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 .
Election/Restrictions
Applicant’s election with traverse of Species A, Subspecies Aa, and Subspecies 4D1 (Figs. 1 B/C/D, 4A/B/C/D, 5 A/B/C, 6A, 7 A/B/C, 8A, 9 A/B/C, 10 A/B/C/D/E/F/G, 12E) in reply to the Restriction/Election Requirement Filed on 24 December 2024 is acknowledged. The traversal is on the grounds that the search of all of the Applicant’s embodiments would prove no undue burden on the Examiner and since claims 1 and 11 are generic, the Election of Species Requirement should be overcome and withdrawn.
The Examiner disagrees. The embodiments as noted in the Restriction/Election Requirement are nine patentably distinct species with different and diverse structures as well as nine distinct subspecies with different and diverse structures. And while it may be true that a search for long sleeves and long pants will also find short sleeved shirts with arm sleeves and/or short pants with leggings, these are still very different structures which would require their own unique searches. Further, the search for a type of line and the method of manufacturing that line and attaching the line to fabric is not the same search. One is a product and the other is a method. While the method of manufacturing could find the product, that does not mean a search on the product will provide the method of manufacturing that product, thus this would require a different, unique search. While some of the classification areas of Search could potentially overlap, each species would require a different total Search, and thus would pose a serious search burden upon the Examiner.
Upon further review of the disclosure, the Examiner finds that claim 15 is drawn to non-elected Subspecies 4D-2, there being no generic or linking claim.
Claim 15 recites a “sewing means”, which is a feature exclusive to Subspecies 4D-2. Only Figures 4D-2 support a “sewing means”.
Therefore, claims 15 are withdrawn by the Examiner for being drawn to a non-elected species and will be withdrawn from consideration pursuant to 37 CFR 1.142(b).
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1-16 are pending in this application, with an action on the merits to follow regarding claims 1-6, 10-12, and 16.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means,” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“means for securing the exercise lines to the fabric” of claims 1, 6, 10-12, and 16
“process/printing means” of claims 6, 10, 12 and 16
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 6, 10, 12, and 16 is/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 6, 10, 12, and 16 is/are indefinite as it/they recite(s) “process/printing means”. It is unclear if the claim requires a process means, a printing means, or both a process and a printing means. Further, it is unclear how it would be possible to have both since a printing means could be a process but a process would not necessarily be a printing means. Further, the Examiner notes that “a process means” was a species withdrawn by the Applicant and thus is not being considered. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “(a/the) process means or (a/the) printing means”.
Claim 12, is/are indefinite as it/they recite(s) “another process/printing means”. There is a lack of antecedence in the claim as there is no “process/printing means” previously recited. Further, it is unclear if the claim requires a process means, a printing means, or both a process and a printing means. Further, it is unclear how it would be possible to have both since a printing means could be a process but a process would not necessarily be a printing means. Further, the Examiner notes that “a process means” was a species withdrawn by the Applicant and thus is not being considered. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as a/the, “process means or (a/the) printing means”.
Claim 16, is/are indefinite as it/they recite(s) “the other process/printing means”. There is a lack of antecedence in the claim as there is no “an other process/printing means” previously recited. Further, it is unclear if the claim requires a process means, a printing means, or both a process and a printing means. Further, it is unclear how it would be possible to have both since a printing means could be a process but a process would not necessarily be a printing means. Further, the Examiner notes that “a process means” was a species withdrawn by the Applicant and thus is not being considered. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “an other (a/the) process means or (a/the) printing means”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5-6, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McKenzie-McHarg US 20190150531.
