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 with traverse of Species B (a cylindrical compression garment) in the reply filed on May 19, 2026 is acknowledged. The traversal is on the ground(s) that each Identified species do not have mutually exclusive characteristics. This is not found persuasive because each identified species does have mutually exclusive characteristics. Species A is a pair of pants that has a crotch, a stomach covering portion, a buttock covering portion, two pant legs, Species B is a cylindrical tube that has terminal top and bottom ends, and species C is a sock with a foot portion. These differences are not simply add on features but entirely different garments.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 7-8, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Accordingly, claims 1-15 are pending in this application, with an action on the merits to follow regarding claims 1-4, 6, 9-13, and 15.
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, 3-4 and 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 and 12 of U.S. Patent No. 12490781. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US 12490781 include each limitation of the above claims of the instant application. The biggest difference is claim 1 of the instant application recites, “wherein said at least one fabric panel has edges, at least one of said edges includes a portion that is non-linear, said portion that is non-linear including at least one set of adjacent straight segments that are non-linear with respect to each other, and wherein said edges are joined to form said seam”, but claim 12 of US 12490781 recites, “wherein said edge forming part of said seam includes a plurality of straight segments angled with respect to each other with vertices therebetween”, however claim 12 is using different language to claim the same subject matter. Further, see the chart below for understanding of how the claims align.
Claims of 19/385405
relationship
Claims of US 12490781
1
broader than
1, 12
3
broader than
2
4
broader than
3
6
broader than
5
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 should recite, “…wherein said circumferential portion comprises a pant leg and is configured to provide different circumferential compression values at different axial locations of said plurality of different axial locations including a first portion with graduated compression that decreases from an ankle toward [[the]] a top of [[the]] a leg when worn by a wearer”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 2, 10, and 13 (and claim 15 at least for depending from a rejected claim) 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.
Claims 2 and 10 each recites, “wherein said circumferential portion further comprises a second portion in which said circumferential compression values are substantially uniform along selected axial locations of said plurality of different axial locations.” However the specification does not have support for the circumferential compression values being “substantially” uniform. Throughout the specification, the compression of the garment is either disclosed uniform, non-uniform, or varying, but not “substantially” uniform. The only use of the term “substantially” is with regards to the zones or bands being “substantially parallel” to one another (see p. 37, 1st full para).
Further, the specification fails to provide for a garment having different compression values at different axial locations (compression decreasing, increasing, then decreasing) as claimed in claims 1 and 9, and the having a portion with uniform compression values.
The top of p. 11 recites, “The garment provides compression exerted in the circumferential direction that may be uniform throughout the circumferential portion of the garment, or that may vary along different axial locations of the circumferential portion, when the garment is worn by a typical wearer, i.e. when the garment is stretched and thus, stressed. The circumferential garment with compression that is uniform throughout the compression garment or with compression values that may advantageously vary along the axial locations of the compression garment, does not require multiple pieces of fabric joined to one another along the axial or longitudinal direction. Rather, a single piece of fabric or two or more pieces of fabric coupled laterally to form a seam or seams that extend in the longitudinal or axial direction, may be used to produce the garment compression that may be uniform or which may advantageously vary along the different axial locations.” As such, the disclosure provides for the compression either being uniform throughout the circumferential portion or that may vary, but not a case in which the compression can be uniform in one part and vary in another part.
Similarly, the bottom of p. 14 recites, “in one embodiment, the elasticity of the fabric is uniform throughout the fabric itself and the garment so formed, includes uniform compression at all locations, including anatomical locations with different circumferences, when worn by a wearer. In this embodiment of a uniform elasticity garment, the degree of stretching will vary at the different axial locations to produce the same garment compression throughout the circumferential portion due to geometric cuts that are made to produce specified fabric dimensions and compression levels, at various locations along the garment. In other words, the uniform compression at various locations, is obtained by designing the garment to have dimensions that will result in different degrees of stretching when the garment is worn by the user in accordance with this embodiment. The compression is a force exerted by the garment in the circumferential compression.” Again, compression here is only uniform.
The middle of p. 15 recites, “The panel is joined to another panel or to another edge of the fabric panel, to form a seam and a compression garment or a circumferential portion of a compression garment, that may include a uniform compression at all axial locations including embodiments in which the elasticity of the fabric is uniform throughout the fabric or in which it varies.” Again, compression here is only uniform.
