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
The amendments filed with the written response received on October 21, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 5, 9, 12, 15, and 23 have been amended; claims 8 and 16-21 are canceled; and claim 6 has been withdrawn.
Accordingly, claims 1-7, 9-15, and 22-24 are pending in this application, with an action on the merits to follow regarding claims 1-5, 7, 9-15, and 22-24.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11497269 in view of Stogner (US 5704070).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 8 of U.S. Patent No. 11497269 in view of Stogner (US 5704070).
The respective claims of US 11497269 include all the limitations of claims 1 and 9 of the instant application except the limitation wherein the compartment fabric includes at least one compartment seam that runs parallel to a middle seam that attaches the first panel to the second panel. However, Stogner teaches wherein the compartment fabric (37/39) includes a [resemblance of] compartment seam (as 37 and 39 are joined as disclosed in col. 2, lines 51-55 and can be seen in Fig. 6 and resembles a seam) that runs parallel to a middle seam that attaches the first panel (14) to the second panel (16) (as col. 2, lines 51-56 discloses 37/39 being substantially the same size as first and second panels 14 and 16, thus when joining 37 and 39, the middle seam would be parallel to the seam connecting 14 to 16 disclosed in col. 2, lines 45-50). And it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a middle seam to the compartment fabric parallel to a seam connecting the panels together in order to conceal the pocket thereby producing a storage hat that resembles a conventional hat making it more attractive to the consumer as well as further adding to the ability to conceal the contents.
Drawings
The drawings are objected to because Figs. 9A-B and 11A-B are photographs. Applicant indicated that replacement sheets were submitted in the response filed April 4, 2025, but no replacement sheets have been filed and this objection remains outstanding.
Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. See 37 CFR 1.84(b)(2).
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:
Claims 1, 12, 15, and 23 recites, “wherein the [second] compartment fabric is a single piece of fabric and includes a [second] resemblance of a compartment seam” or similar language. However this was not disclosed in the specification as originally filed (see 35 USC 112(a) rejection below for further explanation).
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 should recite, “vertex”;
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1, 12, 15, and 23 (and claims 2-5, 7, 13, and 24 at least for depending from a rejected claim) 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.
Claims 1, 12, 15, and 23 recites, “wherein the [second] compartment fabric is a single piece of fabric and includes a [second] resemblance of a compartment seam” or similar language. However this was not disclosed in the specification as originally filed. Throughout the specification, the fabric of the compartment is only referred to as “compartment fabric”, “fabric that may be used to form a compartment”, “the fabric of the first/second compartment”, however there is no reference limiting the compartment fabric as a “single piece of fabric”. Further, as shown in the drawings of the elected embodiment (Figs. 1, 5, and 7), there is a seam 510a/510b extending through the compartment fabric 502a/502b which is disclosed in para. 0056 as “The fabric 502a of the first compartment 500a includes a first seam 510a parallel to seam 120a of the interior surface of the headgear 100” and para. 0057 as “The fabric 502b includes a seam 510b parallel to seam 120d of the interior surface of the headgear.” Thus, it cannot be definitively determined in the compartment fabric is “a single piece of fabric”. Therefore this limitation fails to comply with the requirement for written description.
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, 12, 15, and 23 (and claims 2-5, 7, 13, and 24 at least for depending from a rejected claim) 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.
Claims 1, 12, 15, and 23 recites, “wherein the [second] compartment fabric is a single piece of fabric and includes a [second] resemblance of a compartment seam” or similar language. Since this limitation fails to comply with the requirement for written description, it is unclear what is meant by “a single piece of fabric” as it could mean one layer of fabric, a continuous piece of fabric without any seams, or more. Further, it is unclear how a seam can be a resemblance of a seam as it is either a seam or it isn’t a seam, and there is no further disclosure in the specification as to what is meant by a resemblance of a seam or the structure of a resemblance of a seam. For purposes of examination, Examiner has interpreted it to mean a fabric piece forming one individual unit and that anything structure that appears to look like or be a seam is a resemblance of a seam.
