DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment, filed 20 April 2026, is reviewed and entered. This Office Action is a final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Amended
7-8, 12-16, 22
Newly Added
24-25
Canceled
1-5, 10-11, 20
Pending
6-9, 12-19, 21-25
Presented for Examination
6-9, 12-19, 21-25
Response to Arguments
Applicant's arguments filed 20 April 2026 have been fully considered but they are not persuasive.
103 Rejections
1. Applicant argues because Bay’s outer shell, moisture barrier, and thermal liner are all attached to one another, they do not read on the independent claim limitation of being “separate and distinct components.” It is noted that this is not a feature of the originally filed disclosure. At least FIG 5 appears to show 110, 112, and 114 being attached or integral with one another. Therefore, at least to the degree disclosed by Applicant, the Bay components are separate and distinct.
2. Applicant argues Bay’s outer shell is a flap structure and not an exterior surface as required by the independent claims. This is not persuasive. FIGS 7-8 clearly show 60 is a surface exterior to at least portions of 16 and 18.
3. Applicant argues Bays’ moisture barrier is not beneath and inside the outer shell and the thermal liner is not beneath and inside the moisture barrier. This is not persuasive. FIGS 7-8 show portions of the moisture barrier beneath and inside the outer shell and portions of the thermal liner beneath and inside the moisture barrier.
4. Applicant argues Bay does not disclose a vent formed in at least one of the substrate layer and membrane layer as required by claim 16. This is not persuasive. As set forth in the rejection below, the vent is an opening in substrate layer 16. Furthermore, insert 54 is found to be obviously modifiable to have the claimed properties.
5. Applicant argues Bay teaches away from a liquid-impermeable insert. This is not accurate. Examiner acknowledges that Bay does not disclose a liquid-impermeable insert, but a mere teaching of a material other than one that is liquid-impermeable is not “teaching away.” Bay discloses an insert whose main function is heat transfer. Providing a material that transfers heat and has other, additional properties, such as liquid-impermeability, is within the scope of the reference and is a matter of obviousness.
The amendments overcome the Curtis reference and the rejections in view of Curtis are withdrawn.
Regarding claim 22, Applicant argues Bay does not disclose a vent in both the thermal liner and the moisture barrier. This is not persuasive. In this and the previous rejection, Examiner pointed to the vent in both thermal liner and the moisture barrier. Applicant does not expand upon this argument or provide any explanation as to why Examiner’s interpretation would not be proper.
The arguments to the new claims are addressed in the rejections below.
In light of the above, the rejection is believed to be proper.
Election/Restrictions
Applicant previously elected Invention I, claims 1-19, drawn to a protective garment and Species I, a jacket shown in FIGS 1-2.
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: “wherein the outer shell, the moisture barrier, and the thermal liner are separate and distinct components of the protective garment” in claims 16, 22, and 25.
Claim Rejections - 35 USC § 112
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 12, 15, 18 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 12 is indefinite because it is not clear if claim 12’s insert spanning the opening is the same as or in addition to claim 16’s insert spanning the at least one vent.
Claim 15 is rendered indefinite because of the recitation “comprising," which improperly sets forth a Markush group. It is improper to use the term “comprising” instead of “consisting of.” A Markush claim is commonly formatted as: “selected from the group consisting of A, B, and C.” See MPEP 803.02.
Claim 18 is indefinite for reciting the at least one vent is formed in the at least one transferal portion. Claim 18 depends from claim 17 which recites at least one of the outer shell, moisture barrier, and thermal liner incudes a transferal portion. Claim 18 depends from claim 16 which recites the at least one vent is in the moisture barrier. This appears to be a broad limitation following a narrower limitation, where claim 16 recites the vent in the moisture barrier, but claim 18 more broadly recites the vent in the outer shell, moisture barrier, or thermal liner.
Claim Rejections - 35 USC § 103
Claim(s) 16, 6-9, 12-15, 17-18, and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bay et al. (U.S. Patent No. 6263510) in view of Aldridge (US 6845517 B2).
As to claim 16, Bay discloses a protective garment (“Ventilating garment,” title), comprising:
an outer shell that forms an exterior surface (60 and/ or 61; FIG 8 shows 60 is external to at least portions of 16 and 18);
a moisture barrier disposed beneath and inside the outer shell when the protective garment is assembled to form an intermediate layer of the protective garment (16, 66; FIG 7 shows all of 66 and a portion of 16 are disposed beneath and inside 60 of the outer shell), wherein the moisture barrier comprises at least one of a substrate layer (16) and a membrane layer (66);
a thermal liner disposed beneath and inside the moisture barrier when the protective garment is assembled to form an interior surface of the protective garment (18, 20; FIG 2 shows a configuration where 20 is the interior surface and FIG 7 shows a configuration where 18 is the interior surface), wherein the thermal liner comprises a facecloth layer (18) and at least one insulation layer (20), wherein the outer shell, the moisture barrier, and the thermal liner are separate and distinct components of the protective garment (at least to the degree shown in Applicant’s figures, which show the components as layers that are attached together to form a single layer); and
at least one vent formed in the moisture barrier (FIG 7, between the two elements 56), wherein the at least one vent is an opening formed in at least one of the substrate layer and the membrane layer (the vent is an opening in substrate layer 16), and wherein an insert spans the at least one vent (54 in FIG 8).
