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 with traverse of Species 2 (Figs. 8-11, 32, and 33) in the reply filed on October 31, 2025 is acknowledged. The traversal is on the ground(s) that Species 1, 2, 3, and 4 are not mutually exclusive, because some of the Species include certain shared traits (for example, tensioning sections on a back of a shirt, shown in Species 2 and 3, or a V-shaped tensioning section on a bottom front of a shirt, shown in Species 2 and 4).
This is not found persuasive. The Examiner respectfully notes that “mutually exclusive” Species do not mean that the Species do not share any traits, but rather that the two Species exclude or preclude one another. For example, while Species 2 and 3 may each include tensioning sections on a back of a shirt, Species 2 has a V-shaped tensioning section on a bottom front of the shirt (see Fig. 8), while Species 3 does not have any tensioning sections on the front of the shirt (see Fig. 24). These two traits (having a V-shaped tensioning section on a front of the shirt, versus having no tensioning sections whatsoever on a front of the shirt) cannot exist together in the same embodiment; thus, they are mutually exclusive features. See page 2 of the Restriction Requirement mailed on September 2, 2025.
Applicant also argues that there would be no search and examination burden on the Examiner to examine all four species.
This is not found persuasive, because the species have been found to be mutually exclusive (see above), with differing structural features, and the distinct species would require different search queries. Furthermore, the mutually exclusive species would result in different prior art references being applied against different claims directed to the various species.
The Examiner reminds Applicant that upon allowance of any generic independent claim, any claims directed to withdrawn species may be considered for rejoinder as long as they do not contradict the independent claim.
The requirement is still deemed proper and is therefore made FINAL.
Claims 28-47 are presented for examination below.
Claim Objections
Claim 42 is objected to because of the following informalities “a V-shape” should read “a first V-shape” to enhance clarity and to provide proper antecedent basis for the second V-shape subsequently recited in claim 44.
Appropriate correction is required.
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 28-38 and 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 11,659,874, in view of Semba et al. (herein Semba)(US PG Pub 2009/0265828).
Regarding independent claims 28 and 47, although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of US Patent No. 11,659,874 anticipate each and every limitation of claims 28 and 47 of the pending invention, except wherein the upper-body piece does not include a support unit above the connection point on a front of the clothing.
While claim 1 of US Patent No. 11,659,874 discloses “wherein the upper-body piece does not include any support units other than the upper-body support unit and the upper body support unit does not include any support sections other than the upper-body first support section, the upper-body second support section, and the upper-body third support section,” and wherein the upper-body first support section is located along a front of the upper-body piece, claim 1 of US Patent No. 11,659,874 fails to specify wherein the upper-body second and third support units are on a back of the clothing, such that the upper-body piece does not include a support unit above the connection point on a front of the clothing.
However, Semba teaches clothing for covering a body of a wearer (see Figs. 1-5), the clothing comprising: an upper-body piece (1) for covering at least a portion of an upper half of the body (see Figs. 1-5); and an upper-body support unit (20) formed on the upper-body piece (see Figs. 1-5 and paragraphs 0028-0048); wherein the upper-body support unit includes a single support unit (24) on a front of the clothing (see Fig. 1) and a plurality of support units (21, 22, 23, 25, 26, 27, 28) on a back of the clothing (see Fig. 2), so as to support various muscle groups along the wearer’s back, such as the scapulae, latissimus dorsi, teres major, and trapezius (see paragraphs 0008-0012 and 0030-0033).
Therefore, based on Semba’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 specifically located the upper-piece second and third support sections of claim 1 of US Patent No. 11,659,874 along a back of the clothing, such that the upper-body piece would not include a support unit above the connection point on a front of the clothing; as doing so would support various muscle groups along the wearer’s back, such as the scapulae, latissimus dorsi, teres major/minor, and trapezius.
