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 .
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.
Claim 1 is 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.
Claim 1 recites “raw cut” in line 7. It is unclear how to define “raw cut” as any fabric is cut before assembled. For the purpose of applying art, the edge being “raw cut” is interpreted as the edge being cut.
Claim 1 recites “the inner layer” in line 8 and “the exterior layer” in line 9. It is unclear “the inner layer”, “the exterior layer” are the same as “an inner fabric layer” in line 3 and “ the exterior fabric layer” in line 4 or not. For the purpose of applying art, “the inner layer” is interpreted as the inner fabric layer and “the exterior layer” is interpreted as the exterior fabric layer”.
Claim 1 recites “the exterior surface of the inner fabric layer along an edge portion of at least one of the burst portion and the bottom portion” in lines 10-11. It is unclear if the burst portion comprises “the exterior surface of the inner fabric layer” or not as the claim does not define the structure of the burst portion previously. Then there is insufficient antecedent basis for this limitation in the claim.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2020/0397064).
Regarding claim 1, Liu teaches a garment comprising: a bust portion (fig. 1A, a bra), a bottom portion (fig. 8, an underwear), including a waist portion configured to surround a torso (fig. 8), a left leg opening defined by a lower left edge portion, and a right leg opening defined by a lower right edge portion (fig. 8), and a first positioning strip (fig. 5C, para. [0066], a support strip 144 along the edge 116 of the two arm openings) formed on the exterior surface of the inner fabric layer along an edge portion of at least one of the burst portion and the bottom portion.
Liu does not clearly teach in fig. 8 the bottom portion comprises an inner fabric layer including an interior surface and an exterior surface, and an outer fabric layer including an interior surface and an exterior surface, wherein the lower left edge portion and lower right edge portion being raw cut and being bonded with a bonding layer between the interior surface of the inner layer and the interior surface of the exterior layer.
However, Liu teaches in fig. 5C an inner fabric layer (fig. 5C, layer 102) including an interior surface and an exterior surface, and an outer fabric layer (fig. 5C, layer 104) including an interior surface and an exterior surface; the edge being raw cut (para. [0066], the edge is a “free cut edge”) and being bonded with a bonding layer (fig. 5C, layer 128) between the interior surface of the inner fabric layer and the interior surface of the outer fabric layer (fig. 5C).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the invention to modify the lower left edge portion and the lower right edge portion of the bottom portion in fig. 8 being raw cut and being bonded with a bonding layer for the benefit of saving material and labor in manufacturing the garment while providing a seamless look to the garment.
Liu does not clearly teach the garment functions as “a swimsuit”. However, Liu teaches the article of clothing may be any garment which may be worn by a wearer (para. [0046]). Moreover, “a swimsuit” is an intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,357,039. Although the claims at issue are not identical, they are not patentably distinct from each other because although the conflicting claims are not identical, they are not patentably distinct from each other because, for instance, the difference between the patented claim 1 and the instant claim 1 are minor and obvious from each other. The instant claim 1 is a broader version of the patented claim (i.e. the instant claim 1 does not include the limitations the bust portion comprising “an inner fabric layer including an interior surface and an exterior surface, and an outer fabric layer including an interior surface and an exterior surface, the bust portion including a left shoulder strap, a right shoulder strap…”). Therefore, the patented claim 1 would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the patented claim 1. Any infringement over the patented claim 1 would also infringe over the instant claim 1. Hence, the instant claim does not differ from the scope of the patented claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UYEN THI THAO NGUYEN whose telephone number is (571)272-8370. The examiner can normally be reached Monday-Friday 7:30 AM-4:30 PM 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, Khoa Huynh can be reached at 571-272-4888. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/UYEN T NGUYEN/Examiner, Art Unit 3732