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 .
Election/Restrictions
Applicant’s election with traverse of Invention I (claims 1-10 and 16-20) in reply to the Restriction/Election Requirement Filed on 06 November 2025 is acknowledged. Applicant’s election with traverse of and Species A (Fig. 1) in reply to the internet communication on 08 December 2025 is acknowledged. The traversal is on the grounds that the search of all of the Applicant’s embodiments would prove no undue burden on the Examiner and since claims 1, 11, and 16 are generic, the Election of Species Requirement should be overcome and withdrawn.
The Examiner disagrees. Regarding the Restriction Requirement, the claims are directed to two different inventions: a product and a method of using a product. These are in two different classification areas and require two different searches. For example, Invention II would require words such as, “restroom”, “opening”, and “closing”, which are not found in Invention I. Regarding the Election Requirement, there are 3 patentably distinct species with different and diverse structures in the instant application. This is not found persuasive because the device of Species A (Fig. 1) is drawn to an embodiment with a bathing suit with snap fasteners at the upper crotch, the device of Species B (Fig. 2) is drawn to an embodiment with a bathing suit with hook and loop material at the lower crotch, and Species C (Fig. 3) is drawn to an embodiment with a bathing suit with a diagonal zipper opening at the lower waist. These are three separate classification areas, as noted in the original Election/Restriction Requirement, and while fasteners may be interchangeable, the location of the openings on the garment are not. And while some of the classification areas of Search could potentially overlap, each species would require a different total Search, and thus would pose a serious search burden upon the Examiner.
The requirement is still deemed proper and is therefore made FINAL.
Thus, the Examiner finds that the Election/Restriction Requirement stands and claims 11-15 will be withdrawn from consideration pursuant to 37 CFR 1.142(b), there being no allowable generic or linking claim. Accordingly, claims 1-20 are pending in this application, with an action on the merits to follow regarding claims 1-10 and 16-20.
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 “elastic band” of claim 9 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.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“fastening mechanism” in claims 3 & 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 8, 10, and 20 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 8 & 20 is/are indefinite as it/they recite(s) “the closeable panel includes reinforced material around its edges”. It is unclear if “its” refers to the closable panel or the reinforced material. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “the closeable panel includes reinforced material around [[its]] edges of the closable panel,”.
Claim 10 is/are indefinite as it/they recite(s) “quick-drying fabric”. It is unclear how one of ordinary skill would determine what a “quick-drying fabric” is. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “quick-drying fabric” is any fabric suitable to make bathing suit.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-10 and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Finn US 2857600.
Regarding Independent Claim 1, Finn discloses a bathing suit (Figs. 1-5 #10) comprising: an upper portion (Figs. 1-5 #2/4); a lower portion (Figs. 1-5 #6/8/24); and a closeable panel in the lower portion (Figs. 1-5 #18).
Regarding Claim 2, Finn discloses the bathing suit of claim 1, wherein the closeable panel is at, near, or above the crotch area of the lower portion (Fig. 2).
Regarding Claim 3, Finn discloses the bathing suit of claim 1, wherein the closeable panel uses a fastening mechanism (Applicant's “fastening mechanism” has been interpreted under 35 USC 112(f). Applicant' s “fastening mechanism” appears to be a button snap fastener [per Applicant Drawings Fig. 1 and Spec ¶0041, but is also noted to be any of “button snaps…, hook and loop fasteners…, or a zipper” in ¶0046]; Finn has both snaps #34 and a zipper #22, which are the same as the Applicant' s “fastening mechanism”; see Figs. 1-5 #34/22).
Regarding Claim 4, Finn discloses the bathing suit of claim 3, wherein the fastening mechanism is selected from the group consisting of hook and loop fasteners, snaps, zippers, and buttons (Figs. 1-5 show snaps #34/36 and zipper #22; Col. 2:10-38 notes, “button holes, snaps, hooks… slide fastener… buttons, snaps, eyes”).
Regarding Claim 5, Finn discloses the bathing suit of claim 1, wherein the closeable panel is discreetly integrated into the design of the bathing suit (Fig. 2 shows the panel under the skirt #8).
Regarding Claim 6, Finn discloses the bathing suit of claim 1, wherein the bathing suit is a one-piece suit (Figs. 1-5).
Regarding Claim 7, Finn discloses the bathing suit of claim 1, wherein the bathing suit is a tankini (Figs. 1-5).
Regarding Claim 8, Finn discloses the bathing suit of claim 1, wherein the closeable panel includes reinforced material around its edges (Figs. 3 & 4 show the edging of the garment; Col. 2:10-52 notes, “formed of two lateral pieces 14 and 16 joined along a central seam to afford maximum comfort and flexibility with attendant strength”).
Regarding Claim 9, Finn discloses the bathing suit of claim 1, wherein the closeable panel includes an elastic band (Col. 2:22-52 notes, “elastic fabric” which is in band form #18 in Fig. 3).
Regarding Claim 10, Finn discloses the bathing suit of claim 1, wherein the bathing suit is made from quick-drying fabric (Col. 2:47-52).
Regarding Independent Claim 16, Finn discloses a bathing suit system (Figs. 1-5 #10) comprising: an upper portion (Figs. 1-5 #2/4); a lower portion (Figs. 1-5 #6/8/24); and a closeable panel in the lower portion (Figs. 1-5 #18), and a fastening mechanism (Applicant's “fastening mechanism” has been interpreted under 35 USC 112(f). Applicant' s “fastening mechanism” appears to be a button snap fastener [per Applicant Drawings Fig. 1 and Spec ¶0041, but is also noted to be any of “button snaps…, hook and loop fasteners…, or a zipper” in ¶0046]; Finn has both snaps #34 and a zipper #22, which are the same as the Applicant' s “fastening mechanism”; see Figs. 1-5 #34/22) on the closeable panel (Figs. 1-5).
Regarding Claim 17, Finn discloses the bathing suit system of claim 16, wherein the closeable panel is at, near, or above the crotch area of the lower portion (Fig. 2).
Regarding Claim 18, Finn discloses the bathing suit system of claim 16, wherein the fastening mechanism is selected from the group comprising hook and loop fasteners, snaps, zippers, and buttons (Figs. 1-5 show snaps #34/36 and zipper #22; Col. 2:10-38 notes, “button holes, snaps, hooks… slide fastener… buttons, snaps, eyes”).
Regarding Claim 19, Finn discloses the bathing suit system of claim 16, wherein the closeable panel is discreetly integrated into the design of the bathing suit (Fig. 2 shows the panel under the skirt #8).
Regarding Claim 20, Finn discloses the bathing suit system of claim 16, wherein the closeable panel includes reinforced material around its edges (Figs. 3 & 4 show the edging of the garment; Col. 2:10-52 notes, “formed of two lateral pieces 14 and 16 joined along a central seam to afford maximum comfort and flexibility with attendant strength”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jeffrey US 3036574 teaches a bathing suit
Kuehner US 50583316 teaches a garment structure
Scozzafava US 20120272427 teaches a bathing suit
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.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732