DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Internet/E-mail Communication
In order to permit communication regarding the instant application via email, Applicant is invited to file form PTO/SB/439 (Authorization for Internet Communications) or include the following statement in a separately filed document (see MPEP 502.03 II):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
If such authorization is provided, please include an email address in the remarks of a filed response. The examiner’s e-mail address is Christopher.Legendre@uspto.gov.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05 March 2025 was filed before the mailing date of the first action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is hereby considered.
Claim Objections
Claims 7 and 8 are objected to because of the following informalities:
In claim 7, line 1, “as” should be deleted.
In claim 8, line 2, “as” should be deleted.
Appropriate correction is required.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) except as otherwise indicated in this 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) except as otherwise indicated in this Office action.
There are no limitations deemed to invoke 35 U.S.C. 112(f).
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.
Claims 2 and 13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 2, the limitation recited as “the first strap defines the panel” renders the claim indefinite since its limiting effect is unclear in light of the antecedent limitation “the panel being integral with the first strap” - i.e., “the first strap defines the panel” appears to be duplicative of “the panel being integral with the first strap”.
In claim 13, the limitation recited as “the panel covers the plurality of holes from view”, in light of the antecedent limitation “the panel being integral with the first strap” (claim 1) renders the claim indefinite. According to MPEP 2173.03, a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In this instance, the disclosure indicates that “panel covers the plurality of holes from view” refers to an embodiment in which panel 116 is separate/distinct from strap, not “integral with” (claim 1) - see par. [0049] stating “For example, the panel may be attached to the first strap such that the panel extends over the plurality of openings”, which implies that “panel” is separate/distinct (due to the relationship established by “attached to”) from “strap”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho ‘074 (US 11,344,074).
In reference to claim 1
Cho ‘074 discloses:
A cap comprising:
a front side (i.e., the side opposite the rear side);
a rear side (i.e., strap side) having a strap portion with a first strap (200) and a second strap (100) couplable together to adjust a diameter of the cap; and
a panel (250) configured to receive indicia (see col.4:ll.44-46), the panel being integral (due to the fusing of materials that results from ultrasonic wave bonding or high frequency bonding - see col.4:ll.56-58) with the first strap.
In reference to claim 2 (as far as it is clear and definite)
Cho ‘074 discloses:
The cap of claim 1, wherein the first strap (200) defines (i.e., includes) the panel (250).
In reference to claim 12
Cho ‘074 discloses:
The cap of claim 1, wherein the first strap (200) includes a plurality of holes (210 - Figure 5 and col.4:ll.11-12) configured to receive a corresponding plurality of studs (110 - Figure 5) disposed on the second strap (100).
In reference to claim 13 (as far as it is clear and definite)
Cho ‘074 discloses:
The cap of claim 12, wherein the panel (250) covers (see Figure 5) the plurality of holes (210) from view when the cap is worn by a wearer.
In reference to claim 14
Cho ‘074 discloses:
The cap of claim 1, wherein the panel includes the indicia (see col.4:ll.44-46).
Claims 1-3, 9, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shwartz (US 6,564,391).
In reference to claim 1
Shwartz discloses:
A cap comprising:
a front side (i.e., the side opposite the rear side);
a rear side (i.e., strap side) having a strap portion (see two-head-strap design explained at col.3:ll.36-44) with a first strap and a second strap couplable together to adjust a diameter of the cap; and
a panel (i.e., any portion of the first strap)(note: the limitation the panel being integral with the first strap implies that panel is part of and/or a portion of first strap) configured to receive indicia (note: the recitation configured to receive indicia does not imbue any structure - any element is capable of receiving indicia) the panel being integral with the first strap.
In reference to claim 2 (as far as it is clear and definite)
Shwartz discloses:
The cap of claim 1, wherein the first strap defines the panel (note: the claimed panel is only limited by configured to receive indicia - since any portion of the first strap is capable of receiving indicia, then any portion of first strap can be considered as defining the panel).
In reference to claim 3
Shwartz discloses:
The cap of claim 1, further comprising a ball marker holder (i.e., a buckle 20 - see col.3:ll.36-44).
In reference to claim 9
Shwartz discloses:
The cap of claim 1, in combination with a ball marker (30).
In reference to claim 14
Shwartz discloses:
The cap of claim 1, wherein the panel includes the indicia.
