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 on June 9, 2025 has been received. Claims 1-4 and 6-13 are currently pending.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Furthermore, in regards to Applicant’s argument that the recitations of Nomex, Kevlar, and Twaron in claim 4 are not indefinite (see pages 5-6 of Applicant’s Remarks), the Examiner respectfully disagrees.
Applicant cites MPEP 2173.05(u), stating that “The presence of a trademark or trade name in a claim is not, per se, improper under 35 USC 112(b).” However, the Examiner respectfully notes that this quotation merely forms the first phrase of MPEP 2173.05(u), and cannot be separated from the context of the full MPEP section. The rest of MPEP 2173.05(u) clearly states the following:
“It is important to recognize that a trademark or trade name is used to identify a source of goods, and is not the name of the goods themselves. Thus a trademark or trade name does not define or describe the goods associated with the trademark or trade name.”
“If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). See also Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 784-85, 2020 USPQ2d 11531 (Fed. Cir. 2020).”
“The claim scope is uncertain since the trademark or trade name cannot be used properly to describe any particular material or product… the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.”
As such, MPEP 2173.05(u) makes it abundantly clear that the use of the trade names Nomex, Kevlar, and Twaron in claim 4 to describe a particular material or product render the claim scope indefinite, and the rejection(s) under 35 USC 112(b) are maintained below.
Applicant further argues that other patents have been issued reciting Nomex, Kevlar, and/or Twaron in the claims (see page 6 of Remarks).
The Examiner respectfully reminds Applicant that every application is examined on its own merits, and the improper use of trade names in other published patents does not constitute grounds for allowing improper use of trade names in the instant application.
See updated rejection(s) below.
Claim Objections
Claim 1 is objected to because of the following informalities: “the collar, left forearm, and right forearm portions” should read “the collar, the left forearm portion, and the right forearm portion[[s]]” to enhance clarity.
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 1-4 and 6-13 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 recites the limitation “wherein said torso portion, said left and right sleeves, and said left and right upper arm portions are made from a non-cut-resistant material.” The limitation is indefinite, as the left and right sleeves by definition include the left and right forearm portions, which are previously recited to be formed of a cut-resistant material. It is unclear how the left and right forearm portions can be simultaneously formed of a non-cut-resistant material and a cut-resistant material. For purposes of examination, the Examiner will interpret the limitation as follows, in accordance with previous claim 5: “wherein said torso portion
Claim 4 contains the trademarks/trade names “Nomex,” “Kevlar,” and “Twaron.” As previously discussed in the Non-Final Rejection and in the Response to Arguments above, where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe para-aramid and/or meta-aramid fibers, and, accordingly, the identifications/descriptions are indefinite. For purposes of examination, the Examiner will interpret claim 4 as follows: “wherein the aramid fabric is a para-aramid fabric or a meta-aramid fabric.”
Claim 12 recites the limitation “wherein said left and right upper arm portions comprise high friction gripping elements on outer surfaces thereof.” The limitation is indefinite, as it is unclear what structure(s) are being referred to using the word “thereof.” For purposes of examination, the Examiner will interpret the limitation as follows: “wherein said left and right upper arm portions comprise high friction gripping elements on outer surfaces of said left and right upper arm portions.” See page 2 of the Non-Final Rejection.
Dependent claims are rejected at least for depending from rejected claims.
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.
Claims 1-4 and 6, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Angus (US Patent No. 8,418,262) in view of Martinez et al. (herein Martinez)(US PG Pub 2015/0247705), further in view of Camillo (US PG Pub 2013/0232654).
Regarding claim 1, Angus discloses a protective sports garment (1, see Figs. 1A-1C and at least column 1, line 6 – column 2, line 22) the garment comprising:
a collar (17);
a left sleeve (15) having a left upper arm portion (upper arm portion having first layer 25, see annotated Fig. 1B) and a left forearm portion (33);
a right sleeve (13) having a right upper arm portion (upper arm portion having first layer 23, see annotated Fig. 1B) and a right forearm portion (31);
a torso portion (3) extending between said left and right sleeves and adjacent to said collar (see at least Figs. 1A-1B); and
cuffs (39, 41) on said left and right sleeves (see Figs. 1A-1B and column 4, lines 9-14);
wherein the collar and said left and right forearm portions are formed of a cut-resistant material (cut-resistant material 38 forming the second layer, e.g., aramid/Kevlar (see column 1, lines 40-50; column 3, lines 1-5; and column 3, lines 46-62);
wherein said torso portion, said left and right sleeves, and said left and right upper arm portions are made from a non-cut-resistant material (poly/cotton jersey fabric 36; see Figs. 1A-1C and column 3, line 33 – column 4, line 6); and
wherein each of the left and right forearm portions is configured to extend, when worn by a wearer, from the wearer's respective left or right wrist area to a respective said left or right upper arm portion (see Figs. 1A-1B).
