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 Species 1 (Figs. 1-2, drawn to an ankle sock having a front notch and no ankle band), Subspecies A (Figs. 9A-9B, drawn to a single front notch free of embroidering, piping, or elastic inserts), and Group I (drawn to an integrally formed notch) in the reply filed on October 28, 2025 is acknowledged. The traversal is on the ground(s) that there would be no search and examination burden on the Examiner to examine all 3 species, all 6 subspecies, and both groups.
This is not found persuasive because the species, subspecies, and groups have been found to be mutually exclusive, with differing structural features, and the distinct species/subspecies/ groups would require different search queries, as well as different prior art references being applied against different claims directed to the various species/subspecies/ groups.
However, after reconsideration of the restriction/election requirement in view of the completed prior art search, the Examiner hereby withdraws the restriction (election) requirement only between Subspecies A and Subspecies D, and between Subspecies C and E, as the number and location(s) of the notch(es) have been found to be obvious variants.
As such, Applicant’s election effectively encompasses Species 1 (Figs. 1-2, drawn to an ankle sock having a front notch and no ankle band), Subspecies A and D (Figs. 9A-9B and 12A-12B, drawn to a single front notch, or a front notch and a rear notch, free of embroidering, piping, or elastic inserts), and Group I (drawn to an integrally formed notch).
The Examiner reminds Applicant that upon allowance of any generic independent claim, any claims directed to withdrawn species/subspecies/groups may be considered for rejoinder as long as they do not contradict the independent claim.
The requirement is still deemed proper and is therefore made FINAL.
Applicant has identified claims 1, 9-14, 17, and 23 as reading on the elected Species/Subspecies/Group. The Examiner notes that claims 18-22 appear to additionally read on the effective election of Subspecies D.
Claims 2-8, 15, 16, and 24 are therefore withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species/Subspecies/Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 28, 2025.
Claims 1, 9-14, and 17-23 are presented for examination below.
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 feature(s) must be shown or the feature(s) canceled from the claim(s): “a first state, wherein edges of the at least one notch are substantially parallel to each other” (claim 12).
The Examiner notes that while the Figs. show a first state of the notch (e.g., Figs. 1 and 9A), the notch is depicted as a narrow V-shape, forming an acute angle, instead of having substantially parallel edges.
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 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 10, 11, and 14 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 10, 11, and 14 recite the limitation “the at least one notch is configured to have a C shape, a D shape, a U shape, a V-neck shape, a square shape, a rectangle shape, or a combination thereof.” The limitation is indefinite, as “V-neck” usually refers to the shape of a collar opening of a shirt, and it is unclear what the claimed V-neck shape includes or excludes, within the context of a sock. For purposes of examination, the Examiner will interpret the limitation as follows, in accordance with at least paragraph 0034 of the specification: “the at least one notch is configured to have a C shape, a D shape, a U shape, a V shape, a square shape, a rectangle shape, or a combination thereof.” The Examiner also suggests making corresponding amendments to paragraph 0013 of the specification.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Warren, Jr. (US Design Patent No. D461,045).
Regarding claim 1, Warren, Jr. discloses a sock (see at least Title, Description, and Fig.) comprising: a foot area having a closed end; an open end opposite the closed end; and at least one notch extending from an edge of the open end of the sock toward the closed end (see annotated Fig.).
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Claims 1 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Warren, Jr. et al. (herein Warren)(US Patent No. 5,653,128).
Regarding claim 1, Warren discloses a sock (10) comprising:
a foot area (12) having a closed end (at toe portion 14, see at least Fig. 1);
an open end (along upper edge 20) opposite the closed end (see at least Fig. 1); and
at least one notch extending (24) from an edge of the open end of the sock toward the closed end (see at least Figs. 1-2 and column 3, line 25 – column 4, line 38).
Regarding claim 17, Warren discloses wherein the at least one notch (24) is a single notch (see at least Fig. 1 and column 3, line 25 – column 4, line 38).
Claims 1 and 17-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Protting (US PG Pub 2006/0021116).
