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 October 31, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 13, 16, and 19-20 have been amended; claims 1-12 are canceled; and claims 21-32 have been added. Accordingly, claims 13-32 are pending in this application, with an action on the merits to follow regarding claims 13-32.
Specification
The use of the terms “Speedo®” (para. 0024) and “ariaprene®” (para. 0027), which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever each appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. For example, Applicant may recite, “SPEEDO®” and “ARIAPRENE®”.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 13 and 16 each recites, “the first leg portion comprising.. first segments positioned as horizontal bands thereon… the second leg portion comprising... second segments positioned as horizontal bands thereon”. However, the specification does not provide antecedent basis for this limitation.
Claim 23 recites, “wherein the one or more first segments are separated by a predetermined distance, and the one or more second segments are separated by a predetermined distance.“ However, the specification does not provide antecedent basis for this limitation. See 35 USC 112(a) rejections below for further explanation.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13, 16, and 23 (and claims 14-15 and 17-20 at least for depending from a rejected claim) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 13 and 16 each recites, “the first leg portion comprising.. first segments positioned as horizontal bands thereon… the second leg portion comprising... second segments positioned as horizontal bands thereon”. However, the specification does not provide antecedent basis for this limitation. However, while the drawings appear to show each segment resembling a band via the indicia (lines or perforations) and para. 0025 indicates they can be different colors or removably attachable via a securing mechanism, there is no support for the segments being “positioned as bands thereon” (i.e. on the leg portion), instead the segments make up the leg portion. Therefore this limitation fails to comply with the requirement for written description.
Claim 23 recites, “wherein the one or more first segments are separated by a predetermined distance, and the one or more second segments are separated by a predetermined distance.” The segments are shown as being directly adjacent each other in the Figs. 1 and 2. and the written description does not disclose any separation of the segments. Para. 0025 does recite, “It will also be appreciated that while the segments may all be the same height in some embodiments, other embodiments may comprise segments with staggered heights. As an example, segments nearest the first and second leg openings 120, 126 may be one inch while the adjacent segment is two inches in height”, which is the only part of the written description that can be construed to mean any sort of distance, but this does not discloses the segments being separated by a predetermined distance. Therefore this limitation fails to comply with the requirement for written description.
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.
Claims 13, 16, 19-23, 29, and 31 (and claims 14-15, 17-18, 24-28, 30, and 32 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.
Claim 13 is indefinite as it recites, “the first leg portion comprising at least six first segments positioned as horizontal bands thereon… the second leg portion comprising at least six second segments positioned as horizontal bands thereon”. It is unclear what is meant by “positioned as horizontal bands thereon”. First, it is unknown what “thereon” is referring to and it appears to be referring to the respective leg portion. However, while the drawings appear to show each segment resembling a band via the indicia (lines or perforations) and para. 0025 indicates they can be different colors or removably attachable via a securing mechanism, there is no support for the segments being bands “thereon” (i.e. on the leg portion), instead the segments make up the leg portion. Therefore, it is unclear as to the structure of the claimed invention.
Claims 13 and 21 are indefinite as each recites, “wherein the first leg portion terminates proximate the knee, and the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee… wherein the second leg portion terminates proximate the knee, and the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee”. First, “the knee” lacks antecedent basis in the claims. Second, it is unclear what “it” is referring to and the exact structure should be specified. Third, it is unclear what “these sections” is referring to and again the exact structure should be specified. Fourth, it is unclear if the first leg portion and the second leg portion terminate proximate the same knee or different knees. Fifth, the claim limitation repeats, “the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee” and it is unclear if the second iteration should be referring to the second leg portion.
Claims 13 and 21 are indefinite as each recites, “a second leg portion descending below the front, back, and crotch sections on a side opposite the first leg portion”. It is unclear what structure “on a side opposite the first leg portion” is referring to and Examiner respectfully suggests amening to recite first and second sides of the appropriate structure.
Claim 13 is indefinite as it recites, “removing a segment from the at least six first segments of the modifiable swim short and the at least six second segments of the modifiable swim short after each of the one or more predetermined objectives are completed until all of the segments are removed, leaving the chassis”. It is unclear if a segment is removed from one of the first and second six segments or if a segment is removed from each of the first and second six segments. Further, it is unclear as to what “the segments” is referring to as it could be the segment removed, each of the at least first six segments, each of the at least second six segments, or all of the at least first six segments and all of the at least second six segments.
Claim 16 is indefinite as it recites, “a first leg portion comprising one or more first segments positioned as horizontal bands thereon… a second leg portion comprising one or more second segments positioned as horizontal bands thereon”. It is unclear what is meant by “positioned as horizontal bands thereon”. First, it is unknown what “thereon” is referring to and it appears to be referring to the respective leg portion. However, while the drawings appear to show each segment resembling a band via the indicia (lines or perforations) and para. 0025 indicates they can be different colors or removably attachable via a securing mechanism, there is no support for the segments being bands “thereon” (i.e. on the leg portion), instead the segments make up the leg portion. Therefore, it is unclear as to the structure of the claimed invention.
Claim 16 is indefinite as it recites, “wherein the one or more first segments begin proximate a first leg opening and proceed upward toward the front waist, back waist, and crotch sections… wherein the one or more second segments begin proximate a second leg opening and proceed upward toward the front waist, back waist, and crotch sections”. It is unclear what structure “a first leg opening” and “a second leg opening” is part of as it could be the chassis or the respective leg portion. Since it appears to be part of the respective leg portion, it is unclear how the segments, which are all leg sections are made of according the speciation and drawings, are “proximate” the leg opening as the final segment on each leg terminates in the leg opening.
