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 .
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.
Claims 1-8 and 10-18 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 1 recites “a silicon grade rubber” in line 10 and claim 14 recites “a silicon grade rubber” in line 19. It is unclear how to define the term “a silicon grade rubber”, is it rubber and functions as silicon or is it silicon? For the purpose of applying art, “a silicon grade rubber” is interpreted as silicone rubber.
Claim 14 recites “friction fit” in line 22. It is unclear how to define “friction fit” as any insert can provide some degree of friction when it is fitted into a pocket.
Any remaining claims are rejected as depending from a rejected base claim.
In the art rejections below the claims have been treated as best understood by the 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 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Turner (US 2010/0024089) in view of Christensen (US 2009/0031469) and Piombino (US 2018/0169505).
Regarding claim 1, Turner teaches a padded shapewear garment device (fig. 29) for providing impact protection to areas of the wearer where the attachment elements are located (para. [0046]), the padded shapewear garment device comprising:
a pair of pants (para. [0090], fig. 29 shows second pants type garment configuration) having a contoured padding (fig. 29, attachment elements 511) and a shapewear (fig. 29, para. [0090], [0092], inner layer 508 provides a tight and stretchable fit);
wherein the contoured padding is positioned on a buttocks area and a hip area of the pair of pants (para. [0093], attachment elements 511 can be secured to any area of regions 501-503, which cover a buttocks area and a hip area);
wherein the shapewear encircles the hip area (fig. 29); and
further wherein the pair of pants are relaxed-fix pants made from a flexible fabric material (para. [0092], outer layer 507 imparts a loose-fitting configuration; para. [0053], [0090], a variety of materials is utilized in manufacturing garment, including flexible fabric materials),
the contoured padding is sandwiched between two fabric layers of the pair of pants (fig. 31).
Turner does not clearly teach the contoured padding is a silicon grade rubber padding.
However, in the same field of endeavor, Christensen teaches the contoured padding is a silicon grade rubber padding (para. [0024]).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the material of the padding of Turner with silicone as taught by Christensen so that the padding can conform to the contours of the body of a wearer (Christensen, para. [0024]).
The modified structure Turner-Christensen does not teach the contoured padding is flatlock stitched to the pair of pants.
However, in the same field of endeavor, Piombino teaches the padding is flatlock stitched to the pair of pants (para. [0052]).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the modified structure Turner-Christensen with flatlock seam as taught by Piombino for the benefit of providing comfort, smooth, low-provide finish without bulky overlaps, which reduces chafing against the skin.
The modified structure Turner-Christensen-Piombino does not clearly teach the garment device is for lifting and smoothing the hip area and buttocks area of the user.
However, “for lifting, smoothing a hip area and a buttocks of a user” is an intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, the modified structure Turner-Christensen-Piombino teaches the pair of pants comprise a plurality of designs (Turner, as shown in figs. 32A-32D, the pants have plurality of configurations).
Regarding claim 3, the modified structure Turner-Christensen-Piombino teaches the pair of pants comprise at least one side pocket (Turner, figs. 30-31, side areas of the pants comprise two layers 507 and 508, which form a side pocket).
Regarding claim 4, the modified structure Turner-Christensen-Piombino teaches the pair of pants comprise a front side, a back side, a top, a bottom, an interior and an exterior (Turner, figs. 29-31).
Regarding claim 5, the modified structure Turner-Christensen-Piombino teaches the top of the pair of pants comprise an opening for a user to insert the user’s legs and pull up the pair of pants around the user’s waist (Turner, fig. 29).
Claims 6-8 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Turner (US 2010/0024089) in view of Christensen (US 2009/0031469) and Piombino (US 2018/0169505), as applied to claim 5 above, and further in view of Theno (US 2018/0279694).
Regarding claim 6, the modified structure Turner-Christensen-Piombino does not clearly teach the opening comprises a waistband with elastic to hold the pair of pants up.
However, in the same field of endeavor, Theno teaches a waistband with elastic to hold the pair of pants up (para. [0042], last sentence).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the pants of the modified structure Turner-Christensen-Piombino with an elastic band at the waistline as taught by Theno for the benefit of facilitating securing the pants around the waist of the wearer (Theno, para. [0042]).
Regarding claim 7, the modified structure Turner-Christensen-Piombino-Theno teaches the bottom of the pair of pants comprise a pair of pant legs (Turner, fig. 29).
Regarding claim 8, the modified structure Turner-Christensen-Piombino-Theno teaches the contoured padding is configured to be positioned at the hip area and the buttocks area of the user (Turner, figs. 29-31, para. [0093]).
Regarding claim 10, the modified structure Turner-Christensen-Piombino-Theno teaches the contoured padding is shaped to rest on and to protect the hip area of the user (Turner, figs. 29-31, para. [0093]).
Regarding claim 11, the modified structure Turner-Christensen-Piombino-Theno teaches the contoured padding is shaped to rest on and to protect the buttocks area of the user (Turner, figs. 29-31, para. [0093]).
Regarding claim 12, the modified structure Turner-Christensen-Piombino-Theno does not clearly teach the pair of pants comprise a plurality of pockets within the interior and a plurality of padded inserts which are positioned within the plurality of pockets.
