DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the covering apparatus for golf clubs or fashion accessory (claim 14) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: the limitation “wherein the material is covering an object without slipping and sliding off the object” should read “wherein the material is configured for covering an abject without slipping and sliding off the object”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: "poly urethane” should read "polyurethane".
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.
Claim 1 recites the limitation "the interior perimeter" (line 3). There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitations "said materials" (line 6) and “the rear of the covering apparatus” (line 7). There is insufficient antecedent basis for these limitations in the claim.
Claim 1 and the claims that depend therefrom 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 pre-AIA the applicant regards as the invention. It is unclear what “said materials” is referring to, there is only support for "a unitary material" not plural materials, it is unclear what this is referring to and how the materials relate to the covering apparatus.
Claim 3 and the claims that depend therefrom 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. It is unclear how the elastic member can be enclosed in the material (claim 1) and then not enclosed in the material (claim 3). Are portions of the elastic material enclosed and portions of the elastic material not enclosed?
Claim 4 recites the limitation "the interior edges". There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the fabric". There is insufficient antecedent basis for this limitation in the claim.
Claim 6 and the claims that depend therefrom 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. It is unclear what “the fabric” is referring to and how it is structurally associated with the covering apparatus, is this “fabric” different than the material of the covering apparatus as presented in claim 1?
Claim 8 and the claims that depend therefrom 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 pre-AIA the applicant regards as the invention. It is unclear what the metes and bounds of the limitation "or any material which may provide a water tight seal" would be. It is unclear what materials would and would not read on this limitation and the term “may” does not make it clear if the material needs to actually form a water tight seal or not, therefore the limitation is indefinite.
Claim 10 and the claims that depend therefrom 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 pre-AIA the applicant regards as the invention. It is unclear what "the materials" are referring to, there is a lack of antecedent basis for this limitation. Claim 1 from which claim 10 depends refers to a material of the unitary cover, it is unclear how “materials” (plural) relate to the material (singular) of claim 1.
Claim 13 recites the limitation "the shower cap". There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the exterior of the material". There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "said folds". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The elastic member is enclosed in the material in claim 1 and then not enclosed in the material in claim 3. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim(s) 1, 2, 4, 8, 9, 11, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ordiway (US 7,011,228).
Ordiway teaches a covering apparatus comprising: a unitary material (14);
said material adapted and configured with a grip (adhesive: 26) disposed around the interior perimeter of the material (figures 4 and 6A-6C): said grip (26) being fused to said material (column 3, lines 19-39);
wherein the grip (adhesive: 26) enables the material (14) to provide a water tight seal wherein the material is covering an object without slipping and sliding off the object (column 4, lines 15-28, detailing grip and seal formed by adhesive: 26); said material (14) adapted and configured with an elastic member (elastic material: 20) which is enclosed in the material (see figures 6A-6C, periphery 22 that warps around the elastic: 20) which is located in the rear of the covering apparatus (figures 4, 6A, 6B and 6C).
In regard to claim 2, Ordiway teaches wherein the material (14) enables the covering apparatus to be secured over a plurality of objects (see figure 4: column 4, lines 15-28).
In regard to claim 4, Ordiway teaches wherein the elastic member (20) is located around the interior edges of the covering apparatus (figures 6A-6C).
In regard to claim 8, Ordiway teaches wherein the grip (26) is comprised of rubber, neoprene or any material which may provide a water tight seal (column 4, lines 15-28).
In regard to claim 9, Ordiway teaches wherein the material (14) is adapted and configured to be water resistant (column 2, lines 62-67).
In regard to claim 11, Ordiway teaches wherein the grip (26) is stitched, bonded or piped to the material (column 3, lines 28-30).
In regard to claim 14, Ordiway teaches wherein the covering apparatus (14) is capable of being used to cover golf clubs, hair or as a fashion accessory (see figure 4, no additional structure being claimed capable of being used as desired over clubs or used as an accessory).
Claim Rejections - 35 USC § 103
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 1-6 and 8-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dammann et al. (US 2014/0101821) in view of Saunders (US 2,730,720).
In regard to claim 1, Dammann et al. teaches a covering apparatus (100) comprising:
a unitary material (100);
said material adapted and configured with an elastic member (108.1) which is enclosed in the material which is located in the rear of the covering apparatus (paragraph 0013: figures 2A or 2B), wherein the material (100) is capable of covering an object without slipping and sliding off the object (paragraph 0013).
However, Dammann et al. fails to teach a grip disposed around the interior perimeter of the material: said grip being fused to said material; wherein the grip enables the material to provide a water tight seal wherein the material is covering an object without slipping and sliding off the object.
Saunders teaches a shower cap (10) with a grip (13) disposed around the interior perimeter of the material (10): said grip (13) being fused to said material (figures 1 and 2); wherein the grip (13) enables the material to provide a water tight seal wherein the material is covering an object without slipping and sliding off the object (column 2, lines 15-22).
It would have been obvious before the effective filing date of the invention to one having ordinary skill in the art to have provided the shower cap of Dammann et al. with the water tight seal grip of Saunders, since the shower cap of Dammann et al. provided with a water tight seal grip would provide a shower cap that prevents water from entering along the sides of the cap wetting the user’s hair below.
In regard to claim 2, Dammann et al. teaches a shower cap (100) wherein the material enables the covering apparatus to be secured over a plurality of objects (the material of Dammann et al. is capable of being secured over a plurality of objects, sufficient structure capable of performing as desired).