Claim 16 is indefinite as it recites, “removing a segment from the one or more first segments and the one or more second segments after each of the one or more predetermined objectives are completed until all of the segments are removed, leaving the chassis.” It is unclear if a segment is removed from one of the one or more first and second segments or if a segment is removed from each of the one or more first seconds and the one or more second segments. Further, it is unclear as to what “the segments” is referring to as it could be the segment removed, each of the one or more first segments, each of the one or more second segments, or all of the one or more first segments and all of the one or more second segments.
Claim 19 is indefinite as it recites, “wherein each of the one or more first segments is defined by first indicia, removing each of the one or more first segments occurs at the first indicia.” As claim 16 recites, “a first leg portion comprising one or more first segments positioned as horizontal bands thereon… a second leg portion comprising one or more second segments positioned as horizontal bands thereon”, it is unclear if the segments are defined by being separate bands, by indicia, or both.
Claim 20 is indefinite as it recites, “wherein each of the one or more second segments is defined by second indicia, removing each of the one or more second segments occurs at the second indicia.” As claim 16 recites, “a first leg portion comprising one or more first segments positioned as horizontal bands thereon… a second leg portion comprising one or more second segments positioned as horizontal bands thereon”, it is unclear if the segments are defined by being separate bands, by indicia, or both.
Claim 22 is indefinite as it recites, “wherein the one or more first segments begin proximate a first leg opening, and the one or more second segments begin proximate a second leg opening. “It is unclear what structure “a first leg opening” and “a second leg opening” is part of as it could be the chassis or the respective leg portion. Since it appears to be part of the respective leg portion, it is unclear how the segments, which are all leg sections are made of according the speciation and drawings, are “proximate” the leg opening as the final segment on each leg terminates in the leg opening.
Claim 23 is indefinite as it recites, “wherein the one or more first segments are separated by a predetermined distance, and the one or more second segments are separated by a predetermined distance.” As the segments are shown as being directly adjacent each other in the drawings and such language is not disclosed in the specification, it is unclear as to the meaning of this limitation. Further, it is unclear what the segments are separated from which is even further unclear as only one segment is required on each leg portion.
Claim 29 is indefinite as it recites, “further comprising removing the one or more first segments and the one or more second segments after one or more periods of time are completed.” As claim 21 recites, “removing the one or more first segments and the one or more second segments after each of the one or more predetermined objectives are completed”, but claim 29 recites, “further comprising”, it is unclear if the removing step recited in claim 29 is in addition to the removing step of claim 21. Further, it is unclear if the “one or more periods of time” are different than/in addition to or part of “the one or more predetermined objectives”.
Claim 31 is indefinite as it recites, “further comprising cutting off the first and seventh segments after a first objective of the one or more predetermined objectives is completed….” As claim 21 recites, “removing the one or more first segments and the one or more second segments after each of the one or more predetermined objectives are completed”, but claim 31 recites, “further comprising”, it is unclear if the cutting step recited in claim 31 is in addition to the removing step of claim 21 or if the removing comprises cutting.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 13 and 21 (and claims 14-15 and 22-32 at least for depending from a rejected claim) are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claims 13 and 21 recites, “wherein the first leg portion terminates proximate the knee, and the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee… wherein the second leg portion terminates proximate the knee, and the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee.” As such, Applicant has positively recited and claimed a human body part, because the knee of a wearer is actively being recited as being proximate a leg portion or tapered toward within a product claim. Examiner respectfully suggests amending to add functional language such as "adapted to” or “configured to” preceding any reference to a human or human body part. For example, Applicant could recite, “wherein the first leg portion is configured to terminate[[s]] proximate the knee, and the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee when the modifiable swim short is worn… wherein the second leg portion is configured to terminate[[s]] proximate the knee, and the first leg portion tapers from the front, back, and crotch sections as it moves distally from these sections towards the knee when the modifiable swim short is worn”.
Allowable Subject Matter
Claims 21-22 and 24-29 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the prior art of record as none of them, alone or in combination, a method of swimming with a swim short having a buoyant material, a chassis with a front waist section, a back waist section, and a crotch section, the short also having tapering leg portions below the chassis and each having at least one segment, and removing the segments after predetermined objectives are completed. The closest prior art is Hall (US 1985568) and Li (CN 2012213456). Hall does not teach the tapering leg portions below the chassis each having at least one segment. Li teaches leg segments below the chassis, but does not teach removable segments that are also below the chassis. Modifying Hall and Li to have the claimed structure would be hindsight reconstruction based on Applicant’s own disclosure, therefore the claims are allowable.
Response to Arguments
Applicant's arguments filed October 31, 2025, regarding the 35 USC 102 and 103 rejections of claims 13-20 have been fully considered but they moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner notes, in light of the limitation, “the first leg portion comprising.. first segments positioned as horizontal bands thereon… the second leg portion comprising... second segments positioned as horizontal bands thereon” in claims 13 and 16 no prior art rejection has been included for claims 13-20. And in light of the limitation, “wherein the one or more first segments are separated by a predetermined distance, and the one or more second segments are separated by a predetermined distance” in claim 23, patentability of claim 23 cannot be determined.
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 HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732