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 29 September 2025, 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
1, 4, 13
Withdrawn
6, 8, 9-12
Canceled
3, 7, 14
Pending
1-2, 4-6, 8-13
Presented for Examination
1-2, 4-5, and 13
Response to Arguments
Applicant's arguments filed 29 September 2025 have been fully considered but they are not persuasive.
Specification Objections and Claim Objections
Overcome by the specification and claim amendments and withdrawn.
101 Rejections
Overcome by the claim amendments and withdrawn.
112(b) Rejections
The claim amendments overcome some of the rejections and those rejections are withdrawn. Other rejections are not addressed by the amendments, nor does Applicant argue against the rejections, and those rejections stand.
103 Rejections
In response to applicant's argument that Fons invention is to conceal an undergarment and the present invention is to reduce chafing and conceal breasts, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues Fons has a different structure (Remarks page 11-12). Applicant describes the Fons structure and “in substantial contrast,” the present structure, but it is not clear how the structures differ. Examiner requests Applicant clearly set forth which claimed structures are not found in the prior art. As Examiner has mapped all of the claimed structure to the Fons reference, or found Fons to be obviously modifiable to achieve the claimed structure, Examiner believes all of the claimed structure is disclosed by the prior art.
Applicant argues Fons “teaches away” from the present invention (Remarks page 11). It appears by “teaching away” Applicant means solving a different problem than the present invention (Remarks page 12), which is the same as the intended use and is addressed above.
Applicant argues modifying Fons to have shoulder seams is hindsight reasoning (Remarks page 12) and “there is nothing within Fons’474 to motivate the present invention.” Fons discloses joined shoulder portions, and it is known in the art to join shoulder portions with a seam. It would be obvious to join Fons’ shoulder portions via a seam as set forth in the rejections below.
In light of the above, the rejection is believed to be proper.
Election/Restrictions
The elected embodiment is Species A, the yoke embodiment shown in FIGS 1-3.
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 “two… shoulder seams” (claims 1 and 13, FIGS 1, 3, and 6 have support for a single shoulder seam 24 but not two shoulder seams) 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.
Specification
The use of the term LYCRA, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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: “two laterally extending shoulder seams” (claims 1 and 13, the disclosure has support for shoulder seams, plural, but not specifically two shoulder seams) and “elastic polyurethane plastic” (claim 13, the disclosure has support for LYCRA but not the broader term “elastic polyurethane plastic”).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-2, 4-5, and 13 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claims 1 and 13 positively recite the wearer (“wherein the torso of the wearer is not abraded by contact with the inner sleeve” and “where in the wearer is not abraded by contact with the non-chafing sleeve,” respectively) which refers to the human user and is non-statutory subject matter.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The new matter is “elastic polyurethane plastic” (claim 13, the disclosure has support for LYCRA but not the broader term “elastic polyurethane plastic”).
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 4-5, and 13 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 is rendered indefinite by the recitation “shoulder seams extending laterally… thereby defining two laterally extending shoulder seams” because it is not clear if the “two… shoulder seams” are included in the “shoulder seams” or if they are in addition to the “shoulder seams.”
The term “reduced” in claims 1 and 13 is a relative term which renders the claim indefinite. The term “reduced” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Relative to what is the relative motion reduced?
Claims 4 and 13 are rendered indefinite by the recitations “the attachment elements” because it is not clear to which or all of the “plurality of attachment elements” this is referring.
Claim 5 is rendered indefinite “may be” because it cannot be determined if the limitations following “may be” are required by the claim or not.
Claim 13 recites the limitations “the top,” “the bottom,” and “the non-chafing sleeve.” There is insufficient antecedent basis for this limitation in the claim.
All of the claims are examined as best understood.
Claim Rejections - 35 USC § 103
Claim(s) 1, 2, 4, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fons et al. (US 20080229474 A1); hereinafter, “Fons,” and further in view of Green (US 5946726 A).
