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 .
Claims 1 – 20 are pending.
Drawings
The drawings are objected to because in paragraph 19, the disclosure refers to the inner lining with reference numbers “6, 7”. However, in the entire rest of the disclosure the inner lining is only listed as reference number “7”. And reference number “6” describes the knitted fabric for thermal insulation (paragraph 19). The disclosure appears to incorrectly reference layers 6 and 7 as the inner lining. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12,004,580. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claim 1 in US 12,004,580 includes all the limitations for the composite fabric recited in claim 9 of the pending application.
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 – 20 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.
The term “conform” in claim 1 is indefinite. It is unclear what level of attachment is required to be considered “conforming”? Would the film conform to the warp-knitted layer is the attachments were only on the edges of the fabric? Does the bonding need to be continuously between the two layers to be conforming? Or would a widely spaced discontinuous bond count as “conforming”? Claim 2 is similarly rejected. Claims 3 – 20 are rejected due to their dependence on claim 1 or 2.
The term “coupled” in claim 3 is indefinite. It is unclear what qualifies as being “coupled”? If the two layers are attached at the edges so that the layer are adjacent to each other are the layers coupled? Or does coupling require a continuous bonding material directly attaching both surfaces of the layers together across the entire surface?
Claim 15 is rejected. Claim 15 recites the inner lining comprises a woolen material made of polyester fibers. However, a woolen material implies a fabric made of wool which contradicts the requirement that the fibers are polyester. Is the fabric made from a specific type of fiber, yarn structure, or knit pattern to be considered woolen. For purposes of examination, since the claim recites that the woolen material is made of polyester any polyester fabric is considered to be a type of woolen fabric.
Claim Rejections - 35 USC § 102
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(s) 1 – 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greenacre (WO 2015/087053).
Greenacre discloses a garment for wearing outdoors (page 1, lines 15 – 16) which is constructed from a warp knit machine (page 16, lines 19 – 20). The warp knit fabric forms the outer shell of the garment followed by an adhesively bonded waterproof, breathable polyurethane film that adjoins to another warp knit fabric on the inside of the laminate (page 16, lines 15 – 30). Thus, Greenacre teaches a three layer composite including an outer warp knit layer bonded to a first side of a film and another warp knit layer bonded to the opposite side of the film. Claim 1, states that the insulation is optional and therefore only requires a three-layer composite which is taught by Greenacre. The layers can be sewn together and formed into garments (page 2, lines 7 – 8). The layers are considered to qualify as being coupled together and conforming to each other. Thus, claims 1 – 3 are anticipated.
Claim Rejections - 35 USC § 103
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 4, 7, 8, 10, and 14 is/are rejected under 35 U.S.C. 103 as being obvious over Greenacre (WO 2015/087053) in view of Taylor (US 2002/0119300).
The features of Greenacre have been disclosed above. Greenacre discloses a barrier film is bonded to the fabric layers. While Greenacre discloses that the film is flexible (page 8, lines 27 – 31), Greenacre does not teach the barrier is stretchable. The barrier film can be a polyurethane membrane (page 6, lines 25 – 30). Taylor is drawn to an elastic, breathable film made from a polyurethane elastomer (abstract). Taylor discloses that a need exists for improved barrier laminates which exhibit good breathability and barrier properties. Taylor discloses that the film can be bonded to additional layers to form a laminate (paragraph 73). The layers can be joined together via point bonding or using heated nip rolls to join the layers, which would form a continuous bond. Thus, it would have been obvious to one having ordinary skill in the art to substitute the elastic, breathable barrier film taught by Taylor in the fabric laminate disclosed by Greenacre to produce an elastic laminate which exhibits good breathability. Further, using a barrier film which stretch properties will further enhance the stretch properties of the finished product. Additionally, Taylor teaches that the layers can be bonded via point bonding or continuous bonding methods. Thus, claims 4, 7, and 14 are rejected.
Further Greenacre discloses that the fabric composites can be produced to have different stretch properties. Greenacre discloses that the first and second knit layers can be stretch longitudinally and laterally to add stretch (page 5, lines 10 – 20). Further, the panels can be designed to have different stretch properties in different directions to create some portions of the fabric with compression properties than other or different levels of stretch in different directions (page 2, 16, and 17). Thus, it would have been obvious to one having ordinary skill in the art that he stretch properties of the different layers can be designed to create desirable stretch properties in the final product and it would have been obvious for the layers to have different levels of stretch and the stretch can be in multiple directions. Thus, claim 8 and 10 are rejected.
Claim(s) 5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenacre (2015/087053) in view of Norvell (4,868,928).
