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 Amendments
The amendments filed with the written response received on 17 February 2026 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 30, 32, 34-35, and 37 has/have been amended, and claim(s) 33 is/are canceled. Accordingly, claim(s) 30-32 and 34-37 is/are pending in this application with an action on the merits to follow.
Because of the applicant's amendment, the following in the office action filed 16 September 2025, are hereby withdrawn:
Claim Objections
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(s) 34-36 is/are 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.
Claim 34 recites the limitation “X1 is sufficiently greater than Y1” on line 1 which is considered new matter. The written description does not disclose this structure and the structure is not clearly discernable in the drawings. With regards to the written description, there is discussion of “By ‘slight’ it is meant that the spacing between the relative portion of strip 108 and the underlying main garment portion 100a is sufficiently open to easily permit the wearer to slide one or more fingers F therebetween” on Page 8:8-10 and discussion of a “X”, “Y”, and “Z” on Pages 8:19-10:10, however, these statements do not specify that “X1 is sufficiently greater than Y1” as it is stated in the newly added limitations of claim 30. “X” is not specifically “X1” and “Y” is not specifically “Y1”. Further, the Applicant’s Drawings do not clarify how “X1 is sufficiently greater than Y1”. Fig(s). 4C show the fingers going through 407a and 407b, but do not specify which structure is X1 and Y1, and further does not specify what “sufficiently greater” means as is stated in the limitation “X1 is sufficiently greater than Y1”. Further, the addition of the numeral after the variable letter without discussion of what these numerals mean makes the claim unclear since the numeral is not discussed in the disclosure.
Claim 35 recites the limitation “X2 is sufficiently greater than Y2” on line 1 which is considered new matter. The written description does not disclose this structure and the structure is not clearly discernable in the drawings. With regards to the written description, there is discussion of “By ‘slight’ it is meant that the spacing between the relative portion of strip 108 and the underlying main garment portion 100a is sufficiently open to easily permit the wearer to slide one or more fingers F therebetween” on Page 8:8-10 and discussion of a “X”, “Y”, and “Z” on Pages 8:19-10:10, however, these statements do not specify that “X2 is sufficiently greater than Y2” as it is stated in the newly added limitations of claim 30. “X” is not specifically “X2” and “Y” is not specifically “Y2”. Further, the Applicant’s Drawings do not clarify how “X2 is sufficiently greater than Y2”. Fig(s). 4C show the fingers going through 407a and 407b, but do not specify which structure is X2 and Y2, and further does not specify what “sufficiently greater” means as is stated in the limitation “X2 is sufficiently greater than Y2”. Further, the addition of the numeral after the variable letter without discussion of what these numerals mean makes the claim unclear since the numeral is not discussed in the disclosure.
Claim 36 recites the limitation “X2 is sufficiently greater than Y2” on line 1 which is considered new matter. The written description does not disclose this structure and the structure is not clearly discernable in the drawings. With regards to the written description, there is discussion of “By ‘slight’ it is meant that the spacing between the relative portion of strip 108 and the underlying main garment portion 100a is sufficiently open to easily permit the wearer to slide one or more fingers F therebetween” on Page 8:8-10 and discussion of a “X”, “Y”, and “Z” on Pages 8:19-10:10, however, these statements do not specify that “X2 is sufficiently greater than Y2” as it is stated in the newly added limitations of claim 30. “X” is not specifically “X2” and “Y” is not specifically “Y2”. Further, the Applicant’s Drawings do not clarify how “X2 is sufficiently greater than Y2”. Fig(s). 4C show the fingers going through 407a and 407b, but do not specify which structure is X2 and Y2, and further does not specify what “sufficiently greater” means as is stated in the limitation “X2 is sufficiently greater than Y2”. Further, the addition of the numeral after the variable letter without discussion of what these numerals mean makes the claim unclear since the numeral is not discussed in the disclosure.
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.
Claim(s) 30-32 and 34-36 (and claim 37 at least for depending from a rejected claim) is/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.
