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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 November 2025 has been entered.
Response to Amendment
Applicant’s amendment, received 17 November 2025, is reviewed and entered. This Office Action is a non-final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Amended
1
Newly Added
20-21
Withdrawn
2, 4-5, 8-19
Canceled
6-7
Pending
1-5 and 8-21
Presented for Examination
1, 3, 20-21
Response to Arguments
Applicant's arguments filed 17 November 2025 have been fully considered but they are not persuasive.
Drawing Objections
Applicant argues the “first part” is shown in FIGS 1-4B. Examiner agrees; however, the elected embodiment is FIGS 11A-11B, and these figures do not support a first part. Applicant points to para. 0064 but it is not clear how para. 0064 supports the first part being included in the FIG 11A-11B embodiment. Para. 0064 refers only to the “second part” 40 and not the claimed first part. Applicant argues one of ordinary skill would understand the FIG 11A-11B embodiment would be attached to a garment/ apparel. This is not persuasive. It is not clear from the disclosure that the FIG 11A-11B embodiment is attached to a garment/ apparel and not, for example, worn directly on the limb.
103 Rejections
Applicant argues Long does not disclose a flared end portion. Examiner agrees Long’s FIG 1-2 embodiment does not disclose a flared end portion. However, as set forth in the previous rejection and the rejection below, Long is found to be obviously modifiable to have a flared end portion.
In light of the above, the rejection is believed to be proper.
Election/Restrictions
Applicant's election with traverse of Species 12 (figs 11A-11B) in the reply filed on 17 January 2025 is acknowledged.
Drawings
The drawings were received on 17 November 2025. These drawings are acceptable to enter, but do not overcome the drawing objections set forth below.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the article of apparel and the first part of a magnetic fastening system (claims 1 and 3; see below), the first magnetic element (claim 1, the disclosure does not support a first magnetic element and it is not clear if it is the first part of the magnetic fastening system or if it is a portion of the first mart of the magnetic fastening system), the protective element and pair of protective elements (claim 1; the disclosure has support for a “protective device” 20a and 20b, but it is not clear if these are the same as the “protective element”), different degrees of overlap (claim 21; FIG 11B supports a single degree of overlap but not different degrees of overlap) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The elected embodiment shown in FIGS 11A-11B does not show an article of apparel. The disclosure has support for embodiments such as the one shown in FIGS 1A-C having an article of apparel 10, but FIGS 11A-11B do not support the protective element in combination with an article of apparel.
The elected embodiment shown in FIGS 11A-11B does not show a first part. The disclosure gives the first part reference number 30 and the second part reference number 40. FIGS 11A-11B show only a second part 40. The disclosure has support for embodiments such as the one shown in FIGS 1A-C having a first part 30, but FIGS 11A-11B do not support the protective element having a first part of a magnetic fastening system.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “30” has been used to designate both the first part of the magnetic fastening system and the magnet. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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: the species shown in figs 11A-11B having a first part, as claim 1 requires a first part and in the 1/17/2025 Remarks, Applicant indicates claim 1 is generic to all species.
Claim Objections
Claim 1 is objected to because of the following informalities: in the second to last line, replace “the second” with –a second—for proper antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, 3, and 20-21 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.
Claim 1 is indefinite because the relationship between the first part of the magnetic fastening system, first magnetic element, and magnet is unclear. Claim 1 recites the first part of the magnetic fastening system includes a first magnetic element and comprises a magnet. The disclosure does not have support for a first magnetic element, there is only support for a first part of the magnetic fastening system 30, although that is not a feature of the claimed embodiment. There is no disclosure of a first magnetic element, rendering it unclear if this is this is a portion of the first part of the magnetic fastening system or if the first part and the first magnetic element are the same element. Further, the claim recites the first part comprises a magnet. At least paras. 0054 and 0057 appear to use “first part” and “magnet” interchangeably, as they are both given the reference number 30. Therefore, from the disclosure, it appears the “first part” and the “magnet” are the same element. However, this is not consistent with the claim which recites the first part includes a first magnetic element and comprises a magnet, which suggests that at least the first magnetic element and the magnet are two different features, and possible portions of the first part. Based on the disclosure, Examiner believes the “first part,” “first magnetic element,” and “magnet” are all a single feature -a magnet- and not three distinct features as claimed.
