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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered. Claims 1, 4, 9, 12, 17, and 20 is/are amended. Claims 5-6, 13-14, and 16 remain withdrawn. Claims 1-4, 7-12, 15, and 17-20 are presented for examination on the merits for Species I and subspecies a (Figs. 1-7 and 14).
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, 7-12, 15, and 17-20 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, regards as the invention.
Claim 1 is rejected as being indefinite or failing to particularly point out and distinctly claim the meaning of “a deployed riding position”. After a full review of Applicant’s disclosure in paras. 42 and 61, it appears the deployed riding position is the same as the unfastened state. Applicant is respectfully advised to clarify how a deployed riding position is different than an unfastened state, or if the two limitations are intended to be the same. For examination purposes, Examiner interprets the deployed riding position is the same as the unfastened state. Claim 1 is rejected as best understood by Examiner.
Claim 9 is rejected as being indefinite or failing to particularly point out and distinctly claim the meaning of “a deployed riding position”. After a full review of Applicant’s disclosure in paras. 42 and 61, it appears the deployed riding position is the same as the unfastened state. Applicant is respectfully advised to clarify how a deployed riding position is different than an unfastened state, or if the two limitations are intended to be the same. For examination purposes, Examiner interprets the deployed riding position is the same as the unfastened state. Claim 9 is rejected as best understood by Examiner.
Claim 17 is rejected as being indefinite or failing to particularly point out and distinctly claim the meaning of “a deployed riding position”. After a full review of Applicant’s disclosure in paras. 42 and 61, it appears the deployed riding position is the same as the unfastened state. Applicant is respectfully advised to clarify how a deployed riding position is different than an unfastened state, or if the two limitations are intended to be the same. For examination purposes, Examiner interprets the deployed riding position is the same as the unfastened state. Claim 17 is rejected as best understood by Examiner.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-4, 8-12, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roemer et al. (US 2013/0031695 A1).
Regarding claim 1, insofar as is definite, Roemer discloses a garment (10; Figs. 1-3) to be worn by a wearer during operation of a vehicle (para. 9 discloses the garment is worn; it is noted that “to be worn by a wearer during operation of a vehicle” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations), the garment comprising:
a hood member (16) having a front hood region (32, 40) that defines a front hood cavity (Fig. 1, where “a front hood cavity” is the volumetric space within 16, 32, and 40 to cover the back of the wearer’s head as disclosed in para. 19), and a collar member (20) and a flap member (30, 34; para. 19) that collectively form a front seam (seam at 38; para. 19 & Fig. 2 disclose 20, 30, and 34 collectively form at seam/zipper 38), the hood member being selectively movable between a deployed riding position configured for support on the head of the wearer (Figs. 1-2; paras. 19-21) and a stowed riding position configured for removal off the head of the wearer (Fig. 3; para. 21; Examiner notes the term “stowed” is very broad and merely means “to place or arrange, especially in a neat, compact way”, see defn. no. 1a of American Heritage Dictionary of the English Language, 5th Edition, 2016, entry via thefreedictionary.com/stowed, and therefore, the hood member of Roemer’s Fig. 3 shows a stowed position of the wearer inasmuch as claimed; It is noted that a recitation, “a deployed riding position and a stowed riding position”, with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987));
and a fastening mechanism (38) connected to the collar member and the flap member at the front hood region for selective movement between (para. 19 & Fig. 2):
an unfastened state that at least partially opens the front seam (Fig. 2, as best understood) in a manner that at least partially exposes the front hood cavity to facilitate access into the front hood cavity (Fig. 2) and thereby permit wearing of the hood member by the wearer in the deployed riding position (Fig. 2; it is noted that “thereby permit wearing of the hood member by the wearer in the deployed riding position during operation of the vehicle” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations), and
a fastened state (Fig. 3) that closes the front seam in a manner that restricts access and airflow into the front hood cavity in the stowed position (Fig. 3 shows the front seam being closed and the hood cavity in the stowed position, and therefore, “closes the front seam in a manner that restricts airflow into the front hood cavity” inasmuch as claimed; it is noted that “closes the front seam in a manner that restricts access and airflow into the front hood cavity in the stowed position” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations).
Regarding claim 2, Roemer further discloses the garment of claim 1, wherein the fastening mechanism comprises a zipper arrangement (Fig. 2; para. 19).
Regarding claim 3, Roemer further discloses the garment of claim 2, wherein the zipper arrangement comprises a first plurality of teeth extending on an exposed, upper edge of a collar region (para. 21 & Figs. 1-2 disclose that 38 is a zipper, and therefore, has a first plurality of teeth extending on the terminal edge of 20, the terminal edge of 20 is “an exposed upper edge of a collar region”), a second plurality of teeth extending on an exposed, lower edge of the hood member (Para. 19 & Figs. 1-2 disclose that 38 is a zipper, and therefore, a second plurality of teeth extending on the terminal edge of 34, the terminal edge of 34 is “an exposed, lower edge of the hood member”), and a zipper slider member (see annotated Fig. 2 below).
