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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 12, 2025 has been entered. As directed by the amendment, Claims 1-3 and 8-10 are amended and claims 21-26 are new. Therefore, claims 1-3, 6-12 and 21-26 are the claims that have been presented for examination on the merits.
Response to Arguments
Applicant's arguments filed August 12, 2025 have been fully considered but
they are not persuasive.
Applicant’s arguments are not commensurate with the rejected claims and a new
rejection is set forth below to address the newly added claim limitations.
Election/Restrictions
Applicant’s election without traverse of Invention I, drawn to claims 1-12 in the reply filed on 06/28/2024 is acknowledged. With Invention II, drawn to a process of making for an article of headwear, classified in A42C1/04 claims 13-20 being canceled.
Drawings
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 claim 1 feature biretta hat foundation element, plastic biretta hat foundation element, first horn foundation element, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 claim 1 feature wherein the first base portion is fastened along the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 claim 2 feature second horn foundation element must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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.
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.
Claims 1-3, and 8 are rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view of United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg.
As to Claim 1, Mary John’s discloses a biretta, comprising: a plastic biretta hat foundation element having a first exterior ridge (Figures 7-12, Part 2; Method 1; Mary John ~ regarding a plastic biretta hat foundation element having a first exterior ridge.), wherein: the plastic biretta hat foundation element is formed from plastic (Figure 9 & 11; Mary John ~ regarding the plastic biretta hat foundation element is formed from plastic. Mary John teaches using two mil plastic to produce the plastic biretta hat foundation element) and a first horn foundation element having a first base portion (Figures 7, 9-10 & 11, Part 2; Method 1; Mary John ~ regarding a first horn foundation element having a first base portion), wherein the first horn foundation element is formed from the same composition of plastic as the plastic biretta hat foundation element (Figure 7, Part 2; Method 1; Mary John ~ regarding wherein the first horn foundation element is formed from the same composition of plastic as the plastic biretta hat foundation element); and wherein the first base portion is fastened along the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Figures 7 & 11, Part 2; Method 1; Mary John ~ regarding wherein the first base portion is fastened along the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element).
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Mary John fails to further disclose the plastic is a non-woven heat-activated polyester fiber thermoplastic that has been activated to stiffen the plastic.
Schoenberg teaches apparel systems including head caps and discloses wherein the plastic is a non-woven heat-activated polyester fiber thermoplastic that has been activated to stiffen the plastic (Para. 0004;0033-0034; Schoenberg; polyester non-woven. ““The second layer can include a non-woven thermoplastic“, as doing so provides improved comfort for the wearer by providing moisture wicking properties.”) (Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding heat activated polyester fiber material that has been activated is a process of making. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Schoenberg’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John’s hat foundation material to include the plastic is a non-woven heat-activated polyester fiber thermoplastic that has been activated to stiffen the plastic, as doing so provides improved comfort for the wearer by providing moisture wicking properties. As this would be the simple substitution of one material for another with the reasonable expectation that one material would perform equally as well as another.
As to Claim 2, Mary John/ Schoenberg disclose the biretta of claim 1, further comprising a second horn foundation element having a second base portion fastened along a second exterior ridge of the plastic biretta hat foundation element (Figures 7; Part 2; Method 1; Mary John ~ regarding a second horn foundation element having a second base portion fastened along a second exterior ridge of the plastic biretta hat foundation element), wherein the second horn foundation comprises the same composition of plastic as the plastic biretta hat foundation element (Figures 7, and 9- 11, Part 2; Method 1; Mary John ~ regarding wherein the second horn foundation comprises the same composition of plastic as the plastic biretta hat foundation element).
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As to Claim 3, Mary John/ Schoenberg disclose the biretta of claim 2, further comprising a third horn foundation element having a third base portion fastened along a third exterior ridge of the plastic biretta hat foundation element (Figures 7; Part 2; Method 1; Mary John ~ regarding further comprising a third horn foundation element having a third base portion fastened along a third exterior ridge of the plastic biretta hat foundation element.), wherein the third horn foundation element comprises the same composition of plastic as the plastic biretta hat foundation element (Figures 7 & 9- 11, Part 2; Method 1; Mary John ~ regarding wherein the second horn foundation comprises the same composition of plastic as the plastic biretta hat foundation element).
As to Claim 8, Mary John/ Schoenberg disclose the biretta of claim 1, further comprising a fabric cover fastened to the plastic biretta hat foundation element and covering at least a portion of the exterior of the plastic biretta hat foundation element (Figures 7-13, Part 2; Method 1; Mary John ~ regarding a plastic biretta hat foundation element having a first exterior ridge.)
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Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view of United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg, as to claim 1, and in further view of Korean Patent No. KR 102399862 B1 to Chang Young Hwan, (herein after “Chang”).
As to Claim 6, Mary John/ Schoenberg disclose the biretta of claim 1.
Mary John/ Schoenberg fail to further disclose wherein the activated polyester fiber material has an activation temperature between 150 degrees Fahrenheit and 265 degrees Fahrenheit, inclusive.
