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 26, 2025 have been considered and an action on the merits follows. As directed by the amendment, claim 1 has been amended; and claims 3-4, 6-9, 12-14, and 18-20 are withdrawn from further consideration. Accordingly, claims 1-20 are pending in this application, with an action on the merits to follow regarding claims 1-2, 5, 10-11, and 15-17.
Because of the applicant's amendment, the following in the office action filed February 25, 2026, are hereby withdrawn:
Claim objections under 35 USC 112(b).
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, “wherein the nose bridge portion, the upper lip portion, and the forehead portion are all formed in a single piece of material that does not cover a mouth”. The bolded portion does not have proper antecedent basis in the specification.
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 1 (and claims 2, 5, 10-11, and 15-17 at least for depending from a rejected claim) 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.
Claim 1 recites, “wherein the nose bridge portion, the upper lip portion, and the forehead portion are all formed in a single piece of material that does not cover a mouth” which was not disclosed in the specification. The nose bridge portion, the upper lip portion, and the forehead portion make up the nose covering portion which, in elected embodiment C, can be seen as 110 in Figs. 3A-3B and disclosed in paras. 0038 and 0040-0042 which is presumably the nose covering portion 110 shown in Figs. 2A and 2B, and disclosed in paras. 0032-0034, integrated into the head and neck covering portions. However, none of the disclosure recites or suggests that the various portions making up the nose covering portion. Para. 0042 recites, “As illustrated in FIG. 3A, in the closed configuration, fastener portion 140A and 140B are magnetically engaged to each other, so as to releasably fasten the bottom edge of nose covering portion 110 to the top edge of neck covering portion 130. As a result, head garment covers the user’s entire head and neck, except at opening 111 and through-hole 116. In contrast, as illustrated in FIG. 3B, in the open configuration, fastener portions 140A and 140B are disengaged, so as to unfasten the bottom edge of nose covering portion 110 from the top edge of neck covering portion 130, such that a mouth opening 142 is formed in head garment 100. In an embodiment, nose covering portion 110 and neck covering portion 130 are positioned with respect to each other and head covering portion 120, such that mouth opening 142 is positioned in front of the user’s mouth, when head garment 100 is worn. Thus, when head garment 100 is worn, mouth opening 142 exposes the user’s mouth to the external environment of head garment 100. Accordingly, the user may more easily talk, eat, drink, and/or breathe through his or her mouth than in the closed configuration…. Conversely, the user can seal mouth opening 142 shut by simply pulling the lower edge of nose covering portion 110 and/or the upper edge of neck covering portion 130 together.” As such, when fastener portions 140A and 140B are engaged, the mouth is covered, therefore a portion of the upper lip portion (and lips are generally considered part of the mouth) of the nose covering portion and a portion of the neck covering portion would be covering the mouth as seen in Fig. 3A. Thus the written description does not have support for “wherein the nose bridge portion, the upper lip portion, and the forehead portion are all formed in a single piece of material that does not cover a mouth”. Further, see MPEP 2173.05(i), which states "Any negative limitation or exclusionary proviso must have basis in the original disclosure", and "The mere absence of a positive recitation is not basis for an exclusion." MPEP 2163.02 states, “An objective standard for determining compliance with the written description requirement is, ‘does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.’” Although it mentions that an Applicant can rely on figures as well as words to show possession of the invention, the drawings cannot show a negative. In other words they cannot show that Applicant contemplated specifically excluding a joinder from certain areas, as now claimed. Again, as stated in 2173.05(i), “The mere absence of a positive recitation is not basis for an exclusion.” Therefore the limitation fails to comply with the requirement for written description.
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) 1-2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carey (US 6272690) in view of Sisolak (US 5809572).
Regarding claim 1, Carey discloses a head garment (10) comprising: a nose covering portion (see annotated Fig. 2 and Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)) comprising a nose bridge portion (23), an upper lip portion below the nose bridge portion (see annotated Fig. 2), a through-hole (29) between the nose bridge portion and the upper lip portion (see annotated Fig. 2), an outer perimeter (dotted line in annotated Fig. 2) and an inner perimeter (20 along opening 18), and a forehead portion between the inner perimeter and the outer perimeter at an upper portion of the nose covering portion (see annotated Fig. 2), wherein the nose bridge portion, the upper lip portion, and the forehead portion are all formed in a single piece of material that does not cover a mouth and chin of a user when the nose covering portion is worn by the user (as disclosed in col. 3, lines 40-53, 12/40 is made material, and as can be seen in annotated Fig. 2, the nose bridge and upper lip are a single piece of material and do not cover the mouth and chin of at least one user), wherein the inner perimeter defines a single opening (18) that is positioned to, when the head garment is worn by the user, surround both eyes of the user (as seen in Fig. 1), wherein the forehead portion is positioned to, when the head garment is worn by the user, cover a forehead of the user (as seen in Figs. 1-2 at least a portion of the forehead is covered), wherein the nose bridge portion is positioned to, when the head garment is worn by a user, cover a bridge of a nose of the user (as seen in Fig. 1), wherein the upper lip portion is positioned to, when the head garment is worn by the user, cover an upper lip of the user (as understood between Figs. 1-2), and wherein the through-hole is positioned to, when the head garment is worn by the user, provide a passageway between nostrils of the user and an external environment of the head garment (as seen in Fig. 1).
