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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/31/2025 has been entered.
Response to Amendment
The amendments filed with the written response received on 10/31/2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1-2, 5-7, 10-14, 16-17, and 19 have been amended; claims 8, 15, and 18 are canceled. Accordingly, claims 1-7, 9-14, 16-17, and 19-20 are pending in this application. Because of the applicant's amendment, the following in the office action filed 07/14/2025, are hereby withdrawn: the prior claim objections, and the prior rejection of claims under 35 USC § 112.
Response to Arguments
Applicant's arguments, filed 10/31/2025, with respect to the rejection of claims 1-7, 9-14, 16-17, and 19-20 under 35 USC § 103 have been considered but are moot because the arguments do not apply to the current grounds of rejection. Applicant's arguments, which appear to be drawn only to the newly amended limitations, have been considered but are moot in view of the updated ground of rejection.
Claim Objections
Claims 1-7, 9-14, 16-17, and 19-20 are objected to because of the following informalities:
Claim 1, line 3 and Claim 10, line 3, recite “the front side fabric.” It is suggested each claim is rephrased to recite “the moisture repellant front side fabric” for consistency with the rest of the claim and/or for antecedent basis purposes.
Claim 17 recites “collects dirt or dust.” It is suggested the claim is rephrased to recite “is configured to collect dirt or dust” to more clearly recite the function of the moisture repellant front side rather than positively claiming the dirt or dust.
Appropriate correction is required.
Claims depending from claims objected to under this section are similarly objected to for their dependence on a claim objected to under this section.
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 3, 10-14, 16-17, and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “further comprising a removable protective film.” However, claim 1 already recites “a removable protective film.” It is unclear if applicant is introducing a new protective film in claim 3, different from the protective film in claim 1, or is referring back to the protective film of claim 1, which would then require proper antecedent basis. Appropriate correction is required.
Claim 10, second to last line, recites “and includes a removable protective film.” However, claim 10 already recites “a protective film.” It is unclear if applicant is introducing a new protective film, different from the protective film previously recited in the claims, or is referring back to the first protective film, which would then require proper antecedent basis. Appropriate correction is required.
Claims 16 and 19 recite “The self-adhesive fabric of Claim 15.” However, claim 15 is canceled. Therefore, the scope of the claims are unclear and indefinite because it is not clear which claim these claims should depend from. For purposes of examination, these claims will be interpreted as depending on claim 10.
Claims depending from claims rejected to under this section are similarly rejected to for their dependence on a claim rejected to under this section.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-7 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites: “The self-adhesive fabric of Claim 1, wherein the moisture repellant front side fabric comprises the moisture repellant front side fabric.” The limitation is repeating exactly what is already recited in claim 1 and is therefore considered as failing to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims depending from claims rejected to under this section are similarly rejected to for their dependence on a claim rejected to under this section.
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.
Claims 1, 3-5, 9-10, 12-15, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0010576 A1 to Tse in view of US 2018/0279702 A1 to Karbakhsh and US 2016/0339664 A1 to Gallagher.
For claim 1, Tse discloses a self-adhesive patch (removable patch 4), comprising: a front side (layer of material which acts like a shield, 5) configured to collect a substance and prevent the substance from contacting a garment (para 0033 and 0035-0036); the front side fabric configured to collect dirt or dust (para 0033) and enable decorative styling (paras 0034 and 0045); and a back side (back side of 4) including an adhesive (6), the adhesive configured to adhere to the garment without damaging or leaving residue on the garment when removed (paras 0027-0028) wherein the self-adhesive fabric is flexible (see fig. 4b wherein the patches are configured to be flexed into a roll configuration), configured to conform to various garment locations including knees, elbows, and shoulders (as a removable patch capable of being attached to a different parts of pants, para 0015, one skilled in the art would readily understand the removability and adhesive nature of the patch would allow for placement of said patch to variety of other garment locations, such as the knees, elbows, and shoulder areas of a garment), and includes a removable protective film (7) disposed over the adhesive to preserve the adhesive prior to application (para 0036).
Tse does not specifically disclose the patch is a fabric wherein the front side material is a moisture repellant fabric, the front side fabric further comprising a surface texture or microfiber structure, wherein the adhesive comprises at least one of a web adhesive, a powder adhesive, or a micro-dot adhesive, and wherein the self-adhesive fabric is trimmable.
