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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 3, 2026 has been entered.
Response to Amendment
The amendments filed with the written response received on March 3, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 3, 5, 6 and 9 have been amended; claims 2, 4, 7, 8, 10-15, 17, 19, 20, 23, 25 and 29-32 are canceled; and claims 9, 16, 18, 21, 22, 24, 26-28 and 33 are withdrawn from further consideration. Accordingly, claims 1, 3, 5, 6, 9, 16, 18, 21, 22, 24, 26-28 and 33 are pending in this application, with an action on the merits to follow regarding claims 1, 3, 5 and 6.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 32: “a wearer” should recite “the wearer”
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 1 (and claims 3, 5 and 6 at least due to dependency from claim 1) 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.
Regarding claim 1, Applicant has amended the claim’s transitional phrase to be closed with “consisting of” in line 1. However, in the body of the claim, Applicant recites “wherein said right side panel is comprised of” (line 11), “wherein said left side panel is comprised of” (line 13) and “wherein said plurality of loops is comprised of” (line 25). The use of the open-ended term “comprises” within a “consisting of” limitation renders the metes and bounds of the claim unclear, because “comprised” appears to open the scope back up to additional structure, when the claim’s subject matter has already been closed with the “consisting of” language. Correction is required. Examiner further notes that dependent claims 3, 5 and 6 add additional structure, while using the “comprised” language as well. A claim which depends from a claim which "consists of" the recited elements or steps cannot add an element or step. See MPEP 2111.03(II)(last sentence of first paragraph). Accordingly, claims 3, 5 and 6 are likewise indefinite.
Further regarding claim 1, Applicant has amended the claim to recite “a right side panel” and “a left side panel”. In the normal sense of the term, “panel” typically suggests a distinct piece of structure. In Figs. 1-3 of Applicant’s drawings, the hood appears to have a single piece of structure for the entire hood (except for the loops), since there is no boundary line shown that would separate a right side “panel” from a left side “panel”. The drawings appear to support the use of the term “portion”, which was originally used in the claim. It is unclear whether Applicant intends for the hood to have distinct pieces of material that form respectively distinct left and right side “panels”, or a single piece of material would have “a right side panel” and “a left side panel” therein, in Applicant’s interpretation. Correction/clarification is required. For purposes of examination, the claim language will be interpreted as best as can be understood when applying any prior art thereagainst.
Further regarding claim 1, Applicant recites the limitation “said left lower edge portion” (line 8), which lacks antecedent basis in the claim. Correction is required.
Regarding claims 5 and 6, Applicant recites the limitation “said inner surface”, which is indefinite because claim 1 positively recites “a right inner surface” and “a left inner surface”. To which of these two inner surfaces is “said inner surface” intended to refer? Correction is required.
Regarding claim 6, Applicant recites the limitation “said at least one loop” (lines 1-2), which lacks antecedent basis in the claims. Correction is required.
For purposes of examination, the claims will be interpreted as best as can be understood, given the confusion regarding whether the scope of independent claim 1 is actually intended to be closed with the use of “consisting of” or not.
An effort has been made to identify all indefinite language with the pending claims. However, Examiner notes the above listing of 35 U.S.C. § 112 rejections may not be conclusive and Applicant is required to review every claim for compliance to 35 U.S.C. § 112(b) so as to facilitate a clear understanding of the claimed invention and proper application of the prior art.
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, 3, 5 and 6, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Romano (WO 2017/139458 A1) in view of Grant (USPN 3,088,119).
Regarding independent claim 1, Romano discloses a stand-alone hood, consisting of (specifically, refer to claim 13 of Romano; for purposes of addressing the closed aspect of the transitional phrase “consisting of”, claim 13 of Romano will be the “base reference” of the Romano prior art when mapping its features to claim 1 of the present application; claim 13 of Romano recites “[a]n apparatus comprising: a hood shaped article configured to cover a user's head, the hood shaped article having a top portion, a first side portion and a second side portion; wherein the first side portion and the second portion each have a bottom portion having an inner portion and an outer portion separate from each other”): a right side panel having a right front side edge and a right lower edge; a left side panel having a left front side edge and a left lower edge, said right front side edge and said left front side edge being connected so as to form a front opening, wherein said right lower edge is connected to said left lower edge portion so as to form a lower edge, said right lower edge and said left lower edge being configured to extend around a back of a wearer’s neck (generally, Fig. 1 shows the hood (while Fig. 1 shows additional features, claim 13 of Romano does not require these features that are illustrated); #140 points to a right side panel and #150 points to a left side panel; both side panels have front side edges that meet at an apex to define a front opening; both side panels have lower edges that meet to form an overall lower edge of the hood that is configured to extend around a back of a hypothetical wearer’s neck; the “bottom portion” of each of the first and second side portions are part of the “right side panel” and “left side panel”, for purposes of addressing the claim language), wherein said right side panel is comprised of a right inner surface and a right outer surface opposite said right inner surface, wherein said left side panel is comprised of a left inner surface and a left outer surface opposite said left inner surface (both the left and right side panels have inner and outer opposing surfaces). Claim 13 of Romano does not recite a plurality of loops attached to the first and second side portions (i.e. said right side panel and said left side panel), wherein said plurality of loops is comprised of a first loop being attached to said right side panel adjacent said right lower edge and only on said right inner surface and having a first loop opening and a second loop being attached to said left side panel adjacent said left lower edge and only on said left inner surface and having a second loop opening, and wherein said first loop opening and said second loop opening are configured to attach said right side panel and said left side panel on a head of a wearer by a scarf element passable through said first loop opening and said second loop opening without engaging said right outer surface and said left outer surface (Examiner notes, however, that the emphasized/italicized language is a statement of intended use that does not further structurally define the claimed invention in any patentably-distinguishing sense). Romano does disclose an embodiment that depicts a scarf-like structure being housed on an inner surface of the hood at the left and right sides, wherein the scarf-like structure does not engage the hood’s outer surface (see Fig. 10B of Romano).
