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 .
Response to Amendment
Applicant's amendment filed on December 22, 2025 has been received. Claims 1-8, 10-15, 17, 18, and 21 are currently pending.
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Any rejections and/or objections made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response filed on December 22, 2025.
Claim Objections
Claim 1 is objected to because of the following informalities:
the recitation of “one or more inner compressive layers” and “wherein the one or more inner compressive layers comprises a plurality of inner compressive layers” within the same claim, is redundant
“on the additional inner compressive fabric layer” should read “on the at least one additional inner compressive fabric layer” to maintain consistent antecedent basis within the claims
The Examiner suggests amending claim 1 as follows, to enhance clarity and reduce redundancy:
1. A shape enhancing garment comprising:
; and
a plurality of inner compressive layers for providing a slimming effect to an inner thigh area;
wherein the plurality of inner compressive layers comprise a non- circumferential inner compressive layer and at least one additional inner compressive fabric layer;
wherein the non-circumferential inner compressive layer is a non-stretch inner compressive layer;
and
wherein the non-circumferential inner compressive layer is provided on the at least one additional inner compressive fabric layer.
Appropriate correction is required.
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, 3-6, 10-12, 14, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Onoda et al. (herein Onoda)(US PG Pub 2010/001479) in view of Di Lorenzo (US PG Pub 2009/0038047), further in view of Shams (US 2021/0153573) and/or Kiuchi et al. (herein Kiuchi)(US PG Pub 2019/0320737).
Regarding claim 1, Onoda discloses a shape enhancing garment (13, see Figs. 4A-4B) which is formed from a circumferential base layer (1) and one or more compressive layers (5a, 5b) for providing a slimming effect to an inner thigh area (see paragraphs 0025-0034 and 0052-0056; the compressive layers are configured to compress, and therefore provide a slimming effect to, at least an inner thigh area of the wearer);
wherein the one or more compressive layers comprise a non-circumferential compressive layer (5a, 5b; see Figs. 4A-4B), wherein the non-circumferential layer is a non-stretch compressive layer (see at least paragraphs 0025, 0034, and 0052-0056; Onoda discloses wherein the compressive layer(s) may be formed of a non-stretch or low-stretch material).
Onoda substantially discloses the invention as claimed above but fails to disclose wherein the one or more compressive layers (5a, 5b) are inner compressive layers. Instead, Onoda appears to disclose/depict wherein the one or more compressive layers are outer compressive layers that are layered on top of the base fabric (1) and sewn or adhered thereto (1; see Figs. 4A-4B and at least paragraph 0053).
However, Di Lorenzo teaches a compressive garment (10) comprising a base fabric (14) and one or more compression layers (28a, 28b) for providing compression to an inner thigh area (see at least paragraphs 0052-0057), wherein the one or more compression layers may be outer compressive layers (see embodiment of Figs. 7-9 and paragraphs 0065-0070) or inner compressive layers (see embodiment of Figs. 1-6 and paragraphs 0052-0060) that are attached to an inner surface (30) of the base fabric (see at least Figs. 1-6 and paragraphs 0007, 0052, and 0057). The Examiner notes that providing the compressive layers as inner compressive layers would allow the layers to be less visually obtrusive, and/or would provide a more direct compressive effect to the underlying thigh muscles and tissues of the wearer (see paragraphs 0003-0009).
Therefore, based on Di Lorenzo’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Onoda’s outer compressive layers to be inner compressive layers (i.e., attached to an inner surface of the base fabric), as doing so would allow the compressive layers to be less visually obtrusive, and/or would provide a more direct compressive effect to the underlying thigh muscles and tissues of the wearer.
Furthermore, such a modification would be nothing more than a simple substitution of one known compressive layer arrangement for another (i.e., compressive layers on the inside of the base fabric instead of on the outside thereof), to improve the compression performance and/or visual aesthetics of the garment, as discussed above. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
Onoda also fails to disclose at least one additional inner compressive fabric layer, such that the one or more inner compressive players comprises a plurality of inner compressive layers, and wherein the non-circumferential inner compressive layer is provided on the additional inner compressive fabric layer.
However, Shams teaches a shape enhancing garment (10, see at least Title and Abstract) comprising a multilayer shaping portion (see Fig. 9) comprising an outer base layer (16b) and a plurality of inner compressive fabric layers (30a, 30b, 16a), wherein the inner compressive fabric layers are coextensive so as to include at least a first layer (30a) provided on an additional second layer (30b; see Figs. 1C, 1D, and 9 and paragraph 0041), so as to form a double layer of inner compression fabric, to provide enhanced compression, sculpting/ slimming, and hold (see paragraphs 0041-0042).
