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 .
Response to Amendment
Applicant's amendment filed on October 13, 2025 has been received. Claims 1-12 are currently pending.
Election/Restrictions
Newly submitted claim 12 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 12 recites the limitation “the molded cup integrally connected to the garment body, and both the molded cup and the garment body are on the same layer.” Claim 12 is drawn to an alternate embodiment of the garment body, whereas previously presented claim 7 is drawn to the original embodiment, “wherein the garment body defines a receiving space, and the molded cup is disposed within the receiving space.” The claims to the different species recite mutually exclusive characteristics, and are independent and distinct at least because prior art applicable to one invention would not likely be applicable to the other invention.
Since Applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 12 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 1-11 are presented for examination below.
Response to Arguments
In light of Applicant’s amendments to the claims, an updated rejection is provided below.
Furthermore, Applicant’s arguments filed on October 13, 2025 have been fully considered but are not deemed to be persuasive.
Applicant argues that it would not be obvious to add holes to Yip’s foam layers since “adding holes to Yip’s structure would potentially undermine its primary goal of providing smooth, seamless support by potentially weakening the laminated layers designed to encase components” (see page 4 of Applicant’s Remarks).
The Examiner respectfully disagrees. First, the Examiner notes that Applicant’s argument is entirely based upon conjecture, as evidenced by Applicant’s repeated use of “potentially” (e.g., “potentially undermine,” “potentially weakening”). The Examiner further notes that Yip’s layered pad includes inner and outer fabric layers (114, 118, see Fig. 9 and paragraph 0046) that would still provide smooth inner and outer surfaces even if Yip’s foam layers were modified to include ventilation holes, as contemplated in the Non-Final Rejection. Additionally, providing ventilation holes to foam layers is well known in the art (see paragraphs 0033-0037 of Gaudet, as relied upon in the Non-Final Rejection), and there is no evidence in Yip’s disclosure to suggest that adding ventilation holes would somehow weaken the laminated structure of Yip’s molded cup, as alleged by Applicant.
Applicant also argues that Gaudet “discourages its combination with a complex molded cup like Yip’s” (see pages 4-5 of Applicant’s Remarks).
The Examiner respectfully disagrees. Gaudet expressly teaches wherein the ventilation holes are designed to be used in combination with molded foam layers. See paragraph 0038: “The foam layer may be molded or shaped to conform to the shape of a breast…The foam layer may be molded by any means, such as bullet molding, hot or cold forming or pressing, injection molding, die molding, or any other way, as the present invention is not intended to be limited in this manner.” This directly contradicts Applicant’s assertion that Gaudet’s teachings cannot be combined with a molded cup.
Applicant further argues that Gaudet’s cup requires additional cover layers to mask discoloration caused by the perforations, which “demonstrates that perforation in molded garments was known to introduce aesthetic and structural issues requiring additional compensatory elements” (see page 5 of Applicant’s Remarks).
The Examiner respectfully disagrees. Paragraph 0047, as cited by Applicant, actually discusses the discoloration of foam in general over time, not due to the presence of ventilation holes, as alleged by Applicant: “Over time, certain foams or materials may darken in color and appear yellow, an undesirable color to show through in a white or lightly colored brassiere. In addition to the pad component, the pad may include a second outer cloth 54 to assist in concealing the discoloration of the pad component from view when the brassiere is viewed from an outer most surface…” It is clear that the “aesthetic issues” noted by Applicant are due to the discoloration of the foam itself, not due to the ventilation holes. Furthermore, paragraph 0047 does not discuss “structural issues” at all, much less in connection to the ventilation holes. As such, the Examiner respectfully submits that Applicant’s position is not reasonably supported by the actual text of Gaudet’s disclosure.
Furthermore, as mentioned above, Yip already teaches a very similar inclusion of fabric cover layers (114, 118, see Fig. 9 and paragraph 0046 of Yip). As such, Gaudet’s inclusion of one or more cover layers only makes Gaudet’s cup structure more similar to Yip’s cup structure, and cannot be reasonably relied upon as discouraging a combination of Gaudet’s and Yip’s teachings.
Applicant also argues that Larson’s disclosure constitutes non-analogous art (see pages 5-6 of Applicant’s Remarks).
The Examiner respectfully disagrees. Larsons teaches a layered foam pad for use in a garment (see at least Title), and also teaches wherein the foam pad includes ventilation openings expressly for the purpose of allowing moisture to be wicked away (see paragraph 0047: “the voids 518 on the first pad layer 510 may have the same shape, placement, and orientation as the voids 528 on the second pad layer 520 but with a larger size to allow more moisture to be wicked away during strenuous activities”).
Per MPEP 2141.01(a), “a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.” In this case, Larson’s disclosure is clearly from the same field of endeavor (i.e., padded garments) as the claimed invention, and/or is reasonably pertinent to the problem faced by the inventor (i.e., providing ventilation and/or wicking), even if Larson may teach additional functions such as impact absorption.