In regards to the underlined text above, it is noted that this limitation is considered to be nonfunctional printed matter that does not distinguish the claimed apparatus from the prior art apparatus. Reference is made to MPEP 2111.05 I B stating “where a product merely serves as a support for printed matter, no functional relationship exists (in reference to In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) and In re Bryan, 323 Fed. App'x 898 (Fed. Cir. 2009))”. Although Shwartz does not disclose this limitation, such limitation(s) is/are merely serving an aesthetic purpose - i.e., the printed matter on the claimed structure(s) amount(s) no physical tie to the substrate. From the above MPEP passage, any differences residing in meaning and information conveyed by printed matter are not considered patentable subject matter, and no patentable weight is given to the printed matter unless there is an unobvious functional relationship between the printed matter and the substrate. Assuming, for the sake of argument, that there is a functional relationship between the printed matter and the substrate, the Office does not find there to be an unobvious functional relationship between the printed matter and the substrate as the printed matter is merely conveying information in an obvious and routine matter. As such, no patentable weight is given to the claimed printed matter.
Claims 1, 2, 12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kronenberger (US 2013/0205473).
In reference to claim 1
Kronenberger discloses:
A cap comprising:
a front side (i.e., brim side);
a rear side (i.e., strap side) having a strap portion with a first strap (42) and a second strap (44) couplable together to adjust a diameter of the cap; and
a panel (i.e., any portion of surface area 78 - see Figure 9)(note: the limitation the panel being integral with the first strap implies that panel is part of and/or a portion of first strap) configured to receive indicia (“CITY” and/or “TEAM” and/or “T”), the panel being integral with the first strap.
In reference to claim 2 (as far as it is clear and definite)
Kronenberger discloses:
The cap of claim 1, wherein the first strap (42) defines the panel.
In reference to claim 12
Kronenberger discloses:
The cap of claim 1, wherein the first strap (42) includes a plurality of holes (54) configured to receive a corresponding plurality of studs (56) disposed on the second strap (44).
In reference to claim 14
Kronenberger discloses:
The cap of claim 1, wherein the panel includes the indicia (see Figure 4).
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 of this title, 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.
Claims 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cho ‘074 in view of Eldridge et al. (US 2021/0245022 - hereafter referred to as Eldridge; cited in an IDS).
In reference to claims 3 and 7-9
Cho ‘074 discloses:
The cap of claim 1. (claims 3 and 7-9)
Cho ‘074 does not disclose:
further comprising a ball marker holder. (claim 3)
the panel includes a magnet as to receive a ball marker formed of a material having intrinsic magnetic properties. (claim 7)
the panel is formed of a material having intrinsic magnetic properties as to receive a ball marker including a magnet. (claim 8)
in combination with a ball marker. (claim 9)
Eldridge discloses:
a hat comprising a strap having a panel (200) attached thereto, wherein the panel comprises a magnetic ball marker holder (240 & 242 & 250) and a magnetic ball marker (300) that attaches thereto.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cap of Cho ‘074 to include a magnetic ball marker holder on the panel and a magnetic ball marker that attaches thereto, as disclosed by Eldridge, for the purpose of increasing the functionality of the cap.
Cho ‘074 in view of Eldridge therefore addresses:
further comprising a ball marker holder (Eldridge - 240 & 242 & 250). (claim 3)
the panel (Cho ‘074 - 250, as modified by Eldridge) includes a magnet (Eldridge - 250) as to receive a ball marker (Eldridge - 300) formed of a material having intrinsic magnetic properties (due to having Eldridge magnet 320). (claim 7)
the panel (Cho ‘074 - 250, as modified by Eldridge) is formed of a material having intrinsic magnetic properties (due to having Eldridge magnet 250) as to receive a ball marker (Eldridge - 300) including a magnet (Eldridge - 320). (claim 8)
in combination with a ball marker (Eldridge - 300). (claim 9)
In reference to claim 4
Cho ‘074 in view of Eldridge addresses:
The cap of claim 3, wherein the ball marker holder (Eldridge - 240 & 242 & 250) is permanently attached (due to the fusing of materials that results from ultrasonic wave bonding or high frequency bonding - see Cho ‘074 col.4:ll.56-58) to the first strap (Cho ‘074 - 200).