Regarding claim 1, Protting discloses a sock (100, see Fig. 7) comprising:
a foot area having a closed end (see annotated Fig. 7);
an open end (sock opening defined by upper edge 150) opposite the closed end (see Fig. 7); and
at least one notch (220) extending from an edge (150) of the open end of the sock toward the closed end (see Fig. 7 and paragraph 0031).
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Regarding claim 17, Protting further discloses wherein the at least one notch (220) is a single notch (see Fig. 7, notches 220 include a single notch, e.g., a front notch; the Examiner notes that claim 17 is an open-ended “comprising” claim, and notches 220 include the claimed single notch, as well as additional notches).
Regarding claim 18, Protting further discloses wherein the at least one notch (220) is located on a front of the open end facing a toe portion of the foot area (see Fig. 7, plurality of notches 220 includes at least one front/toe-ward notch).
Regarding claim 19, Protting further discloses wherein the at least one notch (220) is located on a back of the open end facing a heel portion of the foot area (see Fig. 7, plurality of notches 220 includes at least one back/heel-ward notch).
Regarding claim 20, Protting further discloses wherein the at least one notch (220) comprises a plurality of notches (see at least Fig. 7 and paragraph 0031).
Regarding claim 21, Protting further discloses wherein the at least one notch (220) includes a first notch and a second notch (e.g., a front notch and a rear notch), wherein the first notch and the second notch are in the opposite sides of the open end (see at least Fig. 7).
Regarding claim 22, Protting further discloses wherein the first notch is in a front of the open end facing a toe portion of the foot area and the second notch is in a back of the open end facing a heel portion of the foot area (see Fig. 7, plurality of notches 220 includes at least one front/toe-ward notch and at least one back/heel-ward notch).
Regarding claim 23, Protting further discloses a method of making the sock according to claim 1 (see rejection of claim 1 above), the method comprising: providing the foot area having the at least one notch integrally formed therein (see paragraph 0019; Protting discloses wherein “sock 100 is preferably knitted as a unitary garment with the notches 220 created at the time of manufacture”).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9-11 (regarding claims 10-11, as best as can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over Protting, as applied to claim 1 above.
Regarding claim 9, Protting discloses the limitations of claim 1, as discussed above, and further discloses wherein the at least one notch (220) comprises a first state wherein edges of the at least one notch are at a first angle with respect to each other (see Fig. 7).
Protting fails to further explicitly disclose wherein, when a part of a user’s body is inserted into the sock, the at least one notch is configured to expand from the first state to a second state, wherein the edges of the at least one notch are at a second angle with respect to each other, wherein the second angle is greater than the first angle.
However, the Examiner notes that Protting’s notches (220) form openings in the upper edge (150, see Fig. 7 and paragraph 0031) and are each defined by opposing free edges that would logically move away from one another as the notch expands during use, since Protting discloses wherein the notches are designed to provide added resiliency to the opening edge (see at least paragraphs 0001-0002, 0006-0007, and 0031). Furthermore, the notches would logically move in such a way that the expanded state would form a greater angle than the relaxed state, since the free edges adjacent the upper edge (150) would move away from one another, while the fixed vertex point defining the bottom of the notch would not expand (see annotated Fig. 7 below).
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention that Protting’s at least one notch would be capable of expanding from the first state to a second state, wherein the edges of the at least one notch are at a second angle with respect to each other, wherein the second angle is greater than the first angle; as doing so would allow Protting’s at least one notch to expand to provide enhanced resiliency, comfort, pressure relief, and freedom of movement as already contemplated by Protting (see at least paragraphs 0006-0007 of Protting).
Furthermore, the recitation of “wherein, when a part of a user’s body is inserted into the sock, the at least one notch is configured to expand from a first state, wherein edges of the at least one notch are at a first angle with respect to each other, to a second state, wherein the edges of the at least one notch are at a second angle with respect to each other, wherein the second angle is greater than the first angle” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. Protting discloses the structure as claimed and therefore would have a reasonable expectation of performing such function, as discussed above. See MPEP 2173.05(g).
Regarding claim 10, Protting further discloses wherein, in the first state, the at least one notch (220) is configured to have a C shape, a D shape, a U shape, a V-neck shape, a square shape, a rectangle shape, or a combination thereof (see Fig. 7 and paragraph 0031, notches have a V-shape).
