DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
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.
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Claims 1-13 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-6, 7, and 11-15 of U.S. Patent No. 8,028,443. Although the claims at issue are not identical, they are not patentably distinct from each other because the parent application teaches the exact limitations of the instant application, however the parent application claims footwear and not clothing as stated by the instant application. However, footwear is a type of clothing and thus the parent application reads on the broader instant application. Below, Examiner has provided a 102(e) rejection, that associates the particular claims of each application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 1-13 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Case (U.S. Patent No. 8,028,443)
The applied reference has a common inventor with the instant application. Based upon the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a).
Re claim 1: Case discloses a clothing system, comprising:
an article of clothing having a module securing element (claim 1);
a module removably engaged with the module securing element, wherein the module includes an electronic device (claim 1); and
an authentication system configured to electronically sense a signal when the module is engaged with the module securing element and process the signal to determine whether the article of clothing and the module are authorized for operation with one another (Claim 1).
Re claim 2 and 9: Case discloses with respect to the clothing system of claim 1, wherein the authentication system determines whether the module is engaged with the module securing element in a first orientation (Claim 2).
Re claim 3 and 10: Case discloses with respect to the clothing system of claim 2, wherein the authentication system further enables activation of the module or at least a first function of the module when the module is engaged with the module securing element in the first orientation (Claim 3).
Re claim 4 and 11: Case discloses with respect to the clothing system of claim 2, wherein the authentication system does not enable activation of the module or at least a first function of the module when the module is engaged with the module securing element in any orientation other than the first orientation (Claim 4).
Re claim 5: Case discloses with respect to the clothing system of claim 1, wherein the authentication system does not enable operation of the module or at least a first function of the module when the module is determined to be not authorized for operation with the article of clothing (Claim 5).
Re claim 6: Case discloses with respect to the clothing system of claim 1, wherein a first portion of the authentication system is included with the article of clothing and a second portion of the authentication system is included with the module (Claim 6).
Re claim 7 and 12: Case discloses the clothing system of claim 1, wherein the authentication system includes a magnetic sensor system, and wherein the authentication system determines whether the article of clothing and the module are authorized for operation with one another, at least in part, by sensing a characteristic associated with the magnetic sensor system (claim 7, 12, 13, 14).
Re claim 8: Case discloses with respect to the clothing system of claim 1, wherein the electronic device includes a sensing element that senses at least one physical characteristic associated use of the article of clothing (claim 15).
Re claim 13: Case discloses with respect to the method according to claim 12, wherein the determining of whether the article of clothing and the module are authorized for operation with one another is further based on sensing whether a magnet, of the magnetic sensor system, is oriented at a predetermined location with respect to the module (claim 11).
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-6, 8-11, and 17-19 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Goldston (U.S. Patent No. 5,692,324).
Re claim 1-5, 9-11: Goldston discloses a clothing system, comprising:
an article of clothing having a module securing element (see Fig. 1, object 3: a module securing element, i.e. the shoe itself);
a module removably engaged with the module securing element, wherein the module includes an electronic device (Fig. 2, object 52); and
an authentication system configured to electronically sense a signal when the module is engaged with the module securing element and process the signal to determine whether the article of clothing and the module are authorized for operation with one another (see : Goldston states, “The plug-in module 32 is preferably configured to be insertable into the receptacle means 30 in either a right-side-up orientation, as seen in FIG. 2, or an inverted orientation, as shown in FIG. 8. By this arrangement, the position of switch 72 or arm 74, or alternatively, the upper and lower internal surfaces of the receptacle means 30, can be configured, relative to each other, such that the module is in the always-"ON" mode, or alternatively, in the mode that is "ON" in response to foot pressure, both described above, whenever the plug-in module 32 is inserted in the receptacle means 30 in the right-side-up orientation, and always "OFF" otherwise.” Thus, the authentication mechanism establishes whether the module is in an ON orientation wherein the system authorizes signals can be exchanged, or in an off orientation wherein the system does not authorize signals to be exchanged. The Specification states that authentication can include module orientation and an on/off activation wherein “and/or a specific orientation between these elements may be required before the module will be turned on, activated, and/or enabled for use.” See also claim 1).
Re claim 6: Goldston The clothing system of claim 1, wherein a first portion of the authentication system is included with the article of clothing and a second portion of the authentication system is included with the module (the module only operates in an ON manner when the module is inserted into the shoe, thus both the module and the shoe contribute to the authentication system).
Re claim 8. Goldston discloses with respect to the clothing system of claim 1, wherein the electronic device includes a sensing element that senses at least one physical characteristic associated use of the article of clothing (see claim 1: indicating the sensing of a pressure element wherein a foot is in the shoe to provide said pressure).