Independent Claim 30 recites the limitation, “generally parallel.” The term “generally parallel” is a relative term which renders the claim indefinite. The term “generally parallel” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree (the Specification does not mention “generally parallel” or “parallel” at all), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how one having ordinary skill in the art can ascertain how much the x-shaped finger pulls can deviate from being parallel with the waist opening periphery to be considered “generally parallel.” Applicant’s Drawings Figs. 4A-4C do not clearly show what it means to be “generally parallel” in the context of “the main garment portion is provided with at least one X-shaped finger pull at or adjacent to the waist opening periphery and extending in a direction generally parallel therewith.” It is unclear what part of the finger pull is “generally parallel” with the X-shaped finger pulls if the finger pulls are X-shaped. It appears the X-shaped finger pulls run perpendicular with the waistband of the garment.
Claim 30 recites the limitation, “substantially equal.” The term “substantially equal” is a relative term which renders the claim indefinite. The term “substantially equal” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree (the Specification does not mention “substantially equal” at all), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how one having ordinary skill in the art can ascertain how much X1 can deviate from being equal with Y1 to be considered “substantially equal.”
Claim 30 recites the limitation, “substantially equal.” The term “substantially equal” is a relative term which renders the claim indefinite. The term “substantially equal” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree (the Specification does not mention “substantially equal” at all), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how one having ordinary skill in the art can ascertain how much X2 can deviate from being equal with Y2 to be considered “substantially equal.”
Claim 30 is/are indefinite as it/they recite(s) “wherein X1 is substantially equal to or greater than Y1 if the first elongate portion of material is an elastic material, and wherein X1 is greater than Y1 if the first elongate portion of material is an inelastic material; wherein X2 is substantially equal to or greater than Y2 if the second elongate portion of material is an elastic material, and wherein X2 is greater than Y2 if the second elongate portion of material is an inelastic material”. It is unclear if an elastic material and/or an inelastic material are required by the claim because the word “if” is ambiguous. The word “if” can be both optional and conditional. The Examiner is unclear whether the claim requires the elastic material, the inelastic material, or both. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as the limitations following “if” to be optional. Further, to avoid confusion, the Examiner suggests separating the limitations of claim 30 into two different claims, such that the limitations surrounding the elastic material and the limitations surrounding the inelastic material are in different claims.
Claim 31 is/are indefinite as it/they recite(s) “a plurality of the X-shaped finger pulls located at or adjacent to the waist opening periphery”. It is unclear if the “a plurality of the X-shaped finger pulls” is the same as the “at least one X-shaped finger pull” or new/different structures. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “a plurality of the at least one X-shaped finger pulls located at or adjacent to the waist opening periphery”.
Claim 32 is/are indefinite as it/they recite(s) “wherein at least some of the plurality of x-shaped finger pulls are spaced apart from one another”. It is unclear if the “the plurality of the X-shaped finger pulls” is the same as the “at least one X-shaped finger pull” of claim 31 or new/different structures. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “wherein at least some of the plurality of the at least one X-shaped finger pulls are spaced apart from one another”.
Claims 34-36 recite the limitation, “sufficiently greater.” The term “sufficiently greater” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree (the Specification does not discuss X1, X2, Y1, or Y2 at all, nor X and Y in relation to Figs. 4A-C), and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how one having ordinary skill in the art can ascertain how much X1 or X2 can deviate from being greater than Y1 or Y2 to be considered “sufficiently greater.” The Specification states, “the length X of the strip of material 604 is made greater than the distance Y along the undergarment fabric 600, such that the difference between X and Y physically creates a non-zero spacing Z between the strip of material 604 and the underlying undergarment fabric 600 in a known and expected manner. It will be additionally understandable that X and Y can be highly variable within the scope of the present invention as contemplated (e.g., depending on garment size and design requirements/preferences), and that Z can therefore be considered a quantification of the relative relation between X and Y. Finally, for the sake of clarity, the present invention most generally contemplates X being equal to or greater than Y” in Pages 9-10, but this does not explain what “sufficiently greater” means. Therein the metes and bounds of the claim are indefinite.
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) 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett US 0503520 in view of Almonte US 20140304899.