Bay does not disclose the outer shell is produced from at least one heat and flame resistant material; the insert is substantially liquid-impermeable and substantially heat transferable.
Aldridge teaches a similar garment including the cuffs, collar, outer shell, and liner may be aramid material. Applicant’s specification para. 0004 discloses aramid is a heat or flame resistant material.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide an outer shell including Bay 60 to be a heat or flame resistant material such as an aramid, since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide an outer shell including Bay 60 to be a heat or flame resistant material such as an aramid, since the Bay garment is intended to be worn by a motorcyclist (col 2 line 40-45) and one of ordinary skill would recognize that a garment having portions of aramid material would be desirable for protecting the wearer in the event of a collision, as aramids are known for high levels of abrasion resistance (Aldridge col 2 line 25-40).
Bay discloses insert/ material 54, 54’ allows air to enter the garment while preventing objects from entering the garment, and also holds together the vent/ opening (col 3 line 50-60 and col 4 line 30-40).
However, Bay does not disclose the insert/ material “is substantially liquid-impermeable and substantially heat transferable.”
Aldridge teaches a similar jacket (FIG 1) including providing a layer (50) of ePTFE (col 2 line 50-60). It is known to provide ePTFE in garments such as jackets for its properties of being “be generally moisture vapor permeable but generally impermeable to liquid moisture.”
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Bay’s material to be ePTFE, which is a known material that is “substantially liquid-impermeable and substantially heat transferable,” since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Bay’s material to be ePTFE, which is a known material that is “substantially liquid-impermeable and substantially heat transferable,” for the purpose of providing a material that prevents objects from entering the garment, and also holds together the vent/ opening as intended by Bay and additionally is generally moisture vapor permeable but generally impermeable to liquid moisture as taught by Aldridge which would enhance wearer comfort by ventilating the wearer’s body heat while protecting the wearer from rain.
As to claim 6, Bay teaches the at least one vent (51,51’) is formed in the at least one transferal portion (50) of the protective garment (figs. 3,6,7).
As to claim 7, Bay teaches at least another vent ( 51’,52’, col. 4, lines 31-38) (fig. 7) is formed in the thermal liner (18,20)(fig. 7).
As to claim 8, Bay teaches wherein the at least another vent is an opening formed in at least one of the layers of the thermal liner (col. 4, lines 31-38) (fig. 7).
As to claim 9, Bay teaches the insert (54’) spans the opening formed in the at least one of the layers of the thermal liner (col. 4, lines 36-38).
As to claim 12, as best understood, Bay discloses the protective garment of Claim 16,wherein an insert spans the opening formed in at least one of the layers of the moisture barrier (54 in FIG 8).
As to claim 13, Bay discloses the protective garment of Claim 16, wherein the at least another vent is an opening formed in the outer shell (when the outer shell is both 60 and 61, FIG 7 shows an opening between 60 and 61, and this opening corresponds to the at least another vent).
As to claim 14, Bay teaches at least a portion of the insert (54’) is substantially water vapor permeable (this is the result of the modification presented in the rejection of claim 16 above).
As to claim 15, as best understood, Bay as modified discloses the protective garment of Claim 16, wherein at least a portion of the insert is produced from at least one material selected from a group comprising a flame-resistant woven material, a flame- resistant nonwoven material, a flame-resistant knit material, an expanded polytetrafluoroethylene (ePTFE) material (this is the result of the modification presented in the rejection of claim 16 above), and a urethane material.
As to claim 17, Bay discloses the protective garment of Claim 16, wherein at least one of the outer shell, the moisture barrier, and the thermal liner includes at least one transferal portion configured to facilitate heat transfer therefrom (the portions in and around the opening between 60 and 61 in FIG 7, the opening between components 56 in FIG 7, and the opening between components 18 in FIG 7 are capable of and intended to facilitate heat transfer).
As to claim 18, as best understood, Bay discloses the protective garment of Claim 17, wherein the at least one vent is formed in the at least one transferal portion (as set forth in the rejection of claim 16 above, the at least one vent is in the moisture barrier).