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Regarding claim 4, Roemer further discloses the garment of claim 3, wherein the zipper slider member is selectively moveable between: a zipped position to connect the first plurality of teeth and the second plurality of teeth in a manner that closes the front seam (Fig. 1), and an unzipped position to disconnect the first plurality of teeth and the second plurality of teeth in a manner that opens the front seam (Fig. 2).
Regarding claim 8, Roemer further discloses the garment of claim 1, wherein the flap member is oriented in a horizontal direction across a width of the front hood cavity (Figs. 1-2).
Regarding claim 9, insofar as is definite, Roemer discloses a garment (10; Figs. 1-3) to be worn by a wearer during operation of a vehicle (para. 9 discloses the garment is worn; it is noted that “to be worn by a wearer during operation of a vehicle” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations), the garment comprising:
a hood member (16) having a front hood region (32, 40) that defines a front hood cavity (Fig. 1, where “a front hood cavity” is the volumetric space within 16, 32, and 40 to cover the back of the wearer’s head as disclosed in para. 19), and a left flap member (left 30 and left 34; paras. 19-20) and a right flap (right 30 and right 34; paras. 19-20) member that collectively form a front seam (seam at 38; para. 19 & Fig. 2 disclose 20, 30, and 34 collectively form at seam/zipper 38), the hood member being selectively movable between a deployed riding position configured for support on a head of the wearer (Figs. 1-2; paras. 19-21) and a stowed riding position configured for removal off the head of the wearer (Fig. 3; para. 21; Examiner notes the term “stowed” is very broad and merely means “to place or arrange, especially in a neat, compact way”, see defn. no. 1a of American Heritage Dictionary of the English Language, 5th Edition, 2016, entry via thefreedictionary.com/stowed, and therefore, the hood member of Roemer’s Fig. 3 shows a stowed position of the wearer inasmuch as claimed; It is noted that a recitation, “a deployed riding position and a stowed riding position”, with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987));
and a fastening mechanism (38) connected to the left flap member and the right flap member at the front hood region for selective movement between (para. 19 & Fig. 2):
an unfastened state that at least partially opens the front seam (Fig. 2, as best understood) in a manner that at least partially exposes the front hood cavity to facilitate access into the front hood cavity (Fig. 2) and thereby permit wearing of the hood member by the wearer in the deployed riding position (Fig. 2; it is noted that “thereby permit wearing of the hood member by the wearer in the deployed riding position during operation of the vehicle” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations), and
a fastened state (Fig. 3) that closes the front seam in a manner that restricts access and airflow into the front hood cavity (Fig. 3 shows the front seam being closed and the hood cavity in the stowed position, and therefore, “closes the front seam in a manner that restricts airflow into the front hood cavity” inasmuch as claimed; it is noted that “closes the front seam in a manner that restricts access and airflow into the front hood cavity in the stowed position” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations).
Regarding claim 10, Roemer discloses the garment of claim 9, wherein the fastening mechanism comprises a zipper arrangement (Fig. 2; para. 19).
Regarding claim 11, Roemer discloses the garment of claim 10, wherein the zipper arrangement comprises a first plurality of teeth extending (para. 21 & Figs. 1-2 disclose that 38 is a zipper, and therefore, has a first plurality of teeth) on an exposed edge of the left flap member (first plurality of teeth of 38 on left 30 and left 34; para. 21 & Figs. 1-2 disclose the first plurality of teeth extending on a terminal edge of side portions 30, which includes the left 30, and therefore, “a first plurality of teeth extending on an exposed edge of the left flap member”), a second plurality of teeth (para. 21 & Figs. 1-2 disclose that 38 is a zipper, and therefore, has a second plurality of teeth) extending on an exposed edge of the right flap member (second plurality of teeth of 38 on right 30 and right 34; para. 21 & Figs. 1-2 disclose the second plurality of teeth extending on a terminal edge of side portions 30, which includes the right 30, and therefore, “a first plurality of teeth extending on an exposed edge of the left flap member”), and a zipper slider member (see annotated Fig. 2 above of claim 3 rejection).
Regarding claim 12, Roemer discloses the garment of claim 11, wherein the zipper slider member is selectively moveable between (Figs. 1-2):
a zipped position to connect the first plurality of teeth and the second plurality of teeth in a manner that closes the front seam (Fig. 1), and an unzipped position to disconnect the first plurality of teeth and the second plurality of teeth in a manner that opens the front seam (Fig. 2).
