DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 22, 2025 has been entered.
Status of Claims
This office action is in response to arguments and amendments entered on December 22, 2025 for the patent application 19/003,485 originally filed on December 27, 2024. Claims 18 and 27 are amended. Claims 1-17 are canceled. Claims 18-34 remain pending. The first office action of April 14, 2025 and the second office action of August 21, 2025 are fully incorporated by reference into this office action.
Response to Amendment
Applicant’s amendments to the claims have been noted by the Examiner.
The Applicant wishes for the double patenting rejection be held in abeyance. Since double patenting still applies to the claims as amended, the claims continue to be rejected for double patenting in this office action.
Applicant’s amendments are not sufficient to overcome the outstanding 35 USC 102 and 35 USC 103 rejections, for reasons set forth below.
Specification
Applicant’s amendment to the title of the application is acknowledged and accepted by the Examiner. Accordingly, the objection to the specification is withdrawn.
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.
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 18-34 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of US Patent 12,203,213. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims are substantially similar, as shown in the following comparison:
Instant Application
US Patent 12,203,213
18. An article that facilitates individual expression, comprising:
a textile material having flexible and foldable outer surface (textiles are generally known in the art as being flexible and foldable); and
at least one markable portion on the outer surface treated such that the at least one markable portion is capable of:
(a) erasably and repeatedly receiving indicia marked upon the surface,
(b) erasure by wiping of the indicia without leaving a residue on the markable portion,
(c) resisting staining after erasing, and
(d) erasably and repeatedly receiving the indicia after multiple washings with a conventional washing machine, wipings, wearings and uses.
19. The article of claim 18, wherein the at least one markable portion comprises one or more layers of ink successively applied to the textile material (a first layer comprised of a base material and at least one plastisol ink layer).
20. The article of claim 19, wherein the one or more layers comprise at least one of: a curable reducer; a curable base; or a plastisol ink (plastisol ink layer).
1. A textile article for individual expression, comprising:
a textile material having an outer surface; and
a barrier disposed on and covering a portion of the outer surface, the barrier having a plurality of layers including a first layer comprised of a base material and at least one plastisol ink layer comprising a chalkboard ink disposed on the first layer, wherein the barrier is configured to be capable of removably receiving, displaying, limiting movement of a liquid chalk, and capable of erasure of the liquid chalk by wiping without leaving a residue on the barrier, the barrier configured to be capable of preventing the liquid chalk from being absorbed into the portion of the outer surface of the textile material.
21. The article of claim 18, further comprising: at least one raised portion concomitant with or proximate to the at least one markable portion.
5. The textile article according to claim 1, further comprising: an elevated border made of the same material as the barrier, wherein the elevated border extends upward from and defines a radially outer boundary of the treated writing surface.
22. The article of claim 21, wherein the at least one raised portion defines at least a portion of a border surrounding the at least one markable portion.
6. The textile article according to claim 5, wherein the elevated border is integrally formed with the layers of the barrier.
23. The article of claim 18, further comprising at least one of a marking device, an erasing device, or a stencil (liquid chalk is a type of marking device).
24. The article of claim 23, wherein the at least one marking device or erasing device is operatively coupled with the textile material (the instant disclosure does not specifically define “operatively coupled,” and therefore the act of applying the liquid chalk to the textile material can be reasonably considered “operatively coupled”).
8. The textile article according to claim 1, wherein the liquid chalk is disposed on the barrier.
25. The article of claim 18, wherein the textile material defines a patch configured to be coupled with a separate object (as in patent claim 18, the textile article may define a patch).
26. The article of claim 25, wherein the patch is configured to be coupled with the separate object by at least one of sewing or heat transfer (as known in the art, the most common ways to apply a patch to an object are sewing or heat transfer [such as ironing]).