Claims 12 and 23 are indefinite as each recites, “wherein the compartment fabric includes the resemblance of the at least one compartment seam that extends from a top center point of the dome to at least the headband”. As claim 9 recites, “wherein the compartment fabric includes at least one compartment seam or a resemblance of at least one compartment seam that extends from a top center point of the dome to at least the headband”, it is unclear how this limitation in claim 23 is further limiting the similar limitation in claim 9. Is this simply a partial repeat or is what could before be a compartment seam now limited to a resemblance of a compartment seam? Further, does “a top center point” in claim 23 refer to a different point than, or the same point as. “a tope center point” of claim 9?
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 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.
Claims 1-5, 7, 9-14, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stogner (US 5704070) in view of McCallum (US 6023788).
Regarding claim 1, Stogner discloses a headgear (10), comprising: a plurality of contiguous triangular panels (14, 16, 18, 20, 26, 18) forming a dome (11) of the headgear, each triangular panel of the plurality of contiguous triangular panels including a right side edge and a left side edge (edges shown in Figs. 2-4 there are left and right side edges and one bottom edge on each panel) that meet at a top vertice (upper apex, see Figs. 2-4) and a bottom edge opposite of the top vertice (edges shown in Figs. 2-4 there are left and right side edges and one bottom edge on each panel, the bottom edge being opposite the vertex), wherein the right side edge of a first triangular panel of the plurality of contiguous triangular panels is attached by a right side seam to an immediately adjacent triangular panel of the plurality of contiguous triangular panels (as disclosed in col. 2, lines 45-50, each panel is attached to the adjacent panel by stitching) and wherein the left side edge of a second triangular panel of the plurality of contiguous triangular panels is attached a left side seam to another immediately adjacent triangular panel of the plurality of contiguous triangular panels (left and right side edges of each panels are sewn to corresponding edges of adjacent panels; as disclosed in col. 2, lines 45-50, each panel is attached to the adjacent panel by stitching), wherein the left side edge of the first triangular panel and the right side edge of the second triangular panel are attached by a middle seam (left and right side edges of each panels are sewn to corresponding edges of adjacent panels and as such the left edge of the first panel is connected to the right edge of the second panel by a seam; as disclosed in col. 2, lines 45-50, each panel is attached to the adjacent panel by stitching), where the top vertices (upper apex, see Figs. 2-4) of the plurality of contiguous triangular panels meet at a top center point (30) of the dome of the headgear; a headband (36) that extends around an internal circumferential edge (36a) of the dome of the headgear; a compartment fabric (37/39) that forms a compartment (38) between an interior surface of the dome of the headgear and the compartment fabric (as shown in Fig. 10 and disclosed in col. 2, line 51 to col. 3, line 20),
wherein the compartment fabric is attached by the right side seam to the right side edge (seam connecting right side edge 14a to 37a) of the first triangular panel (14) of the plurality of contiguous triangular panels and attached by the left side seam to the left side edge (seam connecting left side edge 16a to 39a) of the second triangular panel (16) of the plurality of contiguous triangular panels, wherein the compartment fabric covers the first and second triangular panels (as shown in Fig. 10), and wherein the compartment fabric is a single piece of fabric (as best interpreted to be a single unit of fabric, see 35 USC 112(b) rejections above) includes a resemblance of a compartment seam (as 37 and 39 are joined as disclosed in col. 2, lines 51-55 and can be seen in Fig. 6 to resemble a seam) that extends from the top center point of the dome (as can be seen in Fig. 6) toward the headband (as seen in Fig. 6) and positioned parallel to the middle seam attaching the left side edge of the first triangular panel and the right side edge of the second triangular panel (as col. 2, lines 51-56 discloses 37/39 being substantially the same size as first and second panels 14 and 16, thus when joining 37 and 39, the middle seam would be parallel to the seam connecting 14 to 16), wherein the resemblance of the compartment seam resembles the middle seam (as can be seen in Fig. 5 where cap panels are joined and Fig. 6 where pocket panels are joined, the seams appear the same); and a closing mechanism (hook and loop 40/44; Examiner notes “closing mechanism” has been interpreted under 35 USC 112(f) and is an equivalent fastener to Applicant’s closing mechanism) attached to the compartment fabric (at 38a), wherein the closing mechanism is configured to open and close the compartment (at 38a, disclosed in co. 2, lines 60-66).
