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 Amendments
The amendments filed with the written response received on 09 December 2025 have been considered and an action on the merits follows. As directed by the amendment, claim(s) 1 has/have been amended. Accordingly, claim(s) 1-9 is/are pending in this application with an action on the merits to follow.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “an inner side wall of the garment”, “outer side wall of the receptacle”, and “an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Specification
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:
Claim 1 recites, “the receptacle further having an inner cavity… the inner cavity… an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle” which lacks antecedence in the Specification as there is no recitation of “an inner side wall of the garment”, only an “inner surface of the main body” in ¶0034-0037, 0040-0041, 0045, 0050, 0052-0057, 0062, and 0066. ¶0066 notes, “the receptacle 400 coupled to the inner surface of the main body 22”, ¶0075 notes, “the receptacle 400 includes a side wall 402 and a base wall 404. The side wall 402 includes an outer surface 406 and an inner surface 408. The side wall 402 further includes an upper edging 410 leading to an opening of an inner cavity,” and ¶0076 notes, “The base wall 404 is coupled to an edge of the side wall 402 and includes an outer surface and an inner surface. The inner surface of the side wall 402 and the inner surface of the base wall 404 formulate an inner cavity. The inner cavity is permitted to expand and retract to provide an enclosure for one of the plurality of garments presented above. The receptacle 400 is fixed to a garment 2,” however these are not the same as “an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle.”
Claim Rejections - 35 USC § 112(a)
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(s) 1 (and claims 2-9 at least for depending from a rejected claim) is/are 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.
Claim 1 recites the limitation “an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle” on lines 5-7 which is considered new matter. The written description does not disclose this structure and the structure is not clearly discernable in the drawings. With regards to the written description, there is discussion of an “inner surface of the main body” in ¶0034-0037, 0040-0041, 0045, 0050, 0052-0057, 0062, and 0066. ¶0066 notes, “the receptacle 400 coupled to the inner surface of the main body 22”, ¶0075 notes, “the receptacle 400 includes a side wall 402 and a base wall 404. The side wall 402 includes an outer surface 406 and an inner surface 408. The side wall 402 further includes an upper edging 410 leading to an opening of an inner cavity,” and ¶0076 notes, “The base wall 404 is coupled to an edge of the side wall 402 and includes an outer surface and an inner surface. The inner surface of the side wall 402 and the inner surface of the base wall 404 formulate an inner cavity. The inner cavity is permitted to expand and retract to provide an enclosure for one of the plurality of garments presented above. The receptacle 400 is fixed to a garment 2,” however these are not the same as “an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle.” There is no recitation of the receptacle’s attachment features once the garment is removed. Further, the Applicant’s Drawings do not clarify what “an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle” is/are nor does it clearly show anything that could be described as such.
Claim Rejections - 35 USC § 112(b)
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.
Claim(s) 1 (and claims 2-9 at least for depending from a rejected claim) is/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 is/are indefinite as it/they recite(s) “a garment from a plurality of different sized garments; a receptacle fixed to the garment and providing a side wall and a base wall coupled to the side wall, the receptacle further having an inner cavity, the inner cavity expandable and retractable to permit the garments fluid entry and exit from the inner cavity, an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle”. First, it is unclear if the inner side wall of the garment is the inner surface (¶0034) or the side walls (unnumbered, Figs. 1-2). Second, it is unclear if the outer side wall of the receptacle is the outer surface (¶0076) or the side wall #402. Third, it is unclear how the receptacle can be both fixed to the garment providing a side wall and a base wall coupled to the side wall, but only couples against an outer side wall of the receptacle when the garment is removed. It is unclear if the inner side wall of the garment couples against an inner side wall of the receptacle when the garment is packed and once removed from the receptacle, the inner side wall of the receptacle becomes the outer side wall of the receptacle. However, even though the structures would be inverted, the inner side wall of the garment would still be connected to the same side wall that it had been before inversion, therefore it is unclear if the inner side wall of the garment disconnects from the inner side wall of the receptacle or not. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as the “inner side wall of the garment” being a surface on the inner side of any part of the garment, and the “outer side wall of the receptacle” being a surface on the outer side wall of any part of the receptacle. Clarification is respectfully requested.
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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Virgilio US 20160338425 in view of Itoi US 4502154.
Regarding Independent Claim 1, Virgilio discloses a compressible garment line (All figures) comprising: a garment (Virgilio Annot. Figs) from a plurality of different sized garments (All figures); a receptacle (Virgilio Annot. Figs) fixed to the garment (Virgilio Annot. Figs) and providing a side wall (Virgilio Annot. Figs) and a base wall (Virgilio Annot. Figs) coupled to the side wall (Virgilio Annot. Figs), the receptacle further having an inner cavity (Virgilio Annot. Figs), the inner cavity expandable and retractable to permit the garments fluid entry and exit from the inner cavity (Abstract; ¶0001-0002; Figs. 1-4 and unlabled figures on sheets 3-6), but does not expressly disclose an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle.
