DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species B, C (and sub-species C1), G, H and J (and sub-species J1) in the reply filed on November 11, 2025 is acknowledged. Applicant cited claim 31 as being withdrawn, and indicated claims 21-30 and 32-43 were believed to be generic or drawn to an elected species. Upon further review of the claims, Examiner has identified the following additional claims that include subject matter directed to a non-elected species:
Claim 22: the subject matter “wherein the first panel includes a first side edge directly affixed to the first longitudinal edge, and a second side edge directly affixed to the second longitudinal edge” is directed to non-elected Species F, since it involves the distal strap (i.e. first panel) side edges being directly affixed to the cutout side edges (i.e. first and second longitudinal edges of the slot)
Applicant elected Species G, which involves the distal strap (i.e. first panel) having opposing side edges that extend past the first and second longitudinal edges in an overlapping manner, as shown in Fig. 11
Claim 29: the subject matter “wherein the first panel and the second panel are joined to the tube along the first longitudinal edge at a first seam and joined to the second longitudinal edge at a second seam” is directed to non-elected Species F, since it involves the distal strap (i.e. first panel) being joined to the tube “at” the first and second longitudinal edges via first and second seams
Claim 32 (and claims 33-39 due to dependency from independent claim 32): the subject matter “a second panel affixed to the first panel at a second portion of the first longitudinal edge and at a second portion of the second longitudinal edge” is directed to non-elected Species F, since it involves affixment of the anterior patch (i.e. second panel) to the distal strap (i.e. the first panel) “at” portions of the first and second longitudinal edges of the first panel, wherein elected Species G has no attachment of the second panel “at” any part of the first panel
Claim 41: the subject matter “wherein the second panel is directly affixed to the first longitudinal edge and the second longitudinal edge” is directed to non-elected Species F, since it involves direct affixment of the anterior patch (i.e. second panel) to the distal strap “at” portions of the first and second longitudinal edges of the first panel (i.e. the first panel is recited in claim 40 to have the first and second longitudinal edges), wherein elected Species G has no attachment of the second panel “at” any part of the first panel
Claim 43: the subject matter “the sheath fully encloses a wearer’s thumb when the tubular sleeve is in the second in-use configuration, when worn” is directed to non-elected sub-species J2, since fully enclosing the thumb, in use, would require the closed distal end of the sheath (elected sub-species J1 has an open, apertured end for the sheath)
Accordingly, claims 22, 29, 32-39, 41 and 43 are also withdrawn from further consideration.
Response to Amendment
The amendments filed with the written response received on November 11, 2025 have been considered and an action on the merits follows. As directed by the amendment, claims 21, 32, 40 and 43 have been amended; claims 1-20 are canceled; claims 22, 29, 31-39, 41 and 43 are withdrawn from further consideration. Accordingly, claims 21-43 are pending in this application, with an action on the merits to follow regarding claims 21, 23-28, 30, 40 and 42.
Priority
The present application’s claims recite subject matter that was first introduced at the time of filing of the parent application 16,552,676 (hereinafter “the ‘676 application”). For example, both elected independent claims 21 and 40 (and therefore all elected dependent claims therefrom) recite a “sheath” which was introduced at the time of filing of the ’676 application, which is August 27, 2019. Accordingly, the claims of the present application are not afforded benefit of priority to the earlier parent applications (i.e. provisional applications 62/118,288 filed Feb. 19, 2015 and 62/242,760 filed Oct. 16, 2015; non-provisional applications 15/045,465 filed Feb. 17, 2016 and 15/493,468 filed April 21, 2017), none of which disclose the subject matter of the “sheath”.
Therefore, the present application’s claims are afforded the benefit of priority to August 27, 2019, which is the filing date of the ‘676 application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s).
Claim 21 (lines 18-23): “wherein in a first in-use configuration the sheath is positioned entirely within the interior volume of the tube and the second panel leading edge continuously overlaps the first panel trailing edge from the first longitudinal edge to the second longitudinal edge such that from a perspective exterior to the tube and normal to the slot the sheath is covered by the first panel and the second panel and hidden from view from said perspective”; this limitation is not shown in the context of the presence of the sheath, which is required by claim 21 (Fig. 14 does not illustrate a sheath, but is the only figure which shows the distal strap trailing edge to continuously overlap with the anterior patch leading edge
Examiner notes that in the parent ’676 application, a replacement Fig. 14 was provided. This same replacement Fig. 14 would correct this issue, if it were submitted to replace the as-filed Fig. 14 in the present application as well.
Claim 40 (lines 18-23): “wherein in a first in-use configuration the sheath is positioned entirely within the interior volume of the tube and the second panel leading edge continuously overlaps the first panel trailing edge from the first longitudinal edge to the second longitudinal edge such that from a perspective exterior to the tube and normal to the slot the sheath is covered by the first panel and the second panel and hidden from view from said perspective”; as explained above with respect to similar language in claim 21
Examiner notes that in the parent ’676 application, a replacement Fig. 14 was provided. This same replacement Fig. 14 would correct this issue, if it were submitted to replace the as-filed Fig. 14 in the present application as well.