Furthermore, Kiuchi teaches a supportive lower-body garment (1) comprising thigh-covering portions (27) each comprising at least three layers of performance fabric (see Fig. 4 and paragraph 0020, Kiuchi depicts an embodiment wherein thigh-covering portions 27 comprise two layers of fabric, and further discloses wherein any of the garment portions may comprise one, two, or more layers of fabric), such that the garment includes a plurality of inner compressive layers that include at least a first layer provided on an additional second layer (i.e., respective inner and intermediate layers of the three layers), the multiple layers providing increased support (see paragraph 0020).
Therefore, based on Shams’ and/or Kiuchi’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Onoda’s garment to further include at least one additional inner compressive fabric layer coextensive with the non-circumferential inner compressive layer, such that the non-circumferential inner compressive layer would be provided on the at least one additional inner compressive fabric layer, so as to form a plurality of inner compressive layers, as providing additional layer(s) would provide enhanced compression, sculpting/slimming, hold, and/or support.
Regarding the limitation “shape enhancing garment,” Onoda, Di Lorenzo, and Shams and/or Kiuchi together teach a garment comprising inner compressive layers that are configured to compress a targeted body area of the wearer and are therefore capable of providing shape enhancement via compression. It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114 (II).
It is noted that the recitation of “for applying a slimming effect to an inner thigh area” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. Onoda, Di Lorenzo, and Shams and/or Kiuchi together teach the structure as claimed (i.e., compressive inner thigh panels that are configured to apply compression/pressure to the inner thigh area of the wearer) and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
Regarding claim 3, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the non-circumferential layer (5a, 5b of Onoda) comprises an inner thigh shaping region (5a of Onoda, which is configured to shape at least a right inner thigh area) and optionally a sculpting area (5b of Onoda, which is configured to sculpt at least a left inner thigh area and is therefore a sculpting area inasmuch as claimed, see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda).
Regarding claim 4, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the inner thigh shaping region (5a of Onoda) is formed of a continuous non-stretch layer (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda).
Regarding claim 5, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the inner thigh shaping region (5a of Onoda) is shaped to cover only the inner thigh (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda).
Regarding claim 6, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the non-circumferential layer (5a, 5b of Onoda) comprises the sculpting area (5b of Onoda, see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda).
Regarding claim 10, Onoda, Di Lorenzo, and Shams and/or Kiuchi together teach the limitations of claim 3, as discussed above, but fail to further teach wherein the inner thigh shaping region has a semi-circular shape.
However, Onoda further discloses wherein the various non-stretch material portions (2a, 2b, 3a, 3b, 5a, 5b) can comprise various shapes such as a circular shape, an elliptical shape, a rounded polygonal shape, or a linear shape (see Figs. 4a-4b and at least paragraph 0029). The Examiner notes that Applicant has not disclosed any criticality for the claimed semi-circular shape, and one of ordinary skill in the art would be reasonably apprised to vary the shape of a shaping region according to a desired area of shaping and/or a desired aesthetic appearance.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Onoda’s inner thigh shaping region to include a semi-circular shape, so as to accommodate a desired area of shaping and/or to accommodate a desired aesthetic appearance, as a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. A change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04 (IV)(B).
The Examiner further notes that the limitation “semi-circular” is being interpreted broadly to refer to a shape that is approximately semi-circular, as Applicant’s own disclosed inner thigh shaping region does not appear to be truly semi-circular (see at least Figs. 1-4 of instantly filed drawings).
Regarding claim 11, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the non-circumferential layer (5a, 5b of Onoda) comprises one or more front non-circumferential layers (front portions of 5a, 5b of Onoda) and one or more back non- circumferential layers (back portions of 5a, 5b of Onoda) where the front and back non-circumferential layers are different (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda).
Regarding claim 12, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the one or more front non- circumferential layers (front portions of 5a, 5b of Onoda) comprise a front sculpting area (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda, front non-circumferential layer 5a, 5b is configured to sculpt at least a front inner thigh area, so as to form a front sculpting area).
Regarding claim 14, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed wherein the one or more back non-circumferential layers (back portions of 5a, 5b of Onoda) comprise a back sculpting area (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda, back non-circumferential layer 5a, 5b is configured to sculpt at least a back inner thigh area, so as to form a back sculpting area).
Regarding claim 21, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo and Shams and/or Kiuchi) is further disclosed to comprise a side panel (side portions of 1 of Onoda) for each leg which are shaped to cover each outer leg (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-00564 of Onoda, the Examiner notes that claim 21 does not prohibit the side panels from being formed by the material of the base layer), wherein each side panel is free from inner compressive layers (see at least Figs. 4A-4B and paragraphs 0025-0034 and 0052-0056 of Onoda).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Onoda, Di Lorenzo, and Shams and/or Kiuchi, as applied to claim 1 above, further in view of Randall et al. (herein Randall)(US PG Pub 2016/0044971).