Regarding dependent claims 29-38, claims 1-9 of US Patent No. 11,659,874 further anticipate each and every limitation as shown in the correspondence chart below:
Pending Claims of 19/076,585
Claims of US Patent No. 11,659,874
Claim 29
Claim 1 – “an upper-body first support section including a first portion and a second portion extending from a bottom central location of a front of the upper-body piece”
Claim 30
Claim 1 - “an upper-body first support section including a first portion and a second portion extending from a bottom central location of a front of the upper-body piece in a converging manner to a point in an area above the bottom central location, the area above the bottom central location being lower than halfway between the bottom central location and a top central location of the upper-body piece”; the Examiner notes that the location of the support section as described would correspond to a midsection area of the upper-body garment
Claim 31
Claim 2
Claim 32
Claim 3
Claim 33
Claim 1 - “an upper-body first support section including a first portion and a second portion extending from a bottom central location of a front of the upper-body piece in a converging manner to a point in an area above the bottom central location”; the Examiner notes that the shape of the support section as described would form an upside-down V-shape
Claim 34
Claim 5
Claim 35
Claim 6
Claim 36
Claim 7
Claim 37
Claim 8
Claim 38
Claim 9
Claims 39-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US Patent No. 11,659,874, in view of Semba and Yang (US PG Pub 2013/0160189).
Regarding independent claim 39, although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of US Patent No. 11,659,874 and Semba, as discussed above, together teach and every limitation of claim 39 of the pending invention, except wherein the clothing further comprises a lower-body piece for covering at least a portion of a lower half of the body; and a lower-body support unit on the lower-body piece.
However, Yang teaches clothing (see Figs. 1-6) comprising an upper-body piece (1) for covering at least a portion of an upper half a wearer’s body (see at least Figs. 3 and 5) and a lower-body piece (10) for covering at least a portion of a lower half of the body (see at least Figs. 4 and 6), wherein the upper-body piece comprises an upper body support unit (3, 4, 5, 3’, 4’, 5’) and the lower-body piece comprises a lower-body support unit (11, 12, 13, 14, 11’, 12’, 13’, 14’), so as to support, reinforce, and/or protect muscles along both the upper body and the lower body of the wearer (see Abstract and paragraphs 0002, 0004, and 0009-0011).
Therefore, based on Yang’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 the clothing together taught by claims 1-9 of US Patent No. 11,659,874 and Semba to further comprise a lower-body piece for covering at least a portion of a lower half of the body; and a lower-body support unit on the lower-body piece; as doing so would support, reinforce, and/or protect muscles along both the upper body and the lower body of the wearer.
Regarding dependent claims 40-46, claims 1-9 of US Patent No. 11,659,874, Semba, and Yang together further teach each and every limitation as shown in the correspondence chart below:
Pending Claims of 19/076,585
Claims of US Patent No. 11,659,874, Semba, and Yang
Claim 40
Claim 1 of US Patent No. 11,659,874 – “an upper-body first support section including a first portion and a second portion extending from a bottom central location of a front of the upper-body piece”
Claim 41
Claim 1 of US Patent No. 11,659,874 - “an upper-body first support section including a first portion and a second portion extending from a bottom central location of a front of the upper-body piece in a converging manner to a point in an area above the bottom central location, the area above the bottom central location being lower than halfway between the bottom central location and a top central location of the upper-body piece”; the Examiner notes that the location of the support section as described would correspond to a midsection area of the upper-body garment
Claim 42
See annotated Fig. 4 of Yang below
Claim 43
See Figs. 1-6 and paragraphs 0037-0043 of Yang
Claim 44
See annotated Fig. 4 of Yang below and Figs. 1-6 and paragraphs 0037-0043 of Yang
Claim 45
Claim 5 of US Patent No. 11,659,874
Claim 46
Claim 7 of US Patent No. 11,659,874
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Allowable Subject Matter
Claims 28-47 are allowable over the prior art of record, pending resolution of the double patenting rejections discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example:
Dicker (US Patent No. 5,201,074) teaches a lower-body garment comprising a pair of support strips that form a symmetrical upside-down V-shape so as to extend upwardly and laterally towards one another and connect at a connection point
Fairhurst et al. (US Patent No. 6,446,264) teaches clothing comprising an upper-body piece and a lower-body piece, wherein the upper-body piece comprises a pair of upper abdominal tensioning seams that extend upwardly and laterally towards one another without connecting at a connection point
Yeomans (US PG Pub 2017/0079339) teaches clothing comprising an upper-body piece and a lower-body piece, wherein the upper-body piece comprises a pair of diagonal support elements that extend upwardly and laterally towards one another and connect at a connection point, the upper-body piece further comprising a vertical support element that extends from the connection point to a neck area of the clothing
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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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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/JOCELYN BRAVO/ Primary Examiner, Art Unit 3732
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