DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2 and 4-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,825,930. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2, 4-8, 12, 14, and 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over August (US 2010/0206323) in view of McBride (US 6,502,245) and Hopper et al. (US 2008/0156340).
Regarding claim 2 August discloses a headband comprising an elongated piece of elastic material having a uniform elasticity (101), wherein a top surface of the elongated piece of elastic material defines an outside surface of the headband, an elongated piece of stretch velvet material (104) having a uniform elasticity, wherein a top surface of the elongated piece of stretch velvet material directly contacts a bottom surface of the elongated piece of elastic material (i.e. along the edges), wherein the elongated piece of elastic material and the elongated piece of stretch velvet material are attached along the length of the elongated piece of stretch velvet material such that the headband is a 360-degree elastic headband (see Figure 2; paragraph 20). August does not disclose the entire top surface of the elongated piece of stretch velvet material directly contacts a bottom surface of the elongated piece of elastic material and that the first end of the elongated piece of elastic material is stitched to a second end of the elongated piece of elastic material. McBride teaches a headband made from two materials wherein the entire top surface of the elongated piece of material directly contacts an entire bottom surface of the elongated piece of material (see Figures 1 and 2; col. 2, lines 25-30). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the top and bottom materials of August be attached along an entire top surface and an entire bottom surface as taught by McBride to help absorb sweat and create and uniformly stretchable band. Hopper et al. teaches a headband wherein the first end of the elongated piece of elastic material is stitched to a second end of the elongated piece of elastic material (158) (see Figure 7; paragraph 31) to create a continuous loop headband. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the headband of August be stitched at the first and second end of the elongate fabric as taught by Hopper et al. to create a continuous loop headband.
Regarding claims 4 and 5, McBride further discloses the elongated top material can be made by multiple pieces (see Figure 2); wherein the multiple pieces span less than the entire headband. It would have been obvious to one having ordinary skill in the art before the effective filing date to have the headband of August be made with multiple pieces as taught by McBride to reduce waste of materials.
Regarding claim 6, the entire top surface of the elongated piece of stretch velvet material directly contacts the entire bottom surface of the elongated piece of elastic material (as modified by McBride).
Regarding claim 7, the elongated piece of elastic material comprises an elastic ribbon (paragraph 19).
Regarding claim 8, the elongated piece of stretch velvet material comprises a stretch velvet ribbon (paragraph 13 and 19).
Regarding claim 12, the elongated piece of elastic material and the elongated piece of stretch velvet material have the same width (see Figure 2).
Regarding claim 14, the elongated piece of elastic material is attached to elongated piece of stretch velvet material by stitching. (see Figure 2).
Regarding claim 16, the elongated piece of elastic material is attached to the elongated piece of stretch velvet material by an adhesive or bonding material (paragraph 20.
Claims 9-11, and 13 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over August in view of McBride and Hopper et al. as applied to claims 2-8,12, 14, and 16 above, and further in view of Larkin et al (US Pub.# 2006/0085891).
August, McBride, and Hopper et al. disclose the essential claimed invention as discussed above except for the elastic outside having a width that is greater than a width of the inside lining, wherein the elastic outside including material that is folded for a desired width. Larkin et al discloses a headband (fig. 4) comprising an outside layer (18’) and an inside gripping layer (34), wherein the outside layer having a width that is greater than a width of the inside lining (see fig. 4), wherein the outside layer including material that is folded (at 36, fig. 5) for a desired width. It would have been obvious to one having an ordinary skill in the art at the time the invention was made to modify the outside and inside lining of August with the width dimension as taught by Larkin et al in order to securely hold the gripping layer in place.
Claim 15 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over August in view of McBride and Hopper et al. as applied to claims 2-8, 12, 14, and 16 above, and further in view Cox (US 2004/0168696).
August, McBride, and Hopper et al. disclose the claimed invention except for stretch and stitch stitching. Cox teaches and elastic wig that is sewn with zig-zag stitching to allow for stretching of the wig around the user’s head (paragraph 20). It would have been obvious to one having ordinary skill in the art before the effective filing date to have the stitching of August be a stretch and stitch such as zig-zag as taught by Cox to allow for stretching of the device over the user’s head.
Response to Arguments
Applicant's arguments filed 8/15/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that it would not have been obvious to one having ordinary skill in the art to have the entire top surface of August third layer directly contact an entire bottom surface of Augst’s first layer since August describes a middle layer of support material is not persuasive. The removal of August's middle layer to achieve direct contact, as taught by McBride, is a simple and predictable design variation. This is not a complex or unpredictable modification that a person having ordinary skill in the art would avoid. The applicant's argument regarding absorption is unpersuasive because it fixates on a single function of the middle layer. While August's middle layer is disclosed for absorption, it is just one component in the overall design. A person having ordinary skill in the art would, considering the entire body of knowledge (including McBride's teaching), would not be "taught away" from removing the layer. A different design, such as McBride's two-layer structure, could achieve moisture-wicking or absorption through other means, or simply prioritize a different function entirely, like softness or reduced bulk. McBride explicitly discloses a simpler, two-layer headband design where layers are directly attached to one another. This reference provides a clear teaching and motivation to remove the non-essential middle layer of August and directly contact the remaining elastic and stretch velvet layers. Therefore, the rejection is proper because a person having ordinary skill in the art would have been motivated to make the claimed combination for predictable reasons related to common design choices in the art.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL RUNNING STEITZ whose telephone number is (571)272-1917. The examiner can normally be reached Monday-Friday 8:00am-4:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL R STEITZ/Primary Examiner, Art Unit 3772
9/8/2025