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 .
Claim Objections
Claims 1, 5, 9, 10, 13, and 19-20 are objected to because of the following informalities:
“A bra pad configured to be placed on a body of a wearer comprising …” (claim 1) should read “A bra pad configured to be placed on a body of a wearer, the bra pad comprising …” to enhance clarity
“a first portion of fabric extending substantially vertically along an outer edge of the bra pad and coupled to a first portion of the first zone…” (claim 1) should read “a first portion extending substantially vertically along an outer edge of the bra pad, wherein the first portion is made of fabric and is coupled to a first portion of the first zone…” to enhance clarity and provide clearer antecedent basis for the subsequent limitation “a first portion of the second zone” in claim 1 and claims depending therefrom
“a second portion of fabric extending substantially horizontally from the first portion of the second zone to an inner edge of the bra pad and coupled to a second portion of the first zone…” (claim 1) should read “a second portion extending substantially horizontally from the first portion of the second zone to an inner edge of the bra pad, wherein the second portion is made of fabric and is coupled to a second portion of the first zone…” to enhance clarity and provide clearer antecedent basis for the subsequent limitation “a second portion of the second zone” in the dependent claims
“the bottom of the bra pad” (claims 5 and 13) should read “a bottom of the bra pad” to enhance clarity and maintain consistent antecedent basis within the claims
“a breast of the wearer” (claim 9) should read “a breast of a wearer” to enhance clarity and maintain consistent antecedent basis within the claims
“a top zone of the bra pad that extends along and fits against a neckline of a wearer” (claim 10) should read “a top zone of the bra pad that is configured to extend along and fit against a neckline of the wearer,” to enhance clarity
“a bottom zone of the bra pad that extends along a bottom portion of a breast of a wearer” (claim 13) should read “a bottom zone of the bra pad that is configured to extend along a bottom portion of a breast of a wearer,” to enhance clarity
“The bra pad of claim 9” (claims 19-20) should read “The method of claim 9” to maintain consistent antecedent basis within the corresponding preambles of the claims according to their dependency
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.
Claim 7 is 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 7 recites the limitation “wherein the rigid material is configured to allow the second zone to flex along the bottom of the wearer’s breast.” The limitation is indefinite, as it is unclear, absent some additional clarifying language, how a rigid material allows the second zone to flex (as “flexible” and “rigid” are typically considered to be opposite to one another). For purposes of examination, the Examiner will interpret the limitation as follows, in accordance with paragraphs 0035 and 0037-0038 of the specification, and similarly-worded claim 15: “wherein the rigid material is a firm, stabilizing material with a low degree of stretchability configured to allow the second zone to flex along the bottom of the wearer’s breast while still providing support to the wearer’s breast.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recites “The bra pad of claim 9, wherein the second portion of the first zone overlaps the second portion of the second zone.” The limitation is already recited in claim 9 as currently presented.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 9-16 and 20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 11-19 of prior US Patent No. 12,127,607. This is a statutory double patenting rejection.
See the following table on how the pending claims correspond to the claims of prior US Patent No. 12,127,607:
Pending Claims
Claims of Prior US Patent No. 12,127,607
9
11
10
12
11
14
12
13
13
15
14
16
15
17
16
18
20
19
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of US Patent No. 12,127,607.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of US Patent No. 12,127,607 anticipate each and every limitation of claims 1-8 and 17-19 of the pending application.
See the following table on how the pending claims correspond to the claims of prior US Patent No. 12,127,607:
Pending Claims
Claims of Prior US Patent No. 12,127,607
1
1 (claim 1 of prior US Patent No. 12,127,607 recites each and every limitation of pending claim 1, and recites the additional limitation “wherein the first portion of the first zone overlaps the first portion of the second zone” at the end of the claim)
2
2
3
4
4
3
5
5
6
Last limitation of claim 1
7
6
8
7
17
8
18
9
19
11
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 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.
