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 Amendment
The amendments filed with the written response received on January 2, 2026 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 3, 5, 7-8, 10, and 12-15 have been amended; claims 2, 6, 9, and 11 are canceled; claims 16-20 are withdrawn from further consideration; and claims 21-24 have been added. Accordingly, claims 1, 3-5, 7-8, 10, and 12-24 are pending in this application, with an action on the merits to follow regarding claims 1, 3-5, 7-8, 10, 12-15, and 21-24.
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 following must be shown or the feature(s) canceled from the claim(s):
A cutting pattern for one or more symbols, geometric symbols, Greek letters, letters, numbers, life event-oriented designs or holiday-oriented designs (claims 8 and 15);
Cutting means (claim 21 and 24);
Coloring means, paint, ink, stamps, markers, dyes, pencils, pens or coloring markers (claim 22 and 24);
Selectively attached ornamentations, beads, patches, and pins (claim 23 and 24).
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 alleged amendment to the specification filed January 2, 2026 has not been entered because no actual amendment to the Specification has been made. Applicant refers to the Pre-Grant Publication US 2025/0017298 which has already been published and cannot be amended. To enact amendments to the specification, Applicant must refer to the specification originally filed with the office.
The use of the term “lycra” (p. 5, line 12), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. For example, Applicant may amend to recite, “LYCRA® (elastane)”.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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: Claims 1 and 10 each recites, “ready to wear” which was not disclosed in the in the specification as originally filed.
Claim Objections
Applicant is advised that should claim 1, 5, 7, and/or 8 be found allowable, claims 10, 13, 14, and/or 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). In this case, claims 1 and 10 each require the exact same structure; claims 5 and 13 each require the exact same structure; claims 7 and 14 each require the exact same structure; and claims 8 and 15 each require the exact same structure.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claims 1, 4-5, 8, 10, 13, 15, and 24 (and claims 3, 7, 12, 14, and 21-23 at least for depending from a rejected claim) 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.
Claims 1 and 10 are indefinite as each recites, “wherein the customizable garment is ready to wear as purchased and ready for customization as purchased”. The terms “ready to wear” and “ready for customization” are subjective traits that are not structurally defined by the claims and therefore the metes and bounds of the claim are unclear. As best as can be understood “ready for customization” means ready to be cut, but there is nothing structurally that would prevent the garment from being cut. Similarly, any garment is ready to wear as long as the wearer deems it so, and there is again no structure preventing the claimed garment from being ready to wear. As such, these claim limitations appear to be method limitations such that the garment needs some unclaimed structure, or marks on the inner surface, before it is purchased. However, the claims are drawn to a product and not to a method, and having method limitations creates confusion as to when direct infringement occurs. See MPEP 2173.05(p).
Claim 4 is indefinite as it recites, “wherein said pattern for modification comprises a plurality of cutting patterns.” As claim 1 recites, “said pattern for modification comprises one or more cutting patterns”, it is unclear if one or more cutting patterns and a plurality of cutting patterns, i.e. at least 3 cutting patterns is required, of if the one or more cutting patterns comprises a plurality of cutting patterns.
Claim 5 is indefinite as it recites, “wherein said cutting patterns comprise cutting patterns for a sleeveless shirt, cap sleeve shirt, cropped shirt, cropped pants, tie-front shirt, tie shoulder, scoop neck, boat neck shirt, v-neck shirt, choker shirt, fringe bottom shirt, fringe bottom pants, halter, slit back shirt, cold shoulder shirt, racerback shirt or low back shirt”. First, as claim 1 recites, “one or more cutting patterns” where only one cutting pattern is required, it is unclear if “said cutting patterns” is referring to the one or more or if now a plurality of cutting patterns is required. Further, as the claim recites, “said cutting patterns comprise cutting patterns for…”, it further unclear how many cutting patterns are required. For example, does the claim require a plurality of cutting patterns for a sleeveless shirt? A plurality of cutting patterns of a boat neck shirt? Examiner has interpreted the limitation to mean, “wherein said one or more cutting patterns comprises a cutting pattern[[s]] for a sleeveless shirt, cap sleeve shirt, cropped shirt, cropped pants, tie-front shirt, tie shoulder, scoop neck, boat neck shirt, cut-out, v-neck shirt, choker shirt, fringe bottom shirt, fringe bottom pants, halter, slit back shirt, cold shoulder shirt, racerback shirt or low back shirt”.
