Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claims 3, 13, & 19 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.
RE Claims 3, 13, & 19 the recitation of “wherein the fabric comprises from approximately 5%-25% spandex, cotton, and polyester” as the phrasing renders the claim scope unclear: is each constituent considered individually or all together?
Additionally, the limitation is inconsistent with the present specification. While approximately 5%-25% of spandex is found in ¶0011, the amounts of cotton and polyester do not fall within this range (at 55% cotton and 35% polyester, ¶0025). See MPEP 2173.03 Correspondence between Specification and Claims.
Claims 3, 13, & 19 each contains the trademark/trade name Spandex. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a fabric or constituent of fabric and, accordingly, the identification/description is indefinite.
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 1-3, 5-13, & 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 & 16 of U.S. Patent No. 12,185,695. Although the claims at issue are not identical, they are not patentably distinct from each other because species anticipates genus, see MPEP §§ 2131.02, 2144.08, & 804. Specifically, the first and second strips with specific directionality claimed in ‘695 anticipates the broadly claimed fasteners of claims 1, 10, & 17.
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.
Claims 1, 2, 5, 6, 8, 17, 18, & 20 are rejected under pre-AIA 35 U.S.C. 102(b) as being disclosed by Hibbert (US 6431123 B1).
For Claim 1, Hibbert discloses a garment (shown in the ninth embodiment of Hibbert, Figs. 13-14 & the accompanying description found in Col. 10, line 17-Col. 11, line 31) for an animal having a first pair of appendages (front legs 290, 292), a second pair of appendages (unnumbered back legs), and a neck (neck 298), the animal having a mid-body between the first pair of appendages and the second pair of appendages (unnumbered torso, Figs. 13-14), the garment comprising:
a central portion (the boxed portion of cover 220 provided in the annotated Fig. 14 below) having a longitudinal axis (represented by the axis marking, Fig. 14) and including a front end (near 240), a rear end opposite the front end (near 234), a first side extending laterally in a first side direction from the longitudinal axis (one longitudinal side of the annotated box, either upper or lower, representing the first or the second side, Fig. 14), and a second side
PNG
media_image1.png
732
516
media_image1.png
Greyscale
extending laterally in a second side direction from the longitudinal axis (the other longitudinal side of the annotated box, Fig. 14);
a first flap extending from the first side of the central portion (represented by the annotated arrow extending from the respective first side, Fig. 14 provided above); and
a second flap extending from the second side of the central portion (represented by the annotated arrow extending from the respective second side, Fig. 14 provided above);
wherein the central portion, the first flap, or the second flap is made of a fabric that stretches (Col. 6, lines 21-28, in part: “Second, the fabric must stretch and then recover so that the cover snugly fits the animal to be covered.”),
wherein each of the first flap and the second flap has an inside surface and an outside surface (the outside surface of each flap is shown in Fig. 14, the opposite planar surface (unshown) being the inside surface),
wherein the outside surface of one of the first flap or the second flap includes hook fasteners or loop fasteners (loop portion 282 is on the outside of one of the flaps), and the inside surface of the other of the first flap or the second flap includes the other of the hook fasteners or the loop fasteners (280, in phantom in Fig. 14, is on the inside surface of one of the flaps, Col. 10, line 61-Col. 11, line 6),
wherein when the garment is worn by an animal the first flap and the second flap are configured to extend around the mid-body of the animal and fasten to each other such that the central portion, the first flap, and the second flap form a shape conforming to the outside of the mid-body of the animal (as seen in Fig. 13), and the front end of the central portion is positioned proximate to the neck of the animal (neck portion 232/front edge 240, Fig. 13), and
wherein the garment, when worn, applies pressure to the animal adequate to reduce anxiety, fearfulness, overexcitement, or a combination thereof in the animal (in the same manner as the instant invention, due to the ability of the fabric of Hibbert to stretch snugly to the body of the animal, the coat is capable of applying adequate pressure).
For Claim 17, Hibbert discloses a garment [claim has been mapped in the same manner as claim 1, on the ninth embodiment of Hibbert, Figs. 13-14 & the accompanying description found in Col. 10, line 17-Col. 11, line 31] for an animal having a first pair of appendages (front legs 290, 292), a second pair of appendages (unnumbered back legs), and a neck (neck 298), the animal having a mid-body between the first pair of appendages and the second pair of appendages (unnumbered torso, Figs. 13-14), the garment comprising:
a central portion (the boxed portion of cover 220 provided in the annotated Fig. 14 below) having a longitudinal axis (represented by the axis marking, Fig. 14) and including a front end (near 240), a rear end opposite the front end (near 234), a first side extending laterally in a first side direction from the longitudinal axis (one longitudinal side of the annotated box, either upper or lower, representing the first or the second side, Fig. 14), and a second side extending laterally in a second side direction from the longitudinal axis (the other longitudinal side of the annotated box, Fig. 14);
a first flap extending from the first side of the central portion (represented by the annotated arrow extending from the respective first side, Fig. 14 provided above); and
a second flap extending from the second side of the central portion (represented by the annotated arrow extending from the respective second side, Fig. 14 provided above);
wherein the central portion, the first flap, or the second flap is made of a fabric that stretches (Col. 6, lines 21-28, in part: “Second, the fabric must stretch and then recover so that the cover snugly fits the animal to be covered.”);
wherein the central portion, the first flap, or1 the second flap includes fasteners (280, 282, and/or the sewn patches adjoining strap member 224 to cover 220, Fig. 14); and
wherein when the garment is worn by the animal the first flap and the second flap extend around the mid-body of the animal and the fasteners fasten such that the central portion, the first flap, and the second flap form a shape conforming to the outside of the mid-body of the animal (as seen in Fig. 13), and wherein the garment, when worn, applies pressure to the animal adequate to reduce anxiety, fearfulness, overexcitement, or a combination thereof in the animal (in the same manner as the instant invention, due to the ability of the fabric of Hibbert to stretch snugly to the body of the animal, the coat is capable of applying adequate pressure).
