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 .
Response to Amendment
Applicant’s response of 10/1/2025 is acknowledged. The response includes amendments to claims 1 and 21, cancels claim 10, and includes new claim 28.
Claims 1, 3-5, 7, 11, 13, 14, and 17-28 are pending.
Claim Objections
Claim 1 is objected to because of the following informalities: “wherein the elastomer material” should be revised to recite “wherein the elastomeric material” for consistency with the previously recited “elastomeric material”.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5, 7, 11, 13, 14, 17-19, and 25-27 are rejected under 35 U.S.C. 103 as being
unpatentable over Kataoka et al. (Kataoka, U.S. 2018/0077992) in view of Anzures et al. (Anzures, U.S.
2006/0286382) and Marshall (U.S. 11,384,224) and Torre (EP 3,569,622) and Kataoka discloses the invention substantially as claimed. For claim 1, Kataoka teaches a method of forming an overlay-visor 10 for personal protection equipment comprising a viewing area (overlay-visor is transparent such that it comprises a viewing area), and a spacer 120 extending along at least a portion of a periphery of the viewing area "adhesive layer 120 is continuously disposed along an outer edge portion of the base material sheet 100." The elastomeric material is expected to have a tacky property when set and/or cured, as the formed spacer 120 has an adhesive external surface facing away from the overlay-visor 10 as in par. 69. For claims 4 and 5, the formed spacer 120 has an adhesive external surface facing away from the overlay-visor 10 wherein the adhesive is a non-permanent adhesive allowing for the overlay-visor to be selectively removed from the helmet visor 9 and replaced as paragraph 69 discloses the adhesive layer 120 is formed by applying a liquid elastic pressure-adhesive adhesive (PSA) to the outer edge portion of the base material sheet 100 and drying the adhesive, and the adhesive "has adhesiveness on its surface.. and has a function as an elastically deformable spacer and a function as a removable pressure-sensitive adhesive." The spacer 120 is disclosed in paragraph 69 as sealing a space between the base material sheet 100 of the overlay-visor 10 and the shield 9 and the spacer 120 is formed by application of a liquid elastic pressure-sensitive adhesive to the outer edge portion of the base material sheet 100, with the adhesive applied by moving a nozzle, through which the pressure-sensitive adhesive is ejected, to a preprogrammed position at a preprogramed speed. Consequently, the liquid elastic pressure-sensitive adhesive can be applied to have a desired shape, width, and height. However, Kataoka doesn't teach the elastomeric material comprises a tackifier such that the formed spacer comprises a gasket comprising a tackified material as set forth in claims 1 and 3 and the elastomeric material comprises any of natural rubber, acrylics, nitriles, styrene-isoprene block copolymers, silicones, vinyl ethers, butyl rubber or combination thereof, as set forth in claim 1 and the elastomer material comprises one or more shear-thinning