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Angus substantially discloses the invention as claimed above but fails to further disclose wherein the cuffs form thumbholes.
However, Martinez discloses a protective garment (10) for enhanced athletic performance (see at least paragraphs 0011 and 0073-0074) comprising a collar (16), right and left sleeves (18, 20), having right and left forearm portions (19, 20) formed of a cut-resistant material (see paragraph 0072), and cuffs (22, 24) on said right and left sleeves (see at least Fig. 1 and paragraphs 0040-0042), wherein the cuffs form thumbholes (26, 28), to allow the sleeves to be securely retained in position on the wearer’s arms during use of the garment, while maintaining full mobility and dexterity of the wearer’s hands (see at least paragraphs 0041-0042).
Therefore, based on Martinez’ teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Angus’ cuffs to form thumbholes, as doing so would allow the sleeves to be securely retained in position on the wearer’s arms during use of the garment, while maintaining full mobility and dexterity of the wearer’s hands.
Angus also fails to disclose wherein one or more of the collar, left forearm, and right forearm portions comprise polyethylene as the cut-resistant material. Instead, Angus discloses aramid/Kevlar as the cut-resistant material (see column 1, lines 40-50; column 3, lines 1-5; and column 3, lines 46-62).
However, Camillo teaches a protective sports garment (100, see Figs. 1-6 and at least paragraphs 0001-0002 and 0029-0033), the garment comprising a collar (121) and right and left forearm portions (140) each formed of a cut-resistant material comprising both aramid and polyethylene fibers (see at least paragraphs 0006 and 0039-0048 and claim 3; Camillo discloses wherein the cut-resistant material may include one or more of: para-aramid fibers, liquid crystal polymer (LCP) fibers, ultra-high molecular weight polyethylene (UHMWPE) fibers, nylon fibers, polyphenylene benzobisoxazole (PBO) fibers, glass fibers and steel fibers (see paragraphs 0006, 0036-0040, and 0045-0048), as such materials are known to provide cut-resistance properties that are useful for incorporation within protective sports garments (see at least paragraphs 0001-0006 and 0039).
Therefore, based on Camillo’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Angus’ cut-resistant material to further include ultra-high molecular weight polyethylene (UHMWPE) fibers, such that Angus’ cut-resistant material would include both aramid and polyethylene fibers, as such materials are known to provide cut-resistance properties that are useful for incorporation within protective sports garments.
It has been held to be 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.
Regarding claim 2, the modified garment of Angus (i.e., Angus in view of Martinez and Camillo) is further disclosed wherein said polyethylene is ultra-high molecular weight polyethylene (see at least paragraphs 0006 and 0039 of Camillo).
Regarding claim 3, the modified garment of Angus (i.e., Angus in view of Martinez and Camillo) is further disclosed wherein one or more of the cut-resistant portions comprise or are reinforced by an aramid fabric (see column 1, lines 40-50; column 3, lines 1-5; and column 3, lines 46-62 of Angus; paragraphs 0006 and 0039 of Camillo; and rejection of claim 1 above).
Regarding claim 4, the modified garment of Angus (i.e., Angus in view of Martinez and Camillo) is further disclosed wherein the aramid fabric is selected from the group consisting of Nomex, Kevlar, and Twaron (see column 1, lines 40-50; column 3, lines 1-5; and column 3, lines 46-62 of Angus; paragraphs 0006 and 0039 of Camillo; and rejection of claim 1 above; note that Kevlar is a type of para-aramid fiber).
Regarding claim 6, the modified garment of Angus (i.e., Angus in view of Martinez and Camillo) is further disclosed wherein said non-cut- resistant material comprises one or more selected from the group consisting of spandex, polyester, synthetic, microfiber, nylon, and polypropylene fabrics (see Figs. 1A-1C and column 3, line 33 – column 4, line 6 of Angus; Angus discloses a poly/cotton jersey fabric 36, which would comprise polyester).
Claims 7-8, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Angus, Martinez, and Camillo, as applied to claim 6 above, further in view of Jorgenson et al. (herein Jorgenson)(US PG Pub 2011/0283442).
Regarding claim 7, Angus, Martinez, and Camillo together teach the limitations of claim 6, as discussed above. Angus further discloses wherein said non-cut-resistant fabric comprises a polyester blend (e.g., a poly/cotton jersey blend, see column 3, line 33 – column 4, line 6), but fails to disclose a blend of 80-90% polyester and 10-20% spandex.
