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 Species C, D and F in the reply filed on January 9, 2026 is acknowledged. Applicant cited claims 1-20 as encompassing the elected species. However, Examiner notes that only claims 1-16 are currently pending. Therefore, Applicant’s election is being interpreted as citing claims 1-16 as encompassing the elected species.
Claim Objections
Claims 1, 2, 7, 9 and 15 are objected to because of the following informalities:
Claim 1, line 10: “the panels” would be clearer if recited as “the first and second panels”
Claim 2, line 2: “a thumb” would be clearer if recited as “a thumb of the wearer”
Claim 7, line 2: “are biased” would be clearer if recited as “are configured to be biased”
Claim 7, line 2: “a received thumb” would be clearer if recited as “a received thumb of the wearer”
Claim 9, lines 1-2: “at least one of the first panel or the second panel” should recite “at least one of the first panel and the second panel”, since “at least one” is being used
Claim 15, lines 1-2: “at least one of the first panel or the second panel” should recite “at least one of the first panel and the second panel”, since “at least one” is being used
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 3 and 10 (and claims 4 and 11-16 at least due to dependency from either of claims 3 or 10) 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.
Regarding claim 3, Applicant recites “wherein the first panel overlaps the second panel in at least one configuration”. It is unclear if “at least one configuration” is intended to refer to the two existing configurations positively recited in claim 1, from which claim 3 depends, or is in reference to any arbitrary configuration. Correction is required. For purposes of examination, the language is being interpreted as meaning the same as “wherein the first panel overlaps the second panel in at least one of the configurations” since “the configurations” would be understood as referring to the existing covered and uncovered configurations recited in independent claim 1.
Regarding claim 10, Applicant recites “wherein the region of coverage is changeable between a first configuration in which the trailing edge is positioned proximally relative to the leading edge and a second configuration in which the trailing edge is positioned distally relative to the leading edge” (emphasis added). The phrases “positioned proximally” and “positioned distally” are unclear, absent further clarifying language. Correction is required. For purposes of examination, the language is being interpreted as meaning the same as “wherein the region of coverage is changeable between a first configuration in which the trailing edge is positioned proximally closer to the proximal end than the leading edge and a second configuration in which the trailing edge is positioned distally closer to the distal end than the leading edge” as best as can be understood.
Regarding claim 11, Applicant recites “the first configuration corresponds to a closed configuration” and “the second configuration corresponds to an open configuration”. The phrase “corresponds to” in this context is confusing. Correction is required. For purposes of examination, the phrases are being interpreted as meaning the same as “the first configuration is a closed configuration” and “the second configuration is an open configuration”, respectively, as best as can be understood.
Regarding claim 14, Applicant recites “wherein the first panel and the second panel are biased to return to the first configuration in the absence of external force”. This language is confusing because it reads as a method-of-use limitation within a product claim, which is improper, and also references “in the absence of external force”. Technically, environmental forces are always acting on matter, so there would never be a situation involving an absence of external force. Correction is required. For purposes of examination, the claim is being interpreted as meaning the same as “wherein the first panel and the second panel are configured to be biased in the first configuration when the first panel and the second panel are relaxed” as best as can be understood.
Regarding claim 16, Applicant recites “the sleeve” in line 2. Since two sleeves have been positively recited at this point in the claim language, the mere reference to “the sleeve” is indefinite. Correction is required. Examiner suggests first defining that the sleeve of claim 10 is a first sleeve and then referring back to “the first sleeve” thereafter, such as in the following manner: “The article of apparel of claim 10, wherein the sleeve is a first sleeve, wherein the article of apparel further comprises a second sleeve extending from the torso portion, the second sleeve being a mirror-image of the first sleeve across a vertical axis extending between a neck opening and a waist opening in the torso portion.”
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2 and 5-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Beneyto-Ferre (hereinafter “Beneyto”) (US 2016/0302502).
