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 Invention I, Species E and Sub-species E1 in the reply filed on July 1, 2026 is acknowledged. Claims 12 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Response to Amendment
The amendments filed with the written response received on July 1, 2026 have been considered and an action on the merits follows. As directed by the amendment, claim 2 has been amended; claims 12 and 13 are withdrawn from further consideration. Accordingly, claims 1-13 are pending in this application, with an action on the merits to follow regarding claims 1-11.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-11, respectively, of copending Application No. 19/426,384 (reference application).
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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, 5 and 11 (and claims 6 and 7 at least due to dependency from claim 5) 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 2, Applicant recites the limitation “the exterior surface”, which lacks clear antecedent basis in the claims. Should “the exterior surface” recite “the exterior of the pant leg” (as positively recited in claim 1)? Correction is required.
Regarding claim 5, Applicant recites the limitation “the interior”, which lacks clear antecedent basis in the claims. Should “the interior” recite “the interior surface of the pant leg” (as positively recited in claim 1)? Correction is required.
Regarding claim 11, Applicant recites “the second textile surface has a smoother tactile feel compared to the first textile surface” and “the third textile surface has a smoother tactile feel compared to the first textile surface” (emphasis added). The term “smoother tactile feel” is unclear, structurally, because it appears to depend on the subjective opinion of a person that needs to “feel” the material in order to determine whether the material would meet the limitation. Correction is required. Examiner suggests redefining this language in a structural manner, such as simply stating that one surface is smoother than the other 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 (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.
Claims 1-4 and 8-11 (claims 2 and 11 as best as can be understood) are rejected under 35 U.S.C. 103 as being unpatentable over Newman (USPN 5,210,877) in view of Marshall (US 2008/0092273), Mullins et al. (hereinafter “Mullins”) (US 2005/0028563) and McMurray (US 2005/0112975), and as evidenced by Thomson et al. (hereinafter “Thomson”) (US 2016/0017521).
Regarding independent claim 1, Newman discloses a garment (see bicycle shorts #13 in Fig. 4 or bicycle tights #18 in Fig. 5) comprising: a pant leg extending from the waist opening (see Figs. 4 and 5 of Newman), the pant leg comprising a first single-layer fabric and a second single-layer fabric (“sleeves of the outerwear consist of a single layer of fabric” (Col. 4, Lines 65-66 and Col. 5, Lines 19-20 of Newman); “the protective fabric panels contain SPECTRA™ brand fibers or yarn” (Col. 2, Lines 9-10); the balance of the garment does not contain SPECTRA™ or other high performance fibers or yarn, and is made only from conventional fabric typically used in the manufacturing bicycle outerwear (Col. 2, Lines 16-20); i.e. the white balance sections constitute a first single-layer fabric and the protective panel sections constitute a second single-layer fabric), wherein the first single-layer fabric comprises a first textile surface on an exterior of the pant leg that has a higher coefficient of friction than a second textile surface of the second single-layer fabric on the exterior of the pant leg (the white polyester conventional fabric, on the exterior surface, constitutes a first textile surface on an exterior of the pant leg; the protective panels’ SPECTRA™ fiber fabric, on the exterior surface, constitutes a second textile surface on the second single-layer fabric; as noted above, the solid white area is the first portion defined by polyester; the line-shaded panels #6/#10 are defined by the SPECTRA™ fabric; evidentiary reference Thomson teaches that UHMEPE (ultra high molecular weight polyethylene (Col 4, Lines 30-31 of Newman; Col. 5, Lines 5-6 of Newman)) fibers (i.e. the generic name of SPECTRA™ fiber) have an inherently low coefficient of friction as compared with polyester fibers (¶ 0093 of Thomson); therefore the polyester-based portion of the exterior surface has a greater coefficient of friction than the SPECTRA™-based portion #6/#10 of the exterior surface), wherein the first single-layer fabric comprises a third textile surface on an interior surface of the pant leg extending under the majority of the first textile surface (the white balance polyester fabric sections (which define the first single-layer fabric), on the interior surface of the pant leg, constitutes a third textile surface on an interior surface of the pant leg). Newman shows a waist opening, but is silent as to whether there is a waistband configured to encircle the wearer’s waist. Newman is silent as to whether the exterior textile surface of the white balance polyester sections (i.e. first textile surface) is different than the interior textile surface of the white balance polyester sections (i.e. third textile surface), and is therefore silent as to whether the first textile surface has a higher coefficient of friction than the third textile surface.