Regarding Independent Claim 30, Bennett discloses an undergarment (Title) comprising: a unitary main garment portion (Fig. 1 #A) having a front side (Bennett Annot. Fig. 1), a rear side (Bennett Annot. Fig. 1), and respective opposed lateral sides (Bennett Annot. Fig. 1), the main garment portion being provided with a waist opening (Bennett Annot. Fig. 1) defined by a waist opening periphery (Bennett Annot. Fig. 1) and two leg openings (Fig. 1 shows the left and right legs of the garment but does not show the openings specifically, however considering there is a crotch seam, there are likely leg openings at the approximate locations are outlined in Bennett Annot. Fig. 1) defined by respective leg opening peripheries (Fig. 1 shows the left and right legs of the garment but does not show the openings specifically, however considering there is a crotch seam, there are likely leg opening peripheries at the approximate locations are outlined in Bennett Annot. Fig. 1), the waist opening periphery being located so as to encircle a wearer's waist or hips when the undergarment is worn (Page 1, l. 70-75 notes the garment is “drawers” which are well-known to be worn around the pelvic, buttock, upper leg region of a human body), and the respective leg opening peripheries being located so as to receive each of the wearer's legs therethrough when the undergarment is worn (Page 1, l. 70-75 notes the garment is “drawers” which are well-known to be worn around the pelvic, buttock, and upper leg region of a human body); wherein the main garment portion is provided with at least one X-shaped finger pull (Bennett Annot. Fig. 1) at or adjacent to the waist opening periphery (Figs. 1-2; Bennett Annot. Fig. 3) and extending in a direction generally parallel therewith (Fig. 2), wherein the at least one finger pull comprises first (Bennett Annot. Fig. 3) and second elongate (Bennett Annot. Fig. 3) and intersecting portions of material (Bennett Annot. Fig. 3) fixedly attached (Fig. 2; Page 1:95-2:11) to the main garment portion (Fig. 2; Page 1:95-2:11) at respective opposing ends of the first and second elongate portions of material (Fig. 2; Page 1:95-2:11), the first and second elongate portions of material each extending in opposing oblique directions relative to the waist periphery opening (Fig. 2) and intersecting so as to form an X-shape in combination (Fig. 2); wherein the opposing ends of the first elongate portion of material are attached to the main garment portion at two spaced apart attachment locations (Bennett Annot. Fig. 3) and a length of the first elongate portion of material between the two spaced apart attachment locations is X1 (Bennett Annot. Fig. 2.2), and wherein opposing ends of the second elongate portion of material are attached to the main garment portion at two spaced apart attachment locations (Bennett Annot. Fig. 2) and a length of the second elongate portion of material between the two spaced apart attachment locations is X2 (Bennett Annot. Fig. 2.2); wherein a distance along the main garment portion between the two attachment locations corresponding to the first elongate portion of material is Y1 (Bennett Annot. Fig. 2.2), and a distance along the main garment portion between two attachment locations corresponding to the second elongate portion of material is Y2 (Bennett Annot. Fig. 2.2); and wherein Z1 is a distance between the first elongate portion of material and the main garment portion thereunder (Bennett Annot. Fig. 2.2) and Z2 is a distance between the second elongate portion of material and the main garment portion thereunder (Bennett Annot. Fig. 2.2); wherein X1 is substantially equal to or greater than Y1 (Bennett Annot. Fig. 2.2), X2 is substantially equal to or greater than Y2 (Bennett Annot. Fig. 2.2); and wherein X1 is greater than Y1 if the first elongate portion of material is an inelastic material (Bennett Annot. Fig. 2.2 shows the gap Z1 is looser and further away from the main garment length Y1 under the elongate portion X1 thus showing X1 is longer than Y1); and wherein X2 is greater than Y2 if the second elongate portion of material is an inelastic material (Bennett Annot. Fig. 2.2 shows the gap Z2 is looser and further away from the main garment length Y2 under the elongate portion X2 thus showing X2 is longer than Y2).
