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 .
Status of Claims
This Office Action is in response to claims 1-9, filed 14 October 2024, which are pending in this application.
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 use and 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:
“attachment means” in claim 1
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) 1 & 7 (and claims 2-6 and 8-9 at least for depending from a rejected claim) 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 1 recites the limitation "a portion of the cap". There is insufficient antecedent basis for this limitation in the claim as there is no “a cap” previously recited. There is recitation of “a cap shaping ad securing device” but this is not “a cap”. It is unclear if the cap is part of the structure now or a recitation of intended use. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “a double-sided self-adhesive material operative to detachably adhere to a portion of [[the]] a cap”.
Claim 1 is/are indefinite as it/they recite(s) “a shape of a cap”. It is unclear if this is the same cap previously recited in “a portion of the cap” or if this is a new/different structure. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “the shaper bowl is configured to retain a shape of [[a]] the cap and to mount on a wearer’s head”.
Claim 7 is/are indefinite as it/they recite(s) “a cap assembly, comprising: the cap shaping and securing device of claim 1; and a cap mounted on the cap shaping and securing device”. It is unclear if this is the same cap previously recited in “a portion of the cap” or “a shape of a cap” of claim 1, or if this is a new/different structure. Further, it is unclear if the previously recited “cap” of claim 1 is not part of the “a cap assembly” of claim 7. Therein the metes and bounds of the claim are indefinite. For examination purposes, the claim is being interpreted as, “a cap assembly, comprising: the cap shaping and securing device of claim 1; and [[a]] the cap mounted on the cap shaping and securing device”, and the previously recited cap is part of the “a cap assembly”.
Claim Rejections - 35 USC § 103
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brander US 1934114 in view of Sowell US 5857469.
Regarding Independent Claim 1, Brander discloses a cap shaping and securing device (Figs. 1-11), comprising: a shaper bowl (Figs. 1-11 #14) having a concave inner surface (Figs. 1-2), a convex outer surface (Figs. 1-2) and, an attachment device (Col. 2, l. 85-99 notes “stitched”) configured to be operative to detachably adhere to a portion of [[the]] a cap (Col. 2, l. 85-99), wherein the shaper bowl is configured to retain a shape of [[a]] the cap and to mount on a wearer’s head (Pg. 1:22-33); and a headband (Figs. 3-4 #16/17/24; Pg. 1:72-84) fastened to the shaper bowl by an attachment means (Applicant’s “attachment means” has been interpreted under 35 USC 112(f). Applicant’s “attachment means” appears to be a clip to attach the headband to the shaper bowl [per Applicant Drawings Figs. 2-3 #18A and Spec Pg. 4:6-9]; Brander has a clip fastener, which are the same as the Applicant’s “attachment means”; see Figs. 2, 7, & 10-11 #33/34/36/37/38).
Brander does not expressly disclose a double-sided self-adhesive material.
Sowell discloses a headwear accessory (Figs. 1-4 #1) with an attachment component (Figs. 1-3 #8) comprising a double-sided self-adhesive material (Figs. 1-3 #6/10; Col. 2, l. 31-44).
Both Brander and Sowell teach analogous inventions in the art of headwear with clips. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify Brander with the teachings of Sowell such that the stitching would be a double-sided self-adhesive material to connect the crown edges to the shaper bowl so as to provide the cap with, “a system of modularized, interchangeable ornamental appendages for affixment (sic) thereto,” (Sowell Col. 1, l. 7-11).
Examiner notes that italicized limitations in the Prior Art rejections are functional and do not positively recite a structural limitation, but instead require the ability of the structure to perform and/or function. As the Prior Art of Brander discloses the structure of the cap shaping and securing device, there would be a reasonable expectation for the cap shaping and securing device to perform such functions as explained after each functional limitation.
Regarding Claim 2, the modified cap shaping and securing device of Brander discloses the cap shaping and securing device of claim 1, wherein the double-sided self-adhesive material is selected from the group consisting of double-sided adhesive tape (Sowell Col. 2, l. 31-37); poster tape (Sowell Col. 2, l. 31-37); hook and loop closures (Sowell Col. 2, l. 31-37); and any combination thereof (Sowell Col. 2, l. 31-37).
Regarding Claim 3, the modified cap shaping and securing device of Brander discloses the cap shaping and securing device of claim 1, wherein the double-sided adhesive is present on the concave inner surface (Sowell Col. 2, l. 31-37).
Regarding Claim 4, the modified cap shaping and securing device of Brander discloses the cap shaping and securing device of claim 1, wherein the double-sided adhesive is present on the convex outer surface (Brander Fig. 7; Sowell Figs. 1-3 & Col. 2, l. 31-37).
Regarding Claim 5, the modified cap shaping and securing device of Brander discloses the cap shaping and securing device of claim 1, wherein the double-sided adhesive is present on the concave inner surface and on the convex outer surface (Brander Fig. 7; Sowell Figs. 1-3 & Col. 2, l. 31-37).
Regarding Claim 6, the modified cap shaping and securing device of Brander discloses the cap shaping and securing device of claim 1, wherein the attachment means is selected from the group consisting of: a clip (Figs. 2, 7, & 10-11 #33/34/36/37/38), holes operative to accommodate the headband (Figs. 1-11 #32), and any combination thereof (Figs. 1-11).
Regarding Claim 7, the modified cap shaping and securing device of Brander discloses a cap assembly (Figs. 1-11), comprising: the cap shaping and securing device of claim 1; and a cap (Figs. 1-11 #10/11/25) mounted on the cap shaping and securing device (Fig. 7).
Regarding Claim 8, the modified cap assembly of Brander discloses the cap assembly of claim 7, wherein the cap is an academic cap (Fig. 1).
Regarding Claim 9, the modified cap assembly of Brander discloses the cap assembly of claim 7, wherein the cap comprises a fabric portion (Figs. 1-11 #26) operative to fold over a rim of the cap (Fig. 7 shows #26 folding over the rim edging #24) shaping and securing device and adheres to the double-sided self-adhesive material (Brander Fig. 7; Sowell Figs. 1-3 & Col. 2, l. 31-37).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wright US 20220295936 teaches a modular graduation cap
Smith US 0836899 teaches a collapsible graduation cap
Kregsbach US 20170099928 teaches a headband with clip attachments
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.
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/RAQUEL M. WEIS/Examiner, Art Unit 3732
/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732