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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/13/2026 has been entered.
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.
Claims 1, 3-5, 8, 10-13, 17, and 19-21 are rejected under 35 U.S.C. 103 as obvious over Turner (U.S. PGPub 2011/0307998, cited in IDS) in view of Aldrich et al. (U.S. Patent 5,896,580, cited in IDS) and alternatively in view of Chen (U.S. PGPub 6,279,160, previously cited but not relied upon) and/or Sloot (U.S. PGPub 6,322,866, cited in IDS).
Claim 1: Turner discloses a method comprising: attaching a three-dimensional image element (300) to a protective pad (200 – noting that the apparel can be protective such as shin guards, leg protectors, etc., see paragraph 48; the base apparel 200 would also afford some degree of protective padding regardless), wherein: the protective pad comprises a body (e.g. implicitly the aforementioned shin guard) comprising an inner surface (206) configured to face toward a body part of a user and an outer surface (205) configured to face away from the body part (paragraph 28), the three-dimensional image element (300) comprises an inner layer (303) comprising an inner surface (surface facing 200, having fastener portion 304), an outer surface (opposite, having cover layer 301, facing away from the user), and a fastener (304) positioned on the inner surface (e.g. paragraphs 32 and 37), the inner layer comprising a first color (the inner layer would inherently have some color), an outer layer (pad 302) affixed to the outer surface of the inner layer, the outer layer comprising a second color (the outer layer would inherently have some color); and attaching the three-dimensional image element to the protective pad comprises attaching the fastener (304) of the inner surface of the inner layer of the three-dimensional image element to the outer surface of the protective pad such that the three-dimensional image element is carried on the protective pad and projects outwardly from the outer surface of the protective pad (e.g. paragraphs 26-27, 37; Figs. 2-5, 12A-B); and positioning the protective pad below at least one layer of fabric of an article worn by the user (implied in paragraphs 25 and 49 – the apparel 100 may be worn under other articles of apparel, such as jerseys or other athletic apparel).
Turner discloses a method substantially as claimed except for wherein an outermost perimeter of the inner layer is larger than an outermost perimeter of the outer layer such that a portion of the outer layer forms an uncovered border around the perimeter of the inner layer. However, Aldrich teaches a protective pad wherein a three-dimensional shape (11/12) as an outer layer is positioned on a background sheet (13/50C) as an inner layer such that an outermost perimeter of the inner layer is larger than an outermost perimeter of the outer layer such that a portion of the outer layer forms an uncovered border around the perimeter of the inner layer (column 2, lines 46-51; Fig. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have positioned the three-dimensional shape on the background sheet as claimed in order to both cover the outer edges of the three-dimensional shape and further secure the construction to the interior surface of the user's clothing (Id.).
While Turner discloses colors of the pads (paragraph 45), the second color is not necessarily different than the first color. However, it would have been obvious to have selected different colors since it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947), In this case, Applicant sole purpose for color selection appears to be visual or aesthetic and thus cannot be considered mechanical or functional in nature. Alternatively, Sloot teaches that different layers of a similar pad may be made in different colors (column 4, lines 28-57). It would have been obvious to have selected different colors in order to have provided a contrast as a decorative finish.
In positioning the protective pad below at least one layer of fabric of an article worn by the user, Turner does not explicitly disclose that the three-dimensional image element (300) causes a deformation of the at least one layer of fabric of the article in a shape corresponding to the three-dimensional image element. However, the examiner submits that a substantially protruding element such as 300, worn under at least one layer of fabric as disclosed, would be expected to raise the fabric to cause a deformation thereof in a shape generally corresponding to the three-dimensional image element (see the various shapes depicted in Figs. 15A-M, for example). In this sense, the examiner submits that Turner implicitly anticipates this aspect. Alternatively, Chen teaches that a three-dimensional image element (pad) under a layer of fabric (a layer of a pocket) causes a deformation of the at least one layer of fabric of the article in a shape corresponding to the three-dimensional image element (column 3, lines 10-13; Fig. 6). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have allowed for the three-dimensional image element to cause a deformation of the at least one layer of fabric of the article in a shape corresponding to the three-dimensional image element as a natural occurrence depending upon one’s choice of article of clothing selected to be worn over the element, such as a relatively thin and flexible article worn on a hot day and/or during physical exertion.
Claim 3: Referring to Turner, the fastener comprises a hook and loop fastener (paragraph 27), and attaching the three-dimensional image element to the protective pad comprises attaching the hook and loop fastener to a corresponding hook and loop fastener on the outer surface of the protective pad (paragraphs 29 and 37).
Claim 4: The three-dimensional image element comprises foam (paragraph 35).