Bennet does not expressly disclose wherein X1 is substantially equal to or greater than Y1 if the first elongate portion of material is an elastic material, X2 is substantially equal to or greater than Y2 if the second elongate portion of material is an elastic material, Z1 is directly proportional to X1, and Z2 is directly proportional to X2.
Almonte teaches an undergarment (Figs. 1-5 #10) with an elastic band (Figs. 1-5 #200) around an exterior of the undergarment (Figs. 1-5) wherein a first elongate portion (Figs. 1-5 #200 left front) and a second elongate portion (Figs. 1-5 #200 right front) are made of an elastic material (¶0018).
Both Bennett and Almonte teach analogous inventions in the art of lower body garments with waist adornments. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Bennett with the teachings of Almonte such that the first elongate portion and the second elongate portion are made of an elastic material so that the garment has, “Ease of access is especially important to individuals with limited hand dexterity” (Almonte ¶0018) and to enable a hand “to pass between the retainer band and the undergarment with sufficient tension to inhibit unwanted movement of the” undergarment (Almonte Abstract). Further 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
The modified undergarment of Bennet does not expressly disclose wherein Z1 is directly proportional to X1, and Z2 is directly proportional to X2. With regards to Z1 being directly proportional to X1, Bennett Annot. Fig. 2.2 shows X1 and Z1, and when X1 is pulled outward away from the main garment, though not expressly stated, it would not be unreasonable for the distances of X1 and Z1 to be the same. With regards to Z2 being directly proportional to X2, Bennett Annot. Fig. 2.2 shows X2 and Z2, and when X2 is pulled outward away from the main garment, though not expressly stated, it would not be unreasonable for the distances of X2 and Z2 to be the same. Further, it would have been an obvious matter of design choice to make Z1 proportional to X1, Z2 proportional to X2, X1 equal to or greater than Y1 depending on the material, and X2 equal to or greater than Y2 depending on the material since such modifications would involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144.04.
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Bennett discloses the structure of the undergarment, there would be a reasonable expectation for the undergarment to perform such functions as explained after each functional limitation.
Regarding Claim 31, the modified undergarment of Bennett discloses the undergarment according to claim 30, comprising a plurality of the X-shaped finger pulls (Fig. 2) located at or adjacent to the waist opening periphery (Fig. 2).
Regarding Claim 32, the modified undergarment of Bennett discloses the undergarment according to claim 31, wherein at least some of the plurality of X-shaped finger pulls are spaced apart from one another along the direction of the waist opening periphery (Bennett Annot. Fig. 2).
Claim(s) 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett as applied to claim 30 above, and further in view of Mei US 6473941.
Regarding Claim 34, the modified undergarment of Bennett discloses the undergarment according to claim 30, but do not expressly disclose wherein X1 is sufficiently greater than Y1 such that Z1 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder.
Mei teaches a lower body garment (Fig. 4 #20) wherein X1 (Fig. 4 #38 left) is sufficiently greater than Y1 (Fig. 4 #240 left) such that Z1 (Fig. 4 space under #38 left) is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder (Col. 4:33-40 notes the space can hold a cell phone case thus it would not be unreasonable for a finger to be used in the manner recited. Further, it is noted that the space Z1 will fit differently sized hands in different manners and an intended relative position of the elongate portions and main garment to the wearer's hand anatomy is functional and not patentably significant.)
Both Bennett and Mei teach analogous inventions in the art of lower body garments with X-shaped and cross-over waist adornments. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Bennett with the teachings of Mei such that X1 is sufficiently greater than Y1 such that Z1 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder in order to allow the garment to be pulled on “easily or conveniently without using a waist belt” (Mei Col. 6:31-33). Further, it would have been an obvious matter of design choice to make X1 is sufficiently greater than Y1 such that Z1 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144.04.
Regarding Claim 35, the modified undergarment of Bennett discloses the undergarment according to claim 30, but does not expressly disclose wherein X2 is sufficiently greater than Y2 such that Z2 is large enough to permit one or more of the wearer's fingers to pass between the second elongate portion of material and the main garment portion thereunder.