Claim 8 is indefinite as it recites, “further comprising a cutting pattern”. As claim 1 recites, “said pattern for modification comprises one or more cutting patterns”, it is unclear if “a cutting pattern” is referring to the one or more cutting patterns, one of the one or more cutting patterns, or an additional cutting pattern that is different than the one or more cutting patterns.
Claims 13 and 24 are indefinite as each recites, “wherein said cutting patterns comprise cutting patterns for a sleeveless shirt, cap sleeve shirt, cropped shirt, cropped pants, tie-front shirt, tie shoulder, scoop neck, boat neck shirt, v-neck shirt, choker shirt, fringe bottom shirt, fringe bottom pants, halter, slit back shirt, cold shoulder shirt, racerback shirt or low back shirt”. First, as claim 10 recites, “one or more cutting patterns” where only one cutting pattern is required, it is unclear if “said cutting patterns” is referring to the one or more or if now a plurality of cutting patterns is required. Further, as the claim recites, “said cutting patterns comprise cutting patterns for…”, it further unclear how many cutting patterns are required. For example, does the claim require a plurality of cutting patterns for a sleeveless shirt? A plurality of cutting patterns of a boat neck shirt? Examiner has interpreted the limitation to mean, “wherein said one or more cutting patterns comprises a cutting pattern[[s]] for a sleeveless shirt, cap sleeve shirt, cropped shirt, cropped pants, tie-front shirt, tie shoulder, scoop neck, boat neck shirt, cut-out, v-neck shirt, choker shirt, fringe bottom shirt, fringe bottom pants, halter, slit back shirt, cold shoulder shirt, racerback shirt or low back shirt”.
Claim 15 is indefinite as it recites, “further comprising a cutting pattern”. As claim 10 recites, “said pattern for modification comprises one or more cutting patterns”, it is unclear if “a cutting pattern” is referring to the one or more cutting patterns, one of the one or more cutting patterns, or an additional cutting pattern that is different than the one or more cutting patterns.
Claim 24 is indefinite as it recites, “(b) coloring means for further selective customization wherein said coloring means comprises paint, ink, stamps, markers, dyes, pencils, pens, or coloring markers instructions for progressive customization marked on said inner surface;… (d) instructions for progressive customization marked on said inner surface”. It is unclear if this is an accidental repeated limitation or if there are coloring markers instructions for progressive modification on the inner surface as well as other instructions for progressive customization also marked on the inner surface.
Claim Rejections - 35 USC § 102
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 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, 3-5, 10, and 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamashita (US 2009/0007309).
Regarding claim 1, Yamashita discloses a customizable garment comprising a garment (A) having at least one inner surface (back side of either the front body 1 or back body 2; inside surface) and a pattern for modification (lines a-k) marked on said inner surface (see para. 0049 where the lines a-k can be printed on the front or back sides), wherein the customizable garment is ready to wear as purchased and ready for customization as purchased (as best as can be interpreted, this limitation is intended use, and Applicant is respectfully reminded that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Yamashita discloses the garment having a pattern for modification marked on the inner surface and is therefore capable of being purchased and worn or customized by at least one wearer in at least one fashion. And since the garment meets all the structural limitations, it would be capable of performing these functions), and said pattern for modification comprises one or more cutting patterns (as likes a-k are for cutting the neckline, the sleeve length, and the body length, see Fig. 1 (A) and para. 0049).
Regarding claim 3, Yamshita discloses wherein said at least one inner surface comprises at least two inner surfaces (back side of the front body 1 and back side of the back body 2) and said pattern for modification is marked on said at least two inner surfaces (as disclosed in para. 0055: “an arc-shaped cut is provided in one side of the bodies thereof”, this when cut in one side of the front and back bodies, therefore a cut line was provided in both the back side of the front body and the back side of the back body).
Regarding claim 4, Yamshita discloses wherein said pattern for modification comprises a plurality of cutting patterns (as likes a-k are for cutting the neckline, the sleeve length, and the body length, see Fig. 1 (A) and para. 0049).