15. A textile article comprised of a porous substrate for individual expression prepared by a process comprising the steps of: applying a first layer comprised of a base material to the porous substrate with a mesh screen size in the range of 80 to 400 to form a base layer on the porous substrate; flash curing the base layer with a flash dryer; applying at least one plastisol ink layer comprising a chalkboard ink to at least a portion of the base layer; curing the at least one plastisol ink layer, wherein the base layer and the plastisol ink layer form a barrier which is configured to be capable of removably receiving, displaying, limiting movement of liquid chalk, and capable of erasure of the liquid chalk by wiping without leaving a residue on the barrier.
18. The textile article for individual expression prepared by a process according to any one of claim 9 or 15, wherein the textile article is a T-shirt or a patch.
27. A method of making an article that facilitates individual expression, the method comprising:
applying at least one first layer onto least a portion of a surface of a textile material, the first layer comprising at least one of a reducer/base material or a plastisol ink; and
applying at least one second layer onto at least a portion of the of the at least one first layer, the second layer comprising plastisol ink, wherein the at least one first layer and at least one second layer form and outer surface on the article, wherein the outer surface is capable of:
(a) erasably and repeatedly receiving indicia marked upon the surface,
(b) erasure by wiping of the indicia without leaving a residue on the markable portion,
(c) resisting staining after erasing, and
(d) erasably and repeatedly receiving the indicia after multiple washings with a conventional washing machine, wipings, wearings and uses.
28. The method of claim 27, further comprising curing at least one of the first layer or second layer after application.
29. The method of claim 27, wherein applying the at least one first layer or the least one second layer comprises moving the reducer/base or plastisol ink through a mesh screen having a screen size in the range of 80 to 400.
34. The method of claim 27, further comprising: applying indicia to the at least a portion of a surface of a textile material; and selectively removing at least a portion of the indicia (applying liquid chalk and erasing it).
9. A method of making a textile article for individual expression, the method comprising:
applying a first layer comprised of a base material onto a portion of an outer surface of a textile material;
applying at least one additional layer comprised of plastisol ink which comprises a chalkboard ink onto the first layer;
curing the at least one plastisol ink layer to produce a barrier configured to be capable of removably receiving, displaying, limiting movement liquid chalk, and capable of erasure of the liquid chalk by wiping without leaving a residue on the barrier,
wherein applying the at least one plastisol ink layer includes moving the plastisol ink through a mesh screen having a screen size in the range of 80 to 400,
wherein the first layer and the at least one additional plastisol ink layer form the barrier configured to prevent the liquid chalk if applied to the barrier from being absorbed into the portion of the outer surface of the textile material.
30. The method of claim 27, wherein applying the at least one reducer/base layer comprises moving the reducer/base through a mesh screen having a screen size of 110.
32. The method of claim 27, wherein applying at least one layer of plastisol ink comprises moving the plastisol ink through a mesh screen having a screen size of 110.
11. The method according to claim 9, further comprising: curing the at least one plastisol ink layer with a flash dryer; and/or heat pressing the textile material, the first layer, and the at least one plastisol ink layer.
12. The method according to claim 11, wherein applying the first layer includes moving the base material through a mesh screen having a screen size of 110.
31. The method of claim 27, wherein applying at least one layer of plastisol ink comprises moving the plastisol ink through a mesh screen having a screen size of 158.
13. The method according to claim 11, wherein the mesh screen has a screen size of 158.
33. The method of claim 27, further comprising heat pressing the article.
11. The method according to claim 9, further comprising: curing the at least one plastisol ink layer with a flash dryer; and/or heat pressing the textile material, the first layer, and the at least one plastisol ink layer.
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.
Claims 18-20 and 23-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watt et al. (hereinafter “Watt,” UK Patent Application GB 2,429,631 A).
