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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 1, 2025 has been entered.
Response to Amendment
The amendments filed with the written response received on December 1, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1-2, 4-5, and 9 have been amended; and claim 3 has been cancelled. Accordingly, claims 1-2 and 4-12 are pending in this application, with an action on the merits to follow regarding claims 1-2 and 4-12.
Because of the applicant's amendment, the following in the office action filed June 30, 2025, are hereby withdrawn:
Claim rejections under 35 USC 112(d).
Double Patenting
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over each of claims 1 and 4 of U.S. Patent No. 11771152. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of claim 1 of the instant application is broader than and anticipated by claims 1 and 4 of US 11771152. Claim 1 of the instant application requires a sensitivity zone being an area of lesser thickness that is only on the front of the stretchable elastic fabric swimming garment. Claims 1 and 4 of US 11771152 claims a pair of sensitivity zones being an areas of lesser thickness that are on the front of the stretchable elastic fabric swimming garment and the pair of sensitivity zones on the front would read on (i.e. anticipate) at least one sensitivity zone only on the front.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites the limitation "the wearer" in the last line. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction is required.
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 4 is 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 4 is indefinite as it recites, “wherein the surrounding region of the garment is formed from a double layer of the stretchable elastic fabric and the at least one sensitivity zone has a single layer of the stretchable elastic fabric.” It is unclear if “a double layer of the stretchable elastic fabric” is referring to the a double layer of the fabric or a double layer of the at least two layers of fabric as recited in claim 2. Further, it is unclear if the “single layer of stretchable elastic fabric” is referring to the fabric or the one fewer layers of fabric recited in claim 2. Examiner respectfully suggests amending claim 4 to depend from claim 1.
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 1-2 and 4-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshihara (US 4698847) in view of Rance (US 2008/0141430).
Regarding claim 1, Yoshihara discloses a swimming garment (Figs. 8a-c) formed from a stretchable fabric (11/12, disclosed stretchable in co. 6, lines 55-68), wherein the garment comprises at least one sensitivity zone (see annotated Fig. 8a; Examiner notes that the term "zone" is very broad and has a definition of " an area that differs in some respect, or is distinguished for some purpose, from adjoining areas, or within which distinctive circumstances exist or are established" (Defn. No. 1 of "Random House Kernerman Webster's College Dictionary, © 2010 K Dictionaries Ltd." entry via TheFreeDictionary.com)) in which a total thickness of the stretchable elastic fabric (thickness of layer 12) is less than a total thickness of the stretchable elastic fabric (thickness of layers 11 and 12 which is implicitly has a thickness greater than just the thickness of 11) of a surrounding region of the garment (see annotated Fig. 8a)(thickness of layers 11 and 12 which is implicitly has a thickness greater than just the thickness of 12), wherein the at least one sensitivity zone is formed only on a front of the swimming garment (as seen in annotated Fig. 8a, the sensitivity zone is only on the front half of the garment) adapted for contacting a front the wearer when worn by the wearer (as can be understood from annotated Fig. 3).
Yoshihara does not expressly disclose wherein the stretchable fabric is elasticated.
Rance teaches swimming garments wherein the stretchable fabric is elasticated (polyester elastane, see para. 0029).
Yoshihara and Rance teach analogous inventions in the field of swimming garments with different areas of elasticity. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the stretch fabric of Yoshihara of an elasticated material as taught by Rance as such materials are “conventionally used for making high-performance swimwear, are within the skilled person’s routine knowledge” (see para. 0029 of Rance).
Examiner notes that italicized limitations in the prior art rejections are functional and do not positively recite a structural limitation, but instead require an ability to so perform and/or function. As the prior art discloses the structure of the garment, there would be a reasonable expectation for the garment to perform such functions, as Examiner has explained after each functional limitation.
Regarding claim 2, the modified garment of Yoshihara discloses wherein the surrounding region of the garment is formed from at least two layers of the stretchable elastic fabric (layers 11 and 12) and the at least one sensitivity zone is formed from at least one fewer layers of the stretchable elastic fabric than the surrounding region of the garment (as the at least one sensitivity zone are only layer 12).
Regarding Claim 4, the modified garment of Yoshihara discloses wherein the surrounding region is formed from a double layer of the stretchable elastic fabric (layers 11 and 12) and the at least one sensitivity zone has a single layer of the stretchable elastic fabric (layer 12).
Regarding claim 5, the modified garment of Yoshihara discloses wherein, in use, the stretchable elastic fabric (11/12 of Yoshihara modified to be elastic by Rance) is configured to cover at least part of the wearer's hips and glutes (as can be understood from Fig. 8 and how it relates to Figs. 1 or 2), the garment including at least two tension bands (bands 14 formed by stitches 13) that have a higher modulus of elasticity than adjacent regions of the stretchable fabric (as adjacent regions are comprised of layer 12, and as the bands are made of layer 11 which is less stretchable than 12 as disclosed in col. 6 lines 55-68) so that, in use, the tension bands offer greater resistance to stretch than the adjacent regions (as can be understood from co. 6, lines 55-68 where 11 is less stretchable than 12); wherein a first one of said tension bands (see first band in annotated Fig. 8a) follows a path (shown in gray dashed line) that extends to a left hip region of the garment and inwardly from the left hip region across a left upper glute region of the garment towards a mid-line of the garment (as can be understood from annotated Fig. 8a as it relates to Figs. 1 or 2, the first band extends across a left hip on inward across the glute area to the mid-line); and a second one of said tension bands (see second band in annotated Fig. 8a) follows a path (shown in gray dashed line) that extends to a right hip region of the garment and inwardly from the right hip region across a right upper glute region of the garment towards the mid-line of the garment (as can be understood from annotated Fig. 8a as it relates to Figs. 1 or 2, the second band extends across a right hip on inward across the glute area to the mid-line).