Re claim 17: Goldston discloses a method for producing a clothing system, comprising:
providing a first module securing element in or on an article of clothing, wherein the first module securing element includes structure for removably engaging a module with the article of clothing (see Fig. 2, objects 42 and 52); and
providing a first interaction system in or on the article of clothing, wherein the first interaction system interacts with the module when the module is engaged with the first module securing element, wherein the interaction between the first interaction system (“The plug-in module 32 is preferably configured to be insertable into the receptacle means 30 in either a right-side-up orientation, as seen in FIG. 2, or an inverted orientation, as shown in FIG. 8. By this arrangement, the position of switch 72 or arm 74, or alternatively, the upper and lower internal surfaces of the receptacle means 30, can be configured, relative to each other, such that the module is in the always-"ON" mode, or alternatively, in the mode that is "ON" in response to foot pressure, both described above, whenever the plug-in module 32 is inserted in the receptacle means 30 in the right-side-up orientation, and always "OFF" otherwise.”) and the module indicates at least one of:
a type of article of clothing for which the module is engaged; and
a location on the article of clothing for which the module is engaged (column 4, lines 21-40: an LED is located on the module wherein said LED is illuminated during the power ON stage of the module. This LED identifies the module as being in the backward part of the sole of the shoe).
Re claim 18: Goldston discloses with respect to the method according to claim 17, wherein the first module securing element includes a receptacle at least partially defined on or in the article of clothing (Fig. 2, object 42).
Re claim 19: Goldston discloses with respect to the method according to claim 17, further comprising:
engaging a module with the first module securing element, wherein the module includes an electronic device having a sensing element that senses at least one physical characteristic associated with use of the article of clothing. (see claim 1: indicating the sensing of a pressure element wherein a foot is in the shoe to provide said pressure).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7, 12, 13, and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldston in view of Dibenedetto (U.S. PGPUB 20040177531).
Re claim 7 and 12: Goldston fails to disclose with respect to the clothing system of claim 1, wherein the authentication system includes a magnetic sensor system, and wherein the authentication system determines whether the article of clothing and the module are authorized for operation with one another, at least in part, by sensing a characteristic associated with the magnetic sensor system.
Goldston establishes that the orientation of the module is established through its’ ability to communicate with a pressure sensor, wherein in addition to the module being in the correct position, the system determines that the module is in the correct position through its ability to receive signals from the pressure sensor (Claim 1). Dibenedetto similarly teaches a removable shoe module that also senses signals from a pressure sensor wherein the pressure sensor is a magnet-based sensor. It would have been obvious to one of ordinary skill in the art at the time the invention was made to simply substitute the pressure sensor of Goldston for the magnetic based pressure sensor of Dibenedetto as such would have produced the predictable results of using a magnet-based pressure sensor to engage in sole modules.
Re claim 13: Goldston in view of Dibenedetto discloses with respect to the method according to claim 12, wherein the determining of whether the article of clothing and the module are authorized for operation with one another is further based on sensing whether a magnet, of the magnetic sensor system, is oriented at a predetermined location with respect to the module (a magnetic pressure based sensor needs to be within a predetermined distance in order for the sensor to sense the magnet for creating a signal).
Re claim 16: Goldston discloses with respect to the method according to claim 9, wherein the module includes a data input system for receiving input data in a wireless manner. However, Dibenedetto teaches an in-sole removable module that allows for data input in order to adjust characteristics of the shoe (see paragraph [0068]). It would have been obvious to one of ordinary skill in the art to modify the system of Goldston with the wireless input mechanism of Dibenedetto, for the purpose of adjusting characteristics of the show, such as turning the LED light of Goldston on and off, remotely.
Claims 15 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goldston in view of Mantyjarvi (U.S. PGPUB 2002/0084901).
Re claims 15 and 20: Goldston fails to disclose with respect to the method according to claim 9, wherein the article of clothing is a jersey. However, Matyajrvi discloses attaching electronic device modules to clothing, wherein like the module of Goldston, a particular module can produce light (see paragraph [0027]).It would have been obvious to one of ordinary skill in the art to try to use the electronic module of Goldston with various clothing items as taught by Matyarvi as such would have yielded predictable results of light producing modules within clothing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REGINALD A RENWICK whose telephone number is (571)270-1913. The examiner can normally be reached Monday-Friday 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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REGINALD A. RENWICK
Primary Examiner
Art Unit 3714
/REGINALD A RENWICK/Primary Examiner, Art Unit 3715
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