However, the embodiment of Tse described above provides the material used to make the patch can be any suitable material and the only requirement is that it must be suitable for its intended purposes (paras 0035-0036).
Attention is also directed to Karbakhsh teaching a pad to prevent a garment of a user from staining (abstract of Karbakhsh). The pad of Karbakhsh is considered as being in the same field of endeavor as applicant’s claimed invention: preventing substances from coming into contact with the garment of the wearer. Specifically, Karbakhsh teaches the pad comprises a fabric coated with a durable, water repellant material to make it water resistant or hydrophobic, which prevents the pad from being saturated with moisture, made of polyester fibers (para 0035 of Karbakhsh). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Tse would be modified wherein the layer of material that acts like a shield would comprise a polyester fiber fabric coated with a durable, water repellant material to make the layer of material water resistant or hydrophobic for purposes of preventing the layer of material acting like a shield from being saturated with moisture, as taught by Karbakhsh (abstract and para 0035 of Karbakhsh). As a result, one skilled in the art would readily consider the modified Tse as teaching a fabric having a surface texture and is capable of being trimmed given that the patch is a piece of polyester fiber fabric and would therefore be considered capable of being cut or trimmed.
As modified, Tse does not specifically disclose wherein the adhesive comprises at least one of a web adhesive, a powder adhesive, or a micro-dot adhesive.
However, attention is directed to Gallagher teaching a fabrication process for a fabric product that provides a continuous moisture barrier (abstract of Gallagher). Specifically, Gallagher teaches the adhesive for joining fabric articles can include a web adhesive, a powder adhesive, and a micro-dot adhesive (para 0068 of Gallagher) for purposes of minimizing the amount of adhesive when used in a discontinuous pattern (para 0064 of Gallagher). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Tse would be further modified wherein the adhesive comprises at least one of a web adhesive, a powder adhesive, or a micro-dot adhesive for purposes of minimizing the amount of adhesive when used in a discontinuous pattern, as taught by Gallagher (paras 0064 and 0068 of Gallagher).
It is further noted that claim limitations including, but not limited to: “configured to collect a substance and prevent the substance from contacting a garment,” and “the adhesive configured to adhere to the garment without damaging or leaving residue on the garment when removed,” have been fully considered and are being interpreted as statements of intended use. A claim containing 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 if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). Examiner notes italicized limitations in the prior art rejection are functional and do not positively recite a structural limitation, but instead require an ability to so perform. Since the modified Tse discloses the front side is made from a fabric, see modification and teachings of Karbakhsh above, one of ordinary skill in the art would reasonably expect for the fabric of the modified Tse to perform the claimed intended use of collecting substances. Further, since Tse discloses “the selected adhesive is not strong enough to prevent the patch from being removed when desired” (para 0028), and since the patch (4) includes the adhesive (6), one skilled in the art would reasonable expect the adhesive of Tse to perform the function of “without damaging or leaving residue on the garment when removed.”
For claim 3, the modified Tse teaches the self-adhesive fabric of Claim 1, further comprising a removable protective film (7) configured to preserve the adhesive (para 0036).
For claim 4, the modified Tse teaches the self-adhesive fabric of Claim 1, further comprising a decorative element applied to the front side (para 0045).
For claim 5, the modified Tse teaches the self-adhesive fabric of Claim 1, wherein the moisture repellant front side fabric comprises the moisture repellant front side fabric (See discussion for claim 1 above).
For claim 9, the modified Tse teaches the self-adhesive fabric of Claim 5, wherein the fabric has insulative properties to provide insulation (as the modified Tse teaches the front side is comprised of a fabric, one skilled in the art would readily understand that fabric, in general, is configured to provides some degree of insulation from the environment when worn by a wearer).
