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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (a jacket) in the reply filed on December 30, 2025 is acknowledged.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Accordingly, claims 1-20 are pending in this application, with an action on the merits to follow regarding claims 1-12.
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.
Claims 1, 6-7, 9-10, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of U.S. Patent No. 12349753 in view of Bublitz (US 2015/0327612). Claims 1 and 19 of US 12349753 are more specific than, but include all the limitations of claims 1, 6-7, 9-10, and 12 of the instant application with the except of the jacket collar comprising a first magnetic fastener and the second magnetic connector (in the collar/flap of the hood) that is coupled to the first magnetic connector. Bublitz teaches a hood attached to a collar where the collar comprises a first magnetic fastener (56, see para. 0022) and the second magnetic connector (16C) (in the collar/flap 14 of the hood 10) that is coupled to the first magnetic connector (see Fig. 5 and para. 0022). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have added a magnetic fastener to the jacket collar that couples to the magnetic fastener of the collar/flap of the hood in order to securely and reversibly attach the hood to the jacket collar so that hood does not detach unless desired by the wearer.
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 11 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.
Claim 11 is indefinite as it recites, “further comprising a zipper, wherein an opening of the connection sleeve is oriented away from the zipper.” It is unclear as to what structure comprises the zipper as it may be the jacket, the jacket body, the detachable hood, or one or more of the preceding structures. Based on the description and figures, the zipper 110 is part of the jacket body 102 (see paras. 0034 and 0037), and therefore Examiner respectfully suggests amending to recite, “the jacket body further comprising a zipper, wherein an opening of the connection sleeve is oriented away from the zipper.”
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.
Claim(s) 6 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bublitz (US 2015/0327612).
Regarding claim 6, Bublitz discloses a jacket (10/50) comprising: a jacket body (50, see para. 0020 where 50 can be a jacket) comprising: a jacket collar (52); and a first magnetic connector (56, disclosed as magnetic in para. 0022) positioned at the jacket collar (see Fig. 4 where 56 is on the inside face 54 of collar 52); and a detachable hood (10) comprising: a front hood flap (15, considered a flap as it a projecting piece attached at one side and it extends to the front portion of the hood) comprising a second magnetic connector (16, disclosed as magnetic in para. 0015); wherein the front hood flap is removably attachable to the jacket collar by coupling the second magnetic connector to the first magnetic connector (as disclosed in para. 0023).
Regarding 12, Bublitz discloses wherein an end portion (portion at 14 in Fig. 4) of the front hood flap (15) is concealed when the first magnetic connector (56) and the second magnetic connector (16) are coupled together (as understood from Fig. 4, when 56 and 16 are connected, and the collar is closed around the neck, the end portions of the flap will not be visible).
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.
Claim(s) 6-7, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark (US 2004/0143880) in view of York (US 2022/0369744).
Regarding claim 6, Clark discloses a jacket (1/10) comprising: a jacket body (1) comprising: a jacket collar (4); and a first connector (100) positioned at the jacket collar (see Fig. 1); and a detachable hood (10) comprising: a front hood flap (12) comprising a second connector (200); wherein the front hood flap is removably attachable to the jacket collar by coupling the second connector to the first connector (as disclosed in para. 0039).
Clark does not expressly disclose wherein the first and second connectors are magnetic.
York teaches a protective coat with a structure attached to the collar wherein the first and second connectors (66, see para. 0049).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the connection means of Clark with the connection means, as taught by York, as a simple substitution of one well known connection means for another in order to yield the predictable result of securely fastening the front of the hood to the jacket collar, such that they not become disconnected while the jacket is in use. See MPEP 2143 B.
Regarding claim 7, the modified jacket of Clark discloses all the limitations of claim 6 above, but does not expressly disclose wherein the jacket collar defines a connection sleeve.
York teaches a protective coat wherein the jacket collar (34) defines a connection sleeve (42).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the collar of the modified jacket of Clark to include a connection sleeve and tab, as taught by York, so that the collar “is moveable between a retracted position… and an extended position” (see para. 0004 of York) such that the wearer can selectively close the collar for maximum protection or open the collar the to increase comfort while still having the jacket zipped up.
Regarding claim 9, the modified jacket of Clark discloses wherein the front hood flap is sized and shaped to be inserted into the connection sleeve (as when in combination, the flap 12 of Clark is capable of being inserted into the connection sleeve 42 of York).
Regarding claim 11, the modified jacket of Clark discloses further comprising a zipper (9 of Clark, see Fig. 5 of Clark), wherein an opening of the connection sleeve (opening of 42 of York as seen in Fig. 4 of York) of is oriented away from the zipper (as the zipper is on the rear of the jacket in Fig. 5 of Clark and the opening on is on the front of the collar as seen in Fig. 4 of York).
Allowable Subject Matter
Claims 1-5 are allowable pending the Double Patenting Rejection.
Claims 8 and 10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowed over the prior art of record as none of them, alone or in combination, disclose a jacket with a collar, a connector, a connection sleeve, and a detachable hood, the hood having a collar/flap with a connector, and the hood attached to the collar inside the connection sleeve. The closest prior art is Clark, York, and Bublitz. Clark teaches a jacket with a collar, a connector, and a detachable hood, the hood having a collar/flap with a connector, but does not teach a connection sleeve, and the hood attached to the collar inside the connection sleeve. York teaches a connection sleeve, but does not teach the hood attached to the collar inside the connection sleeve. Bublitz teaches a jacket with a collar, a connector, and a detachable hood, the hood having a collar/flap with a connector and the hood collar/flap being conceal with attached to the jacket, but does not teach a connection sleeve, and the hood attached to the collar inside the connection sleeve. Modifying Clark, York, or Bublitz to have the claimed structure would be hindsight reconstruction based on Applicant’s own disclosure, therefore the claims are allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, O’Connor (US 2019/0261718) teaches a hood with flaps and magnetic connectors, Wang (CN 121058960) teaches a hood with flaps connected to a jacket collar with magnetic connectors, and Lewis (US 2006/0048293) teaches a jacket with a collar and a connection sleeve.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton 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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/HEATHER MANGINE, Ph.D./Primary Examiner, Art Unit 3732