Claim 5: Turner does not specify closed cell foam. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used closed cell foam since 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. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraphs 51 and 53, Applicant has not disclosed any criticality for the type of foam.
Claim 8: The outer surface (205) of the protective pad is larger than the inner surface of the three-dimensional image element (evident in figures, as the three-dimensional image elements are all smaller than the overall garment).
Claim 10: The protective pad is configured to protect the body part of the user (e.g. paragraphs 36 and 48).
Claim 11: The three-dimensional image element is configured as a shape of a letter or number (e.g. an “H” or a sideways “I”, see Fig. 15J). Furthermore, it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, paragraphs 4 and 11, Applicant has not disclosed any criticality for the shape of three-dimensional image element. The examiner also notes that the concept of a “letter or number” is broad as it is dependent upon the language system, font, and style of the characters representing the letter or number. Any shapes or symbols might represent a letter or number depending on these variables, for example using the Wingdings font, or hieroglyphics.
Claim 12: Turner does not disclose that the three-dimensional image element is configured as a shape of entwined letters. However, it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, paragraphs 4 and 11, Applicant has not disclosed any criticality for the shape of three-dimensional image element. The examiner also notes that the concept of “entwined letters” is broad as it is dependent upon the language system, font, and style of the characters representing the letter or number. Any shapes or symbols might represent a word depending on these variables, for example using the Wingdings font, or hieroglyphics.
Claim 13: The three-dimensional image element is configured as a shape of a word (“I” is both a letter and a word – see Fig. 15J). Furthermore, it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, paragraphs 4 and 11, Applicant has not disclosed any criticality for the shape of three-dimensional image element. The examiner also notes that the concept of a “word” is broad as it is dependent upon the language system, font, and style of the characters representing the letter or number. Any shapes or symbols might represent a word depending on these variables, for example using the Wingdings font, or hieroglyphics.
Claim 17: The protective pad is configured to protect an external area of the user (e.g. paragraphs 36 and 48).
Claims 19-21: Turner does disclose that the outer layer (pad 302) is foam as cited previously. Turner, etc. teach a method substantially as claimed except for wherein the inner layer, or each of the inner layer and the outer layer of the three-dimensional image element comprises a foam layer. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used foam since 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. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, Applicant has not disclosed any criticality for the material.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Turner and Aldrich et al. (and Chen and Sloot as applicable) as applied to claim 1 above, and further in view of Giansetto (U.S. Patent 5,840,408).
Turner and Aldrich teach a method substantially as claimed except for wherein the fastener comprises an adhesive, and attaching the three-dimensional image element to the protective pad comprises attaching the adhesive to the outer surface of the protective pad. However, Giansetto teaches a wearable garment (12) having a detachable image element (10) wherein attaching the image element to the garment comprises attaching an adhesive (24) to the outer surface of the garment (column 3, line 56 – column 4, line 9; column 4, lines 25-55). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an adhesive, for example instead of hook and loop, since it can be re-used many times without any degradation occurring to either the adhering surface 44 or the image element. Furthermore, because both Turner and Giansetto teach methods for removably attaching image elements to articles of clothing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one method for the other to achieve the predictable result of removably adhering an image element.
Claim 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Turner and Aldrich et al. (and Chen and Sloot as applicable) as applied to claim 4 above, and further in view of Sloot (U.S. Patent 6,322,866, cited in IDS).
Turner does not specify closed cell foam. However, Sloot teaches a three-dimensional image element made from closed-cell foam (column 5, lines 9-10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used closed cell foam since sits lack of open cell structure may prevent or reduce absorption of fluids, for example.
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive.
Applicant begins by reiterating the same argument regarding the use of contrasting colors as was made in the previous remarks filed 8/6/2025. After citing that the use of contrasting colors is for “further facilitating the visibility of the three-dimensional image element when positioned under clothing” and to “facilitate the visibility of the design when used under clothes” (bold added for emphasis), Applicant then suggests that the use of the colors “is not for purely visual or aesthetic effect”. It should go without saying that "facilitating…visibility" is indeed a visual effect. Color would not- and could not- influence the physical deformation of the fabric layer. Again, its effect is purely visual in nature.
Applicant further asserts that the alleged functional advantages of the claimed invention “contrasts with In re Seid wherein a shape of body was chosen for purely ornamental reasons”. However, the visibility of the design is for ornamental purposes. The term "ornamentation" is literally in the title of the instant application. The entire purpose of the instant invention is to provide an ornamental effect (e.g. [0042]) to what would otherwise be mundane protective equipment having an otherwise identical function.
Sloot, used as an alternative to the above, provides motivation to use different colors. In doing so, the effects alleged by Applicant are presumed to flow naturally therefrom.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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