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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-19 in the reply filed on 1 December 2025 is acknowledged.
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.
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.
Claims 1-19 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, in line 3, “the outer layer of fabric.” This recitation is indefinite because it is unclear if this recitation is further restricting the “fabric/textile” limitation from line 2, or if it refers to the same component. The examiner suspects the intent of the applicant was to recite this portion of the claim as “the outer layer of fabric/textile” and will be examined on the merits as such.
Claim 1 also recites the limitation "the inner layer" twice in lines 9-10. There is insufficient antecedent basis for this limitation in the claim. The examiner suspects the intent of the applicant was to recite these portions of the claim as "the elastic inner layer" which does have proper antecedent basis in the claim, and will be examined on the merits as such.
Claim 5 recites the limitation "the adhesive" in line 1. There is insufficient antecedent basis for this limitation in the claim. The examiner suspects the intent of the applicant was to recite this portion of the claim as "the adhesive layer" which does have proper antecedent basis in the claim, and will be examined on the merits as such.
Claim 5 also recites, in the preamble, “[t]he active insulation of claim 1,” which does not match the preamble of claim 1, the claim from which claim 5 depends. The examiner suspects the intent of the applicant was to recite this portion of the claim as “[t]he insulating composite material of claim 1” and will be examined on the merits as such.
Claim 10 recites the limitation "the adhesive" in line 8. There is insufficient antecedent basis for this limitation in the claim. The examiner suspects the intent of the applicant was to recite this portion of the claim as "the adhesive layer" which does have proper antecedent basis in the claim, and will be examined on the merits as such.
Claim 11 recites the limitation "the outer layer of fabric/textile" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The examiner suspects the intent of the applicant was to recite this portion of the claim as "the outer layer of fabric" which does have proper antecedent basis in the claim, and will be examined on the merits as such.
Claim 17 recites the limitation "the elastic inner layer of fabric/textile" in line 1. There is insufficient antecedent basis for this limitation in the claim. The examiner suspects the intent of the applicant was to recite this portion of the claim as "the elastic inner layer of fabric" which does have proper antecedent basis in the claim, and will be examined on the merits as such.
Claims 2-4, 6-9, 12-16, 18 and 19 are included in this rejection based on their dependency from either claim 1 or 10. Also note the rejection of claims 7-9 under 35 USC §112(d) below for how the examiner is interpreting the intent of the applicant with regards to the dependencies of these claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 7-9, which are in dependent form, are of improper dependent form for failing to contain a reference to a claim previously set forth. To further prosecution, the examiner suspects the intent of the applicant was to have the preambles for each of claims 7-9 recite “[t]he insulating composite material of claim 1” and will be examined on the merits as such. This position is taken from the dependencies of claims 17-19, containing identical claim language in the body of the claims relative to claims 7-9, respectfully, which directly depend from independent claim 10.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. US 2019/0343202 (hereinafter “Ryden”).Regarding claim 1 Ryden teaches an insulating material comprising different components, such as nonwoven materials, polymer laminate material, etc. (abstract), which corresponds to an insulating composite material. Ryden teaches the insulating (composite) material comprises a third sheet (outer layer) 6 of primary material, where the primary material comprises a fabric/textile (paragraphs [0009], [0032], [0033] and [0035]; and Figures 1-4). Ryden teaches strips of adhesive (adhesive layer) 10 are applied to the third sheet (outer layer of fabric/textile) 6, where the strips of adhesive (adhesive layer) 10 are formed in a parallel linear pattern (geometric pattern) (paragraph [0035]; and Figures 1-4). Ryden teaches a plurality of parallel elastic filaments 14 (elastic inner layer of fabric/textile), adhered under tension (in a stretched state), to the third sheet (outer layer) 6 via the strips of adhesive (adhesive layer) 10 (paragraphs [0036] – [0038]; and Figures 3-4). Ryden teaches when the tension of the plurality of parallel elastic filaments 14 (elastic inner layer) is released (in a relaxed state), the adhered third sheet (outer layer) 6 becomes bowed (vaulted/bubbled) forming raised cavities 18 according to the pattern of the strips of adhesive (adhesive