In regard to claim 3, Dammann et al. teaches wherein the elastic member (108.1) is not enclosed in the material (see figures 2A, 2B).
In regard to claim 4, Dammann et al. teaches wherein the elastic member is located around the interior edges of the covering apparatus (see 108.1 that extends around channel 106: paragraph 0013).
In regard to claim 5, Dammann et al. teaches wherein the material (100) is comprised of a fabric (paragraph 0014 and 0017).
In regard to claim 6, Dammann et al. teaches wherein the fabric is adapted and configured with a poly urethane backing (paragraph 0014: PUL (polyurethane laminate) is a knit polyester material with a polyurethane backing).
In regard to claim 8, Saunders teaches wherein the grip (13) is comprised of rubber, neoprene or any material which may provide a water tight seal (column 2, lines 15-41).
In regard to claim 9, Dammann et al. teaches wherein the material (100) is adapted and configured to be water resistant (paragraph 0014: inherent of PUL material).
In regard to claim 10, it would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the shower cap of Dammann et al. with a plurality of designs, since one having ordinary skill in the art before the effective filing date of the invention would be able to determine the design on a garment for aesthetic purposes. It is noted that the designs being digitally sublimated on the apparatus a product-by-process limitation and therefore, does not further define the structure of the apparatus. As long as, a shower cap has a design it can be applied in any method as is known and desired.
In regard to claim 11, Saunders teaches wherein the grip (13) is stitched, bonded or piped to the material (adhesives connection to the hat is bonding: figure 2).
In regard to claim 12, Dammann et al. teaches wherein the covering apparatus is a shower cap (see figures 2A, 2B).
In regard to claim 13, Dammann et al. teaches wherein the covering apparatus (100) is able to reduce the noise heard by an individual wearing the shower cap. It is noted that no further garment structure is being claimed, Dammann teaches the cap being made of PUL material and PUL material when worn over the ear would reduce noise head by the individual.
In regard to claim 14, Dammann teaches wherein the covering apparatus (100) is capable of being used to cover golf clubs, hair or as a fashion accessory. It is noted that no further garment structure is being claimed, Dammann teaches all of the required apparatus structure and is therefore capable of performing as desired.
In regard to claim 15, Dammann et al. teaches wherein the material (100) is adapted and configured to include a plastic liner disposed on the entire inside of the material (paragraph 0014; inherent of PUL material: knit polyester layer with a laminated backing of polyurethane).
In regard to claim 16, Dammann et al. teaches wherein the material is adapted and configured to include a plastic liner fused on the entire inside of the material (paragraph 0014; inherent of PUL material: knit polyester layer with a laminated backing of polyurethane).
In regard to claim 17, Dammann et al. teaches wherein the material is either knit or woven (paragraph 0014; inherent of PUL material: knit polyester layer with a laminated backing of polyurethane).
In regard to claim 18, Dammann et al. teaches wherein the exterior of the material is multiply folded on each side wherein said folds culminate into a point (see folds along the channel 106 that culminate to stitching line at top of channel: figures 2A, 2B).
In regard to claim 19, Dammann et al. teaches wherein the covering apparatus (100) is capable to be used for surgical and hair sanitary purposes. It is noted that no further garment structure is being claimed, Dammann teaches all of the required apparatus structure and is therefore capable of performing as desired.
In regard to claim 20, Dammann teaches wherein the material comprises a pocket for enclosing hair (see figures 2A, 2B).
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dammann and Saunders as applied to claim 1 above, and further in view of Rhew (US 2008/0222781).
In regard to claim 7, Dammann et al. teaches wherein the material is hydrophobic, durable water repellent fabric (paragraph 0014: inherent of a PUL material).
However, Dammann and Saunders fail to teach the material having a nanotechnology component.
Rhew teaches a material used for garments having a nanotechnology (paragraph 0035).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the hydrophobic water repellant fabric of Dammann et al. with the nanotechnology of Rhew, since the fabric of Dammann et al. provided with nanotechnology would provide a fabric with increased water repellency.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 5-6 and 8-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,021,930. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a covering apparatus with elastic member and grip structure (see claim 1 of the instant application with claims 1, 3 and 7 of US 10,021,930; claim 2, 3, 5, 6, 12, 14 and 18-20 of the instant application with claim 1 of US 10,021,930; claim 8 of the instant application with claim 7 of US 10,021,930; claim 9 of the instant application with claims 1 and 4 of US 10,021,930; claim 10 of the instant application with claim 2 of US 10,021,930; claim 11 of the instant application with claim 3 of US 10,021,930; claim 13 of the instant application with claims 1 and 4 of US 10,021,930; claim 15 and 16 of the instant application with claim 4 of US 10,021,930; and claim 17 of the instant application with claim 5 of US 10,021,930).
Claims 1-2, 4-6, 8-9, 11-14 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,336,584. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a covering apparatus with elastic member and grip structure (see claims 1, 2, 4, 6, 8, 9, 11, 12, 13, 14, 19 and 20 of the instant application with claim 1 of US 12,336,584; claims 5 and 17 of the instant application with claim 3 of US 12,336,584; and claim 18 of the instant application with claims 1 and 2 of US 12,336,584).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be found cited in PTO-892 form submitted herewith. The cited prior art to Matallana (US 9,398,780) is of particular relevance to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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 T 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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ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732