For claim 10, Tse discloses a self-adhesive patch (removable patch 4), comprising: a front side (layer of material which acts like a shield, 5) configured to collect a substance and prevent the substance from contacting a garment (para 0033 and 0035-0036); the front side configured to collect dirt or dust (para 0033) and enable decorative styling (paras 0034 and 0045); and a back side (back side of 4) including an adhesive (6), the adhesive configured to adhere to the garment without damaging or leaving residue on the garment when removed (paras 0027-0028); and a protective film (7) configured to protect the adhesive prior to the application of self-adhesive fabric to the garment (para 0036), wherein the self-adhesive fabric is flexible (see fig. 4b wherein the patches are configured to be flexed into a roll configuration) and configured to conform to various garment locations including knees, elbows, and shoulders (as a removable patch capable of being attached to a different parts of pants, para 0015, one skilled in the art would readily understand the removability and adhesive nature of the patch would allow for placement of said patch to variety of other garment locations, such as the knees, elbows, and shoulder areas of a garment), and includes a removable protective film (7) disposed over the adhesive to preserve the adhesive prior to application (para 0036).
Tse does not specifically disclose the patch is a fabric wherein the front side material is a moisture repellant fabric, the front side fabric further comprising a surface texture or microfiber structure, wherein the adhesive comprises at least one of a web adhesive, a powder adhesive, or a micro-dot adhesive, and wherein the self-adhesive fabric is trimmable.
However, the embodiment of Tse described above provides the material used to make the patch can be any suitable material and the only requirement is that it must be suitable for its intended purposes (paras 0035-0036).
Attention is also directed to Karbakhsh teaching a pad to prevent a garment of a user from staining (abstract of Karbakhsh). The pad of Karbakhsh is considered as being in the same field of endeavor as applicant’s claimed invention: preventing substances from coming into contact with the garment of the wearer. Specifically, Karbakhsh teaches the pad comprises a fabric coated with a durable, water repellant material to make it water resistant or hydrophobic, which prevents the pad from being saturated with moisture, made of polyester fibers (para 0035 of Karbakhsh). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Tse would be modified wherein the layer of material that acts like a shield would comprise a polyester fiber fabric coated with a durable, water repellant material to make the layer of material water resistant or hydrophobic for purposes of preventing the layer of material acting like a shield from being saturated with moisture, as taught by Karbakhsh (abstract and para 0035 of Karbakhsh). As a result, one skilled in the art would readily consider the modified Tse as teaching a fabric having a surface texture and is capable of being trimmed given that the patch is a piece of polyester fiber fabric and would therefore be considered capable of being cut or trimmed.
As modified, Tse does not specifically disclose wherein the adhesive comprises at least one of a web adhesive, a powder adhesive, or a micro-dot adhesive.
However, attention is directed to Gallagher teaching a fabrication process for a fabric product that provides a continuous moisture barrier (abstract of Gallagher). Specifically, Gallagher teaches the adhesive for joining fabric articles can include a web adhesive, a powder adhesive, and a micro-dot adhesive (para 0068 of Gallagher) for purposes of minimizing the amount of adhesive when used in a discontinuous pattern (para 0064 of Gallagher). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Tse would be further modified wherein the adhesive comprises at least one of a web adhesive, a powder adhesive, or a micro-dot adhesive for purposes of minimizing the amount of adhesive when used in a discontinuous pattern, as taught by Gallagher (paras 0064 and 0068 of Gallagher).
It is further noted that claim limitations including, but not limited to: “configured to collect a substance and prevent the substance from contacting a garment,” and “the adhesive configured to adhere to the garment without damaging or leaving residue on the garment when removed,” have been fully considered and are being interpreted as statements of intended use. A claim containing 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 if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114(II)). Examiner notes italicized limitations in the prior art rejection are functional and do not positively recite a structural limitation, but instead require an ability to so perform. Since the modified Tse discloses the front side is made from a fabric, see modification and teachings of Karbakhsh above, one of ordinary skill in the art would reasonably expect for the fabric of the modified Tse to perform the claimed intended use of collecting substances. Further, since Tse discloses “the selected adhesive is not strong enough to prevent the patch from being removed when desired” (para 0028), and since the patch (4) includes the adhesive (6), one skilled in the art would reasonable expect the adhesive of Tse to perform the function of “without damaging or leaving residue on the garment when removed.”
For claim 12, the modified Tse teaches the self-adhesive fabric of Claim 10, further comprising the protective film (7) applied to the back side (fig. 3 of Tse).
For claim 13, the modified Tse teaches the self-adhesive fabric of Claim 10, wherein the protective film preserves the adhesive (para 0036).