Stogner does not expressly disclose wherein the resemblance of the compartment seam extends to at least the headband; the closing mechanism and positioned underneath the headband.
McCallum teaches a hat with a storage pocket wherein the closing mechanism (118/119 of McCallum on the compartment fabric 114) is positioned beneath the headband (122 of McCallum) (see Fig. 11 and col. 7, lines 1-5 where the opening of the pocket can positioned behind the sweatband).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention position the closing mechanism beneath the headband of Stogner as taught by McCallum “so as to conceal the pocket opening and pull tab when the hat is in use” (see col. 7, lines 1-5 of McCallum).
When used in combination, the closing mechanism is positioned beneath the headband (as disclosed in col. 7, lines 1-5 of McCallum) then the resemblance of the compartment seam of modified Stogner would extend to at least the headband before modification is can be seen as extending to pull tab 42 of Stogner and when modified the closing mechanism is beneath the headband and therefore so are the pocket opening and pull tab (as disclosed in col. 7, lines 1-5 of McCallum).
Regarding claim 2, the modified headgear of Stogner discloses wherein the compartment fabric is attached to the internal circumferential edge of the dome of the headgear (as 37/39 are attached to 14 and 16 which create the circumference edge 36a, then they are at least indirectly attached to 36a).
Regarding claim 3, the modified headgear of Stogner discloses wherein the bottom edges of each of the plurality of triangular panels (third/bottom edges) are curved (as can be seen in Figs. 2-3, the bottom edges are curved and as can be seen in Figs. 1 and 11, when sewn into the shape of the dome, the bottom edges are also curved as they are part the hemispherical structure of the dome and positioned along the internal circumference edge (36a, as best as can be understood to be the same as the internal circumferential edge of the dome) of the headgear (best seen in Figs. 1 and 11).
Regarding claim 4, the modified headgear of Stogner discloses wherein the closing mechanism (40/44) is a hook and loop fastener device (see col. 2, lines 65-67).
Regarding claim 5, the modified headgear of Stogner discloses wherein the headband is attached to the internal circumferential edge of the dome of the headgear (see explanation in claim 1 above and note the headband 36 is attached to circumference 36a via sewing, see col. 3, lines 58-40).
Regarding claim 7, the modified headgear of Stogner discloses wherein the plurality of contiguous triangular panels (14, 16, 18, 20, 26, 28) includes at least four contiguous triangular panels (as there are 6).
Regarding claims 9-11, Stogner discloses headgear (10) , comprising: a plurality of panels (14, 16, 18, 20, 26, 28) forming a dome (11) of the headgear, wherein the plurality of panels comprises at least a first panel (16) and a second panel (14) , wherein the second panel is contiguous with the first panel (as shown in Figs. 1, 5, and 10); a headband (36) surrounding an internal circumferential edge (36a) of the dome of the headgear; and a compartment fabric (37/39) that covers at least the first panel and at least the second panel (as shown in Fig. 10) to form a compartment (38) between an interior surface of the dome of the headgear and the compartment fabric (shown in Fig. 10 and disclosed in col. 2, line 51-col 3, line 10), wherein the compartment fabric includes at least one compartment seam or a resemblance of at least one compartment seam (as 37 and 39 are joined as disclosed in col. 2, lines 51-55 and can be seen in Fig. 6 to resemble a seam) that extends from a top center point (30) of the dome towards the headband and is positioned runs parallel to a middle seam that attaches the first panel to the second panel (as col. 2, lines 51-56 discloses 37/39 being substantially the same size as first and second panels 16 and 14, thus when joining 37 and 39, the middle seam would be parallel to the seam connecting 14 to 16 disclosed in col. 2, lines 45-50) [claim 9], further comprising: a closing mechanism (hook and loop 40/44; Examiner notes “closing mechanism” has been interpreted under 35 USC 112(f) and is an equivalent fastener to Applicant’s closing mechanism) attached to the at least one compartment fabric (at 38) enabling sealing of the at least one compartment (at 38a, disclosed in co. 2, lines 60-66) [claim 10].