However, Theno teaches the pair of pants comprise a plurality of pockets within the interior and a plurality of padded inserts which are positioned within the plurality of pockets (fig. 1, para. [0041], zone 42 and zone 44 define a cavity configured to receive a protective pad).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to combine the modified structure Turner-Christensen-Piombino-Theno with the plurality of pockets to receive protective pads as taught by Theno for the benefit of facilitating protecting the left and/or right lateral sides of the wearer from impacts (Theno, para. [0041]).
Regarding claim 13, the modified structure Turner-Christensen-Piombino-Theno teaches the pair of pants comprise a plurality of layers that vary in shape or compression strength creating at least one shapewear area (Turner, figs. 32A-32D, para. [0092]).
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Turner (US 2010/0024089) in view of Grounds (US 2002/0026664).
Regarding claim 14, Turner teaches a padded shapewear garment device (fig. 29) for providing impact protection to areas of the wearer where the attachment elements are located (para. [0046]), the padded shapewear garment device comprising:
a pair of pants (para. [0090], fig. 29 shows second pants type garment configuration) comprised of a contoured padding (fig. 29, attachment elements 511) and at least one shapewear area (fig. 29, para. [0090], [0092], inner layer 508 provides a tight and stretchable fit);
wherein the pair of pants comprise a front side, a back side, a top, a bottom, an interior and an exterior (figs. 29-31);
wherein the contoured padding is positioned on a buttocks area and a hip area of the pair of pants (para. [0093], attachment elements 511 can be secured to any area of regions 501-503, which cover a buttocks area and a hip area);
wherein the shapewear encircles the hip area (fig. 29);
wherein the contoured padding is configured to be positioned at the hip area and the buttocks area of the user (figs. 29-31, para. [0093]);
wherein the pair of pants comprise a plurality of layers that vary in shape or compression strength creating the at least one shapewear area (figs. 32A-32D);
wherein the pair of pants can be worn in their normal condition and presence of the contoured padding is not readily visible, due to appropriate shaping and contour of the contoured padding (fig. 29, as the attachment elements and the inner layer 508 are covered by the outer cover 507);
further wherein the pair of pants are relaxed-fix pants made from a flexible fabric material (para. [0092], outer layer 507 imparts a loose-fitting configuration; para. [0053], [0090], a variety of materials is utilized in manufacturing garment, including flexible fabric materials); and
wherein the contoured padding is sandwiched between two fabric layers of the pair of pants (fig. 31).
Turner does not clearly teach the contoured padding is a silicon grade rubber padding; the pair of pants further comprise a plurality of pockets within the interior and a plurality of inflatable padded inserts configured to friction fit within the plurality of pockets.
However, in the same field of endeavor, Grounds teaches the contoured padding is silicone (para. [0017]). Grounds further teaches the garment comprises a plurality of pockets (fig. 6, pocket 26) within the interior (para. [0048]) and a plurality of inflatable padded inserts (para. [0056]) configured to friction fit within the plurality of pockets (para. [0058]).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the material of the padding of Turner with silicone and combine Turner with a plurality of pockets to receive a plurality of inflatable padded insert as taught by Grounds for the benefit of protecting one or more than one vulnerable region of a person's body considered susceptible to injury (Grounds, para. [0013]).
The modified structure Turner-Grounds does not clearly teach the garment device is for lifting and smoothing the hip area and buttocks area of the user.
However, “for lifting, smoothing a hip area and a buttocks of a user” is an intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 15, the modified structure Turner-Grounds teaches the padded shapewear garment device comprising a plurality of indicia (Turner, fig. 30, para. [0051], there are plurality of areas with textured configuration for fastening system).
Regarding claim 16, the modified structure Turner-Grounds teaches the pair of pants comprise at least one side pocket (Turner, figs. 30-31, side areas of the pants comprise two layers 507 and 508, which form a side pocket).
Regarding claim 17, the modified structure Turner-Grounds teaches the contoured padding is shaped to rest on and to protect the hip area (Turner, figs. 29-31, para. [0093]).
Regarding claim 18, the modified structure Turner-Grounds teaches the contoured padding is shaped to rest on and to protect the buttocks area (Turner, figs. 29-31, para. [0093]).
Response to Arguments
Applicant’s arguments, dated 10/17/2025, with respect to the drawing objections have been fully considered and are persuasive. The objection has been withdrawn due to the applicant amendments.
Applicant’s arguments, dated 10/17/2025, with respect to the rejection of claims under 35 U.S.C 112 (b) have been fully considered and are persuasive. The rejection to the claims has been withdrawn due to the applicant amendments.
Applicant’s arguments, dated 10/17/2025, with respect to the rejections of claims under 35 U.S.C 103 have been fully considered but are moot because the new ground of rejection does not rely on combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant argues that the prior art does not teach the amended limitations. However, this argument is not commensurate with the rejected claims, as the limitations have not been previously presented. Thus, the amended limitations have been addressed as analyzed above.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/UYEN T NGUYEN/Examiner, Art Unit 3732