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 .
Response to Amendment
The amendments filed with the written response received on April 22, 20225 have been considered and an action on the merits follows. As directed by the amendment, claims 1, and 3-6 have been amended. Accordingly, claims 1-7 are pending in this application, with an action on the merits to follow.
Response to Arguments
Applicant's arguments filed June 10, 2025 have been fully considered but
they are not persuasive.
Applicant’s arguments, are drawn to the amended claim language that recites being wearable with shoes on by simply putting it on in the same manner as that of general pants and including a hip part and a pair of leg parts, wherein the inside diameter of each of the leg parts is of a sufficient size so that a wearer can easily put a leg therein with a shoe on; and a pair of waterproof slipper parts which do not have portions covering heels, each including a lower bottom member and an instep member by which the moving range in the upward and lateral directions of the shoe put therein is limited, wherein each of edge parts of the leg parts of the lower wear part and an associated one of the waterproof slipper parts are joined in a waterproof manner which is bonding with a waterproof adhesive or welding. These arguments are not commensurate with the rejected claims and a new rejection is set forth below to address the newly added claim limitations.
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 1 & 3 (and the claims that depend therefrom claims 2-7) 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.
Claim 1 and the claims that depend therefrom are rejected because Applicant recites “wherein the inside diameter of each of the leg parts is of a sufficient size so that a wearer can easily put a leg therein with a shoe on;” and it is unclear what the metes and bound of this claim are and how sufficient a sufficient size is considered.” it is unclear what constitutes a “sufficient size” which is neither defined in the specification, nor is a standard provided for ascertaining the requisite degree, and one of ordinary skill in the art cannot reasonably be apprised of the metes and bounds of the claim term based upon the state of the art. The Applicant has not provided a standard to determine what is considered flexible or what would be considered flexible enough. Therefore, the metes and bounds of this limitation are unclear.
Claim 1 and the claims that depend therefrom are rejected because Applicant recites “joined in a waterproof manner which is bonding with a waterproof adhesive or welding”, which is indefinite in that it claims both an apparatus (the rain gear) and the method steps of making the apparatus (method of manufacturing ~ “joined in a waterproof manner which is bonding with a waterproof adhesive or welding”. As two different statutory categories are claimed, it creates confusion as to when direct infringement occurs. See MPEP 2173.05(p). Method in Product.
Claim 3 is rejected because it is unclear what “the heel side of an outer side surface of an associated one of the lower bottom members” is referring to. Applicant is respectfully requested to refer back to prior introduced limitations using the term “the” or “said”; or, to introduce new limitations using distinguishing terminology (e.g. “a heel side of an outer side surface”). For examination purposes “the heel side of an outer side surface” in claim 3 was interpreted as “a heel side of an outer side surface”.
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 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.
Claims 1-6 are rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 2024/018027A1 to Jessica Kijowski (herein after "Kijowski”) in view of United States Patent No. 5,918,314 to Melodie MOSES (herein after "Moses”).
As to Claim 1, Kijowski discloses a rain gear comprising: a waterproof lower wear part (Figures 1-5, 8-10, and Paragraphs 0004, 0053; Kijowski, teaching a waterproof lower wear part (pants 10; Kijowski) being wearable with shoes (footwear 50; Kijowski) on by simply putting it on in the same manner as that of general pants and including a hip part and a pair of leg parts (Figures 1-5, 8-10, and Paragraphs 0004, 0053; Kijowski), wherein the inside diameter of each of the leg parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) is of a sufficient size so that a wearer can easily put a leg therein with a shoe on (Figures 1-5, 8-11, and Paragraphs 0004, 0053; Kijowski); and a pair of waterproof slipper parts which do not have portions covering heels (Figures 1-5, 8-11, and Paragraphs 0004 - 0006, 0049 - 0053; Kijowski ~ regarding a pair of waterproof slipper parts), each including a lower bottom member and an instep member by which the moving range in the upward and lateral directions of the shoe put therein is limited (outsole 53; Kijowski ~ regarding a lower bottom member) (foot strap 51, toe guard 155; Kijowski ~ regarding an instep member member), wherein each of edge parts of the leg parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) of the lower wear part (Figures 1-5, 8-10, and Paragraphs 0004, 0053; Kijowski, teaching a waterproof lower wear part (pants 10; Kijowski) and an associated one of the waterproof slipper parts (Figures 1-5, 8-11, and Paragraphs 0004 - 0006, 0049 - 0053; Kijowski ~ regarding a pair of waterproof slipper parts) are joined in a waterproof manner which is bonding with adhesive or welding (Paragraphs 0004-0006, 0052-0053, and 0058; Kijowski teaching adhesive and sewing)( Examiner notes that this limitation is being treated as a product-by-process limitation. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art (see MPEP § 2113). Examiner also notes that the Applicant’s disclosure filed November 12, 2025 includes the following method steps “For joining including the waterproof property, a waterproof adhesive, welding, sewing, or a waterproof tape is used, for example.” ) and with no space therebetween (Figures 1-5, 8-11 and Paragraphs 0052-0053, 0058; Kijowski), and lower openings of the leg parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) are sealed from outside the rain gear by the slipper parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts).
Kijowski fails to disclose a rain gear, waterproof lower wear part, waterproof parts, waterproof parts, waterproof manner.
Moses teaches waterproof insulative garments and discloses a rain gear (Col. 1 and Lines 9-12; Moses), waterproof lower wear part (Col. 2 and Lines 55-58, 62-64; Moses teaching waterproof material), waterproof parts (Col. 2 and Lines 55-58, 62-64; Moses teaching waterproof material), waterproof parts (Col. 2 and Lines 55-58, 62-64; Moses teaching waterproof material), waterproof manner (Col. 2 and Lines 55-58, 62-64; Moses teaching waterproof material).