Regarding claim 18, Watt discloses an article that facilitates individual expression (see Watt Fig. 1 and Abstract, article of clothing 10 is a textile article; also Watt pg. 1 lines 6-11, article of clothing 10 capable of being used for individual expression), comprising:
a textile material having flexible and foldable outer surface (Watt page 3 lines 17-20, “the article of clothing will be a Tee-shirt or sweatshirt, providing with a reasonably large surface area for the application of writing, graphics and so on,” articles of clothing are generally flexible and foldable); and
at least one markable portion on the outer surface treated (Watt Abstract, “An article of clothing 10 is provided having a panel 11 to which has been applied a surface treatment agent which renders the panel 11 receptive to a washable ink.”) such that the at least one markable portion is capable of:
(a) erasably and repeatedly receiving indicia marked upon the surface (Watt page 5 lines 8-12, “the mark on the panel may be simply removed. The mark may be removed by any conventional washing process such as hand washing or being washed in a washing machine. Of course, whilst washing removes the mark, it does not remove or in any way damage the panel, so that the article of clothing may be repeatedly reused.”),
(b) erasure by wiping of the indicia without leaving a residue on the markable portion (Watt page 4 line 12 through page 5 line 10, “There are at present several writing implements adapted for marking on an article of clothing, for example… so-called washable ink markers. Attempting to wash a garment marked with washable ink usually leaves a residue which may take several washes fully to remove. However, currently there are no writing implements and articles of clothing available in combination whereby a mark may be applied by the implement and which may subsequently be essentially wholly removed by a simple single conventional washing… It is an aim of this invention to address the above problem. According to the present invention there is provided, in combination, an article of clothing having a panel… whereby the ink from the writing implement applied to the panel forms a non-permanent mark on the panel which will be substantially wholly removed when the article is next subjected to a conventional washing process… The mark may be removed by any conventional washing process such as hand washing or being washed in a washing machine.”),
(c) resisting staining after erasing (Watt page 8 lines 5-11, “The mark 15 can be removed from the panel 11 by conventional washing processes, such as by washing in a washing machine or by hand washing. The panel 11 on the article of clothing 10 is adapted to be securely bound to the fabric of the clothing 10 and is therefore not affected even after repeated washing. The article of clothing 10 and writing implement 12 may be reused after washing. A 10 user simply reapplies a mark 15 from the writing implement 12 to the panel 11 once the article of clothing 10 is dry.”), and
(d) erasably and repeatedly receiving the indicia after multiple washings with a conventional washing machine, wipings, wearings and uses (Watt page 5 lines 8-12, “The present invention finds utility because the mark on the panel may be simply removed. The mark may be removed by any conventional washing process such as hand washing or being washed in a washing machine. Of course, whilst washing removes the mark, it does not remove or in any way damage the panel, so that the article of clothing may be repeatedly reused.”).
Regarding claim 19, Watt discloses wherein the at least one markable portion comprises one or more layers of ink successively applied to the textile material (see Watt FIG. 1, panel 11 is markable portion; also Watt Fig. 3, mark 15 applied to panel 11; also Watt Abstract, surface treatment agent applied as a layer; also Watt page 5 lines 1-3, mark 15 does not bind with the surface treatment of panel 11).
Regarding claim 20, Watt discloses wherein the one or more layers comprise at least one of: a curable reducer; a curable base; or a plastisol ink (Watt page 5 lines 13-17, “the surface treatment agent comprises a thermo-plastic resin applied to the surface of the item of clothing, the resin being sealed thereto by the application of heat. More preferably the surface treatment agent comprises a plastisol,” a layer of plastisol is applied).
Regarding claim 23, Watt discloses at least one of a marking device, an erasing device, or a stencil (Watt page 6 lines 1-7, “The ink contained within the writing implement must have suitable properties for use in the present invention. Preferably chalk is applied to the article of clothing to form a layer of a colour that contrasts with that of the panel, to be non-permanently fixed to the panel. More preferably, the ink comprises powdered chalk suspended in a volatile liquid medium which is substantially nonreactive with the surface treatment agent. Still more preferably, the liquid medium is water,” the writing implement is a marking device).