Mei teaches a lower body garment (Fig. 4 #20) wherein X2 (Fig. 4 #38 right) is sufficiently greater than Y2 (Fig. 4 #240 right) such that Z2 (Fig. 4 space under #38 right) is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder (Col. 4:33-40 notes the space can hold a cell phone case thus it would not be unreasonable for a finger to be used in the manner recited. Further, it is noted that the space Z2 will fit differently sized hands in different manners and an intended relative position of the elongate portions and main garment to the wearer's hand anatomy is functional and not patentably significant.)
Both Bennett and Mei teach analogous inventions in the art of lower body garments with X-shaped and cross-over waist adornments. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Bennett with the teachings of Mei such that X2 is sufficiently greater than Y2 such that Z2 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder in order to allow the garment to be pulled on “easily or conveniently without using a waist belt” (Mei Col. 6:31-33). Further, it would have been an obvious matter of design choice to make X2 is sufficiently greater than Y2 such that Z2 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144.04.
Regarding Claim 36, the modified undergarment of Bennett discloses the undergarment according to claim 34, but does not expressly disclose wherein X2 is sufficiently greater than Y2 such that Z2 is large enough to permit one or more of the wearer's fingers to pass between the second elongate portion of material and the main garment portion thereunder.
Mei teaches a lower body garment (Fig. 4 #20) wherein X2 (Fig. 4 #38 right) is sufficiently greater than Y2 (Fig. 4 #240 right) such that Z2 (Fig. 4 space under #38 right) is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder (Col. 4:33-40 notes the space can hold a cell phone case thus it would not be unreasonable for a finger to be used in the manner recited. Further, it is noted that the space Z2 will fit differently sized hands in different manners and an intended relative position of the elongate portions and main garment to the wearer's hand anatomy is functional and not patentably significant.)
Both Bennett and Mei teach analogous inventions in the art of lower body garments with X-shaped and cross-over waist adornments. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Bennett with the teachings of Mei such that X2 is sufficiently greater than Y2 such that Z2 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder in order to allow the garment to be pulled on “easily or conveniently without using a waist belt” (Mei Col. 6:31-33). Further, it would have been an obvious matter of design choice to make X2 is sufficiently greater than Y2 such that Z2 is large enough to permit one or more of the wearer's fingers to pass between the first elongate portion of material and the main garment portion thereunder, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP § 2144.04.
Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett as applied to claim 30 above, and further in view of a different embodiment of Mei.
Regarding Claim 37, the modified undergarment of Bennett discloses the undergarment according to claim 30, but does not expressly disclose wherein the first and second elongate portions of material are fixed to one another at the location at which the first and second elongate portions of material intersect.
Mei teaches a lower body garment (Fig. 7 #20) wherein a first and second elongate portions (Fig. 7 #48 left/right) of material are fixed to one another at the location at which the first and second elongate portions of material intersect (Col. 5:21-53).
Both Bennett and Mei teach analogous inventions in the art of lower body garments with X-shaped waist adornments. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Bennett with the teachings of Mei such that the first and second elongate portions would be connected at the point where the two elongate portions intersect in order to provide a pull structure that will hold, “more strongly and securely,” (Mei Col. 5:29).
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Response to Arguments
Applicant’s arguments, filed 17 February 2026, with respect to the 35 USC § 112(a) rejection of claims 34-36, the 35 USC §112(b) rejection of claims 30-37, the 35 USC § 102 rejection of claims 30-33, and the 35 USC § 103 rejections of claims 34-37 have been considered but are not persuasive.
