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 .
Status of Claims
This Office Action is in response to the amendment filed 11/24/25. As directed by the amendment, claim 1 has been amended. Claims 1-6 are pending in this application.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 102 AIA
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 1, 2, 3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gauen US 0678725 A (herein after Gauen).
Regarding claim 1, Gauen discloses a headwear modification system comprising: a primary body (as seen in annotated Figures 1 and 2), at least one upper clip (1), at least one lower clip (3), at least one upper tab (4), and at least one lower tab (7); said primary body (as seen in annotated Figures 1 and 2) configured to be placed against a rear face of an exterior surface of the headwear (as seen in annotated Figures 1 and 2 - the headwear modification system would be capable of being used on various headwear and be capable of being placed on the exterior rear surface), and the headwear configured to be at least partially folded to receive said primary body (the claim is drawn to a headwear modification system, not the headwear itself, applicant has not provided any defining limitations regarding the headwear itself and therefor the prior art is considered capable of meeting the limitations as claimed); said at least one upper clip (1) configured to be secured about a top surface of the headwear (as seen in annotated Figures 1 and 2 - as the applicant has not positively claimed the type of headwear or the configuration, depending on the size and shape of the headwear, the headwear modification system would be capable of being used on various headwear and be capable of being placed on the top surface of the brim, the crown or lip) such that a portion of said headwear is held within said at least one upper clip (1), thereby securing the headwear to the modification system (Col 1, lines 11-16); said at least one lower clip (3) configured to be secured about a lower edge of the headwear (3, as seen in annotated Figures 3) such that a portion of said lower edge of the headwear is held within said at least one clip (4, as seen in annotated Figure 1), thereby further securing the headwear to the modification system (4 and 5, as seen in annotated Figures 1 and 4); and said at least one upper tab (4) and said at least one lower tab (7) configured to secure said modification system to a wearer's head or hair (Col 1, lines 11-16).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (At least one lower clip configured to be secured about a lower edge of the headwear.)][AltContent: textbox (At least one upper clip configured to be secured about a top surface of the headwear.)][AltContent: arrow][AltContent: textbox (Top surface of the headwear.)][AltContent: ]
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[AltContent: arrow][AltContent: textbox (The primary body forms a band configured to fit about a user's head.)]
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Regarding claim 2, Gauen discloses wherein said headwear is a baseball cap (as seen in Figure 4- the headwear could be worn as a baseball cap).
Regarding claim 3, Gauen discloses said baseball cap comprising a top button (6- the buttons being on the top of the hats crown portion); and said at least one upper clip (1) configured to be placed adjacent to said top button (6 as seen in Figure 2).
Regarding claim 6, Gauen discloses wherein said primary body (as seen in annotated Figures 1-4) forms a band configured to fit about a user's head (as seen in annotated Figure 3).
Claim Rejections - 35 USC § 103 AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Gauen US 0678725 A (herein after Gauen) in view of and Olivares US 20230142431 A1 (herein after Olivares).
Regarding claim 4, the headwear modification system of the combined references discloses all the limitations of claim 4 and further includes an interior face of said modification system primary body (as seen in annotated Figures 1-4 of Gauen), said at least one upper tab (4 of Gauen), and said at least one lower tab (7); however, they do not disclose a plurality of interior nodules located on the interior faces, and said plurality of interior nodules configured to provide grip against the wearer's head or hair.
Olivares discloses a plurality of interior nodules (paragraph 0089) located on the interior faces (paragraph 0089), and said plurality of interior nodules (paragraph 0089) configured to provide grip against the wearer's head or hair (paragraph 0089 and 0096 - the interior facing nodules would come in contact with the hair of the wearer and be capable of providing resistance of movement or slippage when worn).
Olivares is analogous art to the claimed invention in that it relates to headwear having an internal positioning device.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the modification system of Gauen by adding a plurality of interior nodules located on an interior face of said modification system primary body, said at least one upper tab, and said at least one lower tab; and said plurality of interior nodules providing grip against the wearer's head or hair as taught by Olivares in order as a matter of design preference. The modification would be a simple modification to ensure the two portions are fixedly connected to each other during wear.
Regarding claim 5, the modified headwear modification system of the combined references discloses an exterior face of said modification system primary body (as seen in annotated Figure 1-4 of Gauen), said at least one upper tab (4 of Gauen), and said at least one lower tab (7 of Gauen); however, Gauen is silent to a plurality of exterior nodules located on and said plurality of exterior nodules configured to provide grip against the headwear.
Olivares discloses a plurality of exterior nodules (paragraph 0089 of Olivares) located on and said plurality of exterior nodules configured to provide grip against the headwear (paragraph 0089 and 0096 - the interior facing nodules would come in contact with the hair of the wearer and be capable of providing resistance of movement or slippage when worn).
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the upper tab, and lower tab of the primary body of Gauen by adding a plurality of interior nodules located on an interior face of the upper tab, and lower tab; with the plurality of interior nodules providing grip against the wearer's head or hair as taught by Olivares in order to provide a textured surface on the tabs. The modification would be a simple modification to provide an engagement surface on the tabs to prevent the headwear from slipping.
ARGUMENTS
Applicant’s arguments have been fully considered but are not convincing. Applicant’s arguments are directed towards structural elements included in the amended claims and thus do not apply to the combinations of references used to teach the limitations of the amended claims in the current rejection and/or the manner in which prior art has been applied in the current rejection. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above.
In response to the applicant’s arguments that the nodules of Olivares provide padding not grip the head of the wearer. The examiner points out that applicant’s prolific use of “configured to” language requires that the nodules only be capable of gripping the head. As the nodules are capable of gripping (paragraph 0085). The applicant has written the claims broadly, including functional recitations in the claim language. A recitation of function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the function, then it meets the claim. Intended use recitations such as "... configured to grip..." carry little patentable weight as the application is not examined by its function or intended use.
The examiner notes that the claim is drawn to a headwear modification system, not a cap itself. However, assuming arguendo that applicant intends to add a claim wherein the cap is positively claimed as a structural limitation (i.e. not an intended use limitation via the "configured to" language), using a body (106) with at least one upper (120) and at least one lower (110) clip on the folded exterior surface of a ballcap (200) is known as demonstrated by 11457752.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
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