Claim 1 is indefinite because the relationship between the guard member and protective element is unclear. Assuming the claimed protective element is the disclosed protective device, in FIGS 11A-11B, it appears the protective device and guard member are the same element, as 22a and 20a appear to be pointing to the same element and 20b and 22b appear to be pointing to the same element. Or, in another interpretation, are the protective device and guard member different portions of the same element. Or, in a further interpretation, is the protective device the entire element and the guard member is a portion (the terminal edge according to claims 11A-11B) of the protective device. This is made further unclear by the claim 1 recitation “a second part of the magnetic fastening system attached to the guard member,” because the second part 40 is in a midsection of the protective device and does not appear to be attached anywhere near the guard members 22a and 22b which are at the terminal ends of the protective device. This is made even further unclear by the claim 1 recitation that an end portion of the first guard member overlaps an end portion of the second guard member, as the flared end portion 21 and the end portion it overlaps are opposite the guard members in FIGS 11A-11B, which suggests that the protective element does not “have” a guard member, but that Applicant is using the terms protective element and guard member interchangeably.
Claim 1 is rendered indefinite by the recitations “guard member,” “first guard member,” and “second guard member” because it is not clear if the first and second guard members are included in or in addition to the guard member. If these are all distinct guard members, then Examiner suggests distinguishing them, e.g., a first guard member, a second guard member, a third guard member. If the first and second guard members are included in the singular “guard member,” then Examiner suggests an amendment reciting a plurality of guard members, the plurality of guard members comprising a first and second guard member.
Claims that depend from a rejected claim are also rejected under 112.
All claims are examined as best understood.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long (US 20070151084 A1).
As to claim 1, Long discloses a protective apparel system (combination of shoe S or any other clothing article as disclosed in para. 0017 and attachment 10), comprising:
an article of apparel (shoe S or any other clothing article as disclosed in para. 0017 in combination with 12), said article of apparel having a first part of a magnetic fastening system including a first magnetic element (16 is the “first part… including a first magnetic element,” and S has the first part 16 of a magnetic fastening system); and
a protective element having a guard member and a second part of the magnetic fastening system attached to the guard member (12 and 14 are the protective elements and 20 and 24 are the first and second guard members, protective element 14 has a second part of the magnetic fastening system 22)
the first part of the magnetic fastening system being joinable to the second part to attach the protective element to the article of apparel (16 and 22 are capable of being joined and intended to be joined), wherein at least one of the first part and the second part of the magnetic fastening system comprises a magnet (16 is a magnet as disclosed in para. 0018, 22 is a magnet as disclosed in para. 0025); and
wherein the protective element includes a pair of protective elements (12 and 14) of which a first (12) of the pair of protective elements includes a respective first guard member (20), and the end portion is configured and dimensioned to receive and overlap an end portion of a respective second guard member (24) of the second of the pair of protective elements (see FIG 2 which shows 20 overlaps 24).
Long does not disclose the first guard member having a flared end portion.
Long discloses 12 may have a flared portion (FIG 5, the heart shape widens at the top and so is considered to have a flared upper end portion), so a flared portion is within the scope of the reference. Furthermore, Long para. 0026 discloses 20 may have any number of configurations, so a change in shape is within the scope of 20.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide the first guard member with a flared portion, such as by providing 20 as a heart shape as shown in FIG 5 which would obviously result in the upper end being flared, for the purpose of providing the desired aesthetics.
Furthermore, the heart shaped 20 would obviously receive an end portion of 24, because Long discloses 20 receives the entirety of 24 which would include any end portions of 24.
As to claim 3, Long discloses the protective apparel system of claim 1, wherein the first part and the second part of the magnetic fastening system both comprise a magnet (16 is a magnet as disclosed in para. 0018, 22 is a magnet as disclosed in para. 0025).
As to claim 20, Long discloses the protective apparel system of claim 1, wherein the guard member of the protective element is contoured to conform to an outer portion of a limb of a wearer (capable of conforming to an outer portion of a limb of a wearer, due to the flexibility of the material of 20 as disclosed in para. 0026 and the flexibility of the material of 24 as disclosed in para. 0031; this is the result of the modification presented in the rejection of claim 1 above, where 20 is modified to have a heart shape, and the rounded upper end of the heart shape is contoured).
As to claim 21, Long discloses the protective apparel system of claim 1, wherein the first and second guard members of the pair of protection elements are arranged relative to each other with different degrees of overlap to adjust to a length of a limb of a wearer (to the degree shown in Applicant’s figures, which shows either no overlap in FIG 11A and one degree of overlap in FIG 11B, and Long also discloses no overlap in FIG 1 and one degree of overlap in FIG 2; furthermore, Long’s 20 and 24 are capable of having different degrees of overlap by providing different sizes of 20 and 24 as suggested in para. 0026).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732