layer) 10 (paragraph [0038]; and Figure 4). Ryden teaches the insulating (composite) material can stretch between the relaxed state of the elastic filaments 14 (elastic inner layer) and the stretched state of the elastic filaments 14 (elastic inner layer) that is adhered to the third sheet (outer layer) 6 via the strips of adhesive (adhesive layer) 10 (abstract; paragraphs [0022], [0030] and [0038]; and Figures 3-4).Regarding claim 2 In addition, Ryden teaches the third sheet (outer layer) 6 comprises the primary material, where the primary material can be waterproof (water repellant) and water vapor permeable (paragraphs [0027], [0028] and [0032]).Regarding claim 3 In addition, Ryden teaches the strips of adhesive (adhesive layer) 10 are applied in a regular pattern or array and includes intersecting lines (triangles, polygons and/or quadrilaterals) (paragraph [0041]).Regarding claim 4 The use of product-by-process limitations has been noted in claim 4, for example, "the geometric pattern is laser cut or masked from an adhesive sheet". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113. Regarding claim 5 The use of product-by-process limitations has been noted in claim 5, for example, "the adhesive layer is extruded or printed in the geometric pattern". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.Regarding claim 6 In addition, Ryden teaches the linear strips of adhesive (adhesive layer) may be replaced by other adhesive patterns, for example spots of adhesive (adhesive dots) in a regular pattern (geometric pattern) (paragraph [0041]).Regarding claims 8 In addition, Ryden teaches the elastic elements are not restricted to being essentially one-dimensional filaments running parallel to one another, but other more complex shapes may be used such as an intersecting square or triangular grid of filaments (paragraph [0041]), which corresponds to an embodiment where stretching is performed in 2 dimensions.Regarding claim 9 In addition, Ryden teaches the elastic elements are not restricted to being essentially one-dimensional filaments running parallel to one another, but other more complex shapes may be used such as an intersecting square or triangular grid of filaments (paragraph [0041]), which corresponds to an embodiment where stretching is performed in 4 dimensions.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ryden as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2022/0125389 (hereinafter “Rogers”).Regarding claim 4 The limitations for claim 1 have been set forth above. In addition, Ryden does not explicitly teach the (geometric) pattern of the adhesive layer is laser cut or masked from an adhesive sheet. Rogers teaches it is well known to use a laser structuring process (pattern being laser cut) for tailoring the dimensions of an adhesive material for a conformable device (abstract; and paragraphs [0130] and [0226]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to form the adhesive (geometric) pattern of Ryder using the laser structuring process of Rogers motivated by the desire to form a patterned adhesive layer using a conventional process.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ryden as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2014/0322497 (hereinafter “Kelsey”).Regarding claim 5 The limitations for claim 1 have been set forth above. In addition, Ryden does not explicitly teach the adhesive layer is extruded or printed in the geometric pattern. Kelsey teaches a multi-layered article comprising a first textile and an adhesive layer having an adhesive pattern that includes regions free or substantially free of adhesive (abstract). Kelsey teaches a discontinuous pattern of adhesive may be applied by any conventional manner, such as, but not limited to, gravure printing, screen printing, and transfer printing (paragraph [0041]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to form the adhesive (geometric) pattern of Ryder using the printing process of Kelsey motivated by the desire to form a patterned adhesive layer using a conventional process.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ryden as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2018/0193687 (hereinafter “Petrakis”).Regarding claim 7 The limitations for claim 1 have been set forth above. In addition, Ryden teaches the insulating material is preferably air and/or water vapor permeable to avoid build-up of moisture (paragraph [0027]). Ryden does not explicitly teach the plurality of parallel elastic filaments 14 (elastic inner layer of fabric/textile) comprises a moisture-wicking stretch fabric/textile. Petrakis teaches an insulating material comprising a textile layer comprising a material that enhancing wicking action (removing moisture from the skin) and allows moisture and air to pass through the layer (paragraph [0102]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the hydrophobic properties of the elastic filaments 14 (elastic inner layer of fabric/textile) of Ryden with the moisture wicking action of Petrakis to further improve the removal of moisture away from the user, as desired by both Ryden and Petrakis.