For claim 14, the modified Tse teaches the self-adhesive fabric of Claim 1, further comprising a decorative element applied to the moisture repellant front side fabric (para 0045).
For claim 19, the modified Tse teaches the self-adhesive fabric of Claim 15, wherein the moisture repellant front side fabric has insulative properties to provide insulation (as the modified Tse teaches the front side is comprised of a fabric, one skilled in the art would readily understand that fabric, in general, is configured to provides some degree of insulation from the environment when worn by a wearer).
For claim 20, the modified Tse teaches the self-adhesive fabric of Claim 10, wherein the garment is selected from one of the following: a pair of paints, a shirt, a sweatshirt, and a pair of shorts (para 0033).
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tse in view of Karbakhsh and Gallagher, as applied to claims 1 and 10 above, and further in view of US 10,863,778 B1 to Towne.
For claim 2, the modified Tse teaches the self-adhesive fabric of Claim 1, but does not specifically disclose further comprising a texture applied to the moisture repellant front side fabric.
However, attention is directed to Towne teaching an fabric member to absorb moisture (abstract of Towne). Specifically, Towne teaches the absorbing layer may be textured so that it effectively catches moisture by providing a large surfaces area to catch moisture (col. 7, lines 34-54 of Towne). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Tse would be further modified wherein the front side comprises a textured finish for purposes of effective absorbing more moisture by providing a layer surface area to catch moisture, as taught by Towne (col. 7, lines 34-54 of Towne).
For claim 11, the modified Tse teaches the self-adhesive fabric of Claim 10, but does not specifically disclose further comprising a texture applied to the moisture repellant front side fabric.
However, attention is directed to Towne teaching an fabric member to absorb moisture (abstract of Towne). Specifically, Towne teaches the absorbing layer may be textured so that it effectively catches moisture by providing a large surfaces area to catch moisture (col. 7, lines 34-54 of Towne). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Tse would be further modified wherein the front side comprises a textured finish for purposes of effective absorbing more moisture by providing a layer surface area to catch moisture, as taught by Towne (col. 7, lines 34-54 of Towne).
Claims 6-7 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tse in view of Karbakhsh and Gallagher, as applied to claims 1 and 10 above, respectively, and further in view of US 2003/0221236 A1 to Hippensteel.
For claim 6, the modified Tse teaches the self-adhesive fabric of Claim 5, but does not specifically disclose wherein the moisture repellant front side fabric is a moisture wicking fabric.
However, attention is directed to Hippensteel teaching an analogous strip that can be applied to a variety of articles to absorb perspiration and protect wearable articles having a fastening adhesive (abstract of Hippensteel). Specifically, Hippensteel teaches an outer layer (112) that makes contact with perspiring skin is generally composed of woven fabric such as cotton to wick the perspiration onto an absorbing layer (para 0013 of Hippensteel). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Tse would be further modified wherein the front side comprises a woven fabric, such as cotton, to wick perspiration, as taught by Hippensteel (para 0013 of Hippensteel).
For claim 7, the modified Tse teaches the self-adhesive fabric of Claim 6, wherein the moisture repellant front side fabric collects dirt or dust (see fig. 2 and paras 0032-0033 of Tse wherein the fabric is configured to collect soiling, including dirt).
For claim 16, Tse discloses the self-adhesive fabric of Claim 15, but does not specifically disclose wherein the moisture repellant front side fabric is moisture wicking fabric.
However, attention is directed to Hippensteel teaching an analogous strip that can be applied to a variety of articles to absorb perspiration and protect wearable articles having a fastening adhesive (abstract of Hippensteel). Specifically, Hippensteel teaches an outer layer (112) that makes contact with perspiring skin is generally composed of woven fabric such as cotton to wick the perspiration onto an absorbing layer (para 0013 of Hippensteel). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Tse would be further modified wherein the front side comprises a woven fabric, such as cotton, to wick perspiration, as taught by Hippensteel (para 0013 of Hippensteel).
For claim 17, the modified Tse teaches the self-adhesive fabric of Claim 16, wherein the fabric collects dirt or dust (see fig. 2 and paras 0032-0033 of Tse wherein the moisture repellant front side fabric is configured to collect soiling, including dirt).
Conclusion
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/ERICK I LOPEZ/Examiner, Art Unit 3732