As to claim 21, Bay does not disclose the protective garment of Claim 16, wherein the insert comprises two or more layers, and wherein at least one of the layers is substantially water vapor permeable, substantially liquid-impermeable, and/or substantially heat transferable.
Bay discloses the insert 54 is a single layer of stretchable mesh material (col 3 line 50-60). The mesh has holes for air flow, such that the mesh is substantially heat transferrable.
Bay FIG 8 shows layer 18 also has a vent that is spanned by an insert, and the insert comprises two layers 54’ and 61’, 54’ also be stretchable mesh material.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide the insert over the outer shell vent with an additional layer, such as a layer that is substantially water vapor permeable, in order to provide a means of covering the vent when insulation is desirable over air flow, while also not trapping the wearer’s perspiration inside the jacket via the permeable layer for increased wearer comfort and warmth.
As to claim 22, Bay discloses a protective garment (“Ventilating garment,” title), comprising:
an outer shell that forms an exterior surface (60 and/ or 61; FIG 8 shows 60 is external to at least portions of 16 and 18);
a moisture barrier disposed beneath and inside the outer shell when the protective garment is assembled to form an intermediate layer of the protective garment (16, 66; FIG 7 shows all of 66 and a portion of 16 are disposed beneath and inside 60 of the outer shell), wherein the moisture barrier comprises at least one of a substrate layer (16) and a membrane layer (66);
a thermal liner disposed beneath and inside the moisture barrier when the protective garment is assembled to form an interior surface of the protective garment (18, 20; FIG 2 shows a configuration where 20 is the interior surface and FIG 7 shows a configuration where 18 is the interior surface), wherein the thermal liner comprises a facecloth layer (18) and at least one insulation layer (20), wherein the outer shell, the moisture barrier, and the thermal liner are separate and distinct components of the protective garment (at least to the degree shown in Applicant’s figures, which show the components as layers that are attached together to form a single layer); and
at least one vent formed in the thermal liner and the moisture barrier (52 and/ or 52’), wherein an insert spans the at least one vent (54 and/ or 54’).
Bay does not disclose the outer shell is produced from at least one heat and flame resistant material; the insert is substantially liquid-impermeable and substantially heat transferable.
Aldridge teaches a similar garment including the cuffs, collar, outer shell, and liner may be aramid material. Applicant’s specification para. 0004 discloses aramid is a heat or flame resistant material.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide an outer shell including Bay 60 to be a heat or flame resistant material such as an aramid, since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide an outer shell including Bay 60 to be a heat or flame resistant material such as an aramid, since the Bay garment is intended to be worn by a motorcyclist (col 2 line 40-45) and one of ordinary skill would recognize that a garment having portions of aramid material would be desirable for protecting the wearer in the event of a collision, as aramids are known for high levels of abrasion resistance (Aldridge col 2 line 25-40).
Bay discloses insert/ material 54, 54’ allows air to enter the garment while preventing objects from entering the garment, and also holds together the vent/ opening (col 3 line 50-60 and col 4 line 30-40).
However, Bay does not disclose the insert/ material “is substantially liquid-impermeable and substantially heat transferable.”
Aldridge teaches a similar jacket (FIG 1) including providing a layer (50) of ePTFE (col 2 line 50-60). It is known to provide ePTFE in garments such as jackets for its properties of being “be generally moisture vapor permeable but generally impermeable to liquid moisture.”
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Bay’s material to be ePTFE, which is a known material that is “substantially liquid-impermeable and substantially heat transferable,” since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Bay’s material to be ePTFE, which is a known material that is “substantially liquid-impermeable and substantially heat transferable,” for the purpose of providing a material that prevents objects from entering the garment, and also holds together the vent/ opening as intended by Bay and additionally is generally moisture vapor permeable but generally impermeable to liquid moisture as taught by Aldridge which would enhance wearer comfort by ventilating the wearer’s body heat while protecting the wearer from rain.
As to claim 23, Bay teaches the protective garment includes at least one transferal portion (50, fig. 3) and a remainder portion (remainder of 14), and wherein the at least one transferal portion is discretely positioned in at least one predetermined area of the protective garment (fig. 3).
As to claim 24, Bay does not disclose the protective garment of Claim 16, wherein the insert comprises two or more layers, and wherein one of the layers is produced from at least one flame-resistant material and another one of the layers is produced from at least one substantially water vapor permeable, liquid impermeable material.
Bay discloses the insert 54 is a single layer.
Bay FIG 8 shows layer 18 also has a vent that is spanned by an insert, and the insert comprises two layers 54’ and 61’.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide the insert over the outer shell vent with an additional layer, such as a layer that is substantially water vapor permeable, in order to provide a means of covering the vent when insulation is desirable over air flow.
