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 .
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-10, 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of copending Application No. 18/436,210 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims a knitted band incorporating an extensible conductive trace.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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) 1,5,12-13, 15 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sharma, WO 03/087451.
Sharma discloses a tubular knit fabric. See abstract. The fabric can stretch longitudinally and radially. See page 4, lines 12-13. The knit fabric includes a conductive, (functional), yarn which is embedded in the fabric tube along the length of the tubular fabric. See page 4, lines 16-21. The conductive yarn is disposed in a spiral pattern so that it can be extended at least as far as the knitted tubular fabric. The knitted tubular fabric, which can be seamless, can also include synthetic or natural fibers such as polymers, wool, cotton, etc., as well as an elastic yarn. See page 5, full paragraph. The fabric may include ribs which are equated with the claimed undulating channels. See page 6, line 5. Note that Sharma does not use the words undulating channels but that the instant specification states at paragraph 0055 of the published application the following : “the fabric has an undulating channels (e.g. ribbing),” Therefore, while the same terms are not used, the disclosure of “ribbing” is equated with “undulating channels”. Either face of the fabric could be disposed towards skin depending on how the fabric was oriented relative to a wearer. The knit fabric can be knitted to have symmetrical or asymmetrical properties, and can be used to form a hat, which would necessarily include a headband, since the fabric is a tubular, seamless, knit fabric. See page 6, line 14. The conductive yarns can be connected to devices such as sensors. See paragraph bridging pages 6 and 7. The knitted fabric stretches longitudinally and radially. The degree of stretch will necessarily be limited by the fibers making up the knit, (both the elastic fibers and the nonelastic insulating fibers), and the knit structure itself. Knit fabrics, due to their structure, inherently possess a degree of stretch, but the stretch in either direction is necessarily not unlimited but is limited by the knit structure and the stretchability or lack of stretchability of the yarns. The force to extend the fabric beyond the inherent stretch of the fabric would require breaking some of the fibers, and would therefore be greater than the force necessary to extend or stretch the fabric to its limit without breaking the fibers. The fabric can include sensors which monitor/measure various physiological parameters. See page 21.
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) 6-10, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharma, WO 03/087451.
Sharma discloses a tubular knit fabric. See abstract. The fabric can stretch longitudinally and radially. See page 4, lines 12-13. The knit fabric includes a conductive, (functional), yarn which is embedded in the fabric tube along the length of the tubular fabric. See page 4, lines 16-21. The conductive yarn is disposed in a spiral pattern so that it can be extended at least as far as the knitted tubular fabric. The knitted tubular fabric, which can be seamless, can also include synthetic or natural fibers such as polymers, wool, cotton, etc., as well as an elastic yarn. See page 5, full paragraph. The fabric may include ribs which are equated with the claimed undulating channels. See page 6, line 5. Either face of the fabric could be disposed towards skin depending on how the fabric was oriented relative to a wearer. The knit fabric can be knitted to have symmetrical or asymmetrical properties, and can be used to form a hat, which would necessarily include a headband, since the fabric is a tubular, seamless, knit fabric. See page 6, line 14. The conductive yarns can be connected to devices such as sensors. See paragraph bridging pages 6 and 7. The knitted fabric stretches longitudinally and radially. The degree of stretch will necessarily be limited by the fibers making up the knit, (both the elastic fibers and the nonelastic insulating fibers), and the knit structure itself. Knit fabrics, due to their structure, inherently possess a degree of stretch, but the stretch in either direction is necessarily not unlimited but is limited by the knit structure and the stretchability or lack of stretchability of the yarns. The force to extend the fabric beyond the inherent stretch of the fabric would require breaking some of the fibers, and would therefore be greater than the force necessary to extend or stretch the fabric to its limit without breaking the fibers. The fabric can include sensors which monitor/measure various physiological parameters. See page 21.
Sharma differs from the claimed invention because it does not disclose the particularly claimed fabric thickness, the particular elongation under particular force, or permanent deformation at particular tension and compression. However, it would have been obvious to have selected the thickness and stretch and recovery of the fabric which was able to provide the desired degree of stretch, recovery, compression and comfort to a wearer without using excess materials.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharma as applied to claims above, and further in view of Sharma, U.S. Patent Application Publication No. 2007/0089800, hereinafter Sharma2.
Sharma differs from the claimed invention because it does not disclose that there are additional knitted fabrics including the conductive elements in the structure.
However, Sharma2 discloses incorporating electrically conductive elements into seamless, tubular structures by knitting, wherein the structures have different concentrations of conductive elements knitted into different areas and having different knit patterns and stitches within a single structure. See paragraph 0020. Sharma2 further discloses using more than one knitted fabric wherein the knitted fabrics have different structures and are all integrated into a single fabric or garment. See paragraphs 0211-0223. Sharma2 further discloses dual layered garments which include two knitted layers which can have different structures and which would therefore have different properties of extensibility. See paragraph 0229.
Therefore, it would have been obvious to have incorporated different regions and/or layers into the structure of Sharma in order to provide different properties to different areas and to provide additional conductive elements to connect to sensors and other devices.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharma as applied to claims above, and further in view of Martinez et al, U.S. Patent Application Publication No. 2024/0103572.
Sharma discloses a conductive knitted fabric as set forth above.
Sharma differs from the claimed invention because it does not disclose connecting a virtual reality system to the knitted band.
However, Martinez discloses a head band and virtual reality system comprising an electrical connector embedded in an elastic band in the head band which holds and connects to the virtual reality system. See paragraphs 0003-0009. The band can be a knitted band. See paragraph 0034. The electrical connector can have a sine wave pattern in the band so that it can expand and contract with the band. See figures.
Therefore, it would have been obvious to one of ordinary skill in the art to have employed the particular electrically conductive knitted tubular band of Sharma including an extendable conductive element as a headband to connect to a virtual reality system since the structure of Sharma is comfortable, extensible and electrically conductive.
Applicant's arguments filed 1/22/26 have been fully considered but they are not persuasive.
Applicant’s amendments have overcome the 112 rejections.
Applicant argues that the limitation regarding “undulating channels on a skin side of the fabric allowing for air to pass through” overcomes the 103 rejection. However, while it was agreed that the 102 rejection would be modified, the rejection is maintained as a 102/103 because Sharma teaches ribs and the instant specification equates the undulating channels with ribs, so it is reasonable to expect that the ribs of Sharma would be the same as the undulating channels as Sharma and would provide the ability of the air to pass through. Therefore, while the 102 rejection is overcome, the art rejection is maintained because the ribs of Sharma are equated with the undulating channels of Sharma and either side of the fabric can be considered a skin side. Further, a rib knit fabric has ribs on both sides. Since the term “undulating channel” was not used in Sharma the rejection is modified and therefore this action is not made final.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789