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
This is in response to amendment received on 02/09/26. Claims 1-3 have been cancelled and claims 4-6 have been newly added. Claims 4-6 are examined herein.
Specification
The amendment filed 02/09/26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “heavy line of stitching bridges the elastic seams”.
Applicant is required to cancel the new matter in the reply to this Office Action.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: support needs to be provided for “tear-drop-shaped”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There was no support in the originally filed disclosure for “heavy line of of stitching bridges the elastic seams between the thighs” and “elastic seams” as amended into newly added claim 4.
Claim 5 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There was no support in the originally filed disclosure for the outer covering being attached in placing using a separate piece of fabric. There is support for the outer covering to be stitched in place, but no support for an additional/separate piece of fabric in the attachment.
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 4-6 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. However, the claims have been examined as best understood.
Claim 4 recites the limitations “the brief”, “the long edges”, “the leg openings”, “the thighs”, “the genitals”, “the waistband”, “the wider back portion”, “the narrow front portion”, “the garment”, “the buttocks”, “the penis”, and “the exposed genitals” lack antecedent basis.
Claims 4-6 and the claims that depend therefrom 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.
Regarding claims 4-6, it is unclear what final garment structure is being required of the claim. There appears to be product-by-process limitations in the claim, which make the final garment structure requirements unclear. It is unclear what the narrow and widest portions of the final garment structure is.
Regarding claim 4, it is unclear what “elastic seams” are, there is no support in the specification as to what these seams would be and what makes them elastic, is the stitching creating the seam stitching elastic, or is there an elastic trim piece located along the hemmed edges and seamed therein? It is unclear what structure is being required of the claim.
Regarding claim 4, it is unclear what “the heavy lines of stitching” are or would require structurally. The specification fails to mention what these “heavy lines of stitching” are or would entail.
Regarding claim 4, it is unclear what “the garment taunt” means, the term “taunt” would does not make sense when referring to a garment structure.
Regarding claim 4, it is unclear how the opening is lined, is the perimeter of the opening lined or is the opening covered? It is unclear what structure is required to read on the claim.
Claim 6 and the claims that depend therefrom 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. It is unclear what “wherein the fabric panel is eliminated” is requiring structurally or the claims, is applicant attempting to not claim the fabric panel of claim 4, or that the panel can be removably attached as desired?
Claim Rejections - 35 USC § 112
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.
Claim 6 is 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. Claim 6 eliminates the fabric panel, which fails to limit the subject matter of claim 4. 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 § 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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crossley (GB 2,292,513) in view of Michels (US 5,157,793) and Gu (US 8,782,817).
In regard to claim 4, Crossley teaches a male undergarment (figures 1-4 and title: Men’s under pants) that includes a single piece of fabric creating the brief (see figures 1-4); and a lined opening in the front portion that allows protrusion of the penis (opening/aperture: 11 and liner: 13, see page 1); and a perimeter along the outer edges of the fabric from the widest portion, through the narrow portion, and continuing on either side of the opening to the narrow top edge (see leg opening: figure 1-3); and an outer covering that hangs loosely over the exposed genitalia (fabric panel/loincloth: 10); and a waistband affixed at the top completes torso-encircling garment (waistband: 12).
However, Crossley fails to teach the fabric creating the brief being a stretch fabric and a waistband being elastic and elastic seams that are stitched to the outer edges of the fabric from the widest portion, through the narrow portion, and continuing on either side of the opening to the narrow top edge. Further, Crossley fails to teach the opening being tear-drop-shaped.
Michels teaches an undergarment fabric made from stretch fabric (column 2, lines 60-64) and an elastic waistband (identifier 14, column 4, lines 51) and leg openings with an elastic seams along the outer edges of the fabric from the widest portion, through the narrow portion, and continuing on either side of the opening to the narrow top edge (see figures 1, 4 and 5, the thin elastic lining is identifier 20, column 3, lines 2-15); and a line of stitching across the narrow portion traverses the elastic seams along the outer edges (see figure 1, column 4, lines 15-19).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the waistband and leg edges of Crossley with the elastic waistband and thin elastic lining as taught by Michels, since the thin elastic lining providing along the leg openings of Crossley would provide a means to draw and contract the edge portions of the garment into close fitting engagement with the legs of the wearer and cause the side edges to be held snugly in place while allowing for the leg openings to be expanded as needed to respond to calls of nature (column 3, lines 2-15), and the elastic waistband would provide a comfortable and expanding opening to fit a user’s waist.
With respect to the opening being tear-drop shaped, Gu (US 8,726,423) teaches an opening on an undergarment that is in the shape of a tear-drop (see figures 1 and 2, opening 24). It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the opening of Crossley with the tear-drop shaped opening as taught by Gu, since the opening of Crossley being a tear-drop shape would provide an opening that is shaped to allow a penis to extend therethrough. Here we are taking one well-known shaped opening on a male undergarment (Crossley) and replacing that opening shape with another well-known shaped opening on a male undergarment as taught by Gu.
In regard to claim 5, Gu teaches a fabric panel that is has a separate attachment to the undergarment (zipper attachment is a separate attachment for the fabric panel and the zipper is attached via stitching: figure 20, column 7, lines 26-31 and lines 43-46; column 6, lines 45-49).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the fabric panel of Crossley and Michels as with a separate attachment as taught by Gu, since the fabric panel of Crossley being having a separate attachment would allow a user to remove and replace the panel desired or needed.
In regard to claim 6, Gu teaches a fabric panel that is attached to an undergarment by releasable attachment means so that it can be eliminated from the garment as desired (figure 20, column 7, lines 26-31 and lines 43-46).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the fabric panel of Crossley and Michels as a removable fabric panel as taught by Gu, since the fabric panel of Crossley being removable would allow a user to remove and replace as desired or needed.
Response to Arguments
Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
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 ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 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, Clinton T Ostrup can be reached on (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732