The features of Greenacre have been set forth above. Greenacre fails to teach continuous sewing of the lining to the film and layer. Norvell is drawn to a windproof lined weather-resistant composite. The garment includes an outer layer of knit fabric with a water resistant layer attached and an inner fabric layer (column 1, lines 53 – 65). The layers can be joined together by sewing or other means at the borders (column 1, lines 63 – 65). Thus, it would have been obvious to use continuous sewing at the borders to join the inner layer to a water resistant composite fabric. Therefore, claim 5 is rejected.
Greenacre doesn’t teach a woolen fabric or polyester fibers. Norvell discloses that the garment can include layers made from polyester, nylon, or wool fibers. Thus, it would be obvious to one having ordinary skill in the art that any of these fibers types can be used to make the layers of the fabric taught by Greenacre to add different strength, comfort, or warmth properties to the composite material. Thus, claim 15 is rejected.
Claim(s) 11 – 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenacre (WO 2015/087053) in view of Gallagher (US 2016/0339664).
The features of Greenacre have been set forth above. Greenacre is silent about incorporating an insulating layer in the composite. Gallagher is drawn to a composite garment fabric with a moisture barrier (abstract). Gallagher discloses that the composite can be a 3 or 4 layer structure with or without an insulative layer (paragraph 83). The insulative layer provides continuous thermal barrier across the garment to minimize heat loss (paragraph 57). Further, the insulated layer can be a tricot structure or a fleece layer with a pile structure (paragraphs 61 – 63). Further, Gallagher discloses selectively adding the insulation to only certain areas of the garment (paragraph 65). Gallagher teaches that the garment can be specifically designed for a particular application or individual by modifying sleeve length, zipper placement, moisture barrier and insulation locations throughout the garment (paragraph 65). Thus, Gallagher discloses modifying the location of individual components such as insulation layers or zippers based on individual preferences. Therefore, it would have been obvious to one having ordinary skill in the add insulation layers to the garment of Greenacre to provide thermal barrier to the garment and prevent heat loss. Also, it would have been obvious to one having ordinary skill in the to pick or choose placement of individual features and materials based on individual user inputted preferences. Thus, claim 11 - 13 are rejected.
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenacre (WO 2015/087053) in view of Hooper (3,723,055) and Conolly (2012/0288662).
The features of Greenacre have been set forth above. Greenacre fails to teach using different types of yarns to create a multi-color design in the garment. Hooper is drawn to multi colored garments (abstract). Hooper teaches that multiple types of materials can be used together, including multiple types of polyesters, and then dyed with different dyes to create a multiple color effect in the final garment (column 3). Thus, it would have been obvious to one having ordinary skill in the art to create a multi-color design in a fabric by using different types of fibers.
Further, Greenacre fails to teach the type of material used in the laminate fabric layers. Conolly is drawn to an outdoor laminate garment. Conolly discloses that the laminate can use a blend of nylon and spandex to create stretch in the material (paragraph 44). Thus, it would have been obvious to use a polyamide and elastane (which is equivalent to spandex) in the garment of Greenacre to create a fabric with stretch, as taught by Conolly. It would have been obvious to one having ordinary skill in the art to choose different materials or knit patterns for the warp knit fabric based on the desired fabric properties since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. One of ordinary skill int the art would be able to choose known types of fibers, such as polyester and elastane, to combine together to create different multi-tone effects. Thus, claims 16 and 17 are rejected.
20. Claim(s) 18 – 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greenacre (WO 2015/087053) in view of Burns et al. (6,339,845).
The features of Greenacre have been set forth above. However, Greenacre fail to teach adding an opening to a garment and using a mesh fabric to cover the opening or a material to keep the slit forced open. Burns et al. is drawn to venting structures for outdoor and sporting apparel (abstract). The vent of Burns et al. includes a mesh fabric fixed to the edged to span the opening (column 2, lines 52 – 59). Burns et al. discloses that the vents can be located near the chest or armpits (column 3, lines 65 – 67). Further, the vents can include an expander which is compressed when the vent is closed and expands when the vent is open, to force the vent to stay open widely (column 2, lines 1 – 8). The expander can comprise a plastic pin or a metal wire (claims 8 and 9). Thus, it would have been obvious to one having ordinary skill in the art to use form the vent opening with a mesh covering and an expander in the opening to prop the opening wide when cooling is desired, as taught by Burns et al. in the sporting apparel of Greenacre. Thus, claims 18 – 20 are rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jenna Johnson whose telephone number is (571)272-1472. The examiner can normally be reached Monday, Wednesday, and Thursday, 10am - 4pm.
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jlj
July 20, 2026
/JENNA L JOHNSON/Primary Examiner, Art Unit 1789
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