Regarding claim 5, Yamshita discloses wherein said cutting patterns comprise a cutting pattern for a sleeveless shirt (A6, Fig. 2), cap sleeve shirt (A5), cropped shirt (A7), scoop neck (A6), cut-out (A1), v-neck shirt (A7), cold shoulder shirt (A3), or low back shirt (A8 when worn backwards).
Regarding claim 10, Yamashita discloses a kit for customizing a garment; the kit comprising: the garment (A) having at least one inner surface (back side of either the front body 1 or back body 2; inside surface) and a pattern for modification (lines a-k) marked on said inner surface (see para. 0049 where the lines a-k can be printed on the front or back sides), wherein said garment is ready to wear as purchased and ready for customization as purchased (as best as can be interpreted, this limitation is intended use, and Applicant is respectfully reminded that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Yamashita discloses the garment having cutting patterns marked on the inner surface and is therefore capable of being purchased and worn or customized by at least one wearing in at least one fashion. And since the garment meets all the structural limitations, it would be capable of performing these functions), and said pattern for modification comprises one or more cutting patterns (as likes a-k are for cutting the neckline, the sleeve length, and the body length, see Fig. 1 (A) and para. 0049).
Regarding claim 12, Yamshita discloses wherein said one ore more cutting patterns comprises a plurality of cutting patterns (as likes a-k are for cutting the neckline, the sleeve length, and the body length, see Fig. 1 (A) and para. 0049).
Regarding claim 13, Yamshita discloses wherein said cutting patterns comprise cutting patterns for a sleeveless shirt (A6, Fig. 2), cap sleeve shirt (A5), cropped shirt (A7), scoop neck (A6), cut-out (A1), v-neck shirt (A7), cold shoulder shirt (A3), or low back shirt (A8 when worn backwards).
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) 7 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as applied to claims 1 and 10 above, and further in view of Makowka (US 2007/0028343).
Regarding claim 7, Yamashita discloses all the limitations of claim 1 above, but does not expressly disclose further comprising instructions for progressive modification marked on said inner surface.
Makowka teaches a customizable garment comprising instructions for progressive modification marked on a surface of the garment (see para. 0016; considered for progressive modification as there are at least 4 areas (neck, 2 armholes, and bottom that have tearaway areas thus the tearing away each and using the garment is progressively modifying the garment from its original state).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mark instructions for progressive modification on a surface of the garment of Yamashita as taught by Makowka in order to ensure the user is aware of what the printed lines are for, thereby enabling the user to customize their garment.
The modified garment of Yamashita does not expressly disclose wherein the instructions are marked on the inner surface. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mark the instructions on the inner surface as such an arrangement would have at least have been obvious to try as it only involves choosing from a finite number of identified, predictable solutions (inner surface or outer surface), with a reasonable expectation of success (visible to wearer). See MPEP 2143 E.
Regarding claim 14, Yamashita discloses all the limitations of claim 10 above, but does not expressly disclose further comprising instructions for progressive modification marked on said inner surface.
Makowka teaches a customizable garment comprising instructions for progressive modification marked on a surface of the garment (see para. 0016; considered for progressive modification as there are at least 4 areas (neck, 2 armholes, and bottom that have tearaway areas thus the tearing away each and using the garment is progressively modifying the garment from its original state).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mark instructions for progressive modification on a surface of the garment of Yamashita as taught by Makowka in order to ensure the user is aware of what the printed lines are for, thereby enabling the user to customize their garment.
The modified garment of Yamashita does not expressly disclose wherein the instructions are marked on the inner surface. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mark the instructions on the inner surface as such an arrangement would have at least have been obvious to try as it only involves choosing from a finite number of identified, predictable solutions (inner surface or outer surface), with a reasonable expectation of success (visible to wearer). See MPEP 2143 E.
Claim(s) 8 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as applied to claims 1 and 10 above.
Regarding claims 8 and 15, Yamashita discloses all the limitations of claims 1 and 10 above, but does not expressly disclose further comprising a cutting pattern for one or more symbols, geometric symbols, Greek letters, letters, numbers, life event-oriented designs or holiday-oriented designs. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the cutting patterns of Yamashita to include a cutting pattern for one or more symbols, geometric symbols, Greek letters, letters, numbers, life event-oriented designs or holiday-oriented designs in order to prompt the wearer to cut the garment in a way so as to reflect their affiliations and as change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See MPEP 2144.04. In addition, a Change in aesthetic (ornamental) design generally will not support patentability. See MPEP 2144.04.