Regarding the 35 USC § 112(a) rejection of claims 34-36, Applicant argues:
The claims and Specification provide adequate support for the language, “X1 is sufficiently greater than Y1” and “X2 is sufficiently greater than Y2”, particularly in Page 8:13-18 and 9:4-13, and that the X1, X2, Y1, and Y2 are the same as the recited X and Y in the Specification. (Remarks Pg. 5-7)
The Examiner respectfully disagrees. As noted in the rejection above, there is no recitation in the disclosure prior to the amendment in the response to the Restriction/Election Requirement on 22 July 2025 of an X1, X2, Y1, or Y2. Further, the structures that these labels denote in the figures—specifically that X1 is sufficiently greater than Y1 and that X2 is sufficiently greater than Y2—are not shown in the Drawings (See Fig. 6 in particular). Further, the disclose never defines what it means to be “sufficiently greater than”. While there is recitation of an X and a Y in Pages 8:19-10:10, it is unclear if these are the same structures as X1, X2, Y1, and Y2. The Examiner cannot in good faith assume that X1, X2, Y1, and Y2 are the same as the recited X and Y since the numeral after the variable is not defined in the disclosure at all, much less as being related to X and Y. Therefore these limitations are still considered new matter. In order to overcome this rejection, the Examiner suggests amending the claims consistent with the Specification. See 35 USC § 112(a) rejection above.
Regarding the 35 USC § 112(b) rejection of claims 30-37, Applicant argues:
“generally parallel” and “substantially equal” are both terms of degree that a person of ordinary skill would know and understand as these are considered standard “tolerances”. (Remarks Pg. 8-9)
The Examiner respectfully disagrees. In the instant case, neither of these limitations are defined in the Specification and they are not clearly shown in the Drawings, and thus it is unclear what the metes and bounds of these two limitations are. Further, in patents, there are no “standard tolerances” as a tolerance is a figure set by each individual manufacture and can vary greatly. To attempt to apply standard tolerances to a patent claim without setting the ranges for those tolerances leaves the claim indefinite. To overcome this rejection, the Examiner suggests amending the claims to clearly define the limits of the terms “parallel” and “equal” consistent with the Specification and Drawings. See 35 USC § 112(b) rejection above.
“As an immediate clarification, "if' as used here is not meant to indicate or suggest optionality. Instead, the claim sets forth mutually exclusive conditional structural relationships between the defined X and Y dimensions, conditioned on whether a given elongate portion of material is elastic or inelastic. In more detail, the respective first and second elongate portions of material are inherently either elastic or inelastic… The Examiner's optionality interpretation would therefore contradict the logical structure of the claim and create an inconsistency. This is not a question of claim breadth - it is a matter of the claim's internal rules and coherence. When read as a whole, the claim clearly assigns the appropriate dimensional relationships based on whether the elongate portion is elastic or inelastic, and the “if” conditionals are fully definite and unambiguous”. (Remarks Pg. 11-12)
The Examiner respectfully disagrees. In Ex parte Schulhauser, the PTAB found that “If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” Schulhauser at 10. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met);” Schulhauser 9, 10. In other words, if there is a chance that the condition is not met, then the Examiner is not required to find prior art to address the limitation. (See MPEP § 2111.04) The Examiner is unclear about whether or not the elastic and/or inelastic material is actually required by the claim in order to complete the requisite structural limitations. The word “if” is indefinite as it does not clearly define the metes and bounds of the limitation. By using the word “if”, the claim is stating four different invention embodiments are present and appear to be required at once. However, this is impossible. In one set within claim 1, the claim is stating that: an elastic material composes X1 and X1 is equal to or greater than Y1; in a second set: an inelastic material composes X1 and X1 is greater than Y1; in a third set: an elastic material composes X2 and Y2 is equal to or greater than X2; and in a fourth set: an inelastic material composes X2 and X2 is greater than Y2. Set one can be combined with sets three or four, and set two can be combined with sets three or four, but set one and set two cannot be together with sets three or four, and so on. The material properties appear to be determining the structure of the garment and the Examiner isn’t sure which structures are actually required for the claim, and this makes the claim confusing. Further, the claim language used to trigger the condition is not clear. To overcome this rejection, the Examiner suggests amending the claim to include either sets one and three, sets one and four, sets two and three, or sets two and four. Further, the Examiner suggests using the word “when” instead of “if”. See 35 USC § 112(b) rejection above.
“Conditional limitations of this type are routinely used to define alternative, mutually exclusive structural requirements within a single claim, without rendering any limitation optional”. (Remarks Page 12).