Regarding Independent Claim 1, McKenzie-McHarg discloses a Visual Training Apparel device (Figs. 1-4 #100/200) for exercising and improving muscle memory (Abstract) is comprised of: (a) a pre-specified amount of a fabric material (Figs. 1-4; ¶0048) having specific characteristics (Figs. 1-4; ¶0049-56) and configured as an apparel (Figs. 1-4); (b) a set of exercise lines (Figs. 1-4 #2/6/8/12/14/16) at vertical, horizontal, and oblique positions to the ground (Figs. 1-4) when worn by a user (Figs. 1-4); and (c) a means for securing the exercise lines to the fabric (¶0059) wherein the apparel can be worn and used with various sports and exercises (Abstract notes horse riding) including but not limited to boxing, swimming, yoga, tennis, volleyball, bowling, lifting weights, baseball, football, physical therapy, Parkinson therapy, golf, martial arts, dance, gymnastics, wrestling, and walking (¶0058).
Regarding Claim 3, McKenzie-McHarg discloses the Visual Training Apparel device in claim 1 wherein the configuration of the apparel device is selected from the group consisting of long pants and long-sleeved shirts (Figs. 1-4).
Regarding Claim 5, McKenzie-McHarg discloses the Visual Training Apparel device in claim 1 wherein the fabric material characteristics are selected from the group consisting of flexible (Figs. 18-24 shows the articles are flexible).
Regarding Claim 6, McKenzie-McHarg discloses the Visual Training Apparel device in claim 1 wherein the means for securing the exercise lines to the fabric is a process/printing means (¶0059). It is noted that “a process/printing means” recites a product-by-process limitation. Even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. As McKenzie-McHarg disclose(s) the claimed structure, the process by which the product is obtained is not germane to the issue of patentability.
Regarding Claim 10, McKenzie-McHarg discloses the Visual Training Apparel device in claim 6 wherein the process/printing means for securing the exercise lines to the fabric is selected from the group consisting of silk screen, dye sublimination, inkjet, and laser print (¶0059).
Claim(s) 1, 3, and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dance US 5946721.
Regarding Independent Claim 1, Dance discloses a Visual Training Apparel device (Figs. 1-8 #10) for exercising and improving muscle memory (Abstract) is comprised of: (a) a pre-specified amount of a fabric material (Figs. 1-8 #18/20; Col. 5:31-46) having specific characteristics (Figs. 1-8; Col. 5:31-7:6) and configured as an apparel (Figs. 1-8); (b) a set of exercise lines (Figs. 1-8; Col. 5:31-7:6) at vertical, horizontal, and oblique positions to the ground (Figs. 1-8) when worn by a user (Figs. 1 & 4-5); and (c) a means for securing the exercise lines to the fabric (Col. 5:47-55) wherein the apparel can be worn and used with various sports and exercises (Abstract notes horse riding) including but not limited to boxing, swimming, yoga, tennis, volleyball, bowling, lifting weights, baseball, football, physical therapy, Parkinson therapy, golf, martial arts, dance, gymnastics, wrestling, and walking (Col. 1:11-52).
Regarding Claim 3, Dance discloses the Visual Training Apparel device in claim 1 wherein the configuration of the apparel device is selected from the group consisting of long pants and long-sleeved shirts (Figs. 1 & 4-5).
Regarding Claim 5, Dance discloses the Visual Training Apparel device in claim 1 wherein the fabric material characteristics are selected from the group consisting of flexible (Col. 5:31-46) fabric.
Regarding Claim 6, Dance discloses the Visual Training Apparel device in claim 1 wherein the means for securing the exercise lines to the fabric is a process/printing means (Col. 5-31-46). It is noted that “a process/printing means” recites a product-by-process limitation. Even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. As Dance disclose(s) the claimed structure, the process by which the product is obtained is not germane to the issue of patentability.
Claim(s) 1, 3-6, 11-12 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Upshaw US 11103018.
