DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
Claims 1, 2, 5, 7-9, 11 and 13-25 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 6/17/2026 have been fully considered but they are not persuasive. The Applicant argues that the prior art fails to teach or suggest amended claim 1. Applicant argues that Ozawa does not teach fibers that are elastic or a discontinuous structure formed. However, the Examiner disagrees and notes that Ozawa teaches wool fibers (see Means for solving problems section) which are natural elastic fibers. Further, Worley teaches the additional features of forming a discontinuous structure.
Applicant argues that Chapuis does not teach spaced apart linear members. However, the Examiner disagrees and notes that hexagons include parallel linear members. The claims do not exclude the linear members being part of a larger or broader structure.
Applicant argues that Wang does not teach printing the ceramic as spaced apart linear members. However, as noted above, the Examiner contends that Worley teaches these features.
Applicant argues that Worley does not teach the feature of spaced apart linear members. However, the Examiner disagrees and maintains that Worley’s pattern as illustrated in Figure 1 includes spaced apart linear members with channels between that do not include coating. Therefore, the Examiner maintains that the claims are obvious over the prior art of record.
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.
1. Claims 1, 2, 5, 8, 9 and 13-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 6, 9, 10 and 12-23 of copending Application No. 18/891222 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 3, 6, 9, 10 and 12-23 of Application No. 18/891222 anticipate claims 1, 2, 5, 8, 9 and 13-25.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 –
(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.
2. Claim(s) 1, 2, 5, 7-9 and 11 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Chapuis (WO 2011/114025, reference is made to the previously provided English translation).
Regarding claims 1, 2, 5, 7-9 and 11, Chapuis teaches a compression garment fabric panel (abstract), made out of fibers such as natural, synthetic and/or elastic fibers (middle of page 4), and including portions covered with ceramic powder (top of page 4), such as silica powder (middle of page 4), which retains heat (middle of page 4). Chapuis teaches the fabric panel having the ceramic powder arranged in a plurality of spaced apart linear members forming a broken border (a line of separated hexagons forms a linear member having a broken border with channels that are free of ceramic powder), such that the ceramic powder forms a discontinuous coating having fabric sections covered with the powder and sections free of powder (Figure 1). Chapuis also teaches the compression garment can be a t-shirt which has a torso portion and a sleeve (Figure 5), and that the ceramic powder may penetrate to the user-facing side of the t-shirt (middle of page 8). Chapuis teaches all the limitations of claims 1, 2, 5, 7-9 and 11; therefore, Chapuis anticipates the claims.
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.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
3. Claims 1, 2, 5, 7-9, 14-22, 24 and 25 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ozawa et al. (JPH02182968, reference is made to the previously provided English translation) in view of Worley et al. (U.S. PGPUB No. 2003/0054141).
Regarding claims 1, 2, 5, 7-9, 14-22, 24 and 25 Ozawa teaches a fabric panel including natural or synthetic fibers (abstract and top of page 2), such as wool (see Means for solving problems section, and note that wool is an elastic fiber) comprising: a portion covered with ceramic powder (abstract), such as silica or silicon carbide (top of page 2), which retains heat (abstract). Ozawa teaches that the ceramic powder can be on an inner, user-facing side of the fabric panel (middle of page 2). Ozawa teaches that the fabric panel can be incorporated into apparel articles such as vests (see Effect of the invention section) with the powder on the skin-facing side of the article (middle of page 2). Ozawa teaches the ceramic powder present in an amount as claimed by weight of a coating that is applied to the fabric (see Examples on page 2). Ozawa fails to teach the ceramic powder arranged in spaced apart linear members forming a broken border, wherein the ceramic powder coating is discontinuous having sections covered with ceramic powder and sections not covered with ceramic powder and the linear members define linear channels therebetween that are free of ceramic powder that define airflow pathways. Ozawa further fails to teach the linear members can comprise linear members that define two angled portions that meet at an apex and that the ceramic powder covers between 20-80% of the inner side of the fabric
However, Worley teaches a garment (abstract), such as a jacket (0030), with a discontinuous coating (0028) on the surface of the fabric (0016) and may have a pattern of spaced apart linear members forming a broken border as shown in Figure 1, where sections are coated and sections uncoated (0025 and Figure 1), and wherein linear members define channels which expose portions of the fabric which form a continuous network allowing airflow across the fabric panel (0025 and Figure 1), and wherein linear member form an apex (Figure 1). Worley teaches the coating including a phase change material which has the capacity to both absorb and release thermal energy (0033), and that the coating can include a ceramic, such as silica (0044). Worley further teaches the coating covering 50-80% of the surface of the substrate (0028). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Ozawa’s fabric panel by having the ceramic material applied as a discontinuous pattern of linear members forming a broken border, forming linear channels which expose portions of the fabric and define airflow pathways, and wherein linear members meet at an apex and cover 50-80% of the surface of fabric as disclosed by Worley. One would have been motivated to make this modification as Worley teaches that providing a discontinuous pattern provides the fabric/garment with improved flexibility and air permeability (0007).
4. Claim 1, 2 and 13 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wang (CN 101632507, reference is made to the previously provided English translation) in view of Worley.
Regarding claims 1, 2 and 13, Wang teaches a shoe upper (abstract) comprising a cloth layer (see abstract, comparable to a fabric panel) made of natural fiber (claim 2), such as wool (claim 2 and note that wool is a naturally elastic fiber), covered with ceramic powder with heat retention properties (claim 6). Wang fails to teach the panel including the ceramic powder provided in a discontinuous pattern as claimed in claim 1.
However, Worley teaches a garment (abstract), such as a jacket (0030), with a discontinuous coating (0028) on the surface of the fabric (0016) and may have a pattern of spaced apart linear members forming a broken border as shown in Figure 1, where sections are coated and sections uncoated (0025 and Figure 1), and wherein linear members define channels which expose portions of the fabric which form a continuous network allowing airflow across the fabric panel (0025 and Figure 1), and wherein linear member form an apex (Figure 1). Worley teaches the coating including a phase change material which has the capacity to both absorb and release thermal energy (0033), and that the coating can include a ceramic, such as silica (0044). Worley further teaches the coating covering 50-80% of the surface of the substrate (0028). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Wang’s fabric panel by having the ceramic material applied as a discontinuous pattern of linear members that define channels free of ceramic powder. One would have been motivated to make this modification as Worley teaches that providing a discontinuous pattern provides the fabric/garment with improved flexibility and air permeability (0007).
5. Claim 23 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ozawa in view of Worley as applied to claim 22 above, and further in view of Nam et al. (“Fabrication and characterization of zirconium carbide (ZrC) nanofibers with thermal storage property”).
Regarding claim 23, Ozawa in view of Worley make obvious claim 22 (see above), but fail to teach the inclusion of zirconium carbide. However, Nam teaches the use of zirconium carbide ceramic material for heat storage (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ozawa in view of Worley’s fabric panel by substituting zirconium carbide for Ozawa in view of Worley’s ceramic. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that Ozawa teaches that various ceramics may be used at the abstract, and Nam teaches that zirconium carbide is a ceramic that provides heat storage properties in a similar manner that silica does), and the predictable result of providing a fabric panel that will retain heat longer than one not coated with a ceramic.
Conclusion
Claims 1, 2, 5, 7-9, 11 and 13-25 are pending.
Claims 1, 2, 5, 7-9, 11 and 13-25 are rejected.
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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
September 4, 2026Primary Examiner, Art Unit 1717
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