The Examiner respectfully disagrees. Conditional limitations are by their very nature sets of options. Mutual exclusivity means two things cannot exist nor be used at the same time together. Therefore the conditional limitations in claim 30 (set with “if”) are optional by nature. For example, when interpreting, “wherein X1 is substantially equal to or greater than Y1 if the first elongate portion of material is an elastic material, and wherein X1 is greater than Y1 if the first elongate portion of material is an inelastic material” would be interpreted as either the properties of the elastic material or the properties of the inelastic material. The claim does not appear to require both. Using “if” would allow optionality. Further, the claim language used to trigger the condition is not clear. The Examiner suggests using the word “when” instead of “if”. See 35 USC § 112(b) rejection above.
“Independent claim 30, from which claim 31 depends, recites, in pertinent part "wherein the main garment portion is provided with at least one X-shaped finger pull at or adjacent to the waist opening periphery and extending in a direction generally parallel therewith..." (Emphasis added.) Claim 31 recites "The undergarment according to claim 30, comprising a plurality of the X-shaped finger pulls located at or adjacent to the waist opening periphery." (Emphasis added.) Thus, the recitation of "at least one X-shaped finger pull" (i.e., one or more) in claim 30 has been appropriately and permissibly narrowed in dependent claim 31 to "a plurality of the X- shaped finger pulls." (Emphasis added.) The express recitation of "the X-shaped finger pulls" in claim 31 is respectfully believed to address the Examiner's concerns and ensures that the recitation is definite.” (Remarks Pg. 13)
The Examiner respectfully disagrees. “at least one X-shaped finger pull” and “a plurality of the X-shaped finger pulls” could be read a two different structures. The word “the” before “X-shaped finger pulls” does not sufficiently clarify that these are the same structures as those recited in “at least one X-shaped finger pull”. While these two limitations sound similar they could easily be misinterpreted as different structures. To overcome this rejection, the Examiner suggests amending the claim to say “a plurality of the at least one X-shaped finger pulls” in claim 31 or “a plurality of X-shaped finger pulls” in claim 30. See 35 USC § 112(b) rejection above.
Regarding claims 34-36: “substantially greater” is not in the claims. “sufficiently greater” is. Arguments are the same as for the 35 USC § 112(a) above. (Remarks Pg. 14)
The Examiner apologizes for the confusion. The 35 USC § 112(b) rejections for claims 34-36 should have, indeed, read “sufficiently greater”. Regarding the arguments, the Examiner respectfully disagrees. It is unclear how one having ordinary skill in the art can ascertain how much X1 or X2 can deviate from being greater than Y1 or Y2 to be considered “sufficiently greater” as this is not disclosed clearly in the disclosure. In order to overcome this rejection, the Examiner suggests amending the claims consistent with the Specification. See 35 USC § 112(b) rejections above.
Regarding the functional language denotation of claims 30-36, Applicant argues:
“Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Bennett discloses the structure of the undergarment, there would be a reasonable expectation for the undergarment to perform such functions as explained after each functional limitation.” (Remarks Pg. 14)
The Examiner respectfully disagrees. While these limitations are noted as functional, they are all still rejected using prior art. Further, it is well within the ordinary skill of one in the art to change the size of a feature. To make a strap that is designed to hold an object larger in order to hold a larger object would not be outside of reason. MPEP § 2144.04 and 35 USC § 103 rejections above.
Regarding the 35 USC § 102 rejection of claims 30-33 in view of Bennet, Applicant argues:
“The mention of dimensions X1, Y1, X2, Y2, Z1, and Z2 are understandable at least in part in view of Figure 6 and the written disclosure corresponding thereto (generally set out there in terms of dimensions X, Y, and Z” (Remarks Pages 16)
The Examiner respectfully disagrees. Considering the Applicant amended claim 30 significantly and in such a way as to change the scope of the claim, the arguments regarding the previous 35 USC 102 are moot. However, the Examiner would like to address one specific argument made by the Applicant regarding newly amended claim 30. Regarding the argument that X1, X2, Y1, or Y2 are found in the disclosure, the Examiner respectfully disagrees. As noted in the 35 USC 112(a) and 35 USC 112(b) rejections above, there is no recitation in the disclosure prior to the amendment in the response to the Restriction/Election Requirement on 22 July 2025 of an X1, X2, Y1, or Y2. Further, the structures that these labels denote in the figures—specifically that X1 is sufficiently greater than Y1 and that X2 is sufficiently greater than Y2—are not shown in the Drawings (See Fig. 6 in particular). Further, the disclose never defines what it means to be “sufficiently greater than”. While there is recitation of an X and a Y in Pages 8:19-10:10, it is unclear if these are the same structures as X1, X2, Y1, and Y2. The Examiner cannot in good faith assume that X1, X2, Y1, and Y2 are the same as the recited X and Y since the numeral after the variable is not defined in the disclosure at all, much less as being related to X and Y. See 35 USC 112(a) and 35 USC 112(b) rejection above.
