DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Applicant’s amendment, filed 19 November 2025, has been reviewed and entered. Claim 1 is amended and claims 2-16 are added, leaving claims 1-16 pending. This Office Action is a final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Arguments
Applicant's arguments filed 19 November 2025 have been fully considered but they are not persuasive.
The amendments have overcome some of the rejections and raised new rejections, as set forth below.
Allowable Subject Matter
Claims 1-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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: “wherein a length of each of the plurality of panels from the end to the opposing end is similar to a length of the skirt” in claim 8.
Claim Objections
Claim 9 is objected to because of the following informalities: insert –wearable—after “first” in line 1 for proper antecedent basis. Appropriate correction is required.
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.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12-20 of prior U.S. Patent No. 11,330,850.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of prior U.S. Patent No. 12,022,893.
Although the claims at issue are not identical, they are not patentably distinct from each other. See comparison in the table below, where all of the limitations of present application 18/760,424 are disclosed in the reference patents.
Present application 18/760,424
U.S. Patent No. 11,330,850
U.S. Patent No. 12,022,893
1. A multi-use garment, comprising: a bodice; a skirt constructed beneath the bodice, the skirt having a front portion and a rear portion; and a plurality of panels including a first plurality of panels and a second plurality of panels, each panel of the plurality of panels having an end and an opposing end, wherein: the end of each panel of the first plurality of panels is attached to an upper portion of the front portion of the skirt at an intersecting area of the bodice and the skirt that includes the front portion of the skirt and the rear portion of the skirt; the end of each panel of the second plurality of panels is attached to the upper portion of the rear portion of the skirt at the intersecting area of the bodice and the skirt that includes the front portion of the skirt and the rear portion of the skirt; the opposing end of each panel of the plurality of panels is unattached to the skirt; each panel of the first plurality of panels extends downwardly from the intersecting area and over the front portion of the skirt and each panel of the second plurality of panels extends downwardly from the intersecting area and over the rear portion of the skirt to become part of the skirt in a first wearable configuration; and at least a pair of panels from the first plurality of panels and the second plurality of panels are lifted in a direction extending over at least a portion of the bodice in a second wearable configuration.
1. A multi-use garment, comprising: a bodice; a skirt constructed beneath the bodice, the skirt having a front portion and a rear portion; and a plurality of panels including a first plurality of panels and a second plurality of panels, each panel of the plurality of panels having an end and an opposing end, wherein: the end of each panel of the first plurality of panels is attached to an upper portion of the front portion of the skirt at an intersecting area of the bodice and the front portion of the skirt; the end of each panel of the second plurality of panels is attached to the upper portion of the rear portion of the skirt at the intersecting area of the bodice and the rear portion of the skirt; the opposing end of each panel of the plurality of panels is unattached to the skirt; each panel of the first plurality of panels extends downwardly from the intersecting area and over the front portion of the skirt and each panel of the second plurality of panels extends downwardly from the intersecting area and over the rear portion of the skirt to become part of the skirt in a first wearable configuration, which leaves the entirety of the bodice visible; and at least one panel of the first plurality of panels and at least one panel of the second plurality of panels are lifted in a direction above the intersecting area and are connected above the bodice extending over at least a portion of the bodice in a second wearable configuration.
1. A multi-use garment, comprising: a bodice; a skirt constructed beneath the bodice, the skirt having a front portion and a rear portion; and a plurality of panels including a first plurality of panels and a second plurality of panels, each panel of the plurality of panels having an end and an opposing end, wherein: the end of each panel of the first plurality of panels is attached to an upper portion of the front portion of the skirt at an intersecting area of the bodice and the front portion of the skirt; the end of each panel of the second plurality of panels is attached to the upper portion of the rear portion of the skirt at the intersecting area of the bodice and the rear portion of the skirt; the opposing end of each panel of the plurality of panels is unattached to the skirt; each panel of the first plurality of panels extends downwardly from the intersecting area and over the front portion of the skirt and each panel of the second plurality of panels extends downwardly from the intersecting area and over the rear portion of the skirt to become part of the skirt in a first wearable configuration; and at least one panel of the first plurality of panels and at least one panel of the second plurality of panels are lifted in a direction above the intersecting area and are connected in a second wearable configuration.
2. (New) The multi-use garment of claim 1, wherein the first plurality of panels is a plurality of front panels and wherein the second plurality of panels is a plurality of rear panels.