Itoi teaches a garment (Figs. 1-5 #1) with connected bag (Figs. 1-5 #2) wherein an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle (Figs. 1-5; Col. 1:6-22).
Both Virgilio and Itoi teach analogous inventions in the art of hooded garments with attached bags. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Virgilio with the teachings of Itoi such that an inner side wall of the garment couples only against an outer side wall of the receptacle when the garment is removed from the receptacle so that the bag would be concealed and not visible when the garment was worn by the user.
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Virgilio discloses the structure of the compressible garment line, there would be a reasonable expectation for the compressible garment line to perform such functions as explained after each functional limitation.
Regarding Claim 2, the modified compressible garment line of Virgilio discloses the compressible garment line of claim 1, wherein the receptacle includes an upper edging (Virgilio Annot. Figs) adjacent the side wall (Figs. 2-3).
Regarding Claim 3, the modified compressible garment line of Virgilio discloses the compressible garment line of claim 2, wherein the garment further includes a cord (Virgilio Annot. Figs) permitting the upper edging to expand and retract permitting access to the inner cavity (¶0001-0002).
Regarding Claim 4, the modified compressible garment line of Virgilio discloses the compressible garment line of claim 3, wherein the receptacle is composed of ripstop nylon (¶0001; Further, 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. See MPEP 2144.07).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Virgilio and Itoi as applied to claims 1-4 above, and further in view of Woods US 20220117337.
Regarding Claim 5, the modified compressible garment line of Vigilio discloses the compressible garment line of claim 4, but does not expressly disclose wherein the cord is composed of polyester and measures 3 millimeters in diameter.
Woods teaches a garment (Fig. 1 #10) with a 3mm polyster cord (¶0055).
Both Virgilio (as modified by Itoi) and Woods teach analogous inventions in the art of hooded garments with cords. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Virgilio (as modified by Itoi) with the teachings of Woods such that the cord would be made of polyester and be 3mm in diameter so that the cord would be inexpensive to produce, be mildew resistant, and provide a low profile inside of the garment. Further, 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. See MPEP 2144.07)
Regarding Claim 6, the modified compressible garment line of the modified compressible garment line of Virgilio discloses the compressible garment line of claim 5, wherein the receptacle includes a cord stopper (Virgilio Annot. Figs), the cord stopper aids the cord in retracting or expanding the upper edging (Figs. 2-3).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Virgilio, Itoi, and Woods as applied to claims 1-6 above, and further in view of Beers US 20140068838.
Regarding Claim 7, the modified compressible garment line of Virgilio discloses the compressible garment line of claim 6, but does not expressly disclose wherein the receptacle includes a clasp coupled to each end of the cord.
Beers teaches a garment (Fig. 46 #1000) with a cord that has a clasp at each end (Fig. 46 #1012 male left/female right).
Both Virgilio (as modified by Itoi and Woods) and Beers teach analogous inventions in the art of garments with cords. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Virgilio (as modified by Itoi and Woods) with the teachings of Beers such that the cord would have two clasps on each end so that the cord could be attached around an object and not risk coming undone easily.
Regarding Claim 8, the modified compressible garment line of Virgilio discloses the compressible garment line of claim 7, wherein the clasp is a twist clasp (Beers Fig. 46 #1012 show the clasp is a male and female twist clasp; further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the securement system of Virgilio [as modified by Itoi and Woods] with the securement system taught by Woods, as a simple substitution of one well known securement system for another would yield the predictable result of providing a twist clasp would achieve the expected result of releasing the cord.).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Virgilio, Itoi, Woods, and Beers as applied to claims 1-8 above, and further in view of Donlan US 20050251896.
Regarding Claim 9, the modified compressible garment line of Virgilio discloses the compressible garment line of claim 8, wherein the receptacle is bartacked to an inner surface of the garment.
Bonlan teaches a convertible garment (Fig. 6 #12) with a receptacle (Fig. 6 #60) that is bartacked to an inner surface of the garment (¶0023)
Both Virgilio (as modified by Itoi, Woods, and Beers) and Donlan teach analogous inventions in the art of garments with cords. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Virgilio (as modified by Itoi, Woods, and Beers) with the teachings of Donlan such that receptacle would be bartacked to the inner surface of the garment because bartacking is well-known to reinforce dual seams and prevent tearing of the fabrics at stress points, such as pocket openings.
PNG
media_image1.png
1005
838
media_image1.png
Greyscale
Response to Arguments
Applicant’s arguments, filed 09 December 2025, with respect to the 35 USC 102 rejection of claims 1-4 and 35 USC 103 of claims 5-9 have been considered but are moot because the arguments do not apply to the current grounds of rejection. In view of Applicant’s amendment, the search has been updated, and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new ground(s) of rejection.
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 RAQUEL M. WEIS whose telephone number is 571-272-6804. The examiner can normally be reached Mon-Fri: 0800-1700.
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, ALISSA J. TOMPKINS can be reached on 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732