Regarding the 35 USC § 103 of claims 34-37, Applicant argues:
There was no obvious basis to modify Bennett with Mei as the two arts are not analogous. Mei is not an undergarment nor is Mei in the same area of endeavor as Bennett. (Remarks Page 22-23)
The Examiner respectfully disagrees. First, an undergarment is any garment worn under another garment. Second, both Bennett and Mei teach lower body garments with two legs and X-shaped strap-like waist adornments. Considering the prior art of Bennett shows a cord going through the X-shaped straps, it proves that the X-shaped straps are designed to have structures go under them. Therefore it would not be out of reason for one having ordinary skill to change the size of those X-shaped straps in order to make the X-shaped straps large enough to fit human fingers or even a larger cord. However, for the sake of clarity, the Examiner brought in the prior art of Mei in order to demonstrate that there already are X-shaped straps around the waistbands of garments that are big enough to fit larger structures through. MPEP § 2144.04 and 35 USC § 103 rejections above.
The Examiner has indicated an arbitrarily selected distance between the crossing points of two adjacent X-shaped crossings of “cords or threads B” to be the X-shaped finger pulls that are spaced apart from one another along the direction of the waist opening periphery, and Bennet does not show a “continuous series” of finger pulls about the waist periphery opening. (Remarks Pages 21-22)
The Examiner respectfully disagrees. The Examiner interpreted the claim under BRI. Newly amended Claim 32 literally recites, “wherein at least some of the plurality of X-shaped finger pulls are spaced apart from one another along the direction of the waist opening periphery.” When looking at Bennett Annotated Figs. 1-2.2, it is clear that there are at least some of the plurality of X-shaped finger pulls that are spaced apart from one another along the direction of the waist opening periphery. The Examiner refers to Applicant’s own Specification at Pages 16-17 where structures #406a and #406b are discussed and Applicant’s own Drawings Figs. 4A-4B in which the X-shaped finger pull straps look remarkably similar to what is seen in Bennett Annotated Figs. 1-3. See 35 USC 103 rejection above.
Mei uses snap fasteners on a belt loop that is “I” shaped and this does not disclose how long the loop is, and the space that exists under the loop is not functionally or structurally relevant to Mei’s invention. (Remarks Page 26)
The Examiner respectfully disagrees. First, Col. 4:28-30 states the snaps can be replaced with stitches or rivets. Second, Fig. 4 shows a vertical loop and a second loop attached to the vertical loop in a sideways X-configuration therefore the straps are X-shaped. Third, Col. 4:33-37 states, “Preferably more than one snap fastener part will be placed around the middle area of long loop 38 to fasten and hold securely the small bag 26 carrying a cellular phone or other mini compact electronic device” which literally states the space under the long loop 38 is used to secure and carry the small bag 26. Therefore it would not be unreasonable for that same space to be able to allow human fingers to fit through. Further, it is well within the ordinary skill of one in the art to change the size of a feature. To make a strap that is designed to hold an object larger in order to hold a larger object would not be outside of reason. See MPEP 2144.04 and 35 USC 103 rejection above.
Applicant’s arguments, filed 17 February 2026, with respect to the 35 USC 102 of claims 30-33 have been considered but are moot because the arguments do not apply to the current grounds of rejection. In view of Applicant’s amendment, the search has been updated, and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new ground(s) of rejection.
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 extension fee 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 date of this final action.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732
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