For Claims 2 & 18, Hibbert discloses the garment of claims 1 & 17, and Hibbert further discloses wherein the central portion, the first flap, and the second flap are made of the fabric that when stretched provides resiliency (note the discussion of “memory” in Col. 6, lines 21-27 & Col. 12, lines 4-39) adequate to reduce anxiety, fearfulness, overexcitement, or a combination thereof in the animal (in the same manner as the instant invention, due to the ability of the fabric of Hibbert to stretch snugly to the body of the animal, the coat is capable of applying adequate pressure).
For Claim 5, Hibbert discloses the garment as recited in claim 1, and Hibbert further discloses wherein the hook fasteners comprise at least one strip of hook fasteners and the loop fasteners comprise at least one strip of loop fasteners (280: 282, Col. 10, line 61-Col. 11, line 6) and wherein the at least one strip of hook fasteners and the at least one strip of loop fasteners are substantially adjacent to each other such that the first flap is fastened to the second flap (Fig. 13 shows 280 affixed to 282).
For Claims 6 & 20, Hibbert discloses the garment of claims 1 & 17, and Hibbert further discloses further comprising a cinching member (strap member 224 comprising 260, 262, 264, 266) having a proximate end attached to the central portion (264 & 266 are shown as sewn onto, and thus attached to, the central boxed portion of than notated Fig. 14), the first flap, or2 the second flap and extending to a free distal end (the handles formed on 260 & 262), wherein the cinching member is adapted to extend at least partially around the mid-body of the animal and to fasten to the central portion (as seen in Fig. 13), the first flap, the second flap, or a combination thereof to further tighten the garment to apply pressure to the animal (by extending under the abdomen of the animal, the entire garment would be pulled tighter against the body of the animal).
For Claim 8, Hibbert discloses the garment of claim 6, and Hibbert further discloses wherein when the cinching member is fastened to the central portion (rejected above, as seen in Fig. 14 annotated above), the first flap, the second flap, or a combination thereof, the cinching member overlaps and extends past the first flap (Fig. 14, 260/262 each extend beyond the respective flaps).
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 3 & 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hibbert as applied to claims 1 & 17 above.
For Claims 3 & 19, Hibbert discloses the garment of claims 1 & 17, and Hibbert further discloses wherein the fabric comprises from approximately 5% to 25% spandex (Col. 12, lines 7-39 anticipates 20-25% of each of Spandex as an elastic material), cotton, and polyester (cotton as a natural, breathable material, and polyester: “The elastic material preferably is a fiber comprising a natural rubber or a synthetic rubber core to which is bonded a material such as nylon, cotton, and/or polyester,” Col. 12, lines 17-19).
The prior art describes the amount of Spandex as 20-80%, overlapping with the claimed range at 20-25%. Thus, it would have been obvious to one of ordinary skill in the art before the claimed invention was effectively filed to modify the amount of Spandex in the resulting material to be between 20-25%, in order to provide a sufficient amount of stretch/memory, while enhancing the breathability of the fabric by increasing the cotton amount which enhances the health of the animal and it’s skin/fur, yielding predictable results.
Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hibbert as applied to claim 1 above, and further in view of Sollock (US 6390026 B1).
For Claim 4, Hibbert discloses the garment of claim 1.
Hibbert is silent to wherein the first flap is longer than the second flap.
Sollock, like prior art above, teaches an animal garment (title, disclosure), wherein first flap is longer than second flap (the flap to the right of 20 is larger than the flap to the left of 20).
Therefore, it would have been obvious to one of ordinary skill in the art before the claimed invention was effectively filed to modify the flaps of Hibbert to provide one longer than the other as taught by Sollock, in order to provide a more versatile device which is capable of fitting around larger/more barrel-shaped animals, yielding predictable results.
Allowable Subject Matter
Claims 7 & 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 10-12 & 15-16 are objected to.
Claim 13 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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).
Conclusion
The cited prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20080121192 & US 20090120377 disclose similar apparatus to Hibbert above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Morgan T. Jordan whose telephone number is (571)272-8141. The examiner can normally be reached M-Th 8:30-5:30.
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, PETER POON can be reached at 571-272-6891. 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.
/MORGAN T JORDAN/Primary Examiner, Art Unit 3643
1 Interpretation note: only one aspect is required due to the alternative construction triggered by the “or” limitation. Any further claim mapping is in order to promote compact prosecution.
2 Interpretation note: only one aspect is required due to the alternative construction triggered by the “or” limitation.