Finally, p. 36 recites, “According to such embodiments, the different compression values at the different locations may vary gradually, abruptly or irregularly in various embodiments. The compression values may continually increase along one axial or longitudinal direction 28 to produce a gradient of compression. Alternatively, the compression values may both increase and decrease along an axial direction. In some embodiments, the compression values neither continuously increase nor continuously decrease along one axial or longitudinal direction 28. In other words, the maximum or minimum garment compression value is not at one end of the garment, but rather at some intermediate location.” This excerpt provides for the compressing continuously increasing, continuously decreasing, increasing and decreasing, or a situation in which the maximum or minimum garment compression value is not at one end of the garment, but rather at some intermediate location, however there is no disclosure having one portion that decreases, increases, then decreases and another portion the has uniform compression.
Therefore the limitation fails to comply with the requirement for written description.
Claim 13 recites, “wherein said seam comprises stitches formed by heat seal, ultrasonic welding, or laser welding.” However, the specification fails to disclose stitches formed by heat seal, ultrasonic welding, or laser welding. The specification recites, as the top of p. 23, “In various embodiments of the invention, various seam types may be used such as but not limited to seams formed by and referred to as a lock stitch, chain stitch, safety stich, surging stitch, overlapped stitch, zigzag stitch, cover stitch, blind stitch, merrow stitch, flat lock stitch, heat seam seal with an adhesive tape, ultrasonic welding, laser welding, or various combinations of the preceding.” As such the seams can be formed by stitching, heat seam seal, ultrasonic welding, or laser welding, or the seams can be formed by a combination of these techniques such as using one of types of stiches and welding to form the seam, but does not disclose the stitches being formed by welding and the recited stitch types are those that cannot be performed by welding. Therefore the limitation fails to comply with the requirement for written description.
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 2-4, 9-10, and 13 (and claims 11-12 and 15 at least for depending from a rejected claim) 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.
Claims 2 and 10 are indefinite as each recites, “wherein said circumferential portion further comprises a second portion in which said circumferential compression values are substantially uniform along selected axial locations of said plurality of different axial locations.” It is unclear how one having ordinary skill in the art can ascertain to any requisite degree how much the compression values can deviate from being uniform and still be considered “substantially uniform”. The specification does not provide any further disclosure. Examiner respectfully suggests amending to recite, “wherein said circumferential portion further comprises a second portion in which said circumferential compression values are
Claim 3 is indefinite as it recites, “wherein said circumferential compression value is zero at at least one of said plurality of different axial locations when said circumferential portion is stretched when worn by a wearer.” As claim 1 recites, “different circumferential compression values”, but claim 3 recites, “said circumferential compression value”, it is unclear if claim 3 is referring to one of the values from claim one or an additional circumferential compression at the plurality of axial locations. Examiner respectfully suggests amending to recite, “wherein one of said different circumferential compression values is zero at at least one of said plurality of different axial locations when said circumferential portion is stretched when worn by a wearer.”
Claim 4 is indefinite as it recites, “wherein a maximum circumferential compression is provided at an intermediate one of said plurality of different axial locations, and wherein said stitches comprise a chain stitch seam, a safety stitch seam, or an overlapped stitch seam.” As claim 1 recites, “different circumferential compression values”, it is unclear if claim 4 is referring to one of the previously claimed values or to a different compression different or in addition to one of the claimed values. Examiner respectfully suggests amending to recite, “wherein a maximum circumferential compression value of said different circumferential compression values is provided at an intermediate one of said plurality of different axial locations, and wherein said stitches comprise a chain stitch seam, a safety stitch seam, or an overlapped stitch seam.”
Claim 9 is indefinite as it recites, “wherein said circumferential portion comprises a pant leg”. By claiming that the circumferential portion comprises a pant leg, it is unclear if pants are required by the claim. The claim is drawn to a compression garment and if the circumferential portion is a structure of the compression garment, thus a pant leg is a structure of the compression garment, then the compression garment is pants. For purposes of examination, as Applicant elected Species B, Examiner has interpreted pants not to be required, however, Applicant must amend the claim or withdraw it from consideration.
Claim 13 is indefinite as it recites, “and wherein said seam comprises stitches
formed by heat seal, ultrasonic welding, or laser welding”. As the types of stiches recited in the specification on p. 23 (a lock stitch, chain stitch, safety stich, surging stitch, overlapped stitch, zigzag stitch, cover stitch, blind stitch, merrow stitch, flat lock stitch) are very specific types of stitches that use thread, it is unclear how the stiches can be formed by heat seal, ultrasonic welding, or laser welding. For purposes of examination, Examiner has interpreted the limitation to mean the seam is formed by heat seal, ultrasonic welding, or laser welding.
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) 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imboden (US 4240160) in view of Lundh (US 2017/0367899).