Stogner does not expressly disclose wherein the compartment seam or resemblance of the compartment seam extends to at least the headband [claim 9] and wherein the closing mechanism is positioned beneath the headband [claim 11].
McCallum teaches a hat with a storage pocket wherein the closing mechanism (118/119 of McCallum on the compartment fabric 114) is positioned beneath the headband (122 of McCallum) (see Fig. 11 and col. 7, lines 1-5 where the opening of the pocket can positioned behind the sweatband).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention position the closing mechanism beneath the headband of Stogner as taught by McCallum “so as to conceal the pocket opening and pull tab when the hat is in use” (see col. 7, lines 1-5 of McCallum).
When used in combination, the closing mechanism is positioned beneath the headband (as disclosed in col. 7, lines 1-5 of McCallum) then the compartment seam or resemblance of the compartment seam of modified Stogner would extend to at least the headband before modification is can be seen as extending to pull tab 42 of Stogner and when modified the closing mechanism is beneath the headband and therefore so are the pocket opening and pull tab (as disclosed in col. 7, lines 1-5 of McCallum).
Regarding claim 12, the modified headgear of Stogner discloses wherein the at least one compartment fabric is attached to the internal circumferential edge of the dome of the headgear (as 37/39 are attached to 14 and 16 which create the circumference edge 36a, then they are at least indirectly attached to 36a); and wherein the compartment fabric is a single piece of fabric (as best interpreted to be a single unit of fabric, see 35 USC 112(b) rejections above) and wherein the compartment fabric includes the resemblance of the at least one compartment seam (as 37 and 39 are joined as disclosed in col. 2, lines 51-55 and can be seen in Fig. 6 to resemble a seam) that extends from a top center point to at least the headband (see rejection of claim 9 above).
Regarding claim 13, the modified headgear of Stogner discloses wherein the compartment fabric (37/39) is attached to a first seam on a left side (at 16a and 39a) of the first panel (16) and a second seam (at 14a and 37a) on a right side of the second panel as shown in Fig. 10 and disclosed in col. 2, line 51 to col. 3, line 20).
Regarding claim 14, the modified headgear of Stogner discloses wherein the bottom panel edges of the plurality of panels (bottom edges of the panels) are positioned along the internal circumferential edge (36a, as best as can be understood to be the same as the internal circumference edge of the dome) of the dome of the headgear (best seen in Figs. 1 and 11).
Regarding claim 23, the modified headgear of Stogner discloses wherein the compartment fabric (37/39) is a single piece of fabric (as best as can be understood, the combination of 37/39 as joined by the compartment seam is a single piece of fabric as 37 and 39 were joined to create as one individual unit) and wherein the compartment fabric includes the resemblance of the at least one compartment seam (as 37 and 39 are joined as disclosed in col. 2, lines 51-55 and can be seen in Fig. 6 to resemble a seam) that extends from a top center point to at least the headband (see rejection of claim 9 above).
Claim 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Stogner and McCallum as applied to claim 9 above, and further in view of Monshouwer (US 2005/0210563).
Regarding claim 15, the modified headgear of Stogner discloses all the limitations of claim 9 above, but does not expressly disclose further comprising: a second compartment fabric that covers a third panel and a fourth panel of the plurality of panels to form a second compartment between the interior surface of the dome of the headgear and the second compartment fabric, wherein the second compartment fabric is attached to a first seam of a left side edge of the third panel and a second seam of a right side edge of the fourth panel, and wherein the second compartment fabric is a single piece of fabric and includes a second resemblance of a compartment seam that runs parallel to a middle seam attaching a right side edge of the third panel to a left side edge of the fourth panel.
