DETAILED ACTION
This office action is in response to the application filed November 3, 2025 and the set of claims filed February 20, 2026 in which claims 21-29 are presented for examination and claims 1-20 are canceled.
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 .
Claim Rejections - 35 USC § 102
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.
Claims 21 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 5,669,072 Bjorklund.
To claim 21, Bjorklund discloses a garment (10) (see Figures 1-3; col. 2, line 63 – col. 4, line 67; it is respectfully noted that claim 21 merely recites “A garment” rather than, for example, “A male garment for supporting a wearer's genitals”), comprising:
a garment body (28) (see Figure 3; col. 3, lines 10-17);
a first side support (17) coupled to the garment body (see Figures 1-3; col. 3, lines 7-35); and
a second side support (17) coupled to the garment body so as to be separate and spaced from the first side support (see Figures 1-3; col. 3, lines 7-35),
wherein each of the first and second side supports comprises:
a blunt end (not numbered) (see Figures 2-3; col. 3, lines 21-35);
a tapered end (not numbered) opposite the blunt end (see Figures 2-3; col. 3, lines 21-35);
an upper curved edge (52) extending from the blunt end to the tapered end (see Figures 2-3; col. 3, lines 21-35); and
a lower curved edge (54) opposite the upper curved edge extending from the blunt end to the tapered end, wherein the upper curved edge and the lower curved edge converge to a point at the tapered end (see Figures 2-3; col. 3, lines 21-35), and
wherein the blunt end and the lower curved edge are secured to the garment body (see Figures 1-3; col. 3, lines 7-35),
and the upper curved edge is a free edge unattached to the garment body (see Figures 1-3; col. 3, lines 7-35),
such that the tapered end is extendible away from the garment body (see Figures 1-3; col. 3, lines 7-35).
To claim 24, Bjorklund further discloses a garment wherein first side support and the second side support are angled towards each other proximate to the blunt ends and angled away from each other proximate to the tapered ends (see Figures 1-3; col. 3, lines 7-35; first and second side supports 17 at least capable of being manipulated into the recited configuration).
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.
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Bjorklund in view of USPN 6,684,408 Rindle et al.
To claim 22, Bjorklund discloses a garment wherein the blunt end of each of first and second side supports is secured to the garment body (see Figures 1-3; col. 3, lines 7-35; in a fully-assembled configuration of garment 10 as depicted in Figure 1, all portions of the garment are considered to be “secured to” all other portions of the garment regardless of whether they are configured to be in direct physical contact).
Bjorklund does not disclose a garment wherein the garment body further comprises a waistband.
However, Rindle teaches a garment (1) (see Figures 1-4; col. 2, line 10 – col. 4, line 30) comprising a garment body including a waistband (17a) (see Figures 1-4; col. 3, line 66 – col. 4, line 9).
Bjorklund and Rindle teach analogous inventions in the field of garments. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the garment of Bjorklund to include the waistband configuration of Rindle because Rindle teaches that this configuration is known in the art and beneficial for protecting a user against the inadvertent penetration of outside elements, such as snow (col. 4, lines 7-9).
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 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,458,075.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite garments comprising substantially the same elements including in particular first and second side supports each including a blunt end, a tapered end opposite the blunt end, an upper curved edge extending from the blunt end to the tapered end, and a lower curved edge opposite the upper curved edge extending from the blunt end to the tapered end, wherein the upper curved edge and the lower curved edge converge to a point at the tapered end.
INSTANT APPLICATION
USPN 12,458,075
CLAIMS
21
1
22
1
23
4
24
1
25
1
26
1
27
1
28
1
29
4
Allowable Subject Matter
Claims 25-29 are allowed (subject to the successful filing of a Terminal Disclaimer to overcome the rejection for nonstatutory double patenting, detailed above).
Claim 23 is 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 (subject to the successful filing of a Terminal Disclaimer to overcome the rejection for nonstatutory double patenting, detailed above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Additional undergarments for male wearers analogous to the instant invention (see form PTO-892 “Notice of References Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/F Griffin Hall/Primary Examiner, Art Unit 3732
Prosecution Insights