Generally, the “first in-use configuration” described throughout the claims is not currently illustrated in the drawings
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner’s Comment
As indicated in the Restriction Requirement mailed on September 11, 2025, Examiner notes that claims 21, 23-28, 30, 40 and 42 are currently directed to “a garment”, but the body of the claim after the transitional phrase “comprising” (in independent claims 21 and 40) appears to be only directed to a sleeve. Examiner previously suggested Applicant to clarify the claims by reciting, for example, “A garment comprising: a sleeve” (at least in independent claims 21 and 40) in order to clearly establish the preamble and transitional phrase in the claims. Examiner previously noted that, if Applicant opted to not change the language, then the term “having” within the current language “A garment having a sleeve” in line 1 of each of independent claims 21 and 40, would be interpreted during prosecution as meaning the same as the more commonly used open-ended transitional phrase “comprising”. See MPEP 2111.03(IV). Since Applicant provided no rebuttal to this interpretation in their Response filed on November 11, 2025, Examiner confirms that the term “having”, in each of independent claims 21 and 40, is being interpreted as being open-ended and equivalent to the transitional phrase “comprising”.
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 21, 23-27, 40 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,041,993.
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited patent’s claims essentially encompass the same subject matter of the listed present application’s claims. While the claims of the cited patent are directed to a “sleeve” and the present application’s claims are directed to “a garment with a sleeve”, Examiner notes that there is no additional structure in the listed claims that differentiates the garment from simply being a sleeve itself.
Present Application Claim
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40
42
Cited Patent Claim
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Claims 21, 23-27, 40 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,540,571.
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited patent’s claims essentially encompass the same subject matter of the listed present application’s claims. While the claims of the cited patent are directed to a “sleeve” and the present application’s claims are directed to “a garment with a sleeve”, Examiner notes that there is no additional structure in the listed claims that differentiates the garment from simply being a sleeve itself.
Present Application Claim
21
23
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42
Cited Patent Claim
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Claims 28 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,041,993 in view of Horner et al. (hereinafter “Horner”) (US 2016/0242469).
Regarding claims 28 and 30, the ‘993 patent essentially encompasses the subject matter of independent claim 21 (claims 28 and 30 depend directly from independent claim 21), but the claims in the ‘993 patent are silent to specifying that the first and second panels are made of [an elastic material (claim 28) / a knit material (claim 30)]. However, Horner teaches a similar article of clothing with a tubular sleeve having a similar first panel (distal strap #400) and similar second panel (anterior patch #300), and describes that each of these panels can be formed from an elastic material (¶ 0039 of Horner), such as an engineered knit material (¶ 0040 of Horner), and it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have formed the first and second panels of the present application’s sleeve with an elastic material, such as an engineered knit material in order to allow easier manipulation of the first panel trailing edge and second panel leading edge, as taught by Horner (¶ 0039 of Horner).
Claims 28 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,540,571 in view of Horner (US 2016/0242469).
Regarding claims 28 and 30, the ‘571 patent essentially encompasses the subject matter of independent claim 21 (claims 28 and 30 depend directly from independent claim 21), but the claims in the ‘571 patent are silent to specifying that the first and second panels are made of [an elastic material (claim 28) / a knit material (claim 30)]. However, Horner teaches a similar article of clothing with a tubular sleeve having a similar first panel (distal strap #400) and similar second panel (anterior patch #300), and describes that each of these panels can be formed from an elastic material (¶ 0039 of Horner), such as an engineered knit material (¶ 0040 of Horner), and it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have formed the first and second panels of the present application’s sleeve with an elastic material, such as an engineered knit material in order to allow easier manipulation of the first panel trailing edge and second panel leading edge, as taught by Horner (¶ 0039 of Horner).
Claim Objections
Claims 23-28, 30 and 42 are objected to because of the following informalities:
Claims 23-28, line 1 of every claim: “The garment having a sleeve” should recite “The garment having the sleeve”
Alternatively, Applicant may opt to simplify the preamble of all dependent claims by merely referring to “The garment”
For example, taking this suggested approach would result in claim 23 reciting “The garment of claim 21, …”
Appropriate correction is required.
Allowable Subject Matter
Claims 21, 23-28, 30, 40 and 42 would be allowable if a terminal disclaimer is filed and approved to overcome the Double Patenting rejections set forth in this Office action, as well as addressing the Claim objections and Drawing objections set forth above.
If Applicant wishes for the non-elected claims to be rejoined, then it is suggested that the Drawings be reviewed so that all claimed subject matter is shown in the illustrations.
The following is a statement of reasons for the indication of allowable subject matter: upon review of claims 21, 23-28, 30, 40 and 42, the subject matter of independent claims 21 and 40 is not patentably distinct from the independent claims in the issued patents of 11,540,571 and 12,041,993 (see the Double Patenting section above). While claims 21, 23-28, 30, 40 and 42 are directed to “a garment with a sleeve”, and the claims in the cited patents are directed to a “sleeve”, there is no additional structure in claims 21, 23-28, 30, 40 and 42 that would patentably differentiate the “garment having a sleeve” from merely being a “sleeve” itself. The reasons for allowance described in the Notice of Allowance mailed on August 31, 2022 in U.S. Patent Application 16/552,676 (with which USPN 11,540,571 is associated) are likewise applicable in the present application, with respect to the reasons for indication of allowable subject matter in view of the prior art of record.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of sleeves with a thumb encircling element.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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, CLINTON OSTRUP can be reached at (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732