Grant teaches a garment that includes a plurality of loops (bands #11, #12 and intermediate strap #14) that are used in the neck area of the garment to retain a scarf (#B) therein (see Fig. 6 of Grant).
Romano and Grant teach analogous inventions in the field of garments with scarf-holding features in the neck area. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added the loops of Grant to the interior surface of the hood of Romano in order to permit a hypothetical scarf to be routed through the loops and held against the wearer’s neck, wherein the proximity of the scarf to the skin of the wearer’s neck could provide added softness and warmth as compared to if the scarf were installed exteriorly of the hood, and further since Romano already teaches (in the Fig. 10B embodiment of Romano) the concept of having a scarf-like structure be positioned and engaged with the inside surface of the hood. As a result of the modification of the hood of Romano’s claim 13, there would be a plurality of loops attached to the first and second side portions (i.e. said right side panel and said left side panel) (via the loops incorporated from the teachings of Grant, as explained above), wherein said plurality of loops is comprised of a first loop being attached to said right side panel adjacent said right lower edge and only on said right inner surface (band #11 of Grant would be a first loop on the right side, based on Figs. 3-5 of Grant; while Grant shows the loops on the exterior surface, Romano already teaches that the scarf could be placeable on the inner surface of the hood, and the modification above addresses the obviousness and motivation of placing the loops in the inside surface of the hood of claim 13 of Romano; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com); all components of the device are adjacent to one another, at least to some degree) and having a first loop opening (the space between the loop and the inner surface of the hood is a first loop opening) and a second loop being attached to said left side panel adjacent said left lower edge and only on said left inner surface and having a second loop opening (band #12 from Grant into modified Romano would be the second loop on the inner surface of the hood’s left side panel, as explained above), and wherein said first loop opening and said second loop opening are configured to attach said right side panel and said left side panel on a head of a wearer by a scarf element passable through said first loop opening and said second loop opening without engaging said right outer surface and said left outer surface (since the loops are placed on the inner surface in the modification explained above, they would be capable of passing a scarf through the loops’ openings without ever engaging the outer surface of the hood).
Regarding claim 3, the modified hood of Romano (i.e. Romano in view of Grant, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that said plurality of loops is further comprised of a third loop at a mid-point between said right front side edge and said left front side edge (in the modification of Romano in view of Grant, all three bands from Grant were incorporated into Romano’s hood’s inner surface along the neckline; band #14 of Grant is at a midpoint, which is a third loop at a mid-point between the right and left front side edges, post-modification).
Regarding claim 5, the modified hood of Romano (i.e. Romano in view of Grant, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that at least one loop of a group consisting of said first loop, said second loop, and a third loop, is comprised of a bottom edge loop portion attached to said inner surface and an upper edge loop portion attached to said inner surface above said bottom edge loop portion (via the bands #11/12/14 incorporated into Romano from the Grant teachings; each band has an upper and bottom edge loop “portion”; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), and wherein at least one edge loop portion of a group consisting of said bottom edge loop portion and said upper edge loop portion is permanently attached to said inner surface (Col. 2, Lines 2-3 of Grant discloses that the bands are fixedly engaged via stitching (i.e. a type of permanent attachment); since the bands are attached to the inner surface via the modification above addressing claim 1, the stitching would also be to the inner surface of the hood).
Regarding claim 6, the modified hood of Romano (i.e. Romano in view of Grant, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that said at least one loop of a group consisting of said first loop, said second loop, and said third loop, is further comprised of a bottom edge loop portion attached to said inner surface and an upper edge loop portion attached to said inner surface above said bottom edge loop portion (via the bands #11/12/14 incorporated into Romano from the Grant teachings; each band has an upper and bottom edge loop “portion”; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)), but does not show that said upper edge loop portion has an open configuration and a closed configuration (instead, in Grant, the bottom edge loop portion has an open configuration and a closed configuration, in middle band #14 which has snap-fasteners that mate at a bottom end (see Figs. 1 and 3 of Grant). However, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have moved the snap fastener to the top end of the band #14 instead of the bottom end, in order to perhaps make the snap fastener more easily accessible from a top direction than manipulating from a bottom direction, and further since it has been held to be generally within the skill of a worker in the art to choose from a finite number of identified, predictable solutions (in this case, there are basically two predictable solutions—top and bottom—for the placement of the snap fastener on the band) with a reasonable expectation of success. See MPEP 2143(I)(E). As a result of the modification, the upper edge loop portion of at least one of the loops (i.e. middle band #14 incorporated into Romano via teachings of Grant) would have an open configuration (snap fasteners disengaged between band/loop and inner surface) and a closed configuration (snap fasteners engaged between band/loop and inner surface).
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, as Applicant’s arguments are all based on a previous interpretation of the prior art.
Conclusion
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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732