - 5 pm ET.
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/G.Q.H./Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732