Examiner notes that “one or more symbols, geometric symbols, Greek letters, letters, numbers, life event-oriented designs or holiday-oriented designs” in the following claims is a limitation of printed matter. Once it is determined that the limitation is directed to printed matter, Examiner must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight. In this case, where the cutting pattern marked on the inner surface merely serves as a support for printed matter, and no functional relationship exists since there is no new relation of printed matter to physical structure. The claim(s) as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product and the printed matter is given no patentable weight. See MPEP 2111.05.
Claim(s) 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as applied to claim 10 above, and further in view of Evans (US 2012/0216336).
Regarding claim 21-23, Yamshita discloses wherein the garment is to be cut along the cutting patterns, but does not expressly disclose further comprising cutting means [claim 21], further comprising coloring means for further selective customization wherein said coloring means comprises paint, ink, stamps, markers, dyes, pencils, pens or coloring markers [claim 22], and further comprising ornamentation that can be selectively attached to said garment wherein said ornamentation comprises beads, patches and pins [claim 23].
Evans teaches a customizable garment with comprising a kit (36) comprising cutting means (scissors 38; Examiner notes “cutting means” has been interpreted under 35 USC 112(f) and the scissors of Evans are equivalent to Applicant’s cutting means disclosed as “not limited to, scissors, clothing shears, a rotary cutter, knife, and sharp blade, including but not limited to a razor” in lines 23-25 of p. 6 of the specification), further comprising coloring means for further selective customization wherein said coloring means comprises paint, ink, stamps, markers, dyes, pencils, pens or coloring markers (pens or markers, see para. 0016), and further comprising ornamentation that can be selectively attached to said garment wherein said ornamentation comprises beads, patches and pins (pins 10 and patches 30, see para. 0016).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add cutting means, coloring means, and ornamentation to the kit of Yamashita, as taught by Evans, in order to ensure the user has proper scissors for cutting fabric so that once they customize the garment, the edges of the garment appear neat and tidy, and including coloring means and ornamentation allows the user to further customize the garment in order “to improve its aesthetic appearance or to add character” (see para. 0002 of Evans).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita as applied to claim 10 above, further in view of Evans, and further in view of Makowka.
Regarding claim 24, the kit of Yamashita discloses wherein said cutting patterns comprise cutting patterns for a sleeveless shirt (A6, Fig. 2), cap sleeve shirt (A5), cropped shirt (A7), scoop neck (A6), cut-out (A1), v-neck shirt (A7), cold shoulder shirt (A3), or low back shirt (A8 when worn backwards), but does not expressly disclose further comprising:(a) cutting means,(b) coloring means for further selective customization wherein said coloring means comprises paint, ink, stamps, markers, dyes, pencils, pens, or coloring markers instructions for progressive customization marked on said inner surface; (c) ornamentation that can be selectively attached to said garment wherein said ornamentation comprises beads, patches and pins; and(d) instructions for progressive customization marked on said inner surface.
Evans teaches a customizable garment with comprising a kit (36) comprising cutting means (scissors 38; Examiner notes “cutting means” has been interpreted under 35 USC 112(f) and the scissors of Evans are equivalent to Applicant’s cutting means disclosed as “not limited to, scissors, clothing shears, a rotary cutter, knife, and sharp blade, including but not limited to a razor” in lines 23-25 of p. 6 of the specification), further comprising coloring means for further selective customization wherein said coloring means comprises paint, ink, stamps, markers, dyes, pencils, pens or coloring markers (pens or markers, see para. 0016), and further comprising ornamentation that can be selectively attached to said garment wherein said ornamentation comprises beads, patches and pins (pins 10 and patches 30, see para. 0016).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add cutting means, coloring means, and ornamentation to the kit of Yamashita, as taught by Evans, in order to ensure the user has proper scissors for cutting fabric so that once they customize the garment, the edges of the garment appear neat and tidy, and including coloring means and ornamentation allows the user to further customize the garment in order “to improve its aesthetic appearance or to add character” (see para. 0002 of Evans).
