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 .
Status of Claims
This Office Action is in response to the amendment filed 7/9/25. As directed by the amendment, claims 2 been amended. Claims 2-12 are pending in this application.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 103 AIA
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2-12 are rejected under 35 U.S.C. 103 as being unpatentable over Turner US 20110307998 A1 (herein after Turner) in view of Kurado US 4209354 A (herein after Kurado).
Regarding claim 2, Turner discloses a method comprising: selecting a protective pad (Abstract, 300, paragraph 0025), wherein the protective pad (300) comprises a three-dimensional image element on an outer face thereof (as seen in annotated Figure 5 and 13), and wherein the selecting is based on the three-dimensional image element (as seen in annotated Figure 5 and 13); positioning the protective pad below at least one layer of fabric of an article of clothing worn by a user (as seen in annotated Figure 5 and 13).
[AltContent: arrow][AltContent: textbox (Positioning the protective pad below at least one layer of fabric of an article of clothing worn by a user.)]
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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (A three dimensional element.)]
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However, Turner does not specifically disclose the three-dimensional image element causes a deformation of the at least one layer of fabric of the article of clothing in a shape corresponding to the three-dimensional image element.
Kurado teaches the three-dimensional image element causes a deformation of the at least one layer of fabric of the article of clothing (as seen in annotated Figures 11 and 12) in a shape corresponding to the three-dimensional image element (as seen in annotated Figures 11 and 12).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (Three-dimensional image)][AltContent: arrow][AltContent: arrow][AltContent: textbox (The three-dimensional image element causes a deformation of the at least one layer of fabric of the article of clothing in a shape corresponding to the three-dimensional image element.)]
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Turner is analogous art to the claimed invention as it relates to protective padding having textured surfaces and how the pads are worn in a garment. Kurado is analogous art to the claimed invention in that it relates to protective padding having raised three-dimensional elements on the pads.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the method of Turner, by having the three-dimensional image element cause a deformation of the at least one layer of fabric of the article of clothing that corresponds to the shape of the three-dimensional image element, as taught by Kurado in order to form a decorative design on the garments outer surface. The modification of the method would be a simple modification to obtain predictable results, a way of creating designs on the outer surface of the garment that can be removed or relocated easily.
Regarding claim 3, the modified method of the combined references discloses wherein the three-dimensional image element comprises foam (Col 1, lines 60-65 of Kurado).
Regarding claim 4, the modified method of the combined references discloses wherein the foam comprises a closed cell foam (Col 1, lines 60-65 of Kurado).
Regarding claim 5, the modified method of the combined references discloses wherein the protective pad (300 of Turner) is configured to protect a body part of the user (as seen in annotated Figure 5 and 13 of Turner).
Regarding claim 6, the modified method of the combined references discloses wherein the three-dimensional image element is configured as a shape of a letter or number (See H-shape in Figure 15J, paragraph 44 of Turner).
Regarding claim 7, the modified method of the combined references discloses wherein the article of clothing comprises sports pants (as seen in annotated Figure 5 and 13 of Turner).
Regarding claim 8, the modified method of the combined references discloses wherein the article of clothing comprises socks (paragraph 0048 of Turner).
Regarding claim 9, the modified method of the combined references discloses wherein the protective pad (300 of Turner) comprises a shin guard (paragraph 0048 of Turner).
Regarding claim 10, the modified method of the combined references discloses wherein the protective pad comprises a thigh pad (as seen in annotated Figure 5 and 13 of Turner).
Regarding claim 11, the modified method of the combined references discloses wherein the protective pad comprises an elbow pad (420, as seen in Figure 17 of Turner).
Regarding claim 12, the modified method of the combined references discloses wherein positioning the protective pad (300 of Turner) below the at least one layer of fabric of an article of clothing worn by the user (Abstract, paragraph 0032 of Turner) comprises positioning the protective pad within a pocket (Abstract, paragraph 0032 of Turner – the pad of Turner being placed between the space created by the inner layer and the outer layer) of the article of clothing (as seen in annotated Figure 5 and 13 of Turner).
Arguments
Applicant’s arguments have been fully considered but are not convincing. In view of Applicant's submission, the search has been updated, and a rejection on the amended claims is applied above.