Regarding claim 24, Watt discloses wherein the at least one marking device or erasing device is operatively coupled with the textile material (Watt page 6 lines 8-15, “The chalk suspended in the medium may be in a range of alternative colours, and indeed a number of different coloured writing implements may be 10 supplied with the article of clothing… the ink may be applied to the article of clothing by means of any suitable writing implement,” marking devices “supplied with” the article of clothing. Also, “marking device… is operatively coupled with the textile material” can also be interpreted as a marking device applying indicia to the textile material).
Regarding claim 25, Watt discloses wherein the textile material defines a patch configured to be coupled with a separate object (Watt page 6 lines 21-22, “The surface-treated panel could be of any size, from completely covering the article of clothing to consisting of a small patch on the front”).
Regarding claim 26, Watt discloses wherein the patch is configured to be coupled with the separate object by at least one of sewing or heat transfer (Watt page 6 lines 21-22, “The surface-treated panel could be of any size, from completely covering the article of clothing to consisting of a small patch on the front”; also Watt page 5 lines 13-20, “it is preferred that the surface treatment agent comprises a thermo-plastic resin applied to the surface of the item of clothing, the resin being sealed thereto by the application of heat. More preferably the surface treatment agent comprises a plastisol. Any suitable method may be used to apply the agent to the article of clothing, but it is preferred that the agent is applied in liquid form by screen printing and is then fixed to the article of clothing by a heat sealing process.”).
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.
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.
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.
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Watt in view of Blake (US 5,253,368).
Regarding claim 21, Watt does not explicitly teach at least one raised portion concomitant with or proximate to the at least one markable portion.
However, Blake discloses at least one raised portion concomitant with or proximate to the at least one markable portion (see Blake Fig. 1, showing a raised portion proximate to the markable portion; also Blake col. 3 lines 44-57, “The writing surface 50 may include an outer rim or frame 52 along its perimeter to provide a defined writing region for the cap 10. The frame 52 can be a plain, raised edge”).
Blake is analogous to Watt, as both are drawn to the art of erasable writing surfaces. It would be obvious to try by one of ordinary skill in the art at the time of filing to have modified the method as taught by Watt, to include at least one raised portion concomitant with or proximate to the at least one markable portion, as taught by Blake, in order to yield the predictable results of defining the writing area, and making it from the same material as panel 11 and/or integral with panel 11 would have been within the purview of one of ordinary skill in the art before the effective filing date in order to simplify manufacture by reducing the number of different materials needed for panel 11 and its raised border and reduce the number of manufacturing steps as a matter of design choice.. Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
Regarding claim 22, Watt does not explicitly teach wherein the at least one raised portion defines at least a portion of a border surrounding the at least one markable portion.
However, Blake discloses wherein the at least one raised portion defines at least a portion of a border surrounding the at least one markable portion (see Blake Fig. 1, showing a raised portion proximate to the markable portion; also Blake col. 3 lines 44-57, “The writing surface 50 may include an outer rim or frame 52 along its perimeter to provide a defined writing region for the cap 10. The frame 52 can be a plain, raised edge”).
Blake is analogous to Watt, as both are drawn to the art of erasable writing surfaces. It would be obvious to try by one of ordinary skill in the art at the time of filing to have modified the method as taught by Watt, to include wherein the at least one raised portion defines at least a portion of a border surrounding the at least one markable portion, as taught by Blake, in order to yield the predictable results of defining the writing area, and making it from the same material as panel 11 and/or integral with panel 11 would have been within the purview of one of ordinary skill in the art before the effective filing date in order to simplify manufacture by reducing the number of different materials needed for panel 11 and its raised border and reduce the number of manufacturing steps as a matter of design choice. Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
Claims 27-29, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Watt in view of “What is Under Base and Why it is Required for Screen Printing?” (hereinafter “PrintPapa,” non-patent literature, full citation in PTO-892).