Finally, Applicant argues that it would be undesirable to incorporate Larson’s specific foam hardnesses and complex geometric void patterns into a brassiere cup, as doing so would “unpredictably alter its supportive properties and comfort” (see pages 5-6 of Applicant’s Remarks).
The Examiner respectfully disagrees. The Non-Final Rejection does not contemplate changing the foam hardness of the foam layers, or changing a pattern or shape of the ventilation openings. Rather, as discussed on page 5 of the Non-Final Rejection: “…Based on Gaudet's and Larson's teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Yip's first and second layers to include at least one first hole and at least one second hole, respectively, wherein the diameter of the first hole is greater than the diameter of the second hole, as doing so would facilitate the evaporation of perspiration through the foam layers and allow more moisture to be wicked away from the wearer's skin during strenuous activities.” As such, Applicant’s argument is not pertinent to the actual rejection(s) applied against the claims.
Applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). See MPEP 707.07(f) and MPEP 2145(111).
See updated rejection(s) below.
Claim Objections
Claims 1, 2, and 9 are objected to because of the following informalities:
Claims 1 and 9: “the diameter of the first hole” should read “the diameter of the at least one first hole” to enhance clarity and to maintain consistent antecedent basis within the claims
Claims 1 and 9: “the diameter of the second hole” should read “the diameter of the at least one second hole” to enhance clarity and to maintain consistent antecedent basis within the claims
Claim 2: “a corresponding second hole the at least one second hole” should read “a corresponding second hole of the at least one second hole”
Claim 9: “when the molded cup worn” should read “when the molded cup is worn”
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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, 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 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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yip (US PG Pub 2014/0357157) in view of Gaudet et al. (herein Gaudet)(US PG Pub 2005/0255789) and Larson et al. (herein Larson)(US PG Pub 2023/0232915).
Regarding claim 1, Yip discloses a garment (brassiere 35, see Figs. 19-20) comprising:
a garment body (114, 118); and
a molded cup (116, 120), disposed on the garment body (see Figs. 7-13, 19, and 20),
wherein the molded cup includes at least a first layer (120) and a second layer (116; see at least Figs. 9-17 and paragraphs 0045-0049), the first layer being positioned closer to the wearer than the second layer when the garment is worn (see at least Fig. 9 and paragraphs 0045-0046, first layer 120 is an inner foam layer, and second layer 116 is an outer foam layer, such that, when the garment is worn, first layer 120 is positioned closer than second layer 116 to the wearer).
It is noted that the recitation of “molded” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. See MPEP 2113. A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. The method of forming the device is not germane to the issue of patentability of the device itself. Nevertheless, Yip teaches wherein the cup is molded in at least Figs. 10-13 and paragraphs 0047-0049.
Yip substantially discloses the invention as claimed above, but fails to further disclose wherein the first layer has at least one first hole, and the second has at least one second hole, wherein the diameter of the first hole is greater than the diameter of the second hole, thus achieving a one-way moisture-wicking effect.
However, Gaudet teaches a brassiere (10) comprising a molded cup (30) that includes at least a first foam layer (32) having a plurality of holes (38, see Figs. 1-5 and paragraphs 0026-0041), so as to facilitate the evaporation of perspiration through the foam layer (see at least paragraphs 0033-0037).
Furthermore, Larson teaches a garment pad (500, see Fig. 7A) comprising a first, inner foam layer (510) and a second, outer foam layer (520), wherein the first layer has at least one first hole (518), and the second has at least one second hole (528), wherein the diameter of the first hole is greater than the diameter of the second hole (see Fig. 7A and paragraph 0047), thus achieving a one-way moisture-wicking effect (see paragraph 0047, Larson teaches wherein the larger size of the first, inner holes “allow[s] more moisture to be wicked away during strenuous activities” and would therefore wick at least in one way from the wearer’s skin towards an outer direction of the pad), so as to allow more moisture to be wicked away from the wearer’s skin during strenuous activities (see paragraph 0047).
Therefore, based on Gaudet’s and Larson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Yip’s first and second layers to include at least one first hole and at least one second hole, respectively, wherein the diameter of the first hole is greater than the diameter of the second hole, thus achieving a one-way moisture-wicking effect; as doing so would facilitate the evaporation of perspiration through the foam layers and allow more moisture to be wicked away from the wearer’s skin during strenuous activities.
It is noted that the recitation of “thus achieving a one-way moisture-wicking effect” is a functional limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the limitation is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. Yip, Gaudet, and Larson together teach the structure as claimed, and Larson specifically teaches wherein the larger size of the first holes “allow[s] more moisture to be wicked away during strenuous activities” (see paragraph 0047 and rejection above), and therefore would have a reasonable expectation of performing such function. See MPEP 2173.05(g).
Regarding claim 2, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein at least one of the at least one first hole (518 of Larson) aligns with a corresponding second hole of the at least one second hole (528 of Larson, see at least Fig. 7A of Larson).
Regarding claim 3, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein at least one of the at least one first hole (518 of Larson) aligns with a region of the second layer (520 of Larson) that does not have a second hole (see at least Fig. 7A of Larson, first holes 518 are larger than second holes 528, such that at least a portion of first hole 518 aligns with a region of second layer 520 that does not have a second hole 528; the Examiner notes that Larson further teaches in paragraph 0047 wherein the placement and orientation of holes 518, 528 may vary).
