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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/7/2026 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 9-18, & 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/362,884 (reference application) AND copending Application No. 18/363,578 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are in regards to similar claim matter even though different term language is used. Also, the current application is broader than the copending applications.
Claim Rejections - 35 USC § 102
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.
Claims 1-7, 9-14 & 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bourne (USPN 6,081,928).
Regarding Claim 1, Bourne discloses a glove (Figure 1) comprising: a wrist region (below 17); a palm region (11) extending outwardly from the wrist region; a plurality of digit regions (12-16) extending outwardly from the palm region; wherein each of the plurality of digit regions comprises: a fingertip region (Figure 1) extending between at a tip of each of the plurality of digit regions and a location which will be adjacent to where a first knuckle of a person's finger or thumb will be when the glove is worn (Figure 1); a remaining portion extending between the fingertip region and the palm region of the glove (Figure 1); a first stay (40, 1, see annotated Figure 5 below) provided on at least one digit region of the plurality of digit regions (Figures 1, 4, 5 & 7); and wherein the first stay is oriented substantially parallel to an imaginary longitudinal axis of the at least one digit region (axis, see annotated Figures 4 & 5), wherein the imaginary longitudinal axis extends from a tip of the at least one digit region to the palm region (Figure 1 & 4); a second stay (40, 2, see annotated Figure 5 below) provided on the at least one digit region of the plurality of digit regions and wherein the second stay is arranged opposite the first stay relative to the imaginary longitudinal axis (see annotated Figure 5 below) and wherein each of the first and second stays are located within the remaining portion (Figure 1, a stay can be in the area claimed) and positioned entirely below and separate from the fingertip region and positioned entirely above and separate from the palm region (Figure 1, a stay can be in the area claimed).
Regarding Claim 2, Bourne discloses the first stay and the second stay comprise a concave indentation (Col. 3, line 28-48) formed in the at least one digit region (Figure 7).
Regarding Claim 3, Bourne discloses the concave indentation is of a length (L, see annotated Figures 4 & 5 below) extending parallel to the imaginary longitudinal axis and extends for a circumferential distance (W, see annotated Figures 4 & 5 below) along a circumference of the at least one digit region (Figures 1, 4, 5 & 7), where the circumference is orthogonal to the imaginary longitudinal axis W, see annotated Figures 4 & 5 below); and wherein the length of the concave indentation is greater than the circumferential distance (see annotated Figure 5 below).
Regarding Claim 4, Bourne discloses the concave indentation projects into an interior cavity defined by the at least one digit region (Figure 7) and is configured to frictionally engage a person’s finger or thumb received within the interior cavity (Figure 7).
Regarding Claim 5, Bourne discloses the at least one digit region has a circumference (Figures 1, 4, 5 & 7) and the first and the second stays extend for less than a quarter of the circumference of the at least one digit region (Figures 1, 4, 5 & 7).
Regarding Claim 6, Bourne discloses the first and the second stays are provided in one or both of a front and a back of the at least one digit region (Figures 1, 4, 5 & 7).
Regarding Claim 7, Bourne discloses the first and the second stays are provided in one or both of a first side and a second side of the at least one digit region (Figures 1, 4, 5 & 7).
Regarding Claim 9, Bourne discloses the first stay and the second stay are laterally aligned with one another (Figures 1, 4, 5 & 7).
Regarding Claim 10, Bourne discloses each of the first stay and the second stay extend for less than a quarter of a circumference of the at least one digit region (Figures 1, 4, 5 & 7).
Regarding Claim 11, Bourne discloses an end of the first stay and an end the second stay are circumferentially spaced a distance away from one another (Figures 1, 4, 5 & 7).
Regarding Claim 12, Bourne discloses the first stay is provided in a front of the at least one digit region and the second stay is provided in a back of the at least one digit region (Figures 1, 4, 5 & 7).
Regarding Claim 13, Bourne discloses the first stay is provided on a first side of the at least one digit region and the second stay is provided on a second side of the at least one digit region (Figures 1, 4, 5 & 7).
Regarding Claim 14, Bourne discloses texturing of an exterior surface of the first and second stays (Figures 1, 4, 5 & 7, smooth is a texture).