Regarding claim 27, Watt discloses a method of making an article that facilitates individual expression (Watt page 5 lines 13-20, applying writable panel 11 to an article of clothing), the method comprising:
… wherein the outer surface is capable of:
(a) erasably and repeatedly receiving indicia marked upon the surface (Watt Abstract, “ink from the writing implement 12 when applied to the panel 11 forms a non-permanent mark 15 thereon 11. The mark 15 will be substantially wholly removed when the article 10 is next subjected to a conventional washing process.”),
(b) erasure by wiping of the indicia without leaving a residue on the markable portion (Watt page 4 line 12 through page 5 line 10, “There are at present several writing implements adapted for marking on an article of clothing, for example… so-called washable ink markers. Attempting to wash a garment marked with washable ink usually leaves a residue which may take several washes fully to remove. However, currently there are no writing implements and articles of clothing available in combination whereby a mark may be applied by the implement and which may subsequently be essentially wholly removed by a simple single conventional washing… It is an aim of this invention to address the above problem. According to the present invention there is provided, in combination, an article of clothing having a panel… whereby the ink from the writing implement applied to the panel forms a non-permanent mark on the panel which will be substantially wholly removed when the article is next subjected to a conventional washing process… The mark may be removed by any conventional washing process such as hand washing or being washed in a washing machine.”),
(c) resisting staining after erasing (Watt page 4 lines 14-19, “Attempting to wash a garment marked with washable ink usually leaves a residue which may take several washes fully to remove. However, currently there are no writing implements and articles of clothing available in combination whereby a mark may be applied by the implement and which may subsequently be essentially wholly removed by a simple single conventional washing… It is an aim of this invention to address the above problem. According to the present invention there is provided, in combination, an article of clothing having a panel… whereby the ink from the writing implement applied to the panel forms a non-permanent mark on the panel which will be substantially wholly removed when the article is next subjected to a conventional washing process”), and
(d) erasably and repeatedly receiving the indicia after multiple washings with a conventional washing machine, wipings, wearings and uses (Watt page 5 lines 8-12, “The present invention finds utility because the mark on the panel may be simply removed. The mark may be removed by any conventional washing process such as hand washing or being washed in a washing machine. Of course, whilst washing removes the mark, it does not remove or in any way damage the panel, so that the article of clothing may be repeatedly reused.”).”).
Watt does not explicitly teach applying at least one first layer onto least a portion of a surface of a textile material, the first layer comprising at least one of a reducer/base material or a plastisol ink; and applying at least one second layer onto at least a portion of the of the at least one first layer, the second layer comprising plastisol ink, wherein the at least one first layer and at least one second layer form and outer surface on the article.
However, PrintPapa discloses applying at least one first layer onto least a portion of a surface of a textile material, the first layer comprising at least one of a reducer/base material or a plastisol ink; and applying at least one second layer onto at least a portion of the of the at least one first layer, the second layer comprising plastisol ink, wherein the at least one first layer and at least one second layer form and outer surface on the article (PrintPapa page 1, using an underbase which is a layer of ink printed as a base for other colors to sit on which allows the print to have a bright look yet be soft to the touch because the underbase is printed through lower mesh counts and the top colors very high mesh counts; also PrintPapa page 4, using a small amount of curable reducer in order to make the underbase ink smoother and easier to print).
PrintPapa is analogous to Watt, as both are drawn to the art of screen printing. It would be obvious to try by one of ordinary skill in the art at the time of filing to have modified the method as taught by Watt, to include applying at least one first layer onto least a portion of a surface of a textile material, the first layer comprising at least one of a reducer/base material or a plastisol ink; and applying at least one second layer onto at least a portion of the of the at least one first layer, the second layer comprising plastisol ink, wherein the at least one first layer and at least one second layer form and outer surface on the article, as taught by PrintPapa, in order to yield the predictable results of providing a base for the plastisol layer to sit on and giving the print a bright look yet be soft to the touch. As modified, the base layer of PrintPapa and the plastisol layer of Watt together form the barrier between the chalk markings and the fabric of the clothing article. Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
Regarding claim 28, Watt in view of PrintPapa discloses curing at least one of the first layer or second layer after application (Watt page 7 lines 12-14, “The panel has previously been screen printed with a liquid plastisol, and then cured by heat-sealing on to the front of the article of clothing 10.”).