Regarding claim 4, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein the diameter of the at least one first hole (518 of Larson) remains constant along the depth direction of the first hole (see at least Fig. 7A of Larson).
Regarding claim 5, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein the diameter of the at least one second hole (528 of Larson) remains constant along the depth direction of the second hole (see at least Fig. 7A of Larson).
Regarding claim 6, Yip, Gaudet, and Larson together teach the limitations of claim 1, as discussed above. Yip fails to further disclose wherein both the first layer and the second layer are sponge layers. Instead, Yip teaches wherein the first and second layers (116, 120) are foam layers (see at least paragraph 0046).
However, Larson further teaches wherein the pad (500) may include materials such as EVA foam, vinyl nitrile foam, vinyl sponge, neoprene sponge, sponge rubber, or other similar elastomeric materials commonly used in the art (see paragraph 0027).
Therefore, based on Larson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have substituted Yip’s foam material for a sponge material, such that the first and second layers would be sponge layers instead of foam layers, as such a modification would be nothing more than a simple substitution of one known elastomeric material for another (i.e., sponge instead of foam), to provide desired padding characteristics. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 7, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein the garment body (114, 118 of Yip) defines a receiving space (i.e., space for receiving molded cup 116, 120 of Yip), and the molded cup (116, 120 of Yip) is disposed within the receiving space (see at least Figs. 9-13 and paragraphs 0045-0049 and 0052).
Regarding claim 8, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein the garment (135 of Yip) is a brassiere (see at least Figs. 19-20 and paragraph 0052 of Yip).
Regarding claim 9, Yip discloses a molded cup (114, 116, 118, 120) comprising:
at least a first layer (120) and a second layer (116; see at least Figs. 9-17 and paragraphs 0045-0049), the first layer being positioned closer to the wearer than the second layer when the molded cup is worn (see at least Fig. 9 and paragraphs 0045-0046, first layer 120 is an inner foam layer, and second layer 116 is an outer foam layer, such that, when garment 135 is worn, first layer 120 is positioned closer than second layer 116 to the wearer).
It is noted that the recitation of “molded” is a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. See MPEP 2113. A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. The method of forming the device is not germane to the issue of patentability of the device itself. Nevertheless, Yip teaches wherein the cup is molded in at least Figs. 10-13 and paragraphs 0047-0049.
Yip substantially discloses the invention as claimed above, but fails to further disclose wherein the first layer has at least one first hole, and the second has at least one second hole, wherein the diameter of the first hole is greater than the diameter of the second hole.
However, Gaudet teaches a brassiere (10) comprising a molded cup (30) that includes at least a first foam layer (32) having a plurality of holes (38, see Figs. 1-5 and paragraphs 0026-0041), so as to facilitate the evaporation of perspiration through the foam layer (see at least paragraphs 0033-0037).
Furthermore, Larson teaches a garment pad (500, see Fig. 7A) comprising a first, inner foam layer (510) and a second, outer foam layer (520), wherein the first layer has at least one first hole (518), and the second has at least one second hole (528), wherein the diameter of the first hole is greater than the diameter of the second hole (see Fig. 7A and paragraph 0047, so as to allow more moisture to be wicked away from the wearer’s skin during strenuous activities (see paragraph 0047).
Therefore, based on Gaudet’s and Larson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Yip’s first and second layers to include at least one first hole and at least one second hole, respectively, wherein the diameter of the first hole is greater than the diameter of the second hole, as doing so would facilitate the evaporation of perspiration through the foam layers and allow more moisture to be wicked away from the wearer’s skin during strenuous activities.
Regarding claim 10, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein at least one of the at least one first hole (518 of Larson) aligns with a region of the second layer (520 of Larson) that does not have a second hole (see at least Fig. 7A of Larson, first holes 518 are larger than second holes 528, such that at least a portion of first hole 518 aligns with a region of second layer 520 that does not have a second hole 528; the Examiner notes that Larson further teaches in paragraph 0047 wherein the placement and orientation of holes 518, 528 may vary).
Regarding claim 11, the modified garment of Yip (i.e., Yip in view of Gaudet and Larson) is further disclosed wherein the shape of both the at least one first hole and the at least one second hole is circular (see at least Figs. 3-3A and paragraph 0034 of Gaudet, paragraphs 0045-0047 of Larson, and rejection of claim 1 above; Gaudet teaches circular holes, and Larson teaches wherein the holes/voids of the pad layers have shapes that match one another; as such, one of ordinary skill in the art would reasonably arrive at a configuration wherein the holes of both pad layers, i.e., the first holes and the second holes, each have a circular shape).
Conclusion
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 JOCELYN BRAVO whose telephone number is (571)270-0581. The examiner can normally be reached Monday, Tuesday, Thursday, and Friday, 12:00 pm - 4:00 pm.
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/JOCELYN BRAVO/Primary Examiner, Art Unit 3732
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