Regarding independent claim 1, Beneyto discloses an article of apparel (garment #1) comprising: a torso portion (see Figs. 1-3; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); a sleeve (actuating means #4 is a sleeve; ¶ 0007, 0026 of Beneyto; see Figs. 1-3) extending from the torso portion and comprising a sleeve wall (the material of the sleeve itself is a sleeve wall, in the thickness direction of the sleeve); an aperture in the sleeve wall (see Fig. 4; opening #7’’ is an aperture, for purposes of addressing the claim language; Examiner notes that Beneyto teaches several openings #7’/7’’/7’’’); a first panel and a second panel at least partially covering the aperture (see annotated Fig. 4 below; the aperture (opening #7’’) is at least partially covered by the first and second panels’ interface), wherein the aperture is selectively adjustable between a covered configuration and an uncovered configuration to accommodate insertion of a body part of a wearer (Fig. 4’s opening #7’’ shows a covered configuration, and would appear similar as opening #7’ if a user’s thumb were placed therethrough (¶ 0008, 0017, 0029 of Beneyto indicate the user’s thumb can selectively pass through any one of the openings, as desired)), wherein the first panel and the second panel are positioned relative to one another such that movement of at least one of the panels transitions the aperture between the covered configuration and the uncovered configuration (as noted above, when the thumb passes through the opening, it changes from the covered opening configuration depicted at #7’’ (Fig. 4) to the uncovered opening configuration depicted at #7’).
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Regarding claim 2, Beneyto discloses that the aperture is configured to receive a thumb (as noted above; Fig. 4 shows thumb #8 passing through one of the openings, and the user can select any one of openings #7’/7’’/7’’’ for their thumb to pass through).
Regarding claim 5, Beneyto discloses that the first panel is movable relative to the second panel to expose or occlude the aperture (as noted above, when the thumb passes through the opening, it changes from the occluded opening configuration depicted at #7’’ (Fig. 4) to the exposed opening configuration depicted at #7’).
Regarding claim 6, Beneyto discloses that the aperture is defined at least in part by edges of the first panel and the second panel (see Fig. 4).
Regarding claim 7, Beneyto discloses that the first panel and the second panel are biased into the covered configuration in the absence of a received thumb (openings #7’’ and #7’’’ show the biased position (wherein the identified first and second panels cooperate to form the opening #7’’), which is the covered configuration in the absence of the thumb being received therethrough).
Regarding claim 8, Beneyto discloses that the sleeve comprises a distal end and the aperture is positioned adjacent the distal end (see Figs. 3 and 4; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com); i.e. all components of the garment are adjacent one another, at least to some extent).
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 3, 9-11 and 14-16 (as best as can be understood, regarding claims 3, 10, 11 and 14-16) are rejected under 35 U.S.C. 103 as being unpatentable over Beneyto (as applied to claim 1 above, regarding claims 3 and 9) in view of Willows et al. (hereinafter “Willows”) (US 2014/0250565).
Regarding claim 3, Beneyto teaches all the limitations of claim 1, as set forth above, but it cannot be determined from the Beneyto reference alone whether the first panel overlaps the second panel in at least one configuration (i.e. only a single boundary line can be seen in the illustration in Fig. 4 to mark where the first and second panels are positioned relative to one another).
Willows teaches a garment that has a thumb opening defined between two panels with overlapping edges (see Figs. 3-8 of Willows), wherein the panels flex to expose the opening for the thumb to pass therethrough (see Figs. 3 and 6-8 of Willows) and the panels return to a relaxed, fully overlapped edge state when the thumb is removed from the opening (see Figs. 4 and 5 of Willows).
Beneyto and Willows teach analogous inventions in the field of garments with thumb apertures. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have formed the panels at the cuff end of Beneyto’s garment sleeve to overlap their edges in order to better seal the interior of the sleeve cuff from the elements when the thumb openings are not in use, as taught by Willows (¶ 0086 of Willows).
Regarding claim 9, Beneyto teaches all the limitations of claim 1, as set forth above, but is silent as to what materials are used to form the panels and the garment itself, and is therefore silent to at least one of the first panel or the second panel comprises a knit material or a woven material.
Willows teaches a garment with a thumb opening, wherein the garment can be formed from a tubular knit material (¶ 0126 of Willows).