Regarding claim 29, Watt does not explicitly teach wherein applying the at least one first layer or the least one second layer comprises moving the reducer/base or plastisol ink through a mesh screen having a screen size in the range of 80 to 400.
However, PrintPapa discloses wherein applying the at least one first layer or the least one second layer comprises moving the reducer/base or plastisol ink through a mesh screen having a screen size in the range of 80 to 400 (PrintPapa page 4, showing a chart with screen sizes ranging from 90-140 for the top colors [such as plastisol ink] fall within the range of 80-400).
PrintPapa is analogous to Watt, as both are drawn to the art of screen printing. It would be obvious to try by one of ordinary skill in the art at the time of filing to have modified the method as taught by Watt, to include wherein applying the at least one first layer or the least one second layer comprises moving the reducer/base or plastisol ink through a mesh screen having a screen size in the range of 80 to 400, as taught by PrintPapa, in order to yield the predictable results of providing a base for the plastisol layer to sit on and giving the print a bright look yet be soft to the touch. As modified, the base layer of PrintPapa and the plastisol layer of Watt together form the barrier between the chalk markings and the fabric of the clothing article. Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
Regarding claim 33, Watt in view of PrintPapa discloses heat pressing the article (Watt page 7 lines 13-14, “The panel has previously been screen printed with a liquid plastisol, and then cured by heat-sealing on to the front of the article of clothing”).
Regarding claim 34, Watt discloses applying indicia to the at least a portion of a surface of a textile material; and selectively removing at least a portion of the indicia (Watt page 8 lines 5-6, “The mark 15 can be removed from the panel 11 by conventional washing processes, such as by washing in a washing machine or by hand washing.”).
Claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Watt in view of PrintPapa, and in further view of “Choosing the Right Mesh and Halftone Dot” (hereinafter “Combs,” non-patent literature, see PTO-892 for full citation).
Regarding claim 30, Watt does not teach wherein applying the at least one reducer/base layer comprises moving the reducer/base through a mesh screen having a screen size of 110.
However, Combs discloses wherein applying the at least one reducer/base layer comprises moving the reducer/base through a mesh screen having a screen size of 110 (Combs page 2, “Below are some basic recommendations based on inks and images… 110 Mesh: Underbase for Heavy Block Letters or Artwork”).
Combs is analogous to Watt in view of PrintPapa, as both are drawn to the art of screen printing. It would be obvious to try by one of ordinary skill in the art at the time of filing to have modified the method as taught by Watt in view of PrintPapa, to include wherein applying the at least one reducer/base layer comprises moving the reducer/base through a mesh screen having a screen size of 110, as taught by Combs, since it applies a known technique to a known product ready for improvement to yield predictable results. Doing so is a predictable solution that one of ordinary skill in the art could have pursued with a reasonable expectation of success.
Regarding claim 31, Watt in view of Combs does not explicitly teach wherein applying at least one layer of plastisol ink comprises moving the plastisol ink through a mesh screen having a screen size of 158.
However, PrintPapa does teach that the mesh will vary depending on whether the print is manual or automatic, the level of detail, and the number of colors (p. 3). For example, for stacking five colors wet-on-wet on an underbase, mesh counts will need to be increased in order to help minimize ink pick-up on the bottom of the screens (p. 3). While PrintPapa explicitly teaches mesh sizes ranging between 90 and 140 for top colors (e.g., the at least one plastisol ink layers), it would have been obvious to one of ordinary skill in the art before the effective filing date to increase the mesh count beyond this range in order to yield the predictable results of helping minimize ink pick-up on the bottom of the screens. Further, mesh screen size is not a critical element of the invention; Applicant’s disclosure teaches that various other mesh screen sizes may be used to apply the reducer/base layer 14 and/or the plastisol chalkboard ink layers 16, 18 (¶30). Further, screen size is a result-effective variable (determines the particle size/thickness deposited, level of detail). Optimizing the screen size of the mesh requires no more than ordinary skill in the art. Furthermore, Combs teaches that a 156 mesh is effective for general prints on light garments (p. 2), and that the difference between a 156 screen and a 158 screen is negligible (pp. 2-3). Therefore, it would have been obvious to one of ordinary skill in the art to use a 158 or 156 mesh screen in order to yield the predictable results of capturing finer details in the top colors of a design and minimizing ink pick-up on the bottom of the screens.
