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 .
Claim Objections
Claim 1 is objected to because of the following informalities: in line 13, the limitation “that will cover part or all..” should read “that is configured to cover part …”. Appropriate correction is required.
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 “the form” is or how it relates to the lower-body swimming garment. Further, there is a lack of antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the sheet" in line 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the area of the shorts or pants element" in line 13. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the remainder of the shorts or pants element" in line 15. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "”the parts of the shorts or pants element" in line 16. There is insufficient antecedent basis for this limitation in the claim.
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 how the closed-cell foam element include a closed cell foam in lines 13-14?
Claims 1 and 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 what placement would be “attached to the parts of shorts or pants element to which it corresponds in a manner such that the lower-body swimming garment is bilaterally symmetrical or nearly bilaterally symmetrical”.
Claims 8 and 18 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 in the limitation “the closed-cell foam element is attached to the shorts or pants element to which it corresponds” where the foam element is attached.
Claims 8 and 18 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. The limitation “possibly with the help of a temporary adhesive” is indefinite, since it is unclear if the temporary adhesive is required by the claim or not.
Claims 10 and 20 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 where the foam element is attached to the shorts/pants due to the limitation “where the shorts or pants customarily would be folded before storing them”. What location would this be on the garment?
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 where the closed-cell foam element pieces are or are not located in the limitation “at least part or all of the area of the shorts or pants element that will cover the wearer’s outer legs, and at most all of the area of the shorts or pants element that will cover the wearer’s outer, front, and back legs and hips”.
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, 3-5, 8-11, 13-15 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mann (US 5,452,477).
In regard to claim 1, Mann teaches a lower-body swimming garment (figure 7), comprising: a waistband element (see waistband of figure 7); a shorts or pants element that: is attached to the waistband element (see figure 7), is made of a knitted or woven fabric (column 1, lines 59-64), and is configured to fit tightly and conform to the contours of the wearer’s waist, hips, buttocks, crotch, and legs (column 2, lines 13-20); and a closed-cell foam element that: is made of one or more sheets of one or more low-density, flexible or semi-flexible, closed-cell foams cut to correspond with the form of part or all of the shorts or pants element, is shaped and arranged such that the area of the sheet that corresponds with the area of the shorts or pants element that will cover part or all the wearer’s outer legs is thicker or includes a closed-cell foam that is less dense than the foam that covers any part of the remainder of the shorts or pants element (foam: column 1, lines 66-67 through column 2, lines 1-12, see figure 7; stitching lines creates greater density and less thick and thicker regions along the foam layer), and is attached to the parts of the shorts or pants element to which it corresponds in a manner such that the lower-body swimming garment is bilaterally symmetrical or nearly bilaterally symmetrical (see figure 7 and column 2, lines 4-12).
In regard to claim 3, Mann teaches in which the waistband element is elastic (material of swim wear which would include the waistband is made of elastane, which is elastic: column1 ,lines 59-65).
In regard to claim 4, Mann teaches in which the shorts or pants element is made of spandex, elastane, nylon, polyester, or a blend thereof (column 1, lines 59-65).
In regard to claim 5, Mann teaches in which the shorts or pants element is shorts that extend down to the wearer’s thigh, knee, or shin (see figure 7, column 2, lines 47-55).
In regard to claim 8, Mann teaches in which the closed-cell foam element is attached to the parts of the shorts or pants element to which it corresponds using an adhesive, sewing, fusing, or molding or by layering a piece of knitted or woven fabric on top of the closed-cell foam that is arranged, possibly with the help of a temporary adhesive, on the shorts or pants element where it will be attached and adhering, sewing, fusing, or molding the two pieces of fabric together (column 2, lines 4-25).
In regard to claim 9, Mann teaches in which the closed-cell foam element is cut or form-pressed into one or more shapes or a plurality of identical, tessellated shapes, such as triangles, squares, pentagons, or hexagons (column 2, lines 26-32).
In regard to claim 10, Mann teaches in which the closed-cell foam element is attached to the shorts or pants element in such a manner to leave gaps in between the pieces of foam that cover areas where the shorts or pants customarily would be folded before storing them (see figure 7).