2. The multi-use garment of claim 1, wherein the first plurality of panels is a plurality of front panels and wherein the second plurality of panels is a plurality of rear panels.
2. The multi-use garment of claim 1, wherein the first plurality of panels is a plurality of front panels and wherein the second plurality of panels is a plurality of rear panels.
3. (New) The multi-use garment of claim 1, wherein the bodice is a strapless bodice.
3. The multi-use garment of claim 1, wherein the bodice is a strapless bodice.
3. The multi-use garment of claim 1, wherein the bodice is a strapless bodice.
4. (New) The multi-use garment of claim 3, wherein the strapless bodice comprises a neckline.
4. The multi-use garment of claim 3, wherein the strapless bodice comprises a neckline.
4. The multi-use garment of claim 3, wherein the strapless bodice comprises a neckline.
5. (New) The multi-use garment of claim 4, wherein, in the second wearable configuration, the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are the pair of panels that are lifted in the direction above the intersecting area and are connected above the bodice extending over the portion of the bodice and above the neckline of the bodice.
5. The multi-use garment of claim 4, wherein, in the second wearable configuration, the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are lifted in the direction above the intersecting area and are connected above the bodice extending over the portion of the bodice and above the neckline of the bodice.
5. The multi-use garment of claim 4, wherein, in the second wearable configuration, the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are lifted in the direction above the intersecting area and are connected above the bodice extending over the portion of the bodice and above the neckline of the bodice.
6. (New) The multi-use garment of claim 1, wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are the pair of panels that are connected above the bodice in an area adapted to correspond to a neck of a user in the second wearable configuration.
6. The multi-use garment of claim 1, wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are connected above the bodice in an area adapted to correspond to a neck of a user in the second wearable configuration, and wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are lifted in the direction above the intersecting area and are connected above the bodice in an area adapted to correspond to a shoulder of the user in a third wearable configuration.
6. The multi-use garment of claim 1, wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are connected above the bodice in an area adapted to correspond to a neck of a user in the second wearable configuration.
7. (New) The multi-use garment of claim 1, wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are the pair of panels that are lifted in the direction above the intersecting area and are connected above the bodice in an area adapted to correspond to a shoulder of the user in a third wearable configuration.
6. The multi-use garment of claim 1, wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are connected above the bodice in an area adapted to correspond to a neck of a user in the second wearable configuration, and wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are lifted in the direction above the intersecting area and are connected above the bodice in an area adapted to correspond to a shoulder of the user in a third wearable configuration.
7. The multi-use garment of claim 1, wherein the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are lifted in the direction above the intersecting area and are connected above the bodice in an area adapted to correspond to a shoulder of the user in a third wearable configuration.
8. (New) The multi-use garment of claim 1, wherein a length of each of the plurality of panels from the end to the opposing end is similar to a length of the skirt.
7. The multi-use garment of claim 1, wherein a length of each of the plurality of panels from the attached end to the unattached end of the opposing end is similar to a length of the skirt.
8. The multi-use garment of claim 1, wherein a length of each of the plurality of panels from the end to the opposing end is similar to a length of the skirt.
9. (New) The multi-use garment of claim 1, wherein, in the first configuration in which each panel of the first plurality of panels extends downwardly from the intersecting area and over the front portion of the skirt and each panel of the second plurality of panels extends downwardly from the intersecting area and over the rear portion of the skirt to become part of the skirt, at least a portion of the unattached end of the opposing end of each panel of the plurality of panels corresponds with a hem of the skirt.
8. The multi-use garment of claim 1, wherein, in the first configuration in which each panel of the first plurality of panels extends downwardly from the intersecting area and over the front portion of the skirt and each panel of the second plurality of panels extends downwardly from the intersecting area and over the rear portion of the skirt to become part of the skirt, at least a portion of the unattached end of the opposing end of each panel of the plurality of panels corresponds with a hem of the skirt.
9. The multi-use garment of claim 1, wherein, in the first configuration in which each panel of the first plurality of panels extends downwardly from the intersecting area and over the front portion of the skirt and each panel of the second plurality of panels extends downwardly from the intersecting area and over the rear portion of the skirt to become part of the skirt, at least a portion of the unattached end of the opposing end of each panel of the plurality of panels corresponds with a hem of the skirt.
10. (New) The multi-use garment of claim 1, further comprising a fastener that extends downwardly along a rear portion of the bodice and the rear portion of the skirt.
12. The multi-use garment of claim 1, further comprising a fastener that extends downwardly along a rear portion of the bodice and the rear portion of the skirt.