Yoshihara does not expressly disclose wherein the fabric is configured to cover at least part of the wearer's thighs, wherein a first one of said tension bands follows a path that extends along the outside of a left thigh region of the garment, and a second one of said tension bands follows a path that extends along the outside of a right thigh region of the garment.
Rance teaches a swimming garment wherein the stretchable elastic fabric is configured to cover at least part of the wearer's thighs (panels 30, 32, 34, and 36, see Figs. 1-3), wherein a first one of said tension bands (69 on left side of the body) follows a path that extends along the outside of a left thigh region of the garment (from at least 301-301 as can be seen in Fig. 3), and a second one of said tension bands (69 on the right side of the body) follows a path that extends along the outside of a right thigh region of the garment (from at least 301-301 as can be seen in Fig. 3).
Yoshihara and Rance teach analogous inventions in the field of swimming garments with different areas of elasticity. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add leg portions and extend the bands of Yoshihara down the outer thighs as taught by Rance in order to provide increased speed and decreased drag resistance in the water and since “it is desired that the fixing structure of apparel be set in accordance with the location of muscles and the direction of work of the muscles” (see col. 3, lines 19-21 of Yoshihara).
Regarding claim 6, the modified garment of Yoshihara discloses wherein: the path of the first tension band extends from the left upper glute region of the suit across the back of the suit and to a right rear shoulder region of the suit (as can be seen in annotated Fig. 8a of Yoshihara as understood from Fig. 2b of Yoshihara, the first band extends from the left upper glute to at least a right shoulder blade); and the path of the second tension band extends from the right upper glute region of the suit across the back of the suit and to a left rear shoulder region of the suit (as can be seen in annotated Fig. 8a of Yoshihara as understood from Fig. 2b of Yoshihara, the second band extends from the right upper glute to at least a left shoulder blade); wherein the first and second tension bands cross one another at the mid-line of the suit in a lower back region of the suit (as can be seen in annotated Fig. 8a of Yoshihara).
Regarding claim 7, the modified garment of Yoshihara discloses wherein the paths of the tension bands are such that when the suit is worn the first and second tension bands are configured to generally follow the posterior oblique myofascial lines of the wearer (as can be seen in Fig. 8a of Yoshihara as understood from Fig. 2b of Yoshihara, the bands cross on the rear side to follow the posterior oblique myofascial lines).
Regarding claim 8, the modified garment of Yoshihara discloses wherein the tension bands comprise seams in the garment (as the bands are formed by stitching lines 13 of Yoshihara).
Regarding claim 9, the modified garment of Yoshihara discloses wherein the seams (at 13 of Yoshihara) join separate panels of the stretchable elastic fabric from which the garment is formed (panels of layers 11 and 12, modified to be elastic by Rance).
Regarding claim 10, the modified garment of Yoshihara discloses wherein the seams (13 of Yoshihara) are stitched seams (as 13 is disclosed as sewing, see col. 6, lines 20-24 of Yoshihara).
Regarding claim 11, the modified garment of Yoshihara discloses wherein the seams (13 of Yoshihara) are bonded seams (Examiner notes that the term "bond" (in the verb sense) is very broad and has a definition of "to hold or be held together, as by a rope or an adhesive; bind; connect" (Defn. No. 14 of "Collins English Dictionary – Complete and Unabridged, 12th Edition" entry via TheFreeDictionary.com), and as such, the sewing lines of 13 bond bands to the body).
Regarding claim 12, the modified garment of Yoshihara discloses wherein, in use, the stretchable elastic fabric (11/12 of Yoshihara as modified to be elastic by Rance) is also configured to cover at least part of the wearer's abdomen, chest and back (as at least 12 of Yoshihara covers at least these areas, best seen in Fig. 8b of Yoshihara).
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Annotated Fig. 8a (Yoshihara)
Response to Arguments
Applicant’s arguments, filed December 1, 2025, with respect to claims the 35 USC 103 rejection of 1 has been fully considered but they are not persuasive. Applicant argues that because Yoshihara has sensitivity zones on the back of the garment and therefore does not read on the limitation “wherein the at least one sensitivity zone is formed only on a front of the swimming garment” (Remarks, p. 10). Examiner respectfully disagrees and inasmuch as has been claimed, Yoshihara reads on the limitation as the claim only requires one zone that is only on the front of the garment which has been pointed out in annotated Fig. 8a of Yoshihara. Applicant has not amended in such a way as to exclude additional areas with less total thickness.
Applicant submits that the dependent claims are patentable based on their dependencies from claim 1; however, as discussed in the rejection below and in the arguments above, claim 1 is not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the dependent claims have been maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732