Mullins teaches a garment that utilizes a knitted polyester fabric that has a wearer-contacting surface and an exterior surface (claim 1 of Mullins; ¶ 0010 indicates warp knit fabrics may be used), wherein the wearer contacting surface has a “very low coefficient of friction in order that it does not irritate the skin” (¶ 0004 of Mullins). Mullins does not go into detail regarding the similarities or differences between the fiber patterns of the wearer-contacting surface and the exterior surface and it cannot be determined whether the interior fiber pattern is different from the exterior fiber pattern. While Mullins does not explicitly state that the very low coefficient of friction on the wearer-contacting surface is less than the coefficient of friction on the exterior surface, this is at least suggested by Mullins because the only surface that is discussed as having a low coefficient of friction within the Mullins disclosure is the wearer-contacting surface (i.e. the exterior surface is merely mentioned as being present in claim 1 of Mullins, with no further discussion thereof).
McMurray teaches warp knit fabric that may include first and second opposing sides, wherein the first and second sides may have at least one different quality than one another (¶ 0051 of McMurray), including contemplating that the pattern on each side may be different, including knitting differences on each side being different (¶ 0055 of McMurray).
Marshall teaches cycling pants that have a commonly known, distinct waistband (#6/106/206).
Newman, Mullins and McMurray teach analogous inventions in the field of knitted fabric products. Newman and Marshall teach analogous inventions in the field of cycling pants. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have reduced the coefficient of friction on the interior, wearer-contacting face of the polyester portion of the pant leg (as taught by Mullins), in order to ensure a reduced friction and less skin irritation for the wearer (as desired by Newman, as noted above), and it would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have accomplished the difference in friction by utilizing the double-faced warp knitted fabric, which would have a different knitting pattern on each of the interior and exterior surfaces (i.e. resulting in different friction qualities on each side), as taught by McMurray. It would have been further obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have added a distinct waistband to the waist opening of the garment in order to provide the user with added support around the waist, as opposed to relying on the material of the remainder of the garment, which could potentially cause the pants to slip down undesirably, and further since waistbands are very well-known in the art of pants. As a result of the modifications, the exterior fiber pattern would be different than the interior fiber pattern (via teachings of McMurray), wherein the interior fiber surface (i.e. third textile surface) would comprise a lower coefficient of friction than the exterior fiber surface (i.e. first textile surface) (via teachings of Mullins), and there would be a waistband configured to encircle the wearer’s waist (via teachings of Marshall).
Regarding claim 2, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that a majority of the exterior surface is entirely constituted by the combination of the first single-layer fabric and the second single-layer fabric (see Figs. 4 and 5 of Newman; as explained above, the single-layer fabric is made of the white polyester balance sections and the protective panel sections, which together form the entire exterior surface of the garment).
Regarding claim 3, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the first single-layer fabric comprises a knit structure having a different fiber pattern on the third textile surface than the first textile surface (as taught by McMurray and incorporated into the modified garment of Newman, as explained above).
Regarding claim 4, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 3, as set forth above, and further that the difference in coefficient of friction of the first textile surface and the third textile surface is due to the different fiber pattern on the first textile surface compared to the third textile surface (as noted above with respect to claim 1; via the teachings of Mullins and McMurray incorporated into Newman’s garment in the modification explained above).
Regarding claim 8, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that it further comprises at least one of polyurethane, polyamide, polypropylene, polyester, polyether-polyurea copolymer, and silicone elastomer (as noted above, the fabric’s white balance sections include polyester).
Regarding claim 9, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the first textile surface and the second textile surface collectively occupy a majority of the exterior (see Figs. 4 and 5 of Newman; as explained above, the single-layer fabric (with the first textile surface) is made of the white polyester balance sections and the protective panel sections (with the second textile surface), which together form the entire exterior surface of the garment).
Regarding claim 10, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the first single-layer fabric is joined to the second single-layer fabric with stitching (see Abstract of Newman, which teaches that the sections or protective panels (i.e. second single-layer fabric) are sewn together with the sections of conventional textile (i.e. first single-layer fabric)).
Regarding claim 11, the modified garment of Newman (i.e. Newman in view of Marshall, Mullins and McMurray, as applied to claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the second textile surface has a smoother tactile feel compared to the first textile surface, and wherein the third textile surface has a smoother tactile feel compared to the first textile surface (via the teachings of Mullins and McMurray applied to Newman via the modifications, the white balance polyester fabric (i.e. first textile surface) has a higher coefficient of friction than the SPECTRA™ fiber fabric surface (i.e. second textile surface), and the interior surface (i.e. third textile surface) likewise has been modified to have a lower coefficient of friction than compared to the polyester exterior sections (i.e. first textile surface), as best as the limitation “smoother tactile feel” can be understood, structurally; see the 35 U.S.C. 112(b) rejection of claim 11 above).
Allowable Subject Matter
Claims 5-7 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of single-layer garments with surfaces that have different coefficients of friction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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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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/JAMESON D COLLIER/Primary Examiner, Art Unit 3732
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