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 Group I in the reply filed on May 19, 2025 is acknowledged. The traversal is on the ground(s) that the product cannot be made without the process disclosed in the method claims. This is not found persuasive because the process by which a product is made is not material.
Examiner notes Claim 7 is recited as product-by-process claim. In a product by process claim, so long as the product has the same claimed composition or properties, the method by which it was made or by which the properties were tested is not material. According to the MPEP, “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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113 [R-1], see In re Thorpe, 777F.2d 695, 698, 227 USPQ 964, 966).
The requirement is still deemed proper and is therefore made FINAL.
Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 19, 2025.
Claim Objections
Claim 3 is objected to because of the following informalities:
In Claim 3, “the power source and controller unit is powered by batteries” should read “the power source and controller unit are powered by batteries”.
In Claim 4, “the unit is further configured” should read “a controller unit is further configured”.
Appropriate correction is required.
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 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “the lining.” There is insufficient antecedent basis for this limitation in the claim as “a lining” was not previously recited. For examination purposes, the claim will be interpreted as if antecedent basis was properly established.
Claim 1 recites the limitation “the layered assembly.” There is insufficient antecedent basis for this limitation in the claim as “a layered assembly” was not previously recited. For examination purposes, the claim will be interpreted as “completely covers the layers formed in steps b) through e)”.
Claims 2-3 and 5-6 are rejected by virtue of their dependency on Claim 1.
Claim 4 recites “controlling the power supply”. It is unclear whether this limitation refer to the “the power source” or “the alternating current supply”. For examination purposes, it will be assumed that the limitation should read “controlling the alternating current supply”.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sturman (PGPub 2020/0018474).
Regarding Claim 1, Sturman teaches a method of manufacturing a clothing garment (Abstract), the method comprising the steps of:
a) cutting a hole in a layer of fabric ([0010]; [0006]- creating a hole through said adhesive film and said clothing fabric at an intended position for said light-emitting device);
b) applying a layer of clear, flexible plastic over the hole such that the edges of the layer overlap with the edges of the fabric around a hole ([0006]- positioning a central portion of a clear plastics material over said hole to define a window, such that said central portion is secured by said adhesive film);
c) bonding the layer of plastic to the layer of fabric by applying adhesive or stitches to the overlap [0042];
d) overlaying an electroluminescent, EL, panel over the layer of plastic, the EL panel having a custom design on a first surface and the first surface being in contact with the layer of plastic ([0006]- supporting a light-emitting device on a substrate; locating said light-emitting device at the position of said window), wherein a wire extends from an edge of the EL panel and is connected to a power source and controller unit;
e) bonding the EL panel to the layer of plastic by applying adhesive or stitches about the edges of the EL panel ([0058]-[0059]- flaps secured by adhesive securing the light-emitting device; Claim 11);
f) overlaying a protective layer over the EL panel such that it completely covers the layered assembly and is bonded to the fabric layer by stitches or adhesive ([0054]-[0055]; Claim 10);
g) assembling a garment using the fabric layer having the layered assembly bonded thereon (Fig. 5); and
h) threading the wire through the assembled garment to rest in the lining or the inside of a pocket of the assembled garment ([0006]- connecting power cables to said substrate; [0038]).
Regarding Claim 5, Sturman further teaches the protective layer is a foam layer ([0050]- discussing foam gaskets; [0028]- discussing plush material).
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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sturman (PGPub 2020/0018474) in view of Guritz (US Pat. 5128843).
Regarding Claim 2, Sturman teaches the device is powered [0039] but does not specify the power source and controller unit comprises a direct current power source and an inverter for generating an alternating current supply to the EL panel.
Guritz teaches an alternative method of manufacturing an illuminated clothing garment (Abstract) wherein the power source and controller unit comprises a direct current power source and an inverter for generating an alternating current supply to the EL panel (Col. 7, Lines 3-34- discussing the battery and inverter; Examiner notes batteries are a direct current power source) in order to power the lights (Col. 7, Lines 3-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Sturman to include a battery as a direct current power source and inverter to generate alternating current as taught by Guritz with reasonable expectation of success to power the lights (Col. 1, Lines 22-63).
Regarding Claim 3, Sturman further teaches a button interface for activating the EL panel [0039] but does not specify the power source and controller unit are powered by batteries.
Guritz further teaches the power source and controller unit are powered by batteries (Col. 1, Lines 22-63).
Regarding Claim 4, Sturman further teaches the unit is further configured to provide steady illumination and a variety of illumination patterns by controlling the power supply to the EL panel [0006]; [0033].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sturman (PGPub 2020/0018474).
Regarding Claim 6, Sturman does not specify the wire connecting the EL panel to the controller unit and power source is 70cm or longer. However, Sturman does show a distance between the indicator button and the light-emitting devices (See Fig. 5- light emitting devices 511 and indicator 503) and teaches the control unit is contained in an internal pocket [0039]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the wire length connecting the light panel and controller to include a desired length to comfortably extend between the internal pocket and the light panel as taught by Sturman with reasonable expectation of success because a mere length change is a matter of design choice that a skilled artisan would have found obvious. See MPEP 2144.04(iv)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Waters (PGPub 2014/0268684), Painter (US Pat. 5845987), Eisenbraun (US Pat. 5113325), Beers et al (US Pat 9861155), Malhotra (US Pat. 9720443), Leung (PGPub 2014/0376209), Hsu (PGPub 2012/0099298), and Chen (PGPub 2011/0164406) teach other methods of producing illuminated garments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 1/5/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748