10. The multi-use garment of claim 1, further comprising a fastener that extends downwardly along a rear portion of the bodice and the rear portion of the skirt.
11. (New) The multi-use garment of claim 1, further comprising a fastener that is positioned at a location along a midline of the multi-use garment, wherein the midline extends through the bodice and the skirt.
13. The multi-use garment of claim 1, further comprising a fastener that is positioned at a location along a midline of the multi-use garment, wherein the midline extends through the bodice and the skirt.
11. The multi-use garment of claim 1, further comprising a fastener that is positioned at a location along a midline of the multi-use garment, wherein the midline extends through the bodice and the skirt.
12. (New) The multi-use garment of claim 1, wherein at least two of the plurality of panels are connected at the intersecting area in the second wearable configuration.
14. The multi-use garment of claim 1, wherein at least two of the plurality of panels are connected at the intersecting area in the second wearable configuration.
12. The multi-use garment of claim 1, wherein at least two of the plurality of panels are connected at the intersecting area in the second wearable configuration.
13. (New) The multi-use garment of claim 1, wherein, in the second wearable configuration, the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are connected above the bodice in an area corresponding to a front portion of the bodice.
15. The multi-use garment of claim 1, wherein, in the second wearable configuration, the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are connected above the bodice in an area corresponding to a front portion of the bodice.
13. The multi-use garment of claim 1, wherein, in the second wearable configuration, the at least one panel of the first plurality of panels and the at least one panel of the second plurality of panels are connected above the bodice in an area corresponding to a front portion of the bodice.
14. (New) The multi-use garment of claim 1, wherein a width of at least two panels of the plurality of panels corresponds to a length of a front portion of the intersecting area.
16. The multi-use garment of claim 1, wherein a width of at least two panels of the plurality of panels corresponds to a length of a front portion of the intersecting area.
14. The multi-use garment of claim 1, wherein a width of at least two panels of the plurality of panels corresponds to a length of a front portion of the intersecting area.
15. (New) The multi-use garment of claim 1, further comprising a waist band attached to the skirt.
17. The multi-use garment of claim 1, further comprising a waist band attached to the skirt.
15. The multi-use garment of claim 1, further comprising a waist band attached to the skirt.
16. (New) The multi-use garment of claim 1, wherein the opposing unattached side of each panel has an endpoint and an opposing endpoint such that a first measured distance between a point on the attached side and the endpoint is shorter in length than a second measured distance between the point on the attached side and the opposing endpoint.
20. The multi-use garment of claim 1, wherein the opposing unattached side of each panel has an endpoint and an opposing endpoint such that a first measured distance between a point on the attached side and the endpoint is shorter in length than a second measured distance between the point on the attached side and the opposing endpoint.
16. The multi-use garment of claim 1, wherein the opposing unattached side of each panel has an endpoint and an opposing endpoint such that a first measured distance between a point on the attached side and the endpoint is shorter in length than a second measured distance between the point on the attached side and the opposing endpoint.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
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 8 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. The new matter is “wherein a length of each of the plurality of panels from the end to the opposing end is similar to a length of the skirt” in claim 8.
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 1-16 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 rendered indefinite by the recitation “at least a pair of panels from at least one panel of the first plurality of panels and at least one panel of the second plurality of panels” because it is not clear how many panels are being recited. Is claim 1 reciting 1) a pair of panels from the first plurality and a pair from the second plurality, which is two pairs of panels; or, 2) one panel from the first and one panel from the second plurality, which is one pair of panels?
Claims 5-7 and 13 recite the limitation "the at least one panel." There is insufficient antecedent basis for this limitation in the claim.
The term “similar” in claim 8 is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. How close in length must the panels and skirt be in order to be considered “similar?”
Claim 9 is rendered indefinite by the recitation “the unattached end of the opposing end.” Claim 9 depends from claim 1 which recites “an opposing end… is unattached.” It is not clear if claim 9 is referring to claim 1’s opposing end which is unattached or if claim 9 is introducing the limitation of the opposing end having an end that is unattached.
Claim 16 recites the limitation "the opposing unattached side" once and “the attached side” twice. There is insufficient antecedent basis for this limitation in the claim. Claim 16 depends from claim 1 which has support for an end and an opposing end, but not an opposing unattached side or an attached side.
The claims are examined as best understood.
Claims that depend from a rejected claim are also rejected.
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 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 SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732