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 1-13 are pending and presented for examination.
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 1-10 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-11 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 2-11 of Application No. 18/891222 anticipate claims 1-10 and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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.
2. Claim 10 is 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 10 recites that “the ceramic powder is discontinuous”. It is unclear what it means for a powder to be discontinuous. Therefore, claim 10 is indefinite. For examination purposes, the claim has been interpreted as “the ceramic powder forms a discontinuous structure”.
Claim 10 also recites “ceramic sections free of ceramic powder”. This language is contradictory; and therefore, indefinite. For examination purposes, the claim has been interpreted as “fabric sections free of ceramic powder”.
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.
3. Claim(s) 1, 2, 4, 5, 8 and 9 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Ozawa et al. (JPH02182968, reference is made to the provided English translation).
Regarding claims 1, 2, 4, 5, 8 and 9, Ozawa teaches a fabric panel including natural or synthetic fibers (abstract and top of page 2) comprising: a portion covered with ceramic powder (abstract), such as silica (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 all the critical limitations of claims 1, 2, 4, 5, 8 and 9; therefore, Ozawa anticipates the claims.
4. Claim(s) 1-12 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 provided English translation).
Regarding claims 1-12, 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), 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 1-12; therefore, Chapuis anticipates the claims.
5. Claim(s) 1, 2, 4 and 13 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Wang (CN 101632507, reference is made to the provided English translation).
Regarding claims 1, 2, 4 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) covered with ceramic powder with heat retention properties (claim 6). Wang teaches all the critical limitations of claims 1, 2, 4 and 13; therefore, Wang 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.
6. Claims 6, 7 and 10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ozawa in view of Worley et al. (U.S. PGPUB No. 2003/0054141).
Regarding claims 6, 7 and 10, Ozawa teaches all the limitations of claims 1 and 5 (see above) including incorporating the fabric into a garment (bottom of page 3), but 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.
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. 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). 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 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).
Conclusion
Claims 1-13 are pending.
Claims 1-13 are rejected.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT S WALTERS JR/
January 26, 2026Primary Examiner, Art Unit 1717