In reference to claim 5
Cho ‘074 in view of Eldridge addresses:
The cap of claim 4, wherein the ball marker holder (Eldridge - 240 & 242 & 245) includes a countersink (i.e., the countersink formed by Eldridge ribs 240 and 242) configured to receive a ball marker (Eldridge - 300).
In reference to claim 6
Cho ‘074 in view of Eldridge addresses:
The cap of claim 4, wherein the ball marker holder (Eldridge - 240 & 242 & 250) is configured to receive indicia (note: the recitation configured to receive indicia does not imbue any structure - any element is capable of receiving indicia).
In reference to claim 10
Cho ‘074 in view of Eldridge addresses:
The cap of claim 9, wherein the panel (Cho ‘074 - 250, as modified by Eldridge) is formed of a material having intrinsic magnetic properties (due to having Eldridge magnet 250) and wherein the ball marker (Eldridge - 300) includes a magnet (Eldridge - 320).
In reference to claim 11
Cho ‘074 in view of Eldridge addresses:
The cap of claim 9, wherein the panel (Cho ‘074 - 250, as modified by Eldridge) includes a magnet (Eldridge - 250) and wherein the ball marker (Eldridge - 300) is formed of a material having intrinsic magnetic properties (due to Eldridge magnet 310).
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cho ‘074 in view of Cho ‘291 (US 2015/0040291; cited in an IDS).
In reference to claims 3 and 9
Cho ‘074 discloses:
The cap of claim 1. (claims 3 and 9)
Cho ‘074 does not disclose:
further comprising a ball marker holder. (claim 3)
in combination with a ball marker. (claim 9)
Cho ‘291 discloses:
a cap comprising a ball marker holder (e.g., element 21 - Figure 2) and a ball marker (12 - Figure 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cap of Cho ‘074 to include a ball marker holder and a ball marker, as disclosed by Cho ‘291, for the purpose of increasing the convenience/functionality of the cap.
Claims 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kronenberger in view of Buckley (US 2013/0020367; cited in an IDS), and wherein Shwartz (US 6,564,391) is relied upon on an evidentiary basis.
In reference to claims 3 and 7-9
Kronenberger discloses:
The cap of claim 1. (claims 3 and 7-9)
Kronenberger does not disclose:
further comprising a ball marker holder. (claim 3)
the panel includes a magnet as to receive a ball marker formed of a material having intrinsic magnetic properties. (claim 7)
the panel is formed of a material having intrinsic magnetic properties as to receive a ball marker including a magnet. (claim 8)
in combination with a ball marker. (claim 9)
Buckley discloses:
a wrist-band/strap comprising a magnetic ball marker holder (300) and a magnetic ball marker (1000), wherein the magnetic ball marker holder can be either permanently attached (i.e., adhered or glued - see par. [0037]) to or integral (i.e., molded with - see par. [0037]) with the band/strap.
Shwartz is cited as evidence that it is known to incorporate a ball marker holder (20) such that it is attached to a strap of a cap (see col.3:ll.36-60).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cap of Kronenberger to include (via an attachment or via an integral construction) a magnetic ball marker holder on the first strap and a magnetic ball marker that attaches thereto, as analogously disclosed by Buckley, for the purpose of increasing the functionality of the cap.
Kronenberger in view of Buckley therefore addresses:
further comprising a ball marker holder (Buckley - 300). (claim 3)
the panel (Kronenberger - ~42, as modified by Buckley) includes a magnet (Buckley - 400) as to receive a ball marker (Buckley - 1000) formed of a material having intrinsic magnetic properties (see Buckley par. [0047]). (claim 7)
the panel (Kronenberger - ~42, as modified by Buckley) is formed of a material having intrinsic magnetic properties (due to having Buckley magnet 400) as to receive a ball marker (Buckley - 1000) including a magnet (due to Buckley marker 1000 being magnetic - see Buckley par. [0047]). (claim 8)
in combination with a ball marker (Buckley - 1000). (claim 9)
In reference to claim 4
Kronenberger in view of Buckley addresses:
The cap of claim 3, wherein the ball marker holder (Buckley - 300) is permanently attached (see Buckley par. [0037] in regards to “molded with”) to the first strap (Kronenberger - 42, as modified by Buckley).