In regard to claim 11, Mann teaches a lower-body swimming garment (figure 7), comprising: a waistband element (see waistband of figure 7); a shorts or pants element that: is attached to the waistband element (see figure 7), is made of a knitted or woven fabric (column 1, lines 59-64), and is configured to fit tightly and conform to the contours of the wearer’s waist, hips, buttocks, crotch, and legs (column 2, lines 13-20); and a closed-cell foam element that: is made of one or more sheets of one or more low-density, flexible or semi-flexible, closed-cell foams cut to create two identical or near identical pieces that correspond with the form of at least part or all of the shorts or pants element that will cover the wearer’s outer legs, and at most all of the area of the shorts or pants element that will cover the wearer’s outer, front, and back legs and hips (foam: column 1, lines 66-67 through column 2, lines 1-12, see figure 7; stitching lines creates greater density and less thick and thicker regions along the foam layer); and are attached to the parts of the shorts or pants element to which it corresponds in a manner such that the lower-body swimming garment is bilaterally symmetrical or nearly bilaterally symmetrical (see figure 7 and column 2, lines 4-12).
In regard to claim 13, Mann teaches in which the waistband element is elastic (material of swim wear which would include the waistband is made of elastane, which is elastic: column1 ,lines 59-65).
In regard to claim 14, Mann teaches in which the shorts or pants element is made of spandex, elastane, nylon, polyester, or a blend thereof (column 1, lines 59-65).
In regard to claim 15, Mann teaches in which the shorts or pants element is shorts that extend down to the wearer’s thigh, knee, or shin (see figure 7, column 2, lines 47-55).
In regard to claim 18, Mann teaches in which the closed-cell foam element is attached to the parts of the shorts or pants element to which it corresponds using an adhesive, sewing, fusing, or molding or by layering a piece of knitted or woven fabric on top of the closed-cell foam that is arranged, possibly with the help of a temporary adhesive, on the shorts or pants element where it will be attached and adhering, sewing, fusing, or molding the two pieces of fabric together (column 2, lines 4-25).
In regard to claim 19, Mann teaches in which the closed-cell foam element is cut or form-pressed into one or more shapes or a plurality of identical, tessellated shapes, such as triangles, squares, pentagons, or hexagons (column 2, lines 26-32).
In regard to claim 20, Mann teaches in which the closed-cell foam element is attached to the shorts or pants element in such a manner to leave gaps in between the pieces of foam that cover areas where the shorts or pants customarily would be folded before storing them (see figure 7).
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) 2 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US 5,452,477) in view of Peck et al. (US 8,966,667).
Mann teaches a buoyancy swim garment as described above in claim 1. However, Mann fails to teach the outer shorts or skirt.
In regard to claims 2 and 12, Peck et al. teaches further comprising a shorts or skirt element (swim trunks or board shorts: column 3, lines 3-21, outer short: 20) that: is attached to the waistband element (see figures 5 and 6), is made of a knitted or woven fabric (column 5, lines 25-34), and is configured to fit loosely over the shorts or pants element that conforms to the contours of the wearer (see figures and column 4,lines 24-32).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the swim garment of Mann with the outer short layer as taught by Peck et al., since the swim garment of Mann having an outer short layer would provide a swim garment that has two layers, one that is more form fitting and one that is looser which provides modesty and protection to the inner layer.
Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US 5,452,477) in view of Lee (US 2017/0027244).
Mann teaches a buoyancy swim garment as described above in claim 1. However, Mann fails to teach the closed-cell foam being polyethylene foam or polyurethane foam.
In regard to claims 6 and 16, Lee teaches a buoyancy swim garment wherein the closed-cell foam is polyethylene foam or polyurethane foam (paragraph 0007).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have replaced the neoprene foam material of Mann with the Polyethylene foam as taught by Lee, since replacing one well-known buoyant foam (neoprene) with another well-known buoyant foam (polyethylene) would be within the level of one skilled in the art to provide a swimsuit with a buoyancy.
Claim(s) 7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US 5,452,477) in view of Halsted (US 2023/0000181).
Mann teaches a swim garment as described above in claim 1. Further, Mann teaches that that thickness of the foam can vary based upon a particular design or a user’s weight (column 2, lines 60-64). However, Mann fails to teach the thickness of the foam being from 1/32 of an inch to 1 inch.
In regard to claims 7 and 17, Halsted teaches a buoyancy suit in which the thickness of the foam ranges from 1/32 of an inch to 1 inch (paragraph 0041 and 0070).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the buoyancy suit of Mann with the thickness of the foam as taught by Halsted, since the foam of Mann provided in a thickness of 3/8” thick would provide a suit that assists a wear with buoyancy while in water.
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 Bartlett (US 5,013,271) 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 ET.
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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