Claims 1-5, 7, and 18 (regarding claim 7, as best as can be understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (US PG Pub 2010/0056022).
Regarding claim 1, Liu discloses a bra pad (2, see Fig. 8) configured to be placed on a body of a wearer (see at least Abstract and paragraphs 0003, 0084-0089, and 0107-0114), the bra pad comprising:
a first zone (32) comprising a stretchable material (see paragraphs 0107-0120); and
a second zone (30) coupled to the first zone (see Fig. 8 and paragraphs 0107-0114) and comprising a rigid material (see paragraphs 0107-0120; note that the limitation “rigid material” is being interpreted in light of the specification to refer to a firm stabilizing material that is configured to provide additional support to the breasts while still being somewhat flexible, and is not completely rigid in the traditional sense of the word “rigid”; see paragraphs 0035 and 0037-0038 of the instant specification), the second zone further comprising:
a first portion of fabric extending substantially vertically along an outer edge of the bra pad (see annotated Fig. 8, the Examiner notes that the first portion as annotated has a substantial vertical extent and therefore extends “substantially vertically” inasmuch as claimed; see also paragraphs 0100-0101 and 0108-0115 re: the fabric layer(s) forming zones 30, 31, 32) and coupled to a first portion of the first zone (at least indirectly via third zone 31, see Fig. 8), wherein the first portion of the second zone is further configured to push a breast of the wearer forward to prevent the breast from bulging out of the bra pad (see paragraphs 0107-0120 and note below); and
a second portion of fabric extending substantially horizontally from the first portion of the second zone to an inner edge of the bra pad and coupled to a second portion of the first zone (see annotated Fig. 8); and
a third zone (31) arranged between the first zone (32) and second zone (30) and comprising a lightweight, stretchable material (see Fig. 8 and paragraphs 0107-0120 and exemplary densities/thicknesses disclosed in paragraphs 0126-0145; intermediate zone 31 has an intermediate softness/elasticity and is at least somewhat stretchable; furthermore, intermediate zone 31 is made of a relatively soft foam and/or fabric of relatively small thickness and is lightweight inasmuch as claimed; the Examiner notes that claim 1 does not specify any particular material weight, density, or thickness),
wherein the first zone (32), the second zone (30), and the third zone (31) together are coextensive with the entire surface area of the bra pad (see at least Fig. 8 and paragraphs 0084-0090 and 0107-0114).
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It is noted that the recitation of “wherein the first portion of the second zone is further configured to push a breast of the wearer forward to prevent the breast from bulging out of the bra pad” 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. Liu discloses the structure as claimed and further discloses wherein the second zone is configured to provide support to the breast (see paragraphs 00107-0014) and therefore would have a reasonable expectation of performing such function, depending on the breast shape and proportions of the wearer. See MPEP 2173.05(g).
Regarding claim 2, Liu further discloses wherein the first zone (32) is a top zone of the bra pad that is configured to extend along and fit against the neckline of the wearer (see Figs. 1 and 8 and paragraphs 0084-0086, 0109, and 0118).
Regarding claim 3, Liu further discloses wherein the stretchable material of the first zone (32) is configured to allow the first zone of the bra pad to cover a portion of the wearer's breast (see paragraphs 0107-0118).
Regarding claim 4, Liu further discloses wherein the first zone (32) is adapted to recover and fit against the neckline of the wearer as the wearer's body fluctuates in size and shape (see paragraphs 0107-0118; first zone 32 comprises an elastic material that is configured to “fit slight variations in body sizes” and is therefore capable of elastically conforming to the wearer’s neckline as the wearer’s body fluctuates in size/shape).
