DETAILED ACTION
This is in response to application filed on June 9th, 2025 in which claim 1 is presented for examination.
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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2-4 of prior U.S. Patent No. 12324464, herein ‘464. This is a statutory double patenting rejection.
Claim 1 of ‘464 teaches all of Claim 1 of the instant application other than indicating that the elastic member is of fabric. However, Claims 2, 3, and 4 all individually teach fabric.
Instant Application
Patent No 12324464
1. An activewear garment for engaging in sporting activities comprising:
1. An activewear garment for engaging in sporting activities:
an upper head portion adapted to be worn about and secured to a user's head;
an upper head portion adapted to be worn about and secured to a user's head;
a facial opening formed on an anterior side of said upper head portion,
a facial opening formed on an anterior side of said upper head portion,
said facial opening being adapted to allow a user's face to protrude,
said facial opening being adapted to allow a user's face to protrude,
said facial opening having a circumference;
said facial opening having a circumference;
a fabric elastic member that is attached to said upper head portion; and
an elastic member that is attached to said upper head portion; and(AND one of the following)2. The activewear garment of claim 1, wherein said elastic member comprises a woven fabric.3. The activewear garment of claim 1, wherein said elastic member comprises a woven fabric.4. The activewear garment of claim 1, wherein said elastic member comprises a braided fabric.
wherein said fabric elastic member comprises a top portion and a bottom portion,
wherein said elastic member comprises a top portion and a bottom portion,
wherein said top portion has a first end and second end,
wherein said top portion has a first end and second end,
wherein said bottom portion has a first end and second end,
wherein said bottom portion has a first end and second end,
wherein said first end of said top portion is spaced apart from said first end of said bottom portion forming a first gap between the top portion and the bottom portion,
wherein said first end of said top portion is spaced apart from said first end of said bottom portion forming a first gap between the top portion and the bottom portion,
said first gap positioned adjacent to an interior rim of said facial opening,
said first gap positioned adjacent to an interior rim of said facial opening,
wherein said second end of said top portion is spaced apart from said second end of said bottom portion forming a second gap between the top portion and the bottom portion,
wherein said second end of said top portion is spaced apart from said second end of said bottom portion forming a second gap between the top portion and the bottom portion,
said second gap positioned adjacent to said interior rim on an opposing side of said facial opening from said first gap,
said second gap positioned adjacent to said interior rim on an opposing side of said facial opening from said first gap,
wherein, other than at said first gap and said second gap, said fabric elastic member is attached to said upper head portion around an entirety of said circumference of said facial opening
wherein, other than at said first gap and said second gap, said elastic member is attached to said upper head portion around an entirety of said circumference of said facial opening
Lack of Power of Attorney
A Terminal Disclaimer or e-Terminal Disclaimer would help place the application in condition for allowance. However, an examiner-initiated telephone call to discuss merits of the case was not permitted because it appears applicant has legal representation but a valid power of attorney has not been filed in the present application. Providing representative information in an Application Data Sheet (ADS) does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and MPEP § 408. For information on appointing a power of attorney, see MPEP § 402.02 et seq. A valid power of attorney is recommended to avoid delays in prosecution and for compact prosecution.
A courtesy call was made on 11/26/25 to Zachary Hilton to invite the filing of a power of attorney in an attempt at compact prosecution, but resulted in the office action herein.
Examiner Notes
Claim(s) 1, as best understood from the disclosure, is/are free of U.S.C. 102/103 rejections, and may be allowable for the reasons set forth below after all double patenting issues are resolved.
Regarding Claim 1, none of the prior art of record discloses a garment with upper head portion and facial opening having a circumference, along with a fabric elastic member attached to the upper head portion of the garment, wherein said fabric elastic member comprises top/bottom portions, each portion with first/second ends, wherein said first end of the top portion is spaced apart from said first end of said bottom portion forming a first gap between the top/bottom portion, wherein said second end of said top portion is spaced apart from said second end of said bottom portion forming a second gap between the top portion and the bottom portion, wherein, other than at said first gap and said second gap, said fabric elastic member is attached to said upper head portion around an entirety of said circumference of said facial opening, in conjunction with the other structural limitations, as set forth in the independent claim. The use of members forming first/second gaps in an upper head portion of a garment is known in the art of garments, but the specific extent of the fabric elastic member being around an entirety of the circumference of the facial opening other than at first/second gaps as defined as claimed by the applicant is novel. Specifically, prior art McGreggor (USPN 6948190) discloses a garment’s upper head portion with different upper/lower members forming the first/second gaps as defined in the claims (first gap between top/bottom portion from first ends spaced apart; second gap between top/bottom portion from second ends spaced apart) as recited in the application. Prior art Day et al (US Publication 2017/0361054), herein Day, teaches a fabric member attached to a garment’s upper head portion. However, none of the prior art discloses, teaches, or suggests that a fabric elastic member of a garment’s upper head portion has top/bottom portions, each portion with first/second ends, each of the first ends forming a first gap between, each of the second ends forming a second gap between, in conjunction with the other structural limitations.
To modify McGreggor’s fabric elastic member at the bottom to replace the member at the top merely to be as recited in the current application would be impermissible hindsight reconstruction of the applicant’s invention without any disclosure, teaching, or suggestion from the prior art of record, as is presently the case, especially when McGreggor clearly wants the top/bottom to be different; even though variations are disclosed as being possible, the variations listed are only interchanging positions of the top/bottom members, not a substitution of the members such that the top/bottom are the same. Furthermore, to modify Day’s fabric member such that there are ends would be impermissible hindsight reconstruction of the applicant’s invention without any disclosure, teaching, or suggestion from the prior art of record, as is presently the case.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be used to formulate a rejection if necessary: Hasegawa (JP 2006/296817) directed to a member with top/bottom portions, first/second ends, and first/second gaps, but is not around the entirety of the facial opening circumference other than at the first/second gaps; Sheridon et al (USPN 5136470) directed to elastic member; Nachawati (USPN 11388937), Nachawati (USPN 11910848) directed to related cases; Devel (FR 2126472) directed to a member with first/second ends forming a gap between at least one of the ends in a bra cup; Lunsford (USPN 9138025) directed to an elastic member having top/bottom portions; Morgan et al (USPN 6889390) directed to elastic member having top/bottom portions with first/second ends, without gaps.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
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/GRACE HUANG/Primary Examiner, Art Unit 3732