Regarding claim 13, Imboden discloses a non-uniform compression garment (16) comprising: a) a circumferential portion (any portion along 16 is circumferential as the two edges of 12 are seamed together at 14 to create a tubular garment, see col. 3, lines 40-55) formed of only an uncoated single layer of stretchable fabric having uniform elastic properties (Fig. 1, sheeting of power fabric with spandex, see col. 3, lines 38-45 power mesh with spandex and no variation in the fabric or coating on the fabric is disclosed). said circumferential portion extending along an axial direction (E) and including at least one fabric panel (12) extending completely from one axial end to an opposed axial end (as seen between Figs. 1-2), said circumferential portion having an axially extending seam (14) and different circumferential lengths at different axial locations (as seen in Fig. 2, the circumference varies at each location along the axial direction); and
b) said compression garment providing compression when worn on a wearer's leg, said compression being graduated compression along said axial direction (see col. 3, lines 63-col. 4, line 13, and note the compression would change depending on the leg of the wearer); wherein said graduated compression comprises said compression decreasing along an ankle-to-thigh direction (see col. 3, lines 63-col. 4, line 13).
Imboden does not expressly disclose wherein the stretchable fabric is woven and wherein the seam is formed by heat seal, ultrasonic welding, or laser welding.
Lundh teaches compression garments using stretchable fabric that can be knit or woven (see para. 0058) and where the seam is formed by heat seal (see para. 0126 where the seam can be made by welding, and welding is a form of heat sealing).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the circumferential portion of the garment Lundh of a stretchable woven fabric, and to form the seam by heat sealing, as taught by Lundh since woven fabric provides superior durability and higher structural strength compared to knits, therefore increasing the longevity of the garment and heat sealing the seam avoids using a seam allowance that could leave marks on the skin.
Examiner notes that italicized limitations in the prior art rejections are functional and do not positively recite a structural limitation, but instead require an ability to so perform and/or function. As the prior art discloses the structure of the garment, there would be a reasonable expectation for the garment to perform such functions, as Examiner has explained after each functional limitation.
Regarding claim 15, the modified garment of Imboden discloses wherein said circumferential portion comprises only a single said at least one fabric panel of said woven stretchable fabric (as the fabric of Imboden has been modified to be a woven, and Imboden does not disclose additional layers).
Allowable Subject Matter
Claims 1 and 6 would be allowable with an approved terminal disclaimer or if rewritten to overcome the Double Patenting rejections.
Claims 2 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 3-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and with an approved terminal disclaimer or if rewritten to overcome the Double Patenting rejections.
Claims 9 and 11-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action.
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 allowable over the prior art of record as none of them, alone or in combination, disclose a compression garment with a circumferential portion formed of a panel of an uncoated single layer woven stretchable uniformly elastic fabric, the portion having different circumferential lengths along the axial length providing different circumferential compression where the compression values are decreasing, increasing, then decreasing, or graduated compression, and the panel edges stitched together to form an axially extending seam, where at least one edge has a non-linear portion and includes adjacent straight segments that are non-liner with respect to each other. The closest prior art of record is Imboden (US 4240160), Lundh (US 2017/0367899), Lipshaw (US 2010/0004563), and Jobst (US 2816361). Jobst teaches a compression garment with a circumferential portion formed of a panel, the portion having different circumferential lengths along the axial length providing different circumferential compression and the panel edges joined together to form an axially extending seam, but does not teach the panel being an uncoated single layer woven stretchable uniformly elastic fabric and where at least one edge has a non-linear portion and includes adjacent straight segments that are non-liner with respect to each other. Lipshaw teaches a compression garment with a circumferential portion having different circumferential lengths along the axial length providing different circumferential compression (either graduated or non-uniform compression), but does not teach a panel of an uncoated single layer woven stretchable uniformly elastic fabric, an axially extending seam and where at least one edge has a non-linear portion and includes adjacent straight segments that are non-liner with respect to each other. Imboden teaches a compression garment with a circumferential portion formed of a panel of an uncoated single layer stretchable uniformly elastic fabric, the portion having different circumferential lengths along the axial length providing different circumferential compression and the panel edges stitched together to form an axially extending seam, but does not teach the fabric being woven and where at least one edge has a non-linear portion and includes adjacent straight segments that are non-liner with respect to each other. Lundh teaches a compression garment with a circumferential portion formed of a panel of an uncoated single layer woven stretchable uniformly elastic fabric, the portion having different circumferential lengths along the axial length, but does not teach where at least one edge has a non-linear portion and includes adjacent straight segments that are non-liner with respect to each other. Modifying Imboden, Lundh, Jobst, or Lipshaw to have the claimed dimensions would be hindsight reconstruction based on Applicant’s own disclosure, therefore the claims are allowable.
Examiner’s Note
Examiner notes an Examiner’s Amendment to place the application in condition for allowance was offered to Applicant on May 26, 2026. However, Applicant declined to accept the amendment at that time.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Gift (US 2948132) teaches compression stocking with adjacent straight segments that are nonlinear with respect to each other.
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
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