Aldridge discloses providing a portion of garment with two or more layers (36 which comprises 38 and 40), where one of the layers is produced from at least one flame-resistant material (aramid or PBI material, col 6 line 30-40) and another one of the layers is produced from at least one substantially water vapor permeable, liquid impermeable material (CROSSTECH or GORE-TEX, col 6 line 30-40).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the two layers of the modified Bay insert to have the material properties set forth above, since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the two layers of the modified Bay insert to have the material properties set forth above, in order to minimize the penetration of blood-borne pathogens from the environment and to protect the other layers of the garment damage from excessive thermal heat and from abrasion caused by the outer shell, and to provide a garment that resists burning, melting or dripping when exposed to 500 degrees F for at least five minutes.
As to claim 25, Bay discloses a protective garment (“Ventilating garment,” title), comprising:
an outer shell that forms an exterior surface (60 and/ or 61; FIG 8 shows 60 is external to at least portions of 16 and 18);
a moisture barrier is disposed beneath and inside the outer shell when the protective garment is assembled to form an intermediate layer of the protective garment (16, 66; FIG 7 shows all of 66 and a portion of 16 are disposed beneath and inside 60 of the outer shell), wherein the moisture barrier comprises at least one of a substrate layer (16) and a membrane layer (66);
a thermal liner is disposed beneath and inside the moisture barrier when the protective garment is assembled to form an interior surface of the protective garment (18, 20; FIG 2 shows a configuration where 20 is the interior surface and FIG 7 shows a configuration where 18 is the interior surface), wherein the thermal liner comprises a facecloth layer (18) and at least one insulation layer (20), wherein the outer shell, the moisture barrier, and the thermal liner are separate and distinct components of the protective garment (at least to the degree shown in Applicant’s figures, which show the components as layers that are attached together to form a single layer); and
at least one vent formed in the thermal liner (52’), wherein the at least one vent is an opening formed in at least one of the facecloth layer and the at least one insulation layer (52’ is an opening in facecloth layer 18),and wherein an insert spans the at least one vent (54’).
Bay does not disclose the outer shell is produced from at least one heat and flame resistant material; the insert is substantially liquid-impermeable and substantially heat transferable.
Aldridge teaches a similar garment including the cuffs, collar, outer shell, and liner may be aramid material. Applicant’s specification para. 0004 discloses aramid is a heat or flame resistant material.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide an outer shell including Bay 60 to be a heat or flame resistant material such as an aramid, since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide an outer shell including Bay 60 to be a heat or flame resistant material such as an aramid, since the Bay garment is intended to be worn by a motorcyclist (col 2 line 40-45) and one of ordinary skill would recognize that a garment having portions of aramid material would be desirable for protecting the wearer in the event of a collision, as aramids are known for high levels of abrasion resistance (Aldridge col 2 line 25-40).
Bay discloses insert/ material 54, 54’ allows air to enter the garment while preventing objects from entering the garment, and also holds together the vent/ opening (col 3 line 50-60 and col 4 line 30-40).
However, Bay does not disclose the insert/ material “is substantially liquid-impermeable and substantially heat transferable.”
Aldridge teaches a similar jacket (FIG 1) including providing a layer (50) of ePTFE (col 2 line 50-60). It is known to provide ePTFE in garments such as jackets for its properties of being “be generally moisture vapor permeable but generally impermeable to liquid moisture.”
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Bay’s material to be ePTFE, which is a known material that is “substantially liquid-impermeable and substantially heat transferable,” since it is 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. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Bay’s material to be ePTFE, which is a known material that is “substantially liquid-impermeable and substantially heat transferable,” for the purpose of providing a material that prevents objects from entering the garment, and also holds together the vent/ opening as intended by Bay and additionally is generally moisture vapor permeable but generally impermeable to liquid moisture as taught by Aldridge which would enhance wearer comfort by ventilating the wearer’s body heat while protecting the wearer from rain.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bay et al. (U.S. Patent No. 6263510) in view of Aldridge (US 6845517 B2) as applied to claim 17, and further in view of Gubler et al. (U.S. 20170043567).
As to claim 19, Bay doesn’t specifically teach the at least one transferal portion has a Resistance to Evaporation of a Textile (Ret) of less than 20 m2 Pa/W.
Gubler teaches a water vapor permeable material for use in clothing having a water vapor resistance Ret of less than 20 m.sup.2Pa/W (para. 48).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to have made the at least one transferal portion of Bay so as to have a Resistance to Evaporation of a Textile (Ret) of less than 20 m2 Pa/W in view of Gubler in order to optimize breathability of the garment.
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 SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732
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