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 23-25 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.
In claim 20, last line, there is no antecedent basis for “The back panel” as well as in claim 22, line 2 Claims 21 and 22 are unclear and indefinite for the same reasons as in claim 20 since claims 21 and 22 depend from claim 20.
In claim 23, line 8, there is no antecedent basis for “the chest area” and in line 11,, for “the back area”. Claims 24 and 25 are rejected for the same reasons as in claim 23 since claims 24 and 25, depend from and therefore include the language of claim 23.
The claims, as best understood, have been examined on their merits.
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 20 -23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12557859 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the parent U.S> Patent Number 12 557 857 both claim the garment comprising a front panel configured to cover a chest area of a human torso, including a first layer forming an outer surface of the garment, a second layer forming an inner surface of the garment, a pair of removable front cooling pads place between the first and second layer and wherein each of the removable front cooling pads includes a foam layer and wherein the front cooling pads includes a foam layer and wherein the front cooling layer is attached to the foam layer and wherein the front cooling layer is attached to the foam layer wherein a base support band is configured to encircle the human torso; and a shoulder strap extending from the front panel to the back panel. New claim 200 does not clearly claim the details of “The back panel” and only claims that a “The back panel” is included therein but without details but includes the presence of “The back panel” to cause a double patenting issue.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 20-25 is/are rejected under 35 U.S.C. 102a2 as being anticipated by Kilbey (US 2020/0393205 A1).
In regard to claim 1 Kilbey discloses a garment 10 in figure 1 comprising a front panel 18 and 20, configured to cover a chest area of a human torso in figure 1 including a first layer 18,20 forming an outer surface of the garment and a second layer forming an inner surface 58 in para. (0115) and in fig.4 of the garment; a pair of removable front cooling pads 62 in fig. 5 and para. (0116) placed between the first and second layer, wherein each of the removable front cooling pads 78 in fig. 7, at 78 are placed between the first and second layer, wherein each of the removable front cooling pads 78 in fig. 7 and para. ()122) is configured to cover a portion of a breast pad wherein each of the removable cooling pads 78 includes a front cooling layer facing the chest area and a cut away corner as in fig. 7 to best fit the breast area by the shoulder straps14,16 in fig. 1, each of the front cooling pads as in fig. 10, includes a foam layer 92 in fig. 10 and para. ()127) and wherein the front cooling layer 62 is attached to the foam layer 92, wherein a base support band 48 in figure 1, as broadly claimed, is configured to encircle the human torso; and a shoulder strap 14,16 in fig. 1 extending from the front panel 20to the back panel 28 in fig. 1.
IN regard to claim 21, Kilbey discloses the garment 10 as in claim 20 and further wherein the first panel 20 in para. (107) further comprises an opening 28 located adjacent to a side edge(not numbered- along 28) in fig. 1 of the front panels 18, 20 in figure 1 and wherein each of the pair of removable front cooling pads at 82 in fig. 8 and side opening on right side of vest-( not numbered), is configured to be inserted into and removed from the front panel through the opening. IN regard to claim 22, Kilbey discloses the garment of claim 21 and further wherein the back panel comprises a back opening(in fig. 7 on right side of vest near 80- not numbered., and wherein the at least one back cooling pad 78 is configured to be removable inserted into the back panel 82 in figure 8, through the back opening in fig. 8 to right of 82, not numbered.
In regard to claim 23 Kilbey discless a method of assembling a cooling garment 10 comprising providing a garment body 18, 20 comprising a front panel having a first layer 18 and a second layer 32, and a back panel at 10 in fig. 1, configured to cover a back area of a human torso; inserting a pair of removable front cooling pads 62 between the first layer and the second layer of the front panel through an opening located under an armhole 28 of the garment body; positioning each of the pair of removable front cooling pads at 78 in fig. 7, to cover a portion of a breast area, wherein each of the removable front cooling pads includes a front cooling layer facing the chest area, and removably attaching two back cooling pads to the back panel at 82 in fig. 8 such that the two back cooling pads 82,84 in fig. 8, are separated by a back cutout defined by the back panel, wherein each of the two back cooling pads includes a back cooling layer facing the back area as in fig. 8.
In regard to claim 24, Kilbey discloses the method of claim 23 and further wherein the opening is located near a side edge of the front panel in fig. 8 to the right of ref. 84.,
In regard to claim 25, Kilbey discloses the method of claim 23 and further wherein removably attaching the two back cooling pads 82 comprises inserting the two back cooling pads 82 in fig. 8, between a shell layer and a middle layer on the back panel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLORIA M HALE whose telephone number is (571)272-4984. The examiner can normally be reached MON.-THURS..
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 1-571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GLORIA M HALE/Primary Examiner, Art Unit 3732
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