Beneyto and Willows teach analogous inventions in the field of garments with thumb apertures. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used a tubular knit material to form the garment (including its sleeves and panels that define the thumb openings therein) in order to provide a known material that is comfortable with the wearer that is flexible and lightweight, and further since tubular knit material is very well known in the art of garments. See MPEP 2144.07.
Regarding independent claim 10, Beneyto discloses an article of apparel (garment #1) comprising: a torso portion (see Figs. 1-3; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)); a sleeve (actuating means #4 is a sleeve; ¶ 0007, 0026 of Beneyto; see Figs. 1-3) extending from the torso portion, the sleeve comprising: a sleeve wall (the material of the sleeve itself is a sleeve wall, in the thickness direction of the sleeve) having a distal end and a proximal end (see Fig. 3; distal end is generally where the hand opening is and the proximal end is where the sleeve is affixed to the torso portion), the sleeve wall defining an opening positioned between the distal and proximal ends (see Fig. 4; opening #7’’ for purposes of addressing the claim language; Examiner notes that Beneyto teaches several openings #7’/7’’/7’’’); a first panel having a trailing edge and a distal edge (see annotated Fig. 4 of Beneyto above), the first panel joined to the sleeve wall and extending over at least a first portion of the opening (the opening #7’’ is defined between the first and second identified panels, so the first panel extends over at least a first portion of the opening); a second panel having a leading edge and a proximal edge (see annotated Fig. 4 of Beneyto above), the second panel joined to the sleeve wall and extending over at least a second portion of the opening (the opening #7’’ is defined between the first and second identified panels, so the second panel extends over at least a second portion of the opening). Based on the illustrated detail in Fig. 4 of Beneyto, it cannot be determined whether the first and second panels overlap, and Beneyto is therefore silent as to whether the trailing edge of the first panel overlaps the leading edge of the second panel to form a region of coverage over the opening, wherein the region of coverage is changeable between a first configuration in which the trailing edge is positioned proximally relative to the leading edge and a second configuration in which the trailing edge is positioned distally relative to the leading edge.
Willows teaches a garment that has a thumb opening defined between two panels with overlapping edges (see Figs. 3-8 of Willows), wherein the panels flex to expose the opening for the thumb to pass therethrough (see Figs. 3 and 6-8 of Willows) and the panels return to a relaxed, fully overlapped edge state when the thumb is removed from the opening (see Figs. 4 and 5 of Willows).
Beneyto and Willows teach analogous inventions in the field of garments with thumb apertures. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have formed the panels at the cuff end of Beneyto’s garment sleeve to overlap their edges in order to better seal the interior of the sleeve cuff from the elements when the thumb openings are not in use, as taught by Willows (¶ 0086 of Willows). As a result of the modification, the trailing edge of the first panel overlaps the leading edge of the second panel to form a region of coverage over the opening (see Figs. 3-4 of Willows, wherein such an overlap would be present between the junction of the first and second panels in Beneyto, post-modification), wherein the region of coverage is changeable between a first configuration in which the trailing edge is positioned proximally relative to the leading edge (the first configuration is best depicted in Fig. 4 of Willows, wherein the trailing edge of the first panel would be closer to the proximal end of the sleeve than the leading edge of the second panel) and a second configuration in which the trailing edge is positioned distally relative to the leading edge (the second configuration is best depicted in Fig. 3 of Willows, wherein the trailing edge of the first panel would be closer to the distal end of the sleeve than the leading edge of the second panel).
Regarding claim 11, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows, as applied to claim 10 above) renders obvious that the first configuration [is] a closed configuration in which the opening is substantially covered (the first configuration is best depicted in Fig. 4 of Willows, which is a closed configuration that substantially covers the thumb opening), and the second configuration [is] an open configuration in which at least a portion of the opening is exposed (the second configuration is best depicted in Fig. 4 of Willows, which is an open configuration that exposes the thumb opening).
Regarding claim 14, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows, as applied to claim 10 above) renders obvious that the first panel and the second panel are biased to return to the first configuration in the absence of external force (openings #7’’ and #7’’’ show the biased position (wherein the identified first and second panels cooperate to form the opening #7’’; see also, Fig. 4 of Willows, also showing a biased position that is the closed first configuration), which is the covered configuration in the absence of the opening-expanding force applied by the thumb).
