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 .
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 10-20 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 10 recites the limitations "the third strap" and “the fourth strap” in line 7. There is insufficient antecedent basis for this limitation in the claim.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,464,268. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the current claims are disclosed and/or taught by U.S. Patent No. 11,464,268. The claimed limitations of ‘268 are only different from the currently claimed limitations by slight differences in nomenclature and prima facie obvious limitations regarding placement of claimed straps across a rear opening of a hat.
Therefore it would have been obvious to one of ordinary skill in the art prior to filing the invention to modify the hat and strap arrangement disclosed/taught by ‘268 to include variations in strap placement to increase the hair holding port placement and capacity of a hat with hair port openings defined by straps that criss-cross across a rear opening in a hat.
The table below shows specific claim correlation between parent patent and current child application.
New/current claims
Parent patented claims and any additional obviousness rationale, if needed.
1
1 discloses claim 1 as “criss cross” in patented claim 1 is equivalent to “oriented diagonally across” from “right side” to a “left side of a hat”.
2
2
3
3
4
4+5
5
4+5; the only difference being the straps in the new claim 5 are switched from the diagonal orientation disclosed in parent claims 4+5.
6
1 discloses first and second straps.
7
1 and 7, straps disclosed in claim 1 are inherently capable of positional “adjustment” and claim 7 discloses a third strap as “adjustable”.
8
1, 7, and 8, adjustment of straps disclosed across an opening of the hat inherently “adjust” circumference and/or volume of the hat.
9
9
10
10 discloses claim 10 as “criss cross” in patented claim 1 is equivalent to “oriented diagonally across” from “right side” to a “left side of a hat”. Patented claim 14 discloses straps as “separate straps” which are inherently “spaced apart” as they are “separate”. A “criss cross” arrangement as disclosed inherently requires either of the “criss crossed” straps to extend diagonally across with either of the ends of the straps to be one of closer to the upper/crown portion and the opposing end of the strap to be closer to the lower/bottom of the hat. It would be obvious to one of ordinary skill in the art prior to filing the invention to modify the placement/orientation of the straps to increase/modify the hair holding capabilities of the hat disclosed by parent claim 10.
11
11
12
13
13
14 + 15
14
14 +15; A “criss cross” arrangement as disclosed inherently requires either of the “criss crossed” straps to extend diagonally across with either of the ends of the straps to be one of closer to the upper/crown portion and the opposing end of the strap to be closer to the lower/bottom of the hat. It would be obvious to one of ordinary skill in the art prior to filing the invention to modify the placement/orientation of the straps to increase/modify the hair holding capabilities of the hat disclosed by parent claim 10.
15
14 +15; A “criss cross” arrangement as disclosed inherently requires either of the “criss crossed” straps to extend diagonally across with either of the ends of the straps to be one of closer to the upper/crown portion and the opposing end of the strap to be closer to the lower/bottom of the hat. It would be obvious to one of ordinary skill in the art prior to filing the invention to modify the placement/orientation of the straps to increase/modify the hair holding capabilities of the hat disclosed by parent claim 10.
16
14 +15; A “criss cross” arrangement as disclosed inherently requires either of the “criss crossed” straps to extend diagonally across with either of the ends of the straps to be one of closer to the upper/crown portion and the opposing end of the strap to be closer to the lower/bottom of the hat. It would be obvious to one of ordinary skill in the art prior to filing the invention to modify the placement/orientation of the straps to increase/modify the hair holding capabilities of the hat disclosed by parent claim 10.
17
16 the only difference being the numbering of the strap in the claim language.
18
17 the only difference being the numbering of the strap in the claim language.
19
18 the only difference being the numbering of the strap in the claim language.
20
19
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Various attached references establish the general state of the prior art of hats/headwear with hair opening/holding capability.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H MUROMOTO JR whose telephone number is (571)272-4991. The examiner can normally be reached M-Th 730-1730.
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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.
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/ROBERT H MUROMOTO JR/Primary Examiner, Art Unit 3732
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