Regarding Claim 21, Bourne discloses a remainder of the glove is free of texture (Figures 1-3 & 9).
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Claim Rejections - 35 USC § 103
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.
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Bourne (USPN 6,081,928) in view of Bevier (US 2009/0139010).
Regarding Claim 15, Bourne does not specifically disclose the texturing is applied through micro-etching.(Figures 1, 4, 5 & 7). However, Bevier disclose the use of etching to create proper gripping surfaces (Para. 68). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include etching for creating a texture for a glove in order to provide a desired gripping surface. Furthermore, the examiner respectfully reminds that the lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections. MPEP 2113.
Claims 16-18 & 22 are rejected under 35 U.S.C. 103 as being unpatentable over Bourne (USPN 6,081,928) in view of Hull (USPN 10,820,640).
Regarding Claim 16, Bourne does not specifically disclose the fingertip region is of a reduced circumference relative to the remaining portion. However, Hull discloses a fingertip region (108a) is of a reduced circumference relative to a remaining portion (108c) of a glove (Figure 10). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include a reduced circumference, as taught by Hull, to the glove of Bourne in order to provide a sensitive tactile gripping surface.
Regarding Claim 17, the combination of Bourne and Hull disclose the remaining portion includes a transition portion (Hull, 108b) which extends outwardly from the fingertip region, wherein the transition portion tapers in circumference moving in a direction from the palm region towards the fingertip region (Hull, Figure 10).
Regarding Claim 18, the combination of Bourne and Hull disclose the fingertip region is of a bullet-tip configuration (Hull, Figure 10).
Regarding Claim 22, the combination of Bourne and Hull disclose the first and the second stays extend from proximate the transition portion to proximate the palm region (Borne, Figures 1-3 & Hull, 108b).
Claims 24 & 25 are rejected under 35 U.S.C. 103 as being unpatentable over Bourne (USPN 6,081,928) in view of James Carr (US 2008/0092262).
Regarding Claim 24, Bourne does not specifically disclose a length of each of the first and second stays are greater than a length of the fingertip region. However, James Carr discloses a length of a plurality of stays (24, Para. 30) are greater than a length of a fingertip region (Figure 1). It would have been obvious to one of ordinary skill in the art before the effective filing date to lengthen stays, as taught by Borne, in order to provide enhance grip and heat resistance.
Regarding Claim 25, Bourne discloses a glove (Figure 1) comprising: a wrist region (below 17); a palm region (11) extending outwardly from the wrist region; a plurality of digit regions (12-16) extending outwardly from the palm region; wherein each of the plurality of digit regions comprises: a fingertip region (Figure 1) extending between at a tip of each of the plurality of digit regions and a location which will be adjacent to where a first knuckle of a person's finger or thumb will be when the glove is worn (Figure 1); a first stay (40, 1, see annotated Figure 5 below) provided on at least one digit region of the plurality of digit regions (Figures 1, 4, 5 & 7); and wherein the first stay is oriented substantially parallel to an imaginary longitudinal axis of the at least one digit region (axis, see annotated Figures 4 & 5), wherein the imaginary longitudinal axis extends from a tip of the at least one digit region to the palm region (Figure 1 & 4); a second stay (40, 2, see annotated Figure 5 below) provided on the at least one digit region of the plurality of digit regions and wherein the second stay is arranged opposite the first stay relative to the imaginary longitudinal axis (see annotated Figure 5 below) and wherein the first and second stays are configured to frictionally engage a person's finger or thumb received within an interior cavity defined by the at least one digit region (Figures 1, 4, 5 & 7). Bourne does not specifically disclose a length of each of the first and second stays are greater than a length of the fingertip region. However, James Carr discloses a length of a plurality of stays (24, Para. 30) are greater than a length of a fingertip region (Figure 1). It would have been obvious to one of ordinary skill in the art before the effective filing date to lengthen stays, as taught by Borne, in order to provide enhance grip and heat resistance.
Response to Arguments
Applicant arguments appear to be directed to the amended limitation in which additional consideration and re-interpretation has been given for a new grounds of rejection, as stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHARINE KANE whose telephone number is (571)272-3398. The examiner can normally be reached Mon-Fri 9am-6pm EST.
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/KATHARINE G KANE/Primary Examiner, Art Unit 3732