In response to the applicant’s arguments that the combined references do not disclose "the selecting [of the protective pad] is based on the three-dimensional image element [on the other face thereof]." While its unclear what the applicant is arguing, as best can be understood, applicants claim states:
“…2. (Currently Amended) A method comprising: selecting a protective pad, wherein the protective pad comprises a three- dimensional image element on an outer face thereof, and wherein the selecting is based on the three-dimensional image element; positioning the protective pad below at least one layer of fabric of an article of clothing worn by a user such that the three-dimensional image element causes a deformation of the at least one layer of fabric of the article of clothing in a shape corresponding to the three-dimensional image element….”
Without any differing definition of the term “selecting” in the Specification, the traditional term definition of “selecting” as defined by Merriam Webster is simply to choose. While selecting/choosing a 3 dimensional pad certainly does not make something novel, Turner teaches choosing the 3-dimensional pad “…By selecting thicknesses, materials, and densities for each of the various pad elements 302, the degree of impact force attenuation may be varied throughout attachment component 300 to impart a desired degree of cushioning or protection…” (paragraph 0036). Turner does indeed teach selecting the pad based on thickness, materials and densities of the various pad elements. Figures 15 A-M and paragraph 0026 further disclose the different shapes and images that are available to select/choose and use in the garment.
While the applicant has presented a detailed explanation of the inventive concept in his arguments, the language used to define the invention in the claims is very broad and can be interpreted in many ways. The applicant has not positively claimed or provided any defining language/structural limitations in the claims that would prevent the device of the combined references from reading on the claims as written. As it is the claims that define the claimed invention, not specifications or arguments, it is the claims alone that are anticipated or unpatentable. Constant v. Advanced Micro-Devices Inc., 7 USPQ2d 1064. The applicant is reminded the prior art is applied with the broadest reasonable interpretation, and the prior art references meet all the structural elements of the claims as written.
In response to the applicant’s arguments that the proposed combination of Turner and Kurado is unreasonable, the examiner respectfully disagrees. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the combined references teach 3 dimensional pads and padding in garments. The pad assembly’s and their configurations provide a method of using a decorative image/logo that becomes visible from beneath an outer layer and securing the components together to prevent them for shifting upon impact. Each of the references are analogous art and address the same problem of displaying team logos or brand mottos on garments being worn.
In response to the applicant’s arguments that the combined references do not disclose an outer layer of fabric corresponding to the shape of a three-dimensional image element, one of skill in the art would not modify Turner based on Kurado, the examiner respectfully disagrees. Applicant’s claims are directed to a method of use not a method of manufacturing. Turner and Kurado are references that both disclose padded garments where the pads are positioned between layers of material. Kurado is only used to teach that the image/design is capable of being recognized under a top material layer. It is understood that disclosed examples such as those referenced in Turner and Kurado and those preferred embodiments, do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Kurodo is used to disclose the three-dimensional image element causes a deformation of the at least one layer of fabric of the article of clothing (4a) in a shape corresponding to the three-dimensional image element (as clearly seen in annotated Figures 11 and 12).
In response to the applicant’s arguments that the adhesive attachment method used in Kurado cannot be applied to Turner as it would permanently fix the pads in place, frustrating Turner's intended purpose of allowing removal and repositioning of pads. Accordingly, this combination is improper, the examiner respectfully disagrees. While Kurado is only used to teach that the image/design is capable of being recognized under a top material layer. Turner paragraph 0040 teaches the pads being capable of adhesive attachment as well. Both Turner and Kurado use adhesives to keep the layers of the pad together, however, Kurado further uses adhesives to attach the pad layers of the pad to a paper substrate, the paper substrate being removable if desired to attach the pad as a decal. The pad is not permanently directly attached to the garment as argued, but as Turner also teaches the use of adhesive bonding to secure the pads in position the argument is moot.
“…the layer 4a has imprinted on its exposed surface a pictorial representation of the applique article which it is desired to obtain…” (paragraph 17 of Kurado).
…FIGS. 6 and 7 show a layer 1a of so-called "release paper" applied over the coating 2aa. The term "release paper" is conventional in this field and is not necessarily limited to a layer of paper but rather identifies a material which so adheres to the coating 2aa of adhesive material as to protect the coating but can be readily peeled off without damaging the coating 2aa…” (paragraph 17 of Kurado).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732