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 December 15, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1, 8, 15, and 20 have been amended; claims 14 and 16-19 are canceled; and claims 21-25 have been added. Accordingly, claims 1-13, 15, and 20-25 are pending in this application, with an action on the merits to follow regarding claims 1-13, 15, and 20-25.
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:
Claims 1 and 20 each recite limitations that the first and second speaker pockets are defined by respective openings. While this is shown in Fig. 50, it is not mentioned in the specification and Examiner respectfully suggests amending the specification to include these limitations.
Claims 8 and 23 each recite, “wherein the first speaker pocket and the second speaker pocket are positioned along an interior of the eye mask”. While this is shown in Fig. 50, it is not mentioned in the specification, and Examiner respectfully suggests amending the specification to include these limitations.
Drawings
The drawings are objected to because Figures 4-6 appear to be black and white photographs. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. See: 37 CFR 1.84 (b)(1).
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 Objections
Claim 20 is objected to because of the following informalities: Claim 20 should recite, “A kit for a hair bonnet comprising: [[a]] the hair bonnet….” Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 10, 20, and 24 (and claims 2-9, 11-13, 15, 21-23, and 25 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 24 each recites, “a control panel coupled to the protective hair covering and configured to control an audio”. As the figures show that the control panel 842 is coupled to the eye mask 816, and an eye mask is separately claimed in claim 1 and 20, it is unclear what is meant by the control panel being coupled to the protective hair covering. For purposes of examination, Examiner has interpreted the limitation to mean the control panel is coupled to the protective hair covering at least via another structure.
Claim 10 is indefinite as it recites, “wherein the eye mask comprises an opening”. As claim 1 recites a first opening and a second opening, it is unclear if claim 10 is referring to one of the first and second openings or an additional opening. Examiner has interpreted the limitation to mean, “wherein the eye mask comprises an insert opening”.
Claim 20 is indefinite as it recites, “the eye mask comprising an opening; a first speaker pocket shaped and configured to envelop the first speaker and defined by a first opening of the eye mask; and a second speaker pocket shaped and configured to envelop the second speaker and defined by a second opening of the eye mask; and an insert configured to be inserted into the opening.” Since the claim recites the eye mask comprising an opening, a first opening, and a second opening, it is unclear if one of the first or second openings is the opening or if the first and second openings are in addition to the opening. Further it is unclear which of these openings the insert is configured to be inserted in. Examiner respectfully suggests amending to recite, “the eye mask comprising an insert opening, and an insert configured to be inserted into the opening; a first speaker pocket shaped and configured to envelop the first speaker and defined by a first opening of the eye mask; and a second speaker pocket shaped and configured to envelop the second speaker and defined by a second opening of the eye mask
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lai et al (US 2015/0092972) in view of Phillips (US 2008/0144872).
Regarding claim 1, Lai discloses a hair bonnet (100, see para. 0048) comprising a protective hair covering (head covering portion of 301; Fig. 3; [0048]), the protective hair covering comprising fabric [0048-0050]); a control panel (451) coupled to the protective hair covering (Figs. 4-5; [0051, 0072]) and configured to control an audio ([0072]); and first speaker and a second speaker (speakers 801 or 453; Figs. 5 and 8); an eye mask (101 and 701 of Fig. 7) coupled to the protective hair covering (as when incorporated into Fig. 3, the eye mask of Fig. 7 would replace the headband portion of Fig. 3) .
Lai does not expressly disclose the eye mask including a first speaker pocket and a second speaker pocket, wherein the first and second speaker pockets are shaped and configured to envelop the first speaker and the second speaker, respectively, and wherein the first speaker pocket and the second speaker pocket are defined by a first opening and a second opening of the eye mask, respectively.