Regarding claim 11, Protting further discloses wherein, in the second state (i.e., expanded state) the at least one notch (220) is configured to have a C shape, a D shape, a U shape, a V-neck shape, a square shape, a rectangle shape, or a combination thereof (see annotated Fig. 7 and rejection of claim 9 above, notches 220 would continue to have a V-shape, albeit a widened V-shape, as the free edges of the notch move away from one another in the expanded state).
Claims 12-14 (regarding claim 14, as best as can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over Protting, as applied to claim 1 above, in view of Lampson et al. (herein Lampson)(US Patent No. 6,061,827) and Park (US PG Pub 2003/0126671).
Regarding claim 12, Protting discloses the limitations of claim 1, as discussed above, but fails to further disclose, wherein, when a part of a user’s body is inserted into the sock, the at least one notch is configured to expand from a first state, wherein edges of the at least one notch are substantially parallel to each other, to a second state, wherein the edges of the at least one notch are at an angle with respect to each other. Instead, Protting depicts/discloses wherein the at least one notch (220) has a V-shape in the first, substantially relaxed state (see Fig. 1), i.e., the edges are not substantially parallel to each other.
However, Lampson teaches an article of apparel (20) having a plurality of stress relief means (200) formed along edges (32, 34) of the article (see Figs. 1-4), wherein the stress relief means may be formed as notches, cutouts, relief areas, or slits (see column 4, lines 18-43), and wherein V-shaped notches and slits provide a substantially equivalent function of allowing the material of the article to bend, fold, or yield along the notch or slit, to allow the article to better conform to the body of the wearer during use (see at least column 5, lines 21-33).
Furthermore, Park teaches an article of apparel (see Figs. 1-3 and paragraphs 0018-0024) comprising a plurality of linear notches, a.k.a., slits, (5) formed along an edge of the article (lower peripheral edge of band 3, see Fig. 2A), wherein each notch is configured to expand from a first state, wherein edges of the at least one notch are substantially parallel to each other (see Fig. 2A), to a second state, wherein the edges of the at least one notch are at an angle with respect to each other (see Fig. 3 and paragraphs 0021-0023), so as to allow the notches/slits to resiliently expand, to provide enhanced size adjustability and reduce uncomfortable compression on the wearer’s body (see at least paragraph 0023).
Therefore, based on Lampson’s and Park’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have substituted Protting’s V-shaped notches for linear notches (a.k.a., slits), such that when a part of a user’s body is inserted into the sock, the at least one notch is configured to expand from a first state, wherein edges of the at least one notch are substantially parallel to each other, to a second state, wherein the edges of the at least one notch are at an angle with respect to each other; as V-shaped notches and slits are known to provide a similar function of allowing the material of the article to bend, fold, yield, and/or expand along the notch or slit, to allow the article to better conform to the body of the wearer during use, provide size adjustability, and/or enhance wearer comfort.
Furthermore, such a modification would be nothing more than a simple substitution of one known cutout shape for another (i.e., slits instead of V-shaped notches), to provide a substantially equivalent function of allowing the material of the article to bend, fold, yield, and/or expand along the notch or slit, to allow the article to better conform to the body of the wearer during use, provide size adjustability, and/or enhance wearer comfort, as discussed above. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
Regarding claim 13, the modified sock of Protting (i.e., Protting in view of Lampson and Park) is further disclosed wherein in the first state, the at least one notch (5 of Park) is configured to have a linear shape or a rectangular shape (see at least Fig. 2A of Park).
Regarding claim 14, the modified sock of Protting (i.e., Protting in view of Lampson and Park) is further disclosed wherein in the second state, the at least one notch (5 of Park) is configured to have a C shape, a D shape, a U shape, a V-neck shape, a square shape, a rectangle shape, or a combination thereof (see at least Fig. 3 of Park; notches 5/5A assume a V-shape when stretched in use within the second state).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELYN BRAVO whose telephone number is (571)270-0581. The examiner can normally be reached Monday, Tuesday, Thursday, and Friday from 12:00 pm - 4:00 pm.
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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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/JOCELYN BRAVO/ Primary Examiner, Art Unit 3732
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