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 5/19/26. As directed by the amendment, claim 1 is cancelled. Claims 2-12 are pending in this application.
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 examinationunder 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of theprevious Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on5/19/26 has been entered.
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 § 102 AIA
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.
Claim 2, 3, 5 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Freno US 4591521 A (herein after Freno).
Regarding claim 2, Freno discloses method comprising: selecting a protective pad (17), wherein the protective pad comprises a three-dimensional image element on an outer face thereof (Col 1, lines 25-28), and wherein the selecting is based on the three-dimensional image element (Col 1, lines 20-24, Abstract); positioning the protective pad below at least one layer of fabric of an article of clothing worn by a user (Col. 1 line 25-28) 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 (Col. 1, lines 55-63 and Col 2, lines 15-16).
Regarding claim 3, Freno discloses wherein the three-dimensional image element comprises foam (Abstract, Col. 1 line 25-28).
Regarding claim 5, Freno discloses wherein the protective pad (17) is configured to protect a body part of the user (as seen in Figure 1 – the foam pad covering and protecting the chest region).
Regarding claim 12, Freno discloses wherein positioning the protective pad (17) below the at least one layer of fabric of an article of clothing worn by the user (Abstract, Col. 1 line 25-28) comprises positioning the protective pad within a pocket (Abstract– the pad of Freno being placed between the space created by the inner layer and the outer layer) of the article of clothing (Col. 1, lines 55-63 and Col 2, lines 15-16).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Freno US 4591521 A in view of Kavanagh US 4507801 A (herein after Kavanagh).
Regarding claim 4, the method of the combined references discloses all the limitations of claim 4 except they do not disclose the three-dimensional image element comprises closed cell foam.
Kavanagh discloses wherein the foam comprises a closed cell foam (Col 2, lines 43-46).
Kavanagh 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.
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 Freno, by having the three-dimensional image element comprising closed cell foam, as taught by Kavanagh in order to be resilient and flexible but also withstand impacts effectively. The modification of the method would be a simple modification to ensure the protective garment could have stylized pads that were capable of being resilient to shape and conform to the body of the wearer but still being strong enough to protect the wearer.
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Freno US 4591521 A in view of Turner US 20110307998 A1 (herein after Turner).
Regarding claim 6, the modified method of Freno discloses all the limitations of claim 6 except Freno does not disclose wherein the three-dimensional image element is configured as a shape of a letter or number.
Turner 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).
Turner is analogous art to the claimed invention in that they relate to garments having protective padding.
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 design of the padding of Ferno by constructing the pad having a design that are shaped as a letter or number as taught by Turner in order to allow for any number of design options as mentioned in Ferno (“…while the design shown in the drawing is that of a face upon a tee-shirt, it may otherwise be made to represent any other object, as wished upon an infinite variety of garments…”). The modification of would be a simple modification to allow the wearer to create logos and slogans on garments as desired by the wearer.
Regarding claim 7, the modified method of Freno discloses all the limitations of claim 7 except Freno does not disclose wherein the article of clothing comprises sports pants.
Turner discloses wherein the article of clothing comprises sports pants (as seen in annotated Figure 5 and 13 of Turner).
Turner is analogous art to the claimed invention in that they relate to garments having protective padding.
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 article of clothing comprising the padding of Ferno by constructing the article of clothing being sports pants as taught by Turner in order to allow for any number of design and use options as mentioned in Ferno (“…while the garment shown in the Figures of Ferno is a tee-shirt, the design may be made to represent any other object, as wished, upon an infinite variety of garments…”Col 2, lines 23-27 of Ferno). The modification of would be a simple modification to allow the wearer to create logos and slogans on any garment but specifically allow the protective pads found in Turners sport pants to include any design or logo as needed.
Regarding claim 8, the modified method of Freno discloses all the limitations of claim 8 except Freno does not disclose wherein the article of clothing comprises socks.
Turner discloses wherein the article of clothing comprises socks (paragraph 0048 of Turner)
Turner is analogous art to the claimed invention in that they relate to garments having protective padding.
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 article of clothing comprising the padding of Ferno by constructing the article of clothing being sports pants as taught by Turner in order to allow for any number of design and use options as mentioned in Ferno (“…while the garment shown in the Figures of Ferno is a tee-shirt, the design may be made to represent any other object, as wished, upon an infinite variety of garments…” Col 2, lines 23-27 of Ferno). The modification of would be a simple modification to allow the wearer to create logos and slogans on any garment but specifically allow the protective pads found in Turners socks to include any design or logo as needed.
Regarding claim 9, the modified method of Freno discloses all the limitations of claim 9 except Freno does not disclose wherein the protective pad comprises a shin guard.
Turner discloses wherein the protective pad (300 of Turner) comprises a shin guard (paragraph 0048 of Turner).
Turner is analogous art to the claimed invention in that they relate to garments having protective padding.
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 article of clothing comprising the padding of Ferno by constructing the article of clothing being sports pants as taught by Turner in order to allow for any number of design and use options as mentioned in Ferno (“…while the garment shown in the Figures of Ferno is a tee-shirt, the design may be made to represent any other object, as wished, upon an infinite variety of garments…” Col 2, lines 23-27 of Ferno). The modification of would be a simple modification to allow the wearer to create logos and slogans on any garment but specifically allow the protective pads found in Turners shin guard to include any design or logo as needed.
Regarding claim 10, the modified method of Freno discloses all the limitations of claim 10 except Freno does not disclose wherein the protective pad comprises a thigh pad.
Turner discloses wherein the protective pad comprises a thigh pad (as seen in annotated Figure 5 and 13 of Turner).
Turner is analogous art to the claimed invention in that they relate to garments having protective padding.
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 design of the padding by constructing the pad having a design that are shaped as a letter or number as taught by Turner in order to allow for any number of design options as mentioned in Ferno (“…while the design shown in the drawing is that of a face upon a tee-shirt, it may otherwise be made to represent any other object, as wished upon an infinite variety of garments…” Col 2, lines 23-27 of Ferno). The modification of would be a simple modification to allow the wearer to create logos and slogans on the thigh pad as desired by the wearer.
Regarding claim 11, the modified method of Freno discloses all the limitations of claim 11 except Freno does not disclose wherein the protective pad comprises an elbow pad.
Turner discloses wherein the protective pad comprises an elbow pad (420, as seen in Figure 17 of Turner).
Turner is analogous art to the claimed invention in that they relate to garments having protective padding.
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 design of the padding by constructing the pad having a design that are shaped as a letter or number as taught by Turner in order to allow for any number of design options as mentioned in Ferno (“…while the design shown in the drawing is that of a face upon a tee-shirt, it may otherwise be made to represent any other object, as wished upon an infinite variety of garments…” Col 2, lines 23-27 of Ferno). The modification of would be a simple modification to allow the wearer to create logos and slogans on the elbow pad as desired by the wearer.
Arguments
Applicant’s arguments have been fully considered. In view of Applicant's arguments, the search has been updated, and a rejection on the claims is applied above.
Conclusion
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
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