Phillips teaches headgear with integrated music player, the eye mask (10, as 10 can be used to cover the eyes and is analogous to portion 101 of Fig. 7 of Lai which is part of the eye mask of Lai) including a first speaker pocket (30) and a second speaker pocket (40), wherein the first and second speaker pockets are shaped and configured to envelop the first speaker and the second speaker, respectively (as seen in Figs. 2 and 3, the pockets are shaped and envelop speakers 80 and 90), and wherein the first speaker pocket and the second speaker pocket are defined by a first opening (32) and a second opening (42) of the eye mask, respectively (see paras. 0038-0040 and 0044).
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 pockets for the speakers with openings in the eyemask of Lai as taught by Phillips in order to allow the speakers to be removed from the pockets so that the headwear can be washed or replaced (see para. 0055 of Phillips).
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 hair bonnet, there would be a reasonable expectation for the bonnet to perform such functions, as Examiner has explained after each functional limitation.
Regarding claim 2, the modified bonnet of Lai discloses wherein the protective hair covering is configured to prevent moisture loss (the coverage of the user’s hair with the hair covering would prevent moisture loss since evaporation of water or drying of hair conditioners would be slowed; see fabrics disclosed in paragraphs 0048-0050; thus, the hair covering of Lai is capable of functioning as claimed).
Regarding claim 3, the modified bonnet of Lai discloses wherein the protective hair covering is configured to prevent hair breakage (para. 0048 discloses the use of silk, which is a fabric which would prevent hair breakage).
Regarding claims 4 and 5, the modified bonnet of Lai discloses wherein the eye mask may be integral with the hair covering or may be removably coupled (as at least portion 701 of the eye mask “detachably secured”) to the hair covering [0053]).
Regarding claim 6, the modified bonnet of Lai discloses wherein the protective hair covering is hydrophobic (as seen in para. 0048 where it can be made of wool and wool is hydrophobic on the outside as the outer cuticle layer repels liquid water).
Regarding claim 7, the modified bonnet of Lai discloses the protective hair covering is shaped and sized to envelop hair of a user (Figs. 2-3; [0048]).
Regarding claim 8, the modified bonnet of Lai discloses wherein the first speaker pocket and the second speaker pocket are positioned along an interior of the eye mask (as when Lai is modified by Phillips the pockets are on the interior, see Fig. 7 of Phillips).
Claim(s) 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Lai and Phillips as applied to claim 1 above, and further in view of Fiebel (US 2012/0144556).
Regarding claim 9, the modified bonnet of Lai discloses all the limitations of claim 1 above, but does not expressly disclose wherein the eye mask comprises padding.
Fiebel teaches an eye mask (100) comprising padding (see para. 0036).
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 padding to the eye mask of the modified bonnet of Lai, as taught by Fiebel, in order to add deliver a scent to the wearer thereby enabling relaxation of the wearer (see para, 0036 of Fiebel).
Regarding claim 10-13, the modified bonnet of Lai discloses all the limitations of claim 1 above, but does not expressly disclose wherein the eye mask comprises an opening and further comprises an insert configured to be inserted into the opening [claim 10], wherein the insert comprises a gel eye mask [claim 11], a cooling pack [claim 12], a heating pack [claim 13].
Fiebel teaches an eye mask (100) comprising an opening (the opening to receiving portion 160; Fig. 1A and paras. 0031-0032) and further comprises an insert (300) configured to be inserted into the opening ([0031-0032]), wherein the insert comprises a gel eye mask (330/335), a cooling pack (para. 0031 teaches that the gel pack can act as a heat sink to cool the mask), a heating pack (para. 0031 teaches that the gel pack can act as a heat source to heat the mask).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the eye mask of the modified bonnet of Lai with an opening and an insert comprising a gel, a cooling pack, and a heating pack in order to provide a soothing effect for the wearer, as taught by Fiebel as Fiebel teaches that the heating or cooling effect provides a “soothing” effect for the wearer [0032] and may be used to relieve symptoms related to a cold or sinus condition [0003, 0005, 0008, 0032].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Lai and Phillips as applied to claim 1 above, and further in view of Lovell (US 2017/0224041).
Regarding claim 15, the modified bonnet of Lai discloses all the limitations of claim 1 above, but does not expressly disclose further comprising a strap and a slide.
