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 .
Inventorship
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 115(a) reads as follows (in part):
An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.
The present application sets forth the incorrect inventorship because the present application is Continuation of application 18/796985 which is a Continuation of 18/382,265, but lists an additional inventor who was not listed in the parent application(s). Specifically, the parent applications 18/382265, 18/091268, 17/586050, 17/030362, and 16/392512 list a single inventor however the current Continuation application lists an additional inventor.
Parent application 18/382,265 is a continuation application in a series of continuation applications, all of which list a single sole inventor. The parent applications 18/382265, 18/091268, 17/586050, 17/030362, and 16/392512 list the sole inventor as Carrie Shaltz Haslup, while the present application lists the joint inventors Carrie Shaltz Haslup and Philip Weldon Shaltz. A continuation application may only name as inventors the same or fewer than all inventors named in the prior application (37 CFR 1.53(b)(1)).
Claims 1-16 are rejected under 35 U.S.C. 101 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.
This rejection may be overcome by correcting the inventorship on the present application per 37 CFR 1.48, which requires a new ADS listing only the inventor of the parent applications (Carrie Shaltz Haslup) and the required fee.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “attachment mechanisms” in claims 2 and 3, and “attachment mechanism” in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 5-6, 10-11, and 14-15 are objected to because of the following informalities:
In claims 5, 10, and 14, in order to properly recite the closed Markush group, “from the group of types” should read as “from the group consisting of” (MPEP 2173.05(h)).
In claims 6, 11, and 15, “the garment is placed” should read as “the garment is configured to be placed” in order to clarify that the human body (person) is not being positively claimed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, line 5, “at the least one second flap” is confusing. It appears that this should read as “the at least one second flap”.
Claim Rejections - 35 USC § 102
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 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 1-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sauchelli (US 2007/0289046).
Regarding claim 1, Sauchelli discloses a garment comprising:
a top opening (neck opening seen in Figs. 2-3) with a front (see front panel 12 having a front top opening formed by the neck line 13 of panel 12; Figs. 1-3 and para. 0018) and a back (see back formed by panels 56,58; the back of the top opening is formed by the upper edges of panels 56,58; Figs. 1-4 and paras. 0016-0017);
at least one first flap (18; see Figs. 2-3) configured with the back of the top opening; and
at least one second flap (16; see Fig. 2-3) configured with the front of the top opening;
wherein the at least one first flap (18) and the at least one second flap (16) are joined to form at least one sleeve of the garment (see Figs. 2-3 and 5; paras. 0017, 0019, 0021).
Regarding claim 2, the garment of Sauchelli further comprises attachment mechanisms (20, 22: Fig. 3) configured with the at least one first flap (18) and the at least one second flap (16); see Fig. 3 and para. 0017. The attachment mechanisms of Sauchelli are the same structure (hook and loop material) performing the same function as that of applicant’s “attachment mechanisms” within the meaning of this limitation under 35 U.S.C. 112(f).
Regarding claim 3, the attachment mechanisms (20, 22) join the at least one first flap (18) to the at least one second flap (16) [0017-0021].
Regarding claim 4, the attachment mechanisms (20, 22) are hook and loop material [0021].
Regarding claim 5, the garment is a shirt (see Fig. 3) or a one piece suit (see the structure shown in Figs. 1 and 3) as claimed.
Regarding claim 6, the recitation that “the garment is placed on the body of a person by placing the person’s feet through the top opening of the garment” amounts to the intended use of the device (or method of use of the device) and does not further define the structure over that of Sauchelli. The garment of Sauchelli could be used in the recited manner if desired. As to claim 7, the recitation of the use of the garment on an infant amounts to the intended use of the device and does not further define the structure over that of Sauchelli. Note that Sauchelli discloses that the garment may be used on a child [0030].
Regarding independent claims 8 and 13, Sauchelli discloses a garment comprising:
a top opening (neck opening seen in Figs. 2-3) with a front (see front panel 12 having a front top opening formed by the neck line 13 of panel 12; Figs. 1-3 and para. 0018) and a back (see back formed by panels 56,58; the back of the top opening is formed by the upper edges of panels 56,58; Figs. 1-4 and paras. 0016-0017);
at least one first flap (18; see Figs. 2-3) configured with the back of the top opening and configured with at least one first section (20; see Fig. 3) of hook and loop material [0017, 0021]; and
at least one second flap (16; see Fig. 2-3) configured with the front of the top opening and configured with at least one second section (22; see Fig. 3) of hook and loop material [0017, 0021];
wherein the at least one first section of hook and loop material (20) and the at least one second section of hook and loop material (22) are joined to join the at least one first flap (18) with the at least one second flap (16) (see Figs. 2-3 and para. 0017); and wherein the joined at least one first flap (18) and at least one second flap (16) form at least one sleeve of the garment (see Figs. 2-3 and 5; paras. 0017, 0019, 0021). The hook and loop material (20, 22) forms first and second attachment mechanisms as in claim 8. The hook and loop material forms “attachment mechanisms” having the same structure (hook and loop material) performing the same function as that of applicant’s “attachment mechanisms” within the meaning of this limitation under 35 U.S.C. 112(f).
Regarding claim 9, the attachment mechanisms (20, 22) are hook and loop material [0021].
Regarding claims 10 and 14, the garment is a shirt (see Fig. 3) or a one piece suit (see the structure shown in Figs. 1 and 3) as claimed.
Regarding claims 11 and 15, the recitation that “the garment is placed on the body of a person by placing the person’s feet through the top opening of the garment” amounts to the intended use of the device (or method of use of the device) and does not further define the structure over that of Sauchelli. The garment of Sauchelli could be used in the recited manner if desired. As to claims 12 and 16, the recitation of the use of the garment on an infant amounts to the intended use of the device and does not further define the structure over that of Sauchelli. Note that Sauchelli discloses that the garment may be used on a child [0030].
Conclusion
This application is a continuation of applicant's earlier Application No. 18/796,985. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. 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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no, however, event will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Note the references cited on the attached PTO-892, which disclose garments having flap structures similar to that claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY VANATTA whose telephone number is (571)272-4995. The examiner can normally be reached Mon-Thurs and alternate Fridays.
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 on 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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/AMY VANATTA/Primary Examiner, Art Unit 3732