The modified kit of Yamashita does not expressly disclose comprising instructions for progressive modification marked on said inner surface.
Makowka teaches a customizable garment comprising instructions for progressive modification marked on a surface of the garment (see para. 0016; considered for progressive modification as there are at least 4 areas (neck, 2 armholes, and bottom that have tearaway areas thus the tearing away each and using the garment is progressively modifying the garment from its original state).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mark instructions for progressive modification on a surface of the garment of the modified kit of Yamashita as taught by Makowka in order to ensure the user is aware of what the printed lines are for, thereby enabling the user to customize their garment.
The modified garment of Yamashita does not expressly disclose wherein the instructions are marked on the inner surface. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to mark the instructions on the inner surface as such an arrangement would have at least have been obvious to try as it only involves choosing from a finite number of identified, predictable solutions (inner surface or outer surface), with a reasonable expectation of success (visible to wearer). See MPEP 2143 E.
Response to Arguments
Applicant’s arguments, filed January 2, 2026, with respect to the drawings have been fully considered but they are not persuasive. Regarding the objections to the drawings for not showing claimed features, Applicant argues, “Applicant respectfully submits that drawings for claimed features are not required unless necessary to understand the invention” (Remarks, p. 6, first full para.). Examiner respectfully disagrees. 37 C.F.R. 1.83 specifically states, “(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).” As such, claimed structures need to be shown in the drawings and therefore the drawing objections have are maintained.
Applicant’s arguments with respect to the 35 USC 102 of claims 1 and 10 have been considered but are moot because the arguments do not apply to the current grounds of rejection. Applicant’s arguments, which appear to be drawn only to the newly amended limitation of “wherein said garment is ready to wear as purchased and ready for customization as purchased” and previously presented rejections, have been considered but are moot in view of the new ground(s) of rejection.
Further, regarding the 35 USC 102 rejections of claims 1 and 10, Applicant argues that “Yamashita does not discloses lines a-k marked on an inner surface. There is no references to an inner surface whatsoever” (Remarks, p. 7, first full para.) Examiner respectfully disagrees. Yamashita discloses a front body 1 and a back body 1 in at least para. 0063. This refers to the front fabric/panel/section of the garment and the back fabric/panel/section of the garment. Such bodies are also disclosed in para. 0049 which recites, “front and back bodies are formed with the circular knitted fabric corresponding to the body width d, and a sleeve part f is formed of a sleeve part prepared by welding a sleeve part cut from circular knitted fabric or one piece of fabric by heat-welding means and forming this sleeve part into a cylindrical shape.” However, para. 0049 also recites, “Then standard cut lines i, j, and k for the neckline a, the total length b, and the sleeve length c, respectively, are displayed on the front or back sides of the garment by printing or the like.” As such, it is clear that bodies and sides are not referring to the same structure. Further, as can be seen in Figs. 2-3, portions are cut out of both the front body AND the back body and therefore the lines being “displayed on the front or back sides” is referring to the outside/outer surface and inside/inner surface, as can readily be understood by one of ordinary skill in the art. However, the point is moot. As garments can be worn inside out, in at least one configuration, the lines are marked on the inner surface.
Regarding the 35 USC 103 rejections of claims 7 and 14, argues “Makowka is directed to a completely different field - that of disposable protective gear -- not ordinary, wearable garments. It is respectfully submitted that a person of ordinary skill in the art would not have combined the teachings of Yamashita and Makowka in the first instance” (Remarks, p. 9, 2nd full para.). Examiner respectfully disagrees. In response to applicant's argument that Makowka is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Applicant is improperly narrowing the field of inventor’s endeavor and as Makowka discloses a customizable garment, it is in the field of the inventor’s endeavor.
Applicant’s arguments with respect to the 35 USC 102 of claims 7-8 and 14-15 and newly added limitations have been considered but are moot because the arguments do not apply to the current grounds of rejection. 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.
Applicant submits that the dependent claims are patentable based on their dependencies from claims 1 and 10; however, as discussed in the rejection below and in the arguments above, claims 1 and 10 not allowable over the prior art. Therefore, these arguments have not been found convincing and the rejections of the remaining independent claims have been maintained.
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.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732