Monshouwer teaches headgear with two compartments, one on the front side of the cap and one on the rear side of the cap (see para. 0032).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a second compartment opposite the first compartment of Stogner as taught my Monshouwer in order to offer the wearer a choice of storing items in the front of the headgear or in the back of the headgear, thereby doubling the choices of placement of items and doubling the total space to store items.
The modified headgear of Stogner does not expressly disclose the second compartment having a second compartment fabric that covers a third panel and a fourth panel of the plurality of panels to form a second compartment between the interior surface of the dome of the headgear and the second compartment fabric, wherein the second compartment fabric is attached to a first seam of a left side edge of the third panel and a second seam of a right side edge of the fourth panel, and wherein the second compartment fabric is a single piece of fabric and includes a second resemblance of a compartment seam that runs parallel to a middle seam attaching a right side edge of the third panel to a left side edge of the fourth panel.
However it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to duplicate the structure of the structure of the first compartment for the second compartment of the modified headgear of Stogner in order to streamline the manufacturing and the look of the headgear and since 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.
As such, when a duplicate compartment is added to the rear of the headgear, it would have all the same structure of the first compartment (38 of Stogner) but on rear panels (26 and 28 of Stogner) so that a second compartment fabric (duplicate of 37/39 of Stogner) that covers a third panel (26 of Stogner) and a fourth panel (28 of Stogner) of the plurality of panels to form a second compartment (duplicate of 38 of Stogner) between the interior surface of the headgear and the second compartment fabric (as understood from Fig. 10 of Stogner), wherein the second compartment fabric is attached to a first seam of a left side edge of the third panel and a second seam of a right side edge of the fourth panel (as shown in Fig. 10 and disclosed in col. 2, line 51 to col. 3, line 20 and when duplicated, would be sewn into the seams connecting the third panel to its adjacent panel 20 and the fourth panel to its adjacent panel 18), and wherein the second compartment fabric is a single piece of fabric (as best as can be understood to be a single unit, see 35 USC 112(b) rejections above) includes a second resemblance of a compartment seam that runs parallel to a middle seam attaching a right side edge of the third panel to a left side edge of the fourth panel (as col. 2, lines 51-56 discloses 37/39 being substantially the same size as first and second panels 14 and 16, thus when joining 37 and 39 a connection is formed representing a seam that is parallel to the seam connecting 14 to 16 and in duplicating 37/39 would be the same size as 26 and 28, thus when joining 37 and 38, the middle seam would be parallel to the seam connecting 26 and 28).
Claims 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Stogner and McCallum as applied to claims 1, 9, and 23 above, and further in view of Williams (US 2015/0126294).
Regarding claims 22 and 24, the modified headgear of Stogner discloses all the limitations of claims 1, 9, and 23 above, but do not expressly disclose wherein the compartment fabric is a same fabric with a same color as the first and second panels.
Williams teaches headgear with pocket (12) disclose wherein the compartment fabric (material of 12) is a same fabric with a same color as the first and second panels (as the pocket is “made of the same textile as the crown”, see para. 0015).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make compartment fabric the same color and fabric as the first and second panels of the modified headgear of Stogner, as taught by Williams, “for design purposes” (as para. 0015 indicates changing fabric or color would be for design purposes, then using the same would also be for design purposes). Further, it is notes a change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04. A change in color is generally recognized as being within the level of ordinary skill in the art. Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Response to Arguments
Applicant's arguments filed April 7, 2025 have been fully considered but they are not persuasive.
