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 Group I, claims 1-7 in the reply filed on 08 July 2026 is acknowledged. Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions.
Specification
The amendment filed 08 August 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “substantially no tin and organo- tin”, “substantially free from any tin derivative materials”.
Applicant is required to cancel the new matter in the reply to this Office Action.
The amendment filed 08 August 2025 is also objected to because it references the Pre-Grant Publication, which is improper. Amendments should be made in reference to the specification as filed in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, the phrase “substantially no tin and organo- tin” lacks support in the specification as filed.
Regarding Claim 5, the phrase “substantially free form any tin derivative materials” lacks support in the specification as filed.
The remaining claims inherit the rejection by dependency.
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 1-7 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 1, the phrase “substantially no tin and organo- tin” is unclear. Either something contains no tin and organo- tin, or it does not. It is unclear how something could contain substantially none of a component. One of ordinary skill in the art would be unsure of how much tin and organo- tin could be present while still being substantially none present. Further, does this mean the intention is for no tin or organo- tin to be present, or does this mean a little bit must be present, since the claim requires at least some to be present, or it would not state “substantially”?
Similarly regarding Claim 5, the phrase “substantially free from any tin derivative materials” is unclear. Either something is free from any tin derivative materials, or it is not. It is unclear how something could be substantially free of a component. One of ordinary skill in the art would be unsure of how much tin derivative materials could be present while still being substantially free. Further, does this mean the intention is for no tin derivative materials to be present, or does this mean a little bit must be present, since the claim requires at least some to be present, or it would not state “substantially”?
The remaining claims inherit the rejection by dependency.
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) 1 and 5-7 is/are rejected, to the degree definite, under 35 U.S.C. 102(a)(1) as being anticipated by Houlbrook et al (20180282940).
Regarding Claim 1, Houlbrook teaches a garment (Detail 2) including an elongate crease line (Detail 4) therein, said crease line including a base (bottom of crease), and having an external surface (contacting Detail 10) which forms part of the external surface of the garment when worn, and an internal surface and a resin to have the effect of assisting in the retention of the crease line in the garment for a prolonged period of time is applied in a fluid condition onto and along said internal face of the crease line along said base and, once applied along the crease line, the resin hardens and is attached in position along the base of the crease line (Claim 19) and wherein the resin includes substantially no tin and organo- tin therein (no tin or organo- tin listed).
Regarding Claim 5, Houlbrook teaches the resin is substantially free from any tin derivative materials (no tin or organo- tin listed).
Regarding Claim 6, Houlbrook teaches the crease line is provided on a leg of a pair of trousers or an arm of a shirt (Abstract: pair of trousers).
Regarding Claim 7, Houlbrook teaches the garment includes a plurality of crease lines and the said resin is applied to at least a plurality of said crease lines (Abstract: pair of trousers has two legs, and two crease lines).
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.
Claim(s) 2-4 is/are rejected, to the degree definite, under 35 U.S.C. 103 as being unpatentable over Houlbrook et al in view of Feder et al (20170044338).
Regarding Claims 2-4, while Houlbrook essentially teaches the invention as detailed, it fails to specifically teach the myriad different resins which could be used. Feder, however, teaches that when wanting to coat select parts of pleated textile fabrics, it is well known to utilize a cross-linking acetate curing agent and any, or any combination of amorphous silicate hydrate, methylsilanetriyl-triacetate, diacetoxydi-tert-butoxysilane, hexanoic acid, dodecamethyl cyclohexasiloxane, acetic acid and/or octamethylcyclotetrasiloxane, bismuth tris(2-ethylhexanoate), triacetoxyethylsilane, octamethyl-cyclotetrasiloxane, PBT and/or substances including dodecamethylcyclohexasilosane, and decamethylcyclopentasiloxane (Paragraph 78; Example 2, paragraph 237; Paragraph 157). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the resin and curing agent of Feder, so as to ensure the absence of tin (Paragraph 22). Houlbrook does not list every possible resin, and the ordinarily skilled artisan would have appreciated the benefits of Feder and known to use the resin as taught, with an expectation of success.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and 13 of U.S. Patent No. 12,404,629 in view of Houlbrook et al.
U.S. Patent No. 12,404,629 essentially teaches the invention as claimed, with the claims aligned as follows.
Claim 1 of the instant application aligns with Claims 1 and 13 of the ‘629 patent.
Claim 2 of the instant application aligns with Claims 1 and 13 of the ‘629 patent.
Claim 3 of the instant application aligns with Claim 2 of the ‘629 patent.
Claim 4 of the instant application aligns with Claim 4 of the ‘629 patent.
Claim 5 of the instant application aligns with Claims 1 and 13 of the ‘629 patent.
U.S. Patent No. 12,404,629 fails to specifically teach the resin is applied to the internal face as claimed, which Houlbrook teaches as well known in the art. It would have been obvious, so as to prevent the appears of the resin on the outside.
Regarding Claims 6 and 7, Houlbrook teaches trousers in the abstract, which are obvious garments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See of Record.
Specifically, Guo et al (201402575342) Paragraph 68 and Maliverney (20120164335) Abstract teach elements similar to those as currently claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shaun R Hurley whose telephone number is (571)272-4986. The examiner can normally be reached Monday thru Friday, 8:00am - 3:00pm.
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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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/SHAUN R HURLEY/Primary Examiner, Art Unit 3732
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