Chang teaches hats and discloses wherein the activated polyester fiber material has an activation temperature between 150 degrees Fahrenheit and 265 degrees Fahrenheit, inclusive (Page 5, “When the chemical fiber yarn is polyester or acrylic fiber, the cross-linked water-dispersed polyurethane is physically cross-linked through various hydrogen bonds. The crosslinking reaction can be achieved by maintaining the temperature in a temperature range of about 50° C. to 120° C.” Thereby teaching wherein the activated polyester fiber material has an activation temperature between 150 degrees Fahrenheit and 265 degrees Fahrenheit, inclusive). (Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding an activation temperature between 150 degrees Fahrenheit and 265 degrees Fahrenheit, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Chang’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg’s polyester material to include wherein the activated polyester fiber material has an activation temperature between 150 degrees Fahrenheit and 265 degrees Fahrenheit, as doing so would provide improved hat stability and shape, wherein the hat does not sag for the wearer. As this would be the simple substitution of one material for another with the reasonable expectation that one material would perform equally as well as another.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view of United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg, as to claim 1, and in view of United States Patent Application No. US 2015/0189938 A1 to Terrence Lee Reinhart et. Al., (herein after "Reinhart,").
As to Claim 7, Mary John/ Schoenberg disclose the biretta of claim 1.
Mary John/ Schoenberg fails to disclose wherein the plastic is a thermosetting plastic.
Reinhart teaches headwear and discloses wherein the plastic is a thermosetting plastic (Para. 0081; Reinhart~ regarding thermoset materials including plastic, as doing so would provide a fairly stiff member that withstands movement.) (Examiner notes that the Oxford Languages online dictionary defines thermosetting as denoting substances (especially synthetic resins) which set permanently when heated).
Therefore, based on Reinhart’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg’s plastic material to include wherein the plastic is a thermosetting plastic, as doing so would provide a fairly stiff member that withstands movement. As this would be the simple substitution of one material for another with the reasonable expectation that one material would perform equally as well as another.
Claim 9-12 are rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view over United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg, as to claim 1, as to claim 1, and in view of Mary John, “How to Make a Priest Biretta (Picture Version) Part 4: Method 2”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=d_0G57NyChM&t=2390s (herein after “Mary John 2”).
As to Claim 9, Mary John/ Schoenberg disclose the biretta of claim 1 but fails to disclose wherein the plastic biretta hat foundation element defines an orifice.
Mary John 2 teaches Biretta hats and in another video discloses wherein the plastic biretta hat foundation element defines an orifice (Figure 1; Part 4: Method 2; Mary John 2 ~ regarding a peak in which the pompom and string can pass through on the hat.).
Therefore, based on Mary John 2’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include passing through the orifice, as doing so would provide improved security and stabilize a notion to the for the wearer.
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As to Claim 10, Mary John/ Schoenberg/Mary John 2 disclose the biretta of claim 9, wherein the plastic biretta hat foundation element defines the orifice at a peak of the plastic biretta hat foundation element (Figure 12; Part 2; Method 1; Mary John).
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As to Claim 11, Mary John/ Schoenberg/Mary John 2 disclose the biretta of claim 9, further comprising a portion of a twist rope passing through the orifice (Figures 1-5 below; Mary John 2; Part 4; Method 2).
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As to Claim 12, Mary John/ Schoenberg/Mary John 2 disclose the biretta of claim 9, further comprising a pom having a pom fastener (See Figures 1-5; Mary John 2 ~ regarding stitching.), wherein a portion of the pom fastener passes through the orifice (See Figures 1-5; Mary John 2).
Claims 21-22, 24-26 are rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view over United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg, as to claim 1, as to claim 1, and in view of Mary John, “How to Make a Priest Biretta (Picture Version) Part 4: Method 2”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=-QEV5CUiZMM (herein after “Mary John 3”).
As to Claim 21, Mary John/ Schoenberg disclose the biretta of claim 1, but fails to disclose wherein the first base portion is glued to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element.
Mary John 3 teaches making a biretta and discloses wherein the first base portion is glued to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Mary John Part 3 Method 2, Fig. 1 & 2 & Figure 6 teaching wherein the first base portion is glued to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Mary John’s video teaches the first horn foundation element being fastened with glue to the plastic biretta had foundation elements.) Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding wherein the first base portion is glued to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Mary John’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include wherein the first base portion is glued to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, as doing so would provide improved security and stabilize a decorative article to the hat for the wearer.
As to Claim 22, Mary John/ Schoenberg disclose the biretta of claim 1, but fails to disclose wherein the first base portion is melted to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element.
Mary John 3 teaches making a biretta and discloses wherein the first base portion is melted to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Mary John Part 3 Method 2, Figs. 2 - 4; Mary John teaching a first base portion that includes an interface having a rough surface and melts to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Mary John’s explains that the first base portion is melted through ironing to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding wherein the first base portion is melted to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Mary John 3’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include wherein the first base portion is melted to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, as doing so would provide improved security and stabilize a decorative article to the hat for the wearer.
As to Claim 24, Mary John/ Schoenberg disclose the biretta of claim 1, but fails to disclose wherein the first base portion is sewn to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element.