Regarding claim 32, Watt in view of PrintPapa does not teach wherein applying at least one layer of plastisol ink comprises moving the plastisol ink through a mesh screen having a screen size of 110. However, Combs teaches using a 110 mesh for applying an underbase for heavy block letters or artwork (p. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date to apply the base layer using a 110 mesh as a matter of design choice.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered.
The Applicant respectfully argues, “The basis for the Office's continued rejection is the Office's position that Watt maintains a broader definition of washing which the Office asserts includes wiping using a dampened cloth. See August 21, 2025 Office Action at pages 23-24. Applicant respectfully disagrees that a skilled artisan would read washing in Watt so broadly. However, in order to advance the application to allowance, Applicant has amended claims 18 and 27 to specify that the washing referred to in the claims is by conventional washing machine.”.
The Examiner respectfully disagrees. The instant claims require that the markable portions are capable of “erasure by wiping of the indicia without leaving a residue on the markable portion,” and “erasably and repeatedly receiving the indicia after multiple washings with a conventional washing machine, wipings, wearings and uses.” The Examiner notes that the terms “wiping” and “washing with a conventional washing machine” encompass many different types of wiping, washing, and conventional washing machines. They also do not specify a degree or duration of the wiping or washing. The instant disclosure does not specify exactly how wiping, washing, or conventional washing machines are defined, nor does it elaborate on the degree or duration of the wiping or washing. Therefore, under the broadest reasonable interpretation in light of the specification, “wiping” could mean something as minor as brushing against the markable portion with a finger (it is technically “wiping”), to as major as forcefully scrubbing the markable portion for an extended duration (which is also technically “wiping”). Likewise, even a conventional washing machine typically has several modes of wash, from a delicate cold water wash to a vigorous hot water wash.
The instant specification describes the “wiping” in paragraph [0012] as follows: “An article in accordance with the principles of the present disclosure erasably receives indicia which can remain on the surface for an extended period of time and still wipe off clean with a wet cloth.” Similarly, Watt page 5 lines 1-5 recites, “the ink from the writing implement applied to the panel forms a non-permanent mark on the panel which will be substantially wholly removed when the article is next subjected to a conventional washing process… The mark may be removed by any conventional washing process such as hand washing or being washed in a washing machine.” Under broadest reasonable interpretation, the “hand washing” of Watt is the same as the “wip[ing] off clean with a wet cloth” of the instant invention. In order to patentably distinguish the claimed invention from the prior art, there must be a structural difference. There is no identified structural difference between the erasable textile surface recited in the instant claims and the erasable textile surface described by Watt. Further, it appears that the erasable textile surface of Watt is capable of being wiped clean of markings with a wet cloth, since it can be hand washed to remove the markings.
In a related matter, the instant claims do not specify what type of markings are being applied to the erasable surface. Some markings would be harder to remove than others. For example, a chalk marking would likely be easier to remove than an ink marking. In Watt, the markings are made with an ink comprising “a powdered chalk, which may be of any colour, suspended in a water-based medium” (Watt page 7, lines 17-18). However, the instant claims only recite “indicia marked upon the surface,” but do not specify with what the surface is marked.
Therefore, given that the claims are recited in such a way that the broadest reasonable interpretation in light of the specification reads upon Watt, that there is recited no structural difference between the instant claimed invention and Watt, and that the invention of Watt appears to be fully capable of performing the claimed features of the instant invention, the outstanding prior art rejections of record under 35 USC 102 and 35 USC 103 are maintained.
Conclusion
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/STEPHEN ALVESTEFFER/ Examiner, Art Unit 3715