Regarding claim 15, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows, as applied to claim 10 above) renders obvious all the limitations of claim 10, as set forth above, but is silent as to what materials are used to form the panels and the garment itself, and is therefore silent to at least one of the first panel or the second panel comprises a knit material or a woven material. However, Willows teaches a garment with a thumb opening, wherein the garment can be formed from a tubular knit material (¶ 0126 of Willows), and it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have used a tubular knit material to form the garment (including its sleeves and panels that define the thumb openings therein) in order to provide a known material that is comfortable with the wearer that is flexible and lightweight, and further since tubular knit material is very well known in the art of garments. See MPEP 2144.07.
Regarding claim 16, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows, as applied to claim 10 above) renders obvious that the garment #1 further comprises a second sleeve extending from the torso portion, the second sleeve being a mirror-image of the sleeve across a vertical axis extending between a neck opening and a waist opening in the torso portion (Fig. 3 shows that there are two sleeves; while Beneyto does not explicitly state that the sleeves are mirror images of one another, such a concept is very well known in the art of upper body garments with sleeves, and it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the two sleeves and their features to be mirror images of one another across a vertical axis that runs between the neck opening and the waist opening, in order to match the symmetry of a typical user’s torso, arms and hands).
Claims 4, 12 and 13, as best as can be understood, are rejected under 35 U.S.C. 103 as being unpatentable over Beneyto in view of Willows as applied to claims 3 (regarding claim 4) and 10 (regarding claims 12 and 13) above, and further in view of Blauer et al. (hereinafter “Blauer”) (US 2012/0233738).
Regarding claim 4, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows, as applied to claim 3 above) renders obvious all the limitations of claim 3, as set forth above. Beneyto’s details are limited with respect to the attachment of the panels to the sleeve wall, as Fig. 4 does not show how the opposite edges of the first and second panels are attached to the sleeve wall. Therefore, Beneyto is silent to the first panel and the second panel are fixedly joined to the sleeve wall along opposing edges of the aperture (although at least one edge is shown, as highlighted with the added dashed line A---A in annotated Fig. 4 above; opposing edge B---B is not depicted fully relative to the main sleeve body portion).
Blauer teaches a sleeved garment that has a stretchable panel #38 affixed near the cuff via stitched seam #40 (¶ 0032 and Figs. 3-5 of Blauer) to the main sleeve portion #42, wherein the stretchable panel covers opposite edges of an opening occupied by said stretch panel #38, as shown in the Figs. 3-5 of Blauer.
Modified Beneyto and Blauer teach analogous inventions in the field of sleeves with panels attached over openings therein. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have affixed the unseen opposite edge in Beneyto’s sleeve via a seam, to the remainder of the sleeve wall, in order to attach the panels in a durable manner (i.e. a stitched seam) that is well-known in the art of garment making. As a result of the modification, the first panel and the second panel would be fixedly joined to the sleeve wall along opposing edges of the aperture.
Regarding claim 12, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows and Blauer, as such modification is described with respect to claim 4 above) would also render obvious the limitation of wherein the first panel and the second panel are joined to the sleeve wall along opposing sides of the opening (as explained above with respect to addressing claim 4).
Regarding claim 13, the modified apparel article of Beneyto (i.e. Beneyto in view of Willows and Blauer, as such modification is described with respect to claim 4 above) would also render obvious the limitation of the first panel and the second panel each extend between a first edge and a second edge of the opening (the opposing edges would be affixed via stitched seams, which would be generally coincident with the edges A----A and B----B in annotated Fig. 4 of Beneyto above).
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the following U.S. Patents:
9,681,689
10,349,687
10,383,382
10,660,387
11,317,664
11,540,571
12,041,993
12,342,882
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the cited patents essentially encompass the scope of the present application’s claims.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19/029,619 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the cited application essentially encompass the subject matter of the present application’s claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of garments with thumb openings or thumb-holding features.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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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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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732