Regarding the previous withdrawal of claim 6, by Examiner, in the non-final rejection dated May 5, 2025, Applicant argues that such a withdrawl is improper because: a) the element of claim 6 was not a part of the original restriction requirement (Remarks, p. 8), b) the elected species does include “the second compartment fabric includes a second compartment seam that extends from the top center point to at least the headband” (Remarks, p. 9-12), c) Claim 1 includes a similar embodiment of a compartment seam as claim 6 (Remarks, p. 12), d) this restriction was not given when claim 6 was first introduced and claim 6 has already been Examined on the merits (Remarks, p. 12), and e) there is no serious search burden (Remarks, p. 13). Examiner respectfully disagrees. The limitation in question is “the second compartment fabric includes a second compartment seam that extends from the top center point to at least the headband” which was not an original limitation, but a limitation added on October 7, 2024, after the first rejection on the merits dated July 5, 2024. In the response filed June 17, 2024 to the Requirement for Restriction/Election of April 19, 2024, Applicant elected Species A, Sub-Species A4 which includes Figs. 1, 5, and 7, without traverse. Examiner notes Applicant has not preserved the right to petition under 37 CFR 1.144 and any arguments regarding the search burden are moot. Further, in the Requirement for Restriction/Election of April 19, 2024, Examiner clearly pointed out each distinct species based on the figures and provided a brief description of each distinct species “as shown” in the figures of each grouping. As clearly shown in the elected figures and disclosed in paras. 0056-0057, the cap is a baseball style cap with a rear opening and a rear tightening means (see Figs. 1 and 5), and has two compartments, one compartment 500b in the front portion of the crown which has a compartment seam 510b that extends from the top center 130 to the headband at the circumferential edge of the crown, and another compartment 500a in a rear portion of the crown which has a compartment seam 510a that extends from the top center 130 to the rear opening which is located above the rear tightening means. Therefore since claim 1 recites a compartment with a resemblance of a compartment seam that “from the top center point of the dome to at least the headband”, under the elected embodiment, this compartment is referring to compartment 500b in the front portion. Consequently, as claim 6 claims a second compartment, it is therefore not referring to compartment 500a and there is no other compartment in the elected embodiment where the resemblance of a compartment seam that extends to the headband, thus the limitation is clearly not part of the elected embodiment. Although such a seam is shown in Figs. 2, 3A, and 11B, Examiner respectfully reminds Applicant that none of these figures were elected. Withdrawing such a claim is not tantamount to a new restriction, as it is entirely based on the original requirement for restriction and Applicant’s subsequent election. While Examiner may have examined claim 6 in the final rejection of November 6, 2024, it was rejected under 35 USC 112(a), and based on Applicant’s arguments provided April 7, 2025 where Applicant asserted that the limitation was shown in Figs. Figs. 2, 3A, and 11B, it became apparent that the limitation was not drawn to the elected species and therefore properly withdrawn in the new round of prosecution that began with the Request for Continued Examination filed April 7, 2025.
Regarding the objections to claim 1 for indicating “vertice” should be changed to “vertex”, Applicant argues the specification uses the term “vertice” which means a highest point and therefore should not be changed (Remarks, V., p. 14). Examiner respectfully disagrees. First, the specification uses the terms “vertices” and “vertex” (see para. 0044) and does not use the term “vertice” thus using “vertice” in the claims would not be consistent with the specification. Further, the application has been filed in English in the United States, and the term “vertice” is not an English word and instead “vertex” is the singular form of “vertices” and therefore should be changed in the claims to “vertex”.