Therefore, based on Moses’ teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Kijowski’s garment to include a rain gear, waterproof lower wear part, waterproof parts, waterproof parts, waterproof manner, as doing so would provide a more comfortable feeling of dryness for the wearer. This would simply be the substitution of prior art elements according to known methods to yield predictable results. See MPEP 2143.
Although Kijowski teaches an adhesive (Paragraphs 0049-0050; Kijowski), Kijowski fails to explicitly disclose being waterproof.
Therefore, based on Kijowski’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Kijowski’s adhesive to include being waterproof, as doing so would provide an additional protective barrier that fully encapsulates the entirety of each leg and feet of the wearer.
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As to Claim 2, Kijowski/Moses disclose the rain gear according to claim 1.
Kijowski/Moses fails to disclose further comprising: an upper wear part continuous upward from the hip part of the lower wear part; and a hood part continuous upward from the upper wear part.
Moses teaches waterproof insulative garments and discloses further comprising: an upper wear part (outer body suit torso section 34; Moses ~ regarding an upper wear part) continuous upward from the hip part (Figure 1; Moses ~ regarding including a hip part) of the lower wear part (Figure 1 and Col. 1 and Lines 18-26; Moses); and a hood part (outer hood 26; Moses ~ regarding hood part) continuous upward from the upper wear part (outer body suit torso section 34; Moses ~ regarding an upper wear part).
Therefore, based on Moses’ teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Kijowski’s garment to include further comprising: an upper wear part continuous upward from the hip part of the lower wear part; and a hood part continuous upward from the upper wear part, as doing so would provide a more comfortable feeling of dryness for the wearer.
As to Claim 3, Kijowski/Moses disclose the rain gear according to claim 1, wherein the instep member of each of the waterproof slipper parts has a domical shape with a toe side closed (Figures 1-5, 8-11 and Paragraphs 0051- 0053, foot strap 51, toe guard 155; Kijowski ~ regarding an instep member member))(footwear 50; Kijowski ~ regarding the waterproof slipper parts having a domical shape with a toe side closed), and each of the edge parts of the leg parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) is joined to an edge part of an associated one of the instep members and the heel side of an outer side surface of an associated one of the lower bottom members (Figures 1-5, 8-11, and Paragraphs 0052; Kijowski, teaching "Each footwear of the pair of footwear 50 is secured to the bottom of the distinct pant leg 10A, 10B, either permanently secured or detachable secured. It is anticipated that the pair of footwear 50 may comprise a pair of sandals, slippers, or closed toe shoes. Each footwear of the pair of footwear 50 comprises a plurality of elements that include an insole 52 and an outsole 53.").
As to Claim 4, Kijowski/Moses disclose the rain gear according to claim 1, wherein the instep member of each of the waterproof slipper parts has a domical shape with a toe side closed (Figures 1-5, 8-11; Kijowski), and each of the edge parts of the leg parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) is joined to the whole circumference of an outer side surface of an associated one of the lower bottom members (Figures 1-5, 8-11; Kijowski).
As to Claim 5, Kijowski/Moses disclose the rain gear according to claim 1, wherein the instep member of each of the waterproof slipper parts has a band shape with a toe side open (Figures 1-5, 8-11; Kijowski), and each of the edge parts of the leg parts (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) is joined to an associated one of the instep members and the whole circumference of an outer side surface of an associated one of the lower bottom members (Figures 1-5, 8-11; Kijowski, specifically Figure 4; Kijowski).
As to Claim 6, Kijowski/Moses disclose the rain gear according to claim 1, wherein the instep member of each of the waterproof slipper parts has a band shape with a toe side open and each of the edge parts of the leg parts (Figures 1-5, 8-11; Kijowski, specifically Figure 4; Kijowski), (first and second pant leg 10A & 10B; Kijowski regarding the leg parts) is joined to the whole circumference of an outer side surface of an associated one of the lower bottom members (Figures 1-5, 8-11; Kijowski, specifically Figure 4; Kijowski).
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over United States Patent No. US 2024/018027A1 to Jessica Kijowski (herein after "Kijowski”) in view of United States Patent No. 5,918,314 to Melodie MOSES (herein after "Moses”) as to claim 2 above, in view of United States Patent No. 4,038,698 to LeROY SMITH (herein after Smith”).
As to Claim 7, Kijowski/Moses disclose the rain gear according to claim 2, but fail to disclose comprising a length adjuster for fixing a state where a gather in an upper-lower direction or a right-left direction is formed on the lower wear part or the upper wear part.
Smith teaches one-piece rainsuits and discloses comprising a length adjuster (Drawstrings 36; Smith ~ regarding a length adjuster) for fixing a state where a gather in an upper-lower direction or a right-left direction is formed on the lower wear part or the upper wear part (Figure 1; Smith teaching a length adjuster for fixing a state where a gather in an upper-lower direction or a right-left direction is formed on the lower wear part or the upper wear part).
Therefore, based on Smith’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified Kijowski/Moses’ rain gear to include comprising a length adjuster for fixing a state where a gather in an upper-lower direction or a right-left direction is formed on the lower wear part or the upper wear part, as doing so would provide additional securement for to protection for increased comfort of the wearer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/AKWOKWO OLABISI REDHEAD/ Examiner, Art Unit 3732
/ALISSA L HOEY/ Primary Examiner, Art Unit 3732
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