Claims 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ryden, and further in view of Petrakis.Regarding claim 10 Ryden teaches an insulating material comprising different components, such as nonwoven materials, polymer laminate material, etc. (abstract). Ryden teaches the material may be employed in the construction of garments (paragraph [0050]), which corresponds to a garment formed of a composite material having active insulation. Ryden teaches the insulating material (garment) comprises a third sheet (outer layer) 6 of primary material, where the primary material comprises a fabric (paragraphs [0009], [0032], [0033] and [0035]; and Figures 1-4). Ryden teaches strips of adhesive (adhesive layer) 10 are applied to the third sheet (outer layer of fabric) 6, where the strips of adhesive (adhesive layer) 10 are formed in a parallel linear pattern (geometric pattern) (paragraph [0035]; and Figures 1-4). Ryden teaches a plurality of parallel elastic filaments 14 (elastic inner layer of fabric), adhered under tension (in a stretched state), to the third sheet (outer layer) 6 via the strips of adhesive (adhesive layer) 10 (paragraphs [0036] – [0038]; and Figures 3-4). Ryden teaches when the tension of the plurality of parallel elastic filaments 14 (elastic inner layer) is released (in a relaxed state), the adhered third sheet (outer layer) 6 becomes bowed (vaulted/bubbled) forming raised cavities 18 according to the pattern of the strips of adhesive (adhesive layer) 10 (paragraph [0038]; and Figure 4). Ryden teaches the insulating (composite) material can stretch between the relaxed state of the elastic filaments 14 (elastic inner layer) and the stretched state of the elastic filaments 14 (elastic inner layer) that is adhered to the third sheet (outer layer) 6 via the strips of adhesive (adhesive layer) 10 (abstract; paragraphs [0022], [0030] and [0038]; and Figures 3-4). Ryden does not explicitly teach the garment is sized and configured as form-fitting to a wearer of the garment when the inner layer is in the relaxed state and the garment expands in portions to the stretched state of the inner layers adhered to the outer layer via the adhesive layer to accommodate force applied by the wearer as the wearer moves thereby reducing hindrance on wearer mobility. Petrakis teaches a physical conditioning garment (title and paragraph [0001]). Petrakis teaches the garment is configured to fit on the torso of a wearer, where the garment does not excessively restrict a wearer’s freedom of movement (abstract), where the garment comprises a power stretch fleece with great elasticity (paragraphs [0087], [0099] and [0105]), which corresponds to the garment being sized and configured as form-fitting to a wearer of the garment when the inner layer is in the relaxed state and the garment expands in portions to the stretched state of the inner layers adhered to the outer layer via the adhesive layer to accommodate force applied by the wearer as the wearer moves thereby reducing hindrance on wearer mobility. Ryden and Petrakis are analogous inventions in the field of garments. It would have been obvious to one skilled in the art at the time of the invention to modify the insulated garment of Ryden with the fit and sizing of Petrakis to enable the garment of Ryden to be useful as a physical conditioning garment.Regarding claim 11 In addition, Ryden teaches the third sheet (outer layer) 6 comprises the primary material, where the primary material can be waterproof (water repellant) and water vapor permeable (paragraphs [0027], [0028] and [0032]).Regarding claims 12 and 13 In addition, Petrakis teaches the garment further comprises zippered vents (paragraph [0083]).Regarding claim 14 In addition, Ryden teaches the strips of adhesive (adhesive layer) 10 are applied in a regular pattern or array and includes intersecting lines (triangles, polygons and/or quadrilaterals) (paragraph [0041]).Regarding claim 15 The use of product-by-process limitations has been noted in claim 15, for example, "the geometric pattern is laser cut from an adhesive sheet". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113. Regarding claim 16 In addition, Ryden teaches the linear strips of adhesive (adhesive layer) may be replaced by other adhesive patterns, for example spots of adhesive (adhesive dots) in a regular pattern (geometric pattern) (paragraph [0041]).Regarding claim 17 The limitations for claim 10 have been set forth above. In addition, Ryden teaches the insulating material is preferably air and/or water vapor permeable to avoid build-up of moisture (paragraph [0027]). Ryden does not explicitly teach the plurality of parallel elastic filaments 14 (elastic inner layer of fabric) comprises a moisture-wicking stretch fabric/textile. Petrakis teaches an insulating material comprising a textile layer comprising a material that enhancing wicking action (removing moisture from the skin) and allows moisture and air to pass through the layer (paragraph [0102]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the hydrophobic properties of the elastic filaments 14 (elastic inner layer of fabric/textile) of Ryden with the moisture wicking action of Petrakis to further improve the removal of moisture away from the user, as desired by both Ryden and Petrakis.Regarding claims 18 In addition, Ryden teaches the elastic elements are not restricted to being essentially one-dimensional filaments running parallel to one another, but other more complex shapes may be used such as an intersecting square or triangular grid of filaments (paragraph [0041]), which corresponds to an embodiment where stretching is performed in 2 dimensions.Regarding claim 19 In addition, Ryden teaches the elastic elements are not restricted to being essentially one-dimensional filaments running parallel to one another, but other more complex shapes may be used such as an intersecting square or triangular grid of filaments (paragraph [0041]), which corresponds to an embodiment where stretching is performed in 4 dimensions.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Ryden and Petrakis as applied to claim 10 above, and further in view of Rogers.Regarding claim 15 The limitations for claim 10 have been set forth above. In addition, Ryden does not explicitly teach the (geometric) pattern of the adhesive layer is laser cut from an adhesive sheet. Rogers teaches it is well known to use a laser structuring process (pattern being laser cut) for tailoring the dimensions of an adhesive material for a conformable device (abstract; and paragraphs [0130] and [0226]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to form the adhesive (geometric) pattern of Ryder using the laser structuring process of Rogers motivated by the desire to form a patterned adhesive layer using a conventional process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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