As to claim 1, Fons discloses a shirt for athletic use (“TAPERED SHIRT WITH INCORPORATED SUPPORT SYSTEM AND METHOD,” title) comprising:
an outer body for covering a torso of a wearer (outerwear 102), the outer body being formed as a shirt having a predetermined chest size and including a front panel and a back panel (102a, 102b) joined at the top portion to define a collar opening (108) and two arm openings and shoulder seams extending laterally between the collar opening and each arm opening (110a, 110b), with the shirt being open at the bottom portion, thereby defining a cavity for receiving a torso of a wearer (see FIGS 1-2 and paras. 0042 and 0051; see modification below regarding “T-shirt”),
an inner sleeve with a yoke portion and a body portion (support undergarment 104; see annotated FIG 1 below), the yoke portion being attached to the shirt body within the cavity (para. 0043), the inner sleeve defining a throughbore for passage of the torso of a wearer therethrough (see FIGS), the inner sleeve being formed with a predetermined chest size smaller than the outer body chest size (see FIGS), wherein the outer body is capable of draping loosely over the torso of the wearer and the inner sleeve is capable of abutting the torso of the wearer (capable of draping loosely and fitting snugly, depending on the size of the garment relative to the size of the wearer), whereby relative motion between the inner sleeve and the torso of the wearer is reduced (capable of being reduced), the inner sleeve being formed from a non-chafing material wherein the torso of the wearer is not abraded by contact with the inner sleeve (para. 0044 discloses “fabrics” which are considered to be non-chafing) and;
a plurality of attachment elements joined to and extending along the shoulder seams intermediate the collar opening and the arm openings and extending between the inner sleeve and the outer body (para. 0043), the plurality of attachment elements being fixed to both the inner sleeve and the outer body to maintain the inner sleeve in a useful position during athletic movement by the wearer (para. 0043), whereby the inner sleeve is maintained in a general position by the plurality of attachment elements (capable of being maintained), while being allowed movement with the wearer that is substantially independent of outer body movement (capable of being allowed), thereby preventing chafing of the wearer by the outer body (capable of preventing chafing).
Fons does not expressly disclose the FIG 1 embodiment’s outer layer/ outer body “being formed as a T-shirt having two arm covering portions, a top portion, and a bottom portion.”
A T-shirt is a known garment construction. Further, Fons does disclose another embodiment in FIG 16 that is “formed as a T-shirt having two arm covering portions, a top portion, and a bottom portion.” Therefore, a T-shirt is known to Fons and within the scope of the reference.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide outer layer/ outer body “being formed as a T-shirt having two arm covering portions, a top portion, and a bottom portion” for the purpose of protecting the wearer’s shoulders and upper arms from sun and rain.
Fons does not expressly disclose “thereby defining two laterally extending shoulder seams.”
Fons’ front and back portions are clearly joined at the shoulders. Shoulder seams are known in the art to join a front and back portion. Fons discloses the undergarment 104 has shoulder seams 402, so shoulder seams are known to Fons.
Green teaches a similar shirt (top, title) including two laterally extending shoulder seams (col 2 line 15-20, col 3 line 35-65, and claim 20).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide two laterally extending shoulder seams for the purpose of providing a known means of joining a front and back of a shirt.
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As to claim 2, Fons discloses a shirt for athletic use according to claim 1 wherein the outer body is formed with a predetermined outer body length and the inner sleeve is formed with a predetermined inner sleeve length and the outer body length is greater than the inner sleeve length (see FIGS).
As to claim 4, Fons does not disclose a shirt for athletic use according to claim 3 wherein the attachment elements include stitching along the shoulder seams of the outer body joining the yoke portion of the inner sleeve to the outer body.
Fons is silent as to what the attachment elements are.
However, stitching is a known means of joining garment components, and Fons does disclose the other components of the garment are “sewed, stitched or otherwise joined” (para. 0042).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide stitching along the shoulder seams of the outer body joining the yoke portion of the inner sleeve to the outer body for the purpose of providing a known means of joining the components as intended, where the means is cost effective and durable.
As to claim 13, Fons discloses a shirt for athletic use (“TAPERED SHIRT WITH INCORPORATED SUPPORT SYSTEM AND METHOD,” title) comprising:
an outer body for covering the torso of a wearer (outerwear 102), the outer body being formed as a shirt having a predetermined chest size and including a front panel and a back panel joined at the top to define a collar opening and arm openings and a shoulder seam extending therebetween, with the shirt being open at the bottom, thereby defining a cavity for receiving the torso of the wearer (see FIGS 1-2 and para. 0051; see modification below regarding “T-shirt”),
an inner sleeve with a yoke portion and a body portion (support undergarment 104; see annotated FIG 1 below), the yoke portion being attached to the shirt body within the cavity (para. 0043), the inner sleeve defining a throughbore for passage of the torso of a wearer therethrough (see FIGS), the inner sleeve being formed with a predetermined chest size smaller than the outer body chest size (see FIGS), wherein the outer body is capable of draping loosely over the torso of the wearer and the inner sleeve is capable of abutting the torso of the wearer (capable of draping loosely and fitting snugly, depending on the size of the garment relative to the size of the wearer), whereby relative motion between the inner sleeve and the torso of the wearer is reduced (capable of being reduced), the inner sleeve being formed from a non-chafing material, wherein the non-chafing material is an elastic polyurethane plastic (“spandex,” para. 0045), nylon microfiber or neoprene, wherein the wearer is not abraded by contact with the non-chafing sleeve (para. 0044 discloses “fabrics” which are considered to be non-chafing),
wherein the outer body is formed with a predetermined outer body length and the inner sleeve is formed with a predetermined inner sleeve length and the outer body length is greater than the inner sleeve length (see FIGS), wherein the inner sleeve is attached to the outer body with the yoke portion of the inner sleeve fixed to the shoulder seams of the outer body (Fons para. 0043 discloses “The support undergarment 104 is connected to the front portion 102a at the front neckline 108 and the arm holes 110a, 110b, and is connected to the back portion 102b at the arm holes 110a, 110b. The support undergarment 104 is otherwise not attached to or connected with the outerwear 102 formed by the front portion 102a and the back portion 102b,” and as shown in annotated FIG 1 above, the portions of the neckline and arm hole seams at the shoulder portion of the garment are considered to be shoulder seams) and
a plurality of attachment elements joined to and extending along the shoulder seams intermediate the collar opening and the arm openings and extending between the inner sleeve and the outer body (para. 0043), the attachment elements being fixed to both the inner sleeve and the outer body to maintain the inner sleeve in a useful position during athletic movement by the wearer (para. 0043), whereby the inner sleeve is maintained in a general position by the plurality of attachment elements (capable of being maintained), while being allowed movement with the wearer that is substantially independent of outer body shirt movement (capable of being allowed), thereby preventing chafing of the wearer by the body (capable of preventing chafing).
Fons does not expressly disclose the FIG 1 embodiment’s outer layer/ outer body “being formed as a T-shirt… with each opening having an arm covering portion projecting outwardly therefrom and shoulder seams extending laterally from the collar opening to each arm opening, thereby defining two laterally extending shoulder seams.”
A T-shirt is a known garment construction. Further, Fons does disclose another embodiment in FIG 16 that is “formed as a T-shirt.” Therefore, a T-shirt is known to Fons and within the scope of the reference.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide outer layer/ outer body “being formed as a T-shirt… with each opening having an arm covering portion projecting outwardly therefrom” for the purpose of protecting the wearer’s shoulders and upper arms from sun and rain.
Fons does not expressly disclose “shoulder seams extending laterally from the collar opening to each arm opening, thereby defining two laterally extending shoulder seams s.”
Fons’ front and back portions are clearly joined at the shoulders. Shoulder seams are known in the art to join a front and back portion. Fons discloses the undergarment 104 has shoulder seams 402, so shoulder seams are known to Fons.
Green teaches a similar shirt (top, title) including two laterally extending shoulder seams (col 2 line 15-20, col 3 line 35-65, and claim 20).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide two laterally extending shoulder seams for the purpose of providing a known means of joining a front and back of a shirt.
Fons does not disclose the plurality of attachment elements include stitching along the shoulder seams of the outer body joining the yoke portion of the inner sleeve to the outer body.
Fons is silent as to what the attachment elements are.
However, stitching is a known means of joining garment components, and Fons does disclose the other components of the garment are “sewed, stitched or otherwise joined” (para. 0042).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide stitching along the shoulder seams of the outer body joining the yoke portion of the inner sleeve to the outer body for the purpose of providing a known means of joining the components as intended, where the means is cost effective and durable.
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Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fons et al. (US 20080229474 A1); hereinafter, “Fons,” in view of Green (US 5946726 A) as applied to claim 1 above, and further in view of Johnson (US 4398538 A).
As to claims 5, Fons does not disclose the non-chafing material may be a polyester/spandex blend fabric.
Fons does not specifically disclose a poly/ spandex blend but does disclose polyester and spandex as materials for the garment (para. 0045). Therefore, polyester and spandex are known to Fons and a blend would be within the scope of the reference.
Johnson teaches a similar shirt (combination of outer body 11/13 and inner sleeve 22), and further teaches a polyester/spandex blend fabric (col 2 line 65-68).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide a polyester/spandex blend fabric, 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 a polyester/spandex blend fabric, for the purpose of providing a soft and stretchable material (col 2 line 60-65) for wearer comfort.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732