It is noted that the recitation of “adapted to recover and fit against the neckline of the wearer as the wearer's body fluctuates in size and shape” 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. Liu discloses the structure as claimed, and further discloses an elastic material with elastic properties (i.e., capable of stretching and “recovering” after being stretched/flexed) and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
Regarding claim 5, Liu further discloses wherein the second zone (30) is a bottom zone of the bra pad that is configured to extend along the bottom portion of a breast of the wearer to support the breast from the bottom of the bra pad (see Figs. 1 and 8 and paragraphs 0084-0086, 0109, and 0119).
Regarding claim 7, Liu further discloses wherein the rigid material (of second zone 30) is configured to allow the second zone (30) to flex along the bottom of the wearer’s breast (see paragraphs 0107-0120; note that the limitation “rigid material” is being interpreted in light of the specification to refer to a firm stabilizing material that is configured to provide additional support to the breasts while still being somewhat flexible, and is not completely rigid in the traditional sense of the word “rigid”; see paragraphs 0035 and 0037-0038 of the instant specification).
It is noted that the recitation of “to allow the second zone to flex along the bottom of the wearer's breast” 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. Liu discloses the structure as claimed and further discloses a foam or fabric material along the bottom of the pad that is substantially but not absolutely rigid/non-elastic, and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
Regarding claim 18, Liu further discloses wherein a top portion of the third zone (31) is coupled to the first zone (32, see Fig. 8), and a bottom portion of the third zone is coupled to the second zone (30, see Fig. 8).
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 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.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Liu, or, in the alternative, under 35 U.S.C. 103 as obvious over Liu, as applied to claim 1 above, in view of Jagaric et al. (herein Jagaric)(US PG Pub 2005/0208875).
Regarding claim 8, Liu discloses the limitations of claim 1, as discussed above, but fails to explicitly disclose wherein the bra pad is configured to be incorporated into one of a camisole, a tank top, a slip, a dress, and a bathing suit.
However, Liu discloses discrete bra pads (2) that are capable of being incorporated into an outer garment such as a camisole, tank top, dress, or bathing suit (see Figs. 2-8). It is noted that the camisole, tank top, dress, and/or bathing suit are not positively claimed, and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114 (II).
Furthermore, it has been held that the recitation that an element is “adapted to” or “configured to” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Alternatively, Liu fails to disclose wherein the bra pad is configured to be incorporated into one of a camisole, a tank top, a slip, a dress, and a bathing suit, and only discloses wherein the bra pad (2) is configured to be incorporated into a brassiere (1, see Fig. 1).
However, Jagaric teaches a bra pad (52, 54) which are configured to be incorporated into a brassiere or other breast-covering garment such as a camisole, slip, or bathing suit (see Fig. 9 and paragraphs 0002 and 0053), so as to provide padding to the garment as desired, to accentuate the wearer’s figure, provide breast support, and/or conceal the outline of the wearer’s breast/nipples for modesty purposes (see paragraphs 0002-0006 and 0053).
Therefore, based on Jagaric’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 incorporated Liu’s bra pads into another breast-covering garment such as a camisole, slip, or bathing suit; as doing so would provide padding to the garment as desired, to accentuate the wearer’s figure, provide breast support, and/or conceal the outline of the wearer’s breast/nipples for modesty purposes.
Furthermore, such a modification would be nothing more than a simple substitution of one known breast-covering garment type for another (i.e., a brassiere versus a camisole, slip, or bathing suit; see paragraphs 0002 and 0053 of Jagaric). In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
Allowable Subject Matter
Claims 6 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, pending correction of the informalities discussed above, and further pending resolution of the double patenting rejection(s) above.
Claims 9-16 and 20 are allowable over the prior art of record, pending correction of the informalities and/or rejections under 35 USC 112 discussed above, and further pending resolution of the double patenting rejection(s) above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Huang (US Patent No. 6,398,620) teaches a bra pad made of a stretchable foam material and including a less elastic support portion at the bottom of the bra pad, and Liu (US PG Pub 2007/0298682) teaches a bra pad having various support zones made of non-stretchable or substantially non-stretchable fabrics.
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, 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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