In reference to claim 5
Kronenberger in view of Buckley addresses:
The cap of claim 4, wherein the ball marker holder (Buckley - 300) includes a countersink (i.e., the countersink formed by Buckley cup 330 - see Buckley Figure 3) configured to receive a ball marker (Buckley - 1000).
In reference to claim 6
Kronenberger in view of Buckley addresses:
The cap of claim 4, wherein the ball marker holder (Buckley - 300) is configured to receive indicia (note: the recitation configured to receive indicia does not imbue any structure - any element is capable of receiving indicia).
In reference to claim 10
Kronenberger in view of Buckley addresses:
The cap of claim 9, wherein the panel (Kronenberger - ~42, as modified by Buckley) is formed of a material having intrinsic magnetic properties (due to Buckley magnet 400) and wherein the ball marker (Buckley - 1000) includes a magnet (due to Buckley marker 1000 being magnetic - see Buckley par. [0047]).
In reference to claim 11
Kronenberger in view of Buckley addresses:
The cap of claim 9, wherein the panel (Kronenberger - ~42, as modified by Buckley) is formed of a material having intrinsic magnetic properties (due to Buckley magnet 400) and wherein the ball marker (Buckley - 1000) includes a magnet (due to Buckley marker 1000 being magnetic - see Buckley par. [0047]).
Double Patenting
The non-statutory 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 non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 4 is provisionally rejected on the grounds of non-statutory double patenting of claim 16 of co-pending Application No. 18/570,864 (hereafter referred to as Eldridge ‘864) in view of Kronenberger. This is a provisional non-statutory double patenting rejection because the conflicting claims have not in fact been patented.
In reference to claim 4
Although claim 4 of the instant application is not identical to Eldridge ‘864 claim 16, they are not patentably distinct from one another. The application claim 4 is broader in at least one aspect and recites additional features not claimed in Eldridge ‘864 claim 16.
Regarding the broadening aspect of the application claim 4, the following comparison between Eldridge ‘864 claim 16 and the application claim 4 underlines (see underlined features in Eldridge ‘864 claim 16) what elements have been excluded in the presentation of application claim 4.
Application claim 4 (via claims 1 and 3)
Eldridge ‘864 claim 16 (via claim 10; rearranged)
A cap comprising:
a front side;a rear side having a strap portion with a first strap and a second strap; and
a panel configured to receive indicia (note: the phrase configured to receive indicia is not structurally limiting), the panel being integral with the first strap.
The cap of claim 1, further comprising a ball marker holder;
The cap of claim 4, wherein the ball marker is permanently attached to the first strap.
A cap comprising:
a front side; a rear side having a strap portion with first and second straps; and
wherein the ball marker includes a panel;
a ball marker holder arranged to receive a ball marker, the ball marker holder being permanently attached to the first strap, wherein the ball marker holder is not arranged to maintain a position of the first strap relative to the second strap, and wherein the ball marker holder and the first strap are integrally formed.
Thus, it is apparent, for the broadening aspect, that Eldridge ‘864 claim 16 includes features that are not in application claim 4. Following the rationale in In re Goodman, cited above, where applicant has a patent containing a claim for a specific or narrow invention, applicant may not then obtain a patent for a second invention with a claim for a generic or broader invention without first submitting an appropriate terminal disclaimer. Since application claim 4 is anticipated by Eldridge ‘864 claim 16, with respect to the broadening aspect, and since anticipation is the epitome of obviousness, then application claim 4 is obvious over Eldridge ‘864 claim 16 with respect to the broadening aspect.
With respect to the additional features recited in application claim 4, Eldridge ‘864 claim 16 fails to recite:
the first strap and second strap are couplable together to adjust a diameter of the cap
Kronenberger discloses:
a cap comprising a first strap (42) and a second strap (44) that are couplable together to adjust a diameter of the cap.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cap of Eldridge ‘864 claim 16 to make the first strap and the second strap couplable together to adjust a diameter of the cap, as disclosed by Kronenberger, for the purpose of allowing accommodation for various head sizes.
Citations of Pertinent Art
The following art is considered pertinent to Applicant’s disclosure.
Elling (US 6,870,796) discloses an accessory (i.e., a timepiece) that is attached to a strap of a hat.
Cho ‘816 (US 10,165,816) disclose an adornment that is attached to a strap of a hat.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone number is (571)270-3364. The examiner can normally be reached on M-F: 9-5 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711
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