Lovell teaches an eye mask coupled to a protective hair covering and comprises a strap (14) and a slide (the slide ring of strap 14 shown but unnumbered in Fig. 4)
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 strap and slide to the eye mask of the modified bonnet of Lai as taught by Lovell in order to better “secure the eye mask around the head” (see Abstract of Lovell) and adjust to the preferences of the user.
Claim(s) 20-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lai, in view of Phillips, and in view of Fiebel.
Regarding claim 20, Lai discloses a kit for a hair bonnet comprising: a hair bonnet (100, see para. 0048) comprising: a protective hair covering (head covering portion of 301; Fig. 3; [0048]), the protective hair covering comprising fabric [0048-0050]); and first speaker and a second speaker (speakers 801 or 453; Figs. 5 and 8); an eye mask (101 and 701 of Fig. 7) coupled to the protective hair covering (as when incorporated into Fig. 3, the eye mask of Fig. 7 would replace the headband portion of Fig. 3) .
Lai does not expressly disclose the eye mask comprising an opening; a first speaker pocket shaped and configured to envelop the first speaker and defined by a first opening of the eye mask; and a second speaker pocket shaped and configured to envelop the second speaker and defined by a second opening of the eye mask; and an insert configured to be inserted into the opening.
Phillips teaches headgear with integrated music player, the eye mask (10, as 10 can be used to cover the eyes and is analogous to portion 101 of Fig. 7 of Lai which is part of the eye mask of Lai) a first speaker pocket (30) shaped and configured to envelop the first speaker (80) and defined by a first opening (32) of the eye mask; and a second speaker pocket (40) shaped and configured to envelop the second speaker (90) and defined by a second opening (42 of the eve mask) (see paras. 0038-0040 and 0044).
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 pockets for the speakers with openings in the eye mask of Lai as taught by Phillips in order to allow the speakers to be removed from the pockets so that the headwear can be washed or replaced (see para. 0055 of Phillips).
The modified kit Lai does not expressly disclose the eye mask comprising an opening; and an insert configured to be inserted into the opening.
Fiebel teaches an eye mask (100) comprising an opening (the opening to receiving portion 160; Fig. 1A and paras. 0031-0032) and further comprises an insert (300) configured to be inserted into the opening ([0031-0032]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the eye mask of the modified bonnet of Lai with an opening and an insert comprising a gel, a cooling pack, and a heating pack in order to provide a soothing effect for the wearer, as taught by Fiebel as Fiebel teaches that the heating or cooling effect provides a “soothing” effect for the wearer [0032] and may be used to relieve symptoms related to a cold or sinus condition [0003, 0005, 0008, 0032].
Regarding claims 21-23, the modified kit of Lai discloses wherein the insert comprises a gel eye mask [claim 21] (330/335 of Fiebel), a cooling pack [claim 22] (para. 0031 of Fiebel teaches that the gel pack can act as a heat sink to cool the mask), a heating pack [claim 23] (para. 0031 of Fiebel teaches that the gel pack can act as a heat source to heat the mask).
Regarding claim 24, the modified kit of Lai discloses further comprising a control panel (451) coupled to the protective hair covering (Figs. 4-5; [0051, 0072]) and configured to control an audio ([0072]).
Regarding claim 25, the modified kit of Lai discloses wherein the first speaker pocket and the second speaker pocket are positioned along an interior of the eye mask (as when Lai is modified by Phillips the pockets are on the interior, see Fig. 7 of Phillips).
Response to Arguments
Applicant’s arguments, filed December 15, 2025, with respect to the 35 USC 102 and 103 rejections of claims 1-20 have been considered but are moot because the arguments do not apply to the current grounds of rejection. In view of Applicant’s amendment, the search has been updated, and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 CLINTON T OSTRUP whose telephone number is (571)272-5559. The examiner can normally be reached M-F 8:30 AM - 5:00 PM.
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/CLINTON T OSTRUP/Supervisory Patent Examiner, Art Unit 3732
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