Regarding claim 2, Onoda, Di Lorenzo, and Shams and/or Kiuchi together teach the limitations of claim 1, as discussed above, but fail to further teach wherein the non-stretch layer is formed from a non-stretch film.
However, Randall teaches a compression garment (9) comprising at least a base layer (12) and an inner non-stretch compression layer (36, see Figs. 1-9 and paragraphs 0005-0007 and 0026-0040), wherein the non-stretch layer is formed from a non-stretch film (see at least paragraphs 0033-0040), as such a material provides enhanced stability/stiffness and can be easily applied to the base fabric by common processes such as printing, molding, or adhering (see paragraphs 0005-0007 and 0033-0040).
Therefore, based on Randall’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Onoda’s non-stretch layer to be a non-stretch film, as such a material would provide enhanced stability/stiffness, and can be easily applied to the base fabric by common processes such as printing, molding, or adhering.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Onoda, Di Lorenzo, and Shams and/or Kiuchi, as applied to claim 6 above, further in view of Harber et al. (herein Harber)(US PG Pub 2014/0082815).
Regarding claim 7, Onoda, Di Lorenzo, and Shams and/or Kiuchi together teach the limitations of claim 6, as discussed above, but fail to further teach wherein the sculpting area is formed from a plurality of non-stretch elements to provide graduated compressive pressure release.
However, Harber teaches a compression garment (100) comprising a base layer (base textile as seen in Fig. 1 and described in at least Fig. 5 and paragraph 0019) and a compression layer (compression elastomer as seen in Figs. 1-3 and described in at least Fig. 5 and paragraphs 0013-0019), wherein the compression layer is formed from a plurality of compressive elements (rings) that provide graduated compressive pressure release (see at least Fig. 1 and paragraphs 0005 and 0013-0019), so as to provide varying amounts of compression along desired portions of the garment, according the size and anatomy of the wearer, and/or the intended use of the garment (see paragraphs 0005, 0014, and 0018-0019).
Therefore, based on Harber’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Onoda’s sculpting area to be formed from a plurality of non-stretch elements to provide graduated compressive pressure release, as doing so would provide varying amounts of compression along desired portions of the garment, according the size and anatomy of the wearer, and/or the intended use of the garment.
Regarding claim 8, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo, Shams and/or Kiuchi, and Harber) is further disclosed wherein a size of each non-stretch element decreases the further the non-stretch element is away from the inner thigh shaping region and/or a distance between adjacent non-stretch elements increases the further the non-stretch elements are away from the inner thigh shaping region (see Figs. 1-3 and paragraphs 0013-0019 of Harber; Harber discloses wherein different compression gradients may be applied to gradually decrease the size of each compressive ring the further the ring is away from a desired maximum compression region; and/or to gradually increase a distance between adjacent compressive rings the further the rings are away from the desired maximum compression region).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Onoda, Di Lorenzo, and Shams and/or Kiuchi, as applied to claim 16 above, in view of Szilagyi (US PG Pub 2021/0145084).
Regarding claim 17, Onoda, Di Lorenzo, and Shams and/or Kiuchi together teach the limitations of claim 16, as discussed above. Onoda further discloses wherein the compressive layer (2a, 2b, 3a, 3b) is formed from two or more fabric regions (see at least Figs. 4a-4b and paragraphs0052-0056) but fails to disclose wherein the two or more fabric regions have different compressive strength.
However, Szilagyi teaches a compressive garment (310, see Figs. 11a-11d) comprising a plurality of fabric regions (350, 352, 354, 356) each having a different compressive strength (see at least paragraphs 0084-0088), so as to selectively provide areas of support, shaping, and/or lift (see paragraphs 0056, 0063, and 0084-0085).
Therefore, based on Szilagyi’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Onoda’s two or more fabric regions to have different compressive strength, as doing so would selectively provide areas of support, shaping, and/or lift.
Regarding claim 18, the modified garment of Onoda (i.e., Onoda in view of Di Lorenzo, Shams and/or Kiuchi, and Szilagyi) is further disclosed wherein a fabric region (356 of Szilagyi) having a higher compressive strength is positioned at or near an inner thigh area to provide a slimming effect to the inner thigh (see Figs. 11A-11D and at least paragraphs 0084-0085 of Szilagyi).
Allowable Subject Matter
Claims 13 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, further pending resolution of the claim objections discussed 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELYN BRAVO whose telephone number is (571)270-0581. The examiner can normally be reached Monday, Tuesday, Thursday, and Friday, 12:00 pm - 5:00 pm.
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/JOCELYN BRAVO/Primary Examiner, Art Unit 3732
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