Regarding claim 17, insofar as is definite, Roemer discloses a riding hood (10; Figs. 1-3; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations) to be worn by a wearer during operation of a vehicle (para. 9 discloses the garment is worn; it is noted that “to be worn by a wearer during operation of a vehicle” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations), the riding hood comprising:
a hood member (16) having a front hood region (32, 40) that defines a front hood cavity (Fig. 1, where “a front hood cavity” is the volumetric space within 16, 32, and 40 to cover the back of the wearer’s head as disclosed in para. 19), and a collar member (20) and a flap member (30, 34; para. 19) that collectively form a front seam (seam at 38; para. 19 & Fig. 2 disclose 20, 30, and 34 collectively form at seam/zipper 38), the hood member being selectively movable between a deployed riding position configured for support on a head of the wearer (Figs. 1-2; paras. 19-21) and a stowed riding position configured for removal off the head of the wearer (Fig. 3; para. 21; Examiner notes the term “stowed” is very broad and merely means “to place or arrange, especially in a neat, compact way”, see defn. no. 1a of American Heritage Dictionary of the English Language, 5th Edition, 2016, entry via thefreedictionary.com/stowed, and therefore, the hood member of Roemer’s Fig. 3 shows a stowed position of the wearer inasmuch as claimed; It is noted that a recitation, “a deployed riding position and a stowed riding position”, with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987));
and a fastening mechanism (38) connected to the collar member and the flap member at the front hood region for selective movement between (para. 19 & Fig. 2):
an unfastened state that at least partially opens the front seam (Fig. 2, as best understood) in a manner that at least partially exposes the front hood cavity to facilitate access into the front hood cavity (Fig. 2) and thereby permit wearing of the hood member by the wearer in the deployed riding position (Fig. 2; it is noted that “thereby permit wearing of the hood member by the wearer in the deployed riding position during operation of the vehicle” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations), and
a fastened state (Fig. 3) that closes the front seam in a manner that restricts access and airflow into the front hood cavity in the stowed riding position (Fig. 3 shows the front seam being closed and the hood cavity in the stowed position, and therefore, “closes the front seam in a manner that restricts airflow into the front hood cavity” inasmuch as claimed; it is noted that “closes the front seam in a manner that restricts access and airflow into the front hood cavity in the stowed position” is a statement of function and does not positively recite a structural limitation, but instead require an ability to so perform and/or function. Roemer discloses the structure as claimed, and therefore, would have a reasonable expectation of performing such function; It is noted that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations).
Regarding claim 18, Roemer further discloses the riding hood of claim 17, wherein the fastening mechanism comprises a zipper arrangement (Fig. 2; para. 19).
Regarding claim 19, Roemer further discloses the riding hood of claim 18, wherein the zipper arrangement comprises a first plurality of teeth (13; Figs. 4-5) extending on an exposed, upper edge of a collar region (para. 21 & Figs. 1-2 disclose that 38 is a zipper, and therefore, has a first plurality of teeth extending on the terminal edge of 20, the terminal edge of 20 is “an exposed upper edge of a collar region”), a second plurality of teeth extending on an exposed, lower edge of the hood member (Para. 19 & Figs. 1-2 disclose that 38 is a zipper, and therefore, a second plurality of teeth extending on the terminal edge of 34, the terminal edge of 34 is “an exposed, lower edge of the hood member”), and a zipper slider member (see annotated Fig. 2 above of claim 3 rejection).
Regarding claim 20, Roemer further discloses the riding hood of claim 19, wherein the zipper slider member is selectively moveable between (Figs. 1-2):
a zipped position to connect the first plurality of teeth and the second plurality of teeth in a manner that closes the front seam (Fig. 1), and an unzipped position to disconnect the first plurality of teeth and the second plurality of teeth in a manner that opens the front seam (Fig. 2).
Claim(s) 7 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roemer et al. (US 2013/0031695 A1), in view of MacDonald et al. (US 5,875,493 A).
Regarding claim 7, Roemer discloses the garment of claim 1, except for wherein the flap member comprises a multi-layered structure having a wind-resistant/wind-blocking outer layer. Examiner submits that Roemer discloses the garment is used for extreme wind conditions (para. 21, and therefore, the flap member must have a wind-blocking outer layer).
MacDonald teaches a hood (500; Fig. 33) comprising a multi-layered structure (col. 15 lines 26-28, “multiple layers of fabric”) having a wind-resistant/wind-blocking outer layer (col. 15 lines 26-29, where the “wind-proof” nylon is lined with polar fleece, and therefore, the wind-proof layer is an outer layer).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the flap member of Roemer to include a multi-layered structure having a wind-resistant/wind-blocking outer layer, as taught by MacDonald, in order to provide more protection and comfort to the wearer. 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.
Regarding claim 15, Roemer discloses the garment of claim 9, except for wherein the flap member comprises a multi-layered structure having a wind-resistant/wind-blocking outer layer. Examiner submits that Roemer discloses the garment is used for extreme wind conditions (para. 21, and therefore, the flap member must have a wind-blocking outer layer).
MacDonald teaches a hood (500; Fig. 33) comprising a multi-layered structure (col. 15 lines 26-28, “multiple layers of fabric”) having a wind-resistant/wind-blocking outer layer (col. 15 lines 26-29, where the “wind-proof” nylon is lined with polar fleece, and therefore, the wind-proof layer is an outer layer).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the flap member of Roemer to include a multi-layered structure having a wind-resistant/wind-blocking outer layer, as taught by MacDonald, in order to provide more protection and comfort to the wearer. 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.
Response to Argument
Applicant’s arguments filed 11/10/2025 have been fully considered but they are not persuasive. 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.
Conclusion
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/G.Q.H./Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732
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