However, Jorgenson teaches an upper body sports garment (65, see Figs. 2A-2B and paragraphs 0079-0088) comprising a polyester blend material that includes 80-90% polyester and 10-20% spandex (see at least paragraphs 0083-0088), as such a material provides enhanced stretchability, for improved comfort, flexibility, and/or durability during athletic activities (see Abstract and paragraphs 0003, 0011, 0015, and 0083-0088).
Therefore, based on Jorgenson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Angus’ poly blend material to include 80-90% polyester and 10-20% spandex, as doing so would provide enhanced stretchability, for improved comfort, flexibility, and/or durability during athletic activities.
It has been held to be 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.
Regarding claim 8, Angus, Martinez, and Camillo together teach the limitations of claim 6, as discussed above. Angus further discloses wherein said non-cut-resistant fabric comprises a polyester blend (e.g., a poly/cotton jersey blend, see column 3, line 33 – column 4, line 6), but fails to disclose a blend of about 85% polyester and about 15% spandex.
However, Jorgenson teaches an upper body sports garment (65, see Figs. 2A-2B and paragraphs 0079-0088) comprising a polyester blend material that includes about 85% polyester and about 15% spandex (see at least paragraphs 0083-0088), as such a material provides enhanced stretchability, for improved comfort, flexibility, and/or durability during athletic activities (see Abstract and paragraphs 0003, 0011, 0015, and 0083-0088).
Therefore, based on Jorgenson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Angus’ poly blend material to include about 85% polyester and about 15% spandex, as doing so would provide enhanced stretchability, for improved comfort, flexibility, and/or durability during athletic activities.
It has been held to be 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.
Claims 9-11, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Angus, Martinez, and Camillo, as applied to claim 1 above, further in view of Regan (US Patent No. 6,038,701).
Regarding claim 9, Angus, Martinez, and Camillo together teach the limitations of claim 1, as discussed above, but fail to further teach a placket extending through said collar and a yoke of said torso portion, wherein said placket facilitates donning and removal of said protective garment.
However, Regan teaches a protective sports garment (10) comprising a collar (54), a torso portion (12), and a placket (along 60) extending through the collar and a yoke of said torso portion (see at least Figs. 1, 2, and 5 and column 4, lines 25-50), wherein said placket facilitates donning and removal of said protective garment (see column 4, lines 25-50), so as to allow the collar to be easily opened to allow the head of the wearer to pass through, and to be adjustably closed to allow for a snug yet comfortable fit around the neck of the wearer (see column 4, lines 25-50).
Therefore, based on Regan’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Angus’ garment to further comprise a placket extending through said collar and a yoke of said torso portion, wherein said placket facilitates donning and removal of said protective garment; as doing so would allow the collar to be easily opened to allow the head of the wearer to pass through, and to be adjustably closed to allow for a snug yet comfortable fit around the neck of the wearer.
Regarding claim 10, the modified garment of Angus (i.e., Angus in view of Martinez, Camillo, and Regan) is further disclosed wherein said placket includes hook and loop fasteners for transitioning between an open and closed position (see column 4, lines 25-50 of Regan).
Regarding claim 11, the modified garment of Angus (i.e., Angus in view of Martinez, Camillo, and Regan) is further disclosed wherein said placket further includes one or more selected from the group consisting of buttons, zippers, studs, buckles, snap fasteners, and eyelets for transitioning between open and closed positions (see column 4, lines 25-50 of Regan).
Claims 12-13, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Angus, Martinez, and Camillo, as applied to claim 1 above, further in view of Olden et al. (herein Olden)(US PG Pub 2021/0169157).
Regarding claim 12, Angus, Martinez, and Camillo together teach the limitations of claim 1, as discussed above, but fail to further teach wherein said left and right upper arm portions comprise high friction gripping elements on outer surfaces thereof.
However, Olden teaches a protective sports garment (100, see at least Figs. 1-2 and at least Abstract) comprising high friction gripping elements (210) formed on outer surfaces of left and right upper arm portions of the garment (upper portions of 105, see Figs. 1-2 and paragraphs 0018-0020), so as to help retain protective pads worn over the sleeves during use of the garment (see at least paragraph 0020).
Therefore, based on Olden’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Angus’ left and right upper arm portions to further include high friction gripping elements on outer surfaces thereof, as doing so would help retain protective pads worn over the sleeves during use of the garment.
Regarding claim 13, the modified garment of Angus (i.e., Angus in view of Martinez, Camillo, and Olden) is further disclosed wherein said gripping elements (210 of Olden) comprise silicone dots (see Fig. 2 and paragraph 0020 of Olden).
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 JOCELYN BRAVO whose telephone number is (571)270-0581. The examiner can normally be reached Mon - Fri 9:30am - 6:00pm.
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/JOCELYN BRAVO/ Primary Examiner, Art Unit 3732