While Carey discloses the nose bridge portion and the upper lip portion are a single piece of material, Carey does not expressly disclose wherein the nose bridge portion, the upper lip portion, and the forehead portion are a single piece of material.
Sisolak teaches a cold weather hood wherein the nose bridge portion, the upper lip portion, and the forehead portion are a single piece of material without any joinder between portions (as seen in Fig. 1 and disclosed in col. 2, line 57 – col. 3, line 15, 30 is formed of a laminate material).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the head garment of Carey so that the nose bridge portion, the upper lip portion, and the forehead portion are a single piece of material without any joinder between portions, as taught by Sisolak, in order to minimize any seams around they eyes where the goggles sit, as when worn with goggles, the goggles would press against any such seams and cause discomfort to the wearer.
Examiner notes that italicized limitations in the prior art rejections are functional and do not positively recite a structural limitation, but instead require an ability to so perform and/or function. As the prior art discloses the structure of the head garment, there would be a reasonable expectation for the head garment to perform such functions, as Examiner has explained after each functional limitation.
Regarding claim 2, the modified head garment of Carey discloses wherein the material is a stretchable material comprising a fabric, fleece, or fleece fabric (see col. 3, lines 40-53 12 is neoprene and fleece which are known to capable of stretching and 40 is an elastic material, therefore the material is fabric).
Regarding claim 5, the modified head garment of Carey discloses further comprising: a head covering portion (14) affixed to the nose covering portion (as seen in Figs. 1-2), wherein the head covering portion is positioned to, when the head garment is worn by the user, cover the forehead and a back of a head of the user (as shown in Fig. 1).
Claim(s) 10-11 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Carey and Sisolak, as applied to claim 1 above, and further in view of Heath (US 6269489).
Regarding claim 10, the modified head garment of Carey discloses further comprising a neck covering portion (16; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)) comprising an upper edge (see annotated Fig. 2), wherein the nose covering portion further comprises a lower edge (margin around lower part of the outer perimeter, below the upper lip portion), but Carey does not expressly disclose a first fastener portion in an upper region of the neck covering portion, wherein the nose covering portion comprises a second fastener portion, and wherein the first fastener portion and the second fastener portion are configured to engage to each other and disengage from each other via manual force.
Heath teaches a balaclava style head garment with head, nose, and neck covering portions, wherein of the neck covering portion (see annotated Fig. 1A) comprises a first fastener portion (22’) in an upper region of the neck covering portion (see annotated Fig. 3), and the nose covering portion (see annotated Fig. 3) comprising a second fastener portion (24’), and wherein the first fastener portion and the second fastener portion are configured to engage to each other and disengage from each other via manual force (see col. 3, line 61-col. 7, line 8).
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 a resealable opening between the nose and neck covering portions of the modified head garment of Carey, as taught by Heath, in order to allow excess heat to escape and the allow the user to effectively communicate.
Regarding claim 11, the modified head garment of Carey discloses wherein, when the head garment is worn by the user, while the first fastener portion and the second fastener portion are engaged, the first fastener portion and the second fastener portion are positioned on a front of the head of the user (as can be seen in Figs. 3-3a of Heath).
Regarding claim 16, the modified head garment of Carey discloses wherein each of the first fastener portion (22’ of Heath) and the second fastener portion (upper 24’ of Heath) comprises two or more fastening components (as there are 3 of each as seen in Fig. 3; Examiner notes that “fastening component(s)” has been interpreted under 35 USC 112(f) and are disclosed as magnets, hooks and loops (e.g., Velcro™), zippers, snaps, buttons, buckles, friction, and/or the like in para. 0025 in the instant application), wherein each fastening component of the two or more fastening components of the first fastener portion is configured to engage with a corresponding fastening component of the two or more fastening components of the second fastener portion (as understood from col. 3, line 61-col. 7, line 8 and the known structure of Velcro).
Regarding claim 17, the modified head garment of Carey discloses wherein the two or more fastening components of the second fastener portion (24’ of Heath) comprises a first fastening component on a first side of the through-hole, and a second fastening component (a second one of 24’ of Carey) on a second side of the through-hole (as in Fig. 3A of Heath, there is 24’ on each side of 24 of Heath, when included in Carey, the components would at least be on first and second lower sides of the through-hole).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Carey, Sisolak, and Heath, as applied to claims 1 and 10 above, and further in view of Chinquee (US 2015/0245675).
Regarding claim 15, the modified head garment of Carey discloses all the limitations of claims 1 and 10 above, but does not expressly disclose wherein each of the first fastener portion and the second fastener portion comprises one or more magnets.
Cinquee teaches a face mask with mouth opening wherein each of the first fastener portion and the second fastener portion comprises one or more magnets (26, see Fig. 6 and para. 0026).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the fastening means of the modified head garment of Carey with the fastening means as taught by Cinquee, as a simple substitution of one well known construction arrangement for another in order to yield the predictable result of securely and releasably fastening the mouth opening. See MPEP 2143 B.
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Annotated Fig. 2 (Carey)
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Annotated Fig. 2 (Heath)
Response to Arguments
Applicant’s arguments, filed January 16, 2026, with respect to 35 USC 102 and 103 rejection of claims 1-2, 5, 10-11, and 15-17 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. Further, Examiner notes Applicant is claiming portions and not separate panels, and term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com), thus a part of the larger whole can be defined as each portion. Claiming separate panels could overcome the current grounds 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 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 HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732
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