Mary John 3 teaches making a biretta and discloses wherein the first base portion is sewn to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Mary John Part 3 Method 2, Figs. 5; Mary John teaching wherein the first base portion is sewn to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. (Figs 1-3, and 6 Mary John’s explains that the first base portion is sewn to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding wherein the first base portion is sewn to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Mary John 3’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include wherein the first base portion is sewn to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, as doing so would provide improved security and stabilize a decorative article to the hat for the wearer.
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view over United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg, as to claim 1, as to claim 1, and in view of Mary John, “How to Make a Priest Biretta (Picture Version) Part 4: Method 2”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=-QEV5CUiZMM (herein after “Mary John 3”) and in view over Joy filled Family, ”How to Make a Priest Biretta (Picture Version)”, Online Website www.joyfilledfamily.com. (October 28, 2014) web https://joyfilledfamily.com/?s=biretta.
As to Claim 23, Mary John/ Schoenberg disclose the biretta of claim 1, but fails to disclose wherein the first base portion is taped to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element.
Mary John 3 teaches making a biretta and discloses wherein the first base portion is fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Mary John Part 3 Method 2, Figs. 2 - 4; Mary John teaching a first base portion that includes an interface having a rough surface and melts to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Mary John’s explains that the first base portion is melted through ironing to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding wherein the first base portion is taped to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Mary John 3’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include wherein the first base portion is fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, as doing so would provide improved security and stabilize a decorative article to the hat for the wearer.
However Mary John/ Schoenberg/ Mary John 3’s fail to disclose being taped.
Joyfield teaches hats including birettas and discloses being taped (Figure 2; Joyfield).
Therefore, based on Joyfield’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg/Mary John 3’s fastening to include being taped, as doing so would provide additional stability options for the wearer. As this would be the simple substitution of one fastening mechanism for another with the reasonable expectation that one fastening mechanism would perform equally as well as another.
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Claims 25-26 are rejected under 35 U.S.C. § 103 as being unpatentable over Mary John, “How to Make a Priest Biretta (Picture Version) Part 2: Method 1”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=3Rr5bnmzGzM (herein after “Mary John”) in view over United States Patent Application No. US 2021/0378867 A1 to Elizabeth Rose Schoenberg (herein after “Schoenberg”), as to claim 1, as to claim 1, and in view of Mary John, “How to Make a Priest Biretta (Picture Version) Part 4: Method 2”, Online Video Clip. YouTube. (2021, June 23.) Web. https://www.youtube.com/watch?v=-QEV5CUiZMM (herein after “Mary John 3”) and in view over United States Patent Application No. US 2014/0304891 A1 to Michael Waters (herein after “Waters”).
As to Claim 25, Mary John/ Schoenberg disclose the biretta of claim 1, but fail to disclose wherein the first base portion is ultrasonically welded to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element.
Mary John 3 teaches making a biretta and discloses wherein the first base portion is fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Mary John Part 3 Method 2, Figs. 2 - 4; Mary John teaching a first base portion fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Mary John’s explains that the first base portion is melted through ironing to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding wherein the first base portion is ultrasonically welded to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Mary John 3’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include wherein the first base portion is fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, as doing so would provide improved security and stabilize a decorative article to the hat for the wearer.
However Mary John/ Schoenberg/Mary John 3 fail to disclose the fastening being ultrasonically welded.
Waters teaches headwear and discloses being ultrasonically welded (Paragraphs 0078-0079; Waters).
Therefore, based on Water’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg/Mary John’s fastening to include being ultrasonically welded, as doing so would provide additional stability options for the wearer. As this would be the simple substitution of one fastening mechanism for another with the reasonable expectation that one fastening mechanism would perform equally as well as another.
As to Claim 26, Mary John/ Schoenberg disclose the biretta of claim 1, but fails to disclose wherein the first base portion is stapled to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element.
Mary John 3 teaches making a biretta and discloses wherein the first base portion is fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element (Mary John Part 3 Method 2, Figs. 2 - 4; Mary John teaching a first base portion fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Mary John’s explains that the first base portion is melted through ironing to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element. Examiner notes that this limitation is being treated as a product-by-process limitation. Applicant limitation regarding wherein the first base portion is stapled to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, inclusive is a process of making and not directed to the apparatus or product. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP §2113).
Therefore, based on Mary John 3’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg Biretta to include wherein the first base portion is fastened to the first exterior ridge to fasten the first horn foundation element to the plastic biretta hat foundation element, as doing so would provide improved security and stabilize a decorative article to the hat for the wearer.
However Mary John/ Schoenberg /Mary John 3 fail to disclose the fastening being ultrasonically welded.
Waters teaches headwear and discloses being stapled (Paragraphs 0078-0079; Waters ~ regarding staples).
Therefore, based on Water’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Mary John/ Schoenberg /Mary John 3 ‘s fastening to include being stapled, as doing so would provide additional stability options for the wearer. As this would be the simple substitution of one fastening mechanism for another with the reasonable expectation that one fastening mechanism would perform equally as well as another.
Conclusion
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/AKWOKWO OLABISI REDHEAD/Examiner, Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732
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