Question: A patent application discloses a multi-layer material for a diver's wet suit wherein an outer layer is a structural fabric; the first inner layer is a plush layer of a combination of cotton, silk, wool, and synthetic fabric interwoven together, and bonded to an outer layer; a second inner layer is a plush layer of cotton, silk, wool, or synthetic fabric bonded to the first inner layer opposite the outer layer, wherein the bond between the outer layer and the first inner layer is a water resistant material. Claim 1 in the application is as follows: 1. A multi-layer material for a diver's wet suit comprising: i) an outer layer comprising a structural fabric; ii) a first inner layer of a plush layer which is a member selected from the group comprising cotton, silk, wool, and synthetic fabric, said first inner layer bonded to said outer layer; and iii) a second inner layer of a plush layer of cotton, silk, wool, or synthetic fabric bonded to the first inner layer opposite the outer layer; wherein a water resistant material comprises a bond between said outer layer and said first inner layer. Claim 1 is properly rejected under 35 U.S.C. § 102 over an article published 5 years before the filing date of the application disclosing a multi-layer material for a diver's wet suit having an outer layer which is a structural fabric; a first inner, plush layer of cotton, the first layer being bonded to the outer layer by a water resistant material; and a second inner, plush layer of cotton, silk, wool, or synthetic fabric bonded to the first inner layer opposite the outer layer. The specification is also objected to under 35 U.S.C. § 112, first paragraph, as not providing an adequate written description of the invention as claimed. Claim 1 is rejected for the same reasons. The rejection and objection may be properly obviated by:
A. A response arguing that the publication is not relevant because it lacks silk, wool, and synthetic fabric in the first inner layer, and arguing that, as an original claim, Claim 1 does not need antecedent basis in the specification.
B. In line 4, amending "comprising" to "consisting of" to define the first inner layer as being "a plush layer which is a member selected from the group consisting of cotton, silk, wool, and synthetic fabric, said first layer bonded to said outer layer"; and arguing that the amended claim overcomes the publication because it requires the first inner layer to be a plush layer of a combination of cotton, silk, wool, and synthetic fabric, and it now conforms with the original disclosure in the specification.
C. In line 4, amending "comprising" to "consisting essentially of" to define the first inner layer as being "a plush layer which is a member selected from the group consisting essentially of cotton, silk, wool, and synthetic fabric, said first layer bonded to said outer layer"; and arguing that the amended claim overcomes the publication because it requires the first inner layer to be a plush layer of a combination of cotton, silk, wool, and synthetic fabric, and it now conforms with the original disclosure in the specification.
D. In line 3, amending Claim 1 by deleting the phrase "which is a member selected from the group comprising," and inserting in its place the phrase "of a combination of"; and in line 4, after "fabric" inserting "interwoven together" to define the first inner layer as being "a plush layer of a combination of cotton, silk, wool, and synthetic fabric interwoven together, said first inner layer bonded to said outer layer"; and arguing that the claim, as amended, now conforms with the original disclosure in the specification, and the publication does not teach the claimed combination of interwoven fabrics in the first layer.
(category: patent, Chinese translation: 专利)