Regarding the objections to the specification and claim rejections under 35 USC 112(a) and (b), regarding previous claims 21 and 23, where similar limitations of “a single piece of fabric” have been added to amended claims 1, 12, 15, and 23, Applicant argues that this limitation is supported by the specification since “the Specification describes in paragraph 62 that the compartment fabric includes a seam or resemblance of a seam that runs parallel overtop a middle seam 120 between a first triangular panel 110 and a second triangular panel 110 of the dome of the hat. The fabric 700 may thus include a seam or a resemblance of a seam. A person of skill in the art would understand that a "resemblance of a seam" on the fabric 700 means that no actual seam is present that attaches two pieces of fabric, and so the compartment fabric is one piece of fabric” (Remarks, p. 14)… “The Specification describes that the seam 710 in the fabric 700 is a "seam" or a "resemblance of a seam". A person of skill in the art would understand that the alternative of a "resemblance of a seam" on "the fabric" means that the seam is not a real seam between two pieces of fabric but rather only looks like or resembles a seam only. The fabric 700 is thus described in the specification as one piece of fabric with a "resemblance of a seam" wherein there is no actual seam that attaches two pieces of fabric” (Remarks, p. 17). Examiner respectfully disagrees. The specification has not described the meaning of “a resemblance of a seam”, has not shown any specific structure, or difference between a seam and a resemblance of a seam. Thus, it is unknown what is meant by a resemblance of a seam and consequently simply from the disclosure of “a resemblance of a seam”, one cannot definitively determine that the compartment fabric is a single piece of fabric. Further, specifically regarding the fabric creating the compartment, the disclosure only recites “the fabric” (502a, 502b, 700, see paras. 0056-0057 and 0062) and “In an embodiment, the first and second portions 702a-b of the fabric 700 are preferably made of a same or similar material with a same or similar color as the first and second triangular panels 110 to blend into the interior surface of the headgear 100. However, when camouflage of the compartment is not desired, the fabric 700 may be a different material and color” (para. 0063). There is no express disclosure or suggestion that “the fabric” is one piece or single piece and from such a disclosure, again, one cannot definitely determine that the compartment fabric is a single piece of fabric. Therefore, Examiner “a single piece of fabric” has not been disclosed in the specification as has been treated properly by Examiner.
Regarding the 35 USC 103 rejections of claim 1 and 9, Applicant argues, “neither the Stagnor reference or the McCallum reference disclose a resemblance of a compartment seam that extends from the center point to at least the headband” because Stagnor discloses a seam that does not extend to the headband and McCallum does not include a seam (Remarks, p. 26, 1st full para.) and , “the combination of the references fails to suggest to camouflage or hide the compartment by using a resemblance of a compartment seam that extends from the center point to at least the headband and is positioned parallel to a third seam attaching the underlying first triangular panel and second triangular panel…. The combination of the Stagnor reference and the McCallum reference would thus suggest using advertising and a pull tab for opening of the pocket in the McCallum reference to make the compartment easily visible and not camouflaged. Alternatively, the combination of the Stagnor reference and the McCallum reference would suggest using no seam as in the McCallum reference on the pocket in the Stagnor reference. Both of these alternatives would dissuade or teach away from the use of the element of claim 1 of a middle seam on the compartment fabric to camouflage the compartment that extends to at least the headband” (Remarks, p. 26, 2nd full para.). Examiner respectfully disagrees. First, Applicant's arguments are 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). Although, Stogner does not show the compartment seam or resemblance of a compartment seam extending to the headband and McCallum does not show a seam, the rejection is based on the combination of references. Where when used in combination, as the compartment seam/resemblance of a compartment seam of Stogner extends to the bottom of the compartment, when modified by McCallum to extend the compartment so that the closing mechanism is beneath the headband, then the bottom of the compartment and therefore the compartment seam/resemblance of a compartment seam would extend to at least the headband. Second, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, even though Stogner does not teach or suggest “wherein the closing mechanism is positioned beneath the headband”, obviousness was established by Examiner in the McCallum reference. Further, Examiner notes that the a seam looks like a seam and therefore any seam can read on a “resemblance of a seam” without further limitations as to the structure of the “resemblance of a seam”. Last, as the disclose states the compartment fabric may have a seam OR a resemblance of a seam, and there is no reasoning to have one verses the other, the disclosure lacks any criticality for either.
Applicant submits that the dependent claims are patentable based on their dependencies from claims 1 and 9; however, as discussed in the rejection below and in the arguments above, claims 1 and 9 are not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the dependent claims under 35 U.S.C. 103 have been maintained.
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 HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732