Regarding Independent Claim 1, Upshaw discloses a Visual Training Apparel device (Figs. 1-7 #12/14) for exercising and improving muscle memory (Abstract) is comprised of: (a) a pre-specified amount of a fabric material (Col. 3:52-59) having specific characteristics (Figs. 1-7) and configured as an apparel (Figs. 1-7); (b) a set of exercise lines (Figs. 1-7 show lines; Col. 4:9-17) at vertical, horizontal, and oblique positions to the ground (Figs. 1-7) when worn by a user (Fig. 1); and (c) a means for securing the exercise lines to the fabric (Col. 4:9-17) wherein the apparel can be worn and used with various sports and exercises (Abstract) including but not limited to boxing, swimming, yoga, tennis, volleyball, bowling, lifting weights, baseball, football, physical therapy, Parkinson therapy, golf, martial arts, dance, gymnastics, wrestling, and walking (Abstract notes “athletic apparel”).
Regarding Claim 3, Upshaw discloses the Visual Training Apparel device in claim 1 wherein the configuration of the apparel device is selected from the group consisting of long pants and long-sleeved shirts (Figs. 1-7).
Regarding Claim 4, Upshaw discloses the Visual Training Apparel device in claim 1 wherein the fabric material is selected from the group consisting of cotton, polyester, synthetic composite materials, non-synthetic composite materials (Col. 3:52-59).
Regarding Claim 5, Upshaw discloses the Visual Training Apparel device in claim 1 wherein the fabric material characteristics are selected from the group consisting of flexible fabric (Col. 3:42-59)
Regarding Claim 6, Upshaw discloses the Visual Training Apparel device in claim 1 wherein the means for securing the exercise lines to the fabric is a process/printing means (Col. 4:9-17). It is noted that “a process/printing means” recites a product-by-process limitation. Even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. As Dance disclose(s) the claimed structure, the process by which the product is obtained is not germane to the issue of patentability.
Regarding Independent Claim 11, Upshaw discloses a Visual Training Apparel device (Figs. 1-7 #12/14) for exercising and improving muscle memory (Abstract) is comprised of: (a) a pre-specified amount of a cotton fabric material (Col. 3:52-59) having specific characteristics (Figs. 1-7) and configured as a set of long pants and long sleeved shirts (Figs. 1-7); (b) a set of exercise lines (Figs. 1-7 show lines; Col. 4:9-17) at vertical, horizontal, and oblique positions to the ground (Figs. 1-7) when worn by a user (Fig. 1); and (c) a means for securing the exercise lines to the fabric wherein the apparel can be worn (Col. 4:9-17) and used with various sports and exercises including but not limited to boxing, swimming, yoga, tennis, volleyball, bowling, lifting weights, baseball, football, physical therapy, Parkinson therapy, golf, martial arts, dance, gymnastics, wrestling, and walking (Abstract notes “athletic apparel”).
Regarding Claim 12, Upshaw discloses the Visual Training Apparel device in claim 11 wherein the means for securing the exercise lines to the fabric is another process/printing means (Col. 4:9-17). It is noted that “a process/printing means” recites a product-by-process limitation. Even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. As Upshaw disclose(s) the claimed structure, the process by which the product is obtained is not germane to the issue of patentability.
Regarding Claim 16, Upshaw discloses the Visual Training Apparel device in claim 12 wherein the other process/printing means for securing the exercise lines to the fabric is selected from the group consisting of silk screen, dye sublimination, inkjet, and laser print (Col. 4:9-17).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dance as applied to claim 1 above, and further in view of Hilario US 20150021854.
Regarding Claim 2, Dance discloses the Visual Training Apparel device in claim 1 further comprising a pair of gloves with training lines (Fig. 7 #24).
Dance does not expressly disclose that the pair of gloves is for boxing.
Hilario teaches a pair of boxing gloves (Fig. 8; Abstract) with lines (Fig. 8 #602 ¶0048).
Both Dance and Hilario teach analogous inventions in the art of athletic garments with gloves. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Dance with the teachings of Hilario such that gloves would be used for boxing and the boxing gloves would have lines for aesthetic purposes (such as identifying the user’s country or origin or sponsor) or so the user would be more identifiable as an trainee.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ealy US 3790963 teaches a training garment
Thwweis US 4815146 teaches a garment with striping
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL M. WEIS whose telephone number is (571)272-6804. The examiner can normally be reached Mon-Fri : 0800-1700.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732