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
Claims 14-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected embodiment/invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/30/25.
Drawings
The drawings are objected to because they contain written descriptions that need to be removed (Figures 25-34, 37-40 and 41-57). 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.
The drawings are objected to because there are Figures with multiple drawings associated with a single Figure number and no understanding of how the multiple drawings are related, no lead lines noting if they are a blown up portions of an image, or if the drawings are just different and should be labeled as another Figure number. 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 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.
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.
Claim 1 and the claims that depend therefrom 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. It is unclear what “open access compartments” are referring to on the garment structure. Further, the specification fails to mention or describe what the “open access compartments” are. It is unclear what structure is required to read on the claim.
Claim 6 and the claims that depend therefrom 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. It is unclear what “multifunctional garment” is referring to and if this is related to the multifunctional garment of claim 1 or is this another multifunctional garment? It is unclear what structure is being required of the claim.
Claim 7 and the claims that depend therefrom 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. It is unclear what structure is required to read on the limitation “wherein said geometric holder is configurable into a neck pillow by insertion into a cocoon hood”. What is the cocoon hood and how is it related to the garment? Is it a separate structure from the garment? It is unclear if any additional garment structure is being required of the claim.
Claim 9 and the claims that depend therefrom 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. It is unclear what “a plurality of other garment types” is and what structure of the sleeves and/or garment as required to read on this limitation.
Claim 11 and the claims that depend therefrom 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. It is unclear how the geometric case is associated with the garment structure. Is this a separate structure from the garment? Is this located on the garment? The term “may be” is indefinite as to if the case is secured or not. Further, it is unclear what the geometric case and the geometric holder are and how they relate to one another. Are there two different structures being claimed or is the holder and the case the same structure?
Claim 12 and the claims that depend therefrom 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. It is unclear what “said piece of fabric” would be, “said piece of fabric” as presented in claim 1 is part of the multifunctional garment. How can the piece of fabric and the multifunctional garment that are the same structure be claimed separately? It is unclear what is required of the claims structurally and what is needed to create the blanket.
Claim 13 and the claims that depend therefrom 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. It is unclear what “the distal side openings” are and how they are associated with the garment. Further, there is a lack of antecedent basis for this limitation in the claim. Additionally, the language “may” is indefinite, since it is unclear if the chest panel is required of the garment or not. It is unclear how a chest panel is associated with the garment structure.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 3, 7 and 8-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2, 3, 7 and 8-9 fail to further limit the garment structure. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ceron (US 6,708,343).
In regard to claim 1, Ceron teaches a multifunctional garment (garment: 5), comprising: a piece of insulated fabric with a plurality of layers sized for draping upon a user wherein said piece of insulated is formed with left and right armholes (column 5, lines 11-20 teaches insulated fabric layers, the arm openings are located at the sides of the garment as seen in figures 9 and 10); latching mechanisms associated with each of said armholes for providing deployable sleeves configured for transitioning said piece of insulated fabric from a garment with sleeves into a poncho (sleeves: 30, 40, fasteners/latching mechanisms: 36, 46, figures 1 and 3; column 5, lines 66-67 through column 6, lines 1-9), wherein said poncho has open access compartments (pockets: 190, 190), a hood (hood: 70), and both front and back panels each configured with distal side openings (planar member: 7 has front and back panels: see figure 2 and distal side openings: see figures 8-10) and a kangaroo pocket (pocket: 180).
In regard to claim 2, Ceron teaches wherein said kangaroo pocket is configured to carry objects (pocket: 180 is configured to carry objects).
In regard to claim 3, Ceron teaches wherein said kangaroo pocket is configured to carry extra padding for use by said user (pocket: 180 is configured to carry extra padding).
In regard to claim 4, Ceron teaches wherein said kangaroo pocket is sized and configured for storing said multifunctional garment (pocket: 180 is sized to store said multifunctional garment portions as desired).
In regard to claim 5, Ceron teaches wherein said kangaroo pocket is formed into a geometric holder for containing items (pocket: 180 is a geometric holder and can contain items as desired).
In regard to claim 6, Ceron teaches wherein said items includes multifunctional garment (pocket: 180 can contain a multifunctional garment as desired).
In regard to claim 7, Ceron teaches wherein said geometric holder is configurable into a neck pillow by insertion into a cocoon hood as desired (pocket: 180 is a geometric holder and teaches all the required pocket structure that can be configured into a neck pillow by being inserted with a cocoon hood).
In regard to claim 8, Ceron teaches wherein said deployable sleeves are inverted to configure said sleeved garment into said poncho (see figure 3 poncho with inverted sleeves).
In regard to claim 9, Ceron teaches wherein said deployable sleeves are inverted to configure said sleeved garment into a plurality of other garment types (see figure 3, garment can be configured into a plurality of other garments as desired, can be draped differently over the user’s body to create different garments).
In regard to claim 10, Ceron teaches wherein said latching mechanisms consists of snaps that attach to one another (column 5, lines 66-67 though column 6, lines 1-4).
In regard to claim 11, Ceron teaches wherein a geometric case may be secured within a geometric holder for use as a hand or foot warmer (a geometric case may be secured within a geometric holder: pocket: 190 or carrying system 100: 3-7 that can be used to arm the hand or foot as desired).
In regard to claim 12, Ceron teaches wherein said multifunctional garment and said piece of fabric may be conjoined to create a continuous panel of fabric that acts as a blanket (garment of figures 1-3 along with fabric are conjoined and create a continuous fabric that can act like a blanket).
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.
Claim(s) 1-6, 8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Panek (US 2005/0262613) in view of Salinas (US 8,943,614).
In regard to claim 1, Panek teaches a multifunctional garment (cape: 600 and bag: 415, see figures 5 and 7), comprising: a piece of insulated fabric with a plurality of layers sized for draping upon a user wherein said piece of insulated is formed with left and right armholes (see arm holes in figure 7, paragraph 0039), wherein said poncho has open access compartments (compartment for body 600 and compartment for legs: 415, see figures 1 and 2), a hood (hood: 101), and both front and back panels each configured with distal side openings (600 and 415 have distal side openings: see figure 5), and a kangaroo pocket (hand warmer: 204).
However, Panek fails to teach latching mechanisms associated with each of said armholes for providing deployable sleeves configured for transitioning said piece of insulated fabric from a garment with sleeves into a poncho.
Salinas teaches a garment with latching mechanisms associated with each of said armholes for providing deployable sleeves configured for transitioning said piece of insulated fabric from a garment with sleeves into a coverall (figures 1, 3A, 3B, 5; column 2, lines 66-67 though column 3, lines 1-10).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the sleeve openings of Panek with the latching mechanisms as taught by Salinas, since the sleeve openings of Panek provided with latching mechanisms would provide sleeves that can be deployed and undeployed as needed to provide a cape garment with sleeves and a poncho garment without sleeves as desired for end use and warmth.
In regard to claim 2, Panek teaches wherein said kangaroo pocket is configured to carry objects (hand warmer/pocket: 204 is configured to carry objects).
In regard to claim 3, Panek teaches wherein said kangaroo pocket is configured to carry extra padding for use by said user (hand warmer/pocket: 204 is configured to carry extra padding).
In regard to claim 4, Panek teaches wherein said kangaroo pocket is sized and configured for storing said multifunctional garment (hand warmer/pocket: 204 is sized for storing a portion of said multifunctional garment).
In regard to claim 5, Panek teaches wherein said kangaroo pocket is formed into a geometric holder for containing items (hand warmer/pocket: 204 is formed into a geometric holder, see figure 1-2, 4 and 5 for containing items as desired).
In regard to claim 6, Panek teaches wherein said items includes multifunctional garment (items can include a multifunctional garment as desired).
In regard to claim 7, Panek teaches wherein said geometric holder is configurable into a neck pillow by insertion into a cocoon hood as desired (hand warmer/pocket: 204 is formed into a geometric holder, and can be formed into a neck pillow by insertion of a cocoon hood, sufficient structure capable or performing).
In regard to claim 8, the combined reference teach wherein said deployable sleeves are inverted to configure said sleeved garment into said poncho (Salinas: figures 1, 3A, 3B, 5; column 2, lines 66-67 though column 3, lines 1-10).
In regard to claim 9, the combined references teach wherein said deployable sleeves are inverted to configure said sleeved garment into a plurality of other garment types (Salinas: figures 1, 3A, 5 and 6; column 2, lines 66-67 though column 3, lines 1-10).
In regard to claim 10, the combined references teach wherein said latching mechanisms consists of snaps that attach to one another (Salinas: figures 1, 3A, 3B, 5; column 2, lines 66-67 though column 3, lines 1-10).
In regard to claim 11, Panek teaches wherein a geometric case may be secured within a geometric holder for use as a hand or foot warmer (geometric case is formed by 415 and holder is the interior and a foot warmer: 1, 2 and 5).
In regard to claim 12, Panek teaches wherein said multifunctional garment and said piece of fabric may be conjoined to create a continuous panel of fabric that acts as a blanket (see figure 5 and 7, garment of 600 and 415 can act as a blanket as desired).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ceron (US 6,708,343) in view of Love (US 6,353,933).
Ceron teaches a garment as described above in claim 1. However, Ceron fails to teach wherein the distal side openings further comprise snaps that enable open, closed and expanded configurations.
In regard to claim 13, Love teaches a poncho garment wherein the distal side openings comprise snaps that enable open, closed and expanded configurations (column 3, lines 54-56).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the side openings of Ceron with snap fasteners as taught by Love, since the side openings of Ceron provided with snap fasteners would provide a means to close the sides of the poncho to further protect from the elements as desired.
Double Patenting
Claims 1-20 of this application is patentably indistinct from claim 1-20 of Application No. 18/088,490. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/088,490 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be found cited in PTO-892 form submitted herewith. The cited prior art to Pearse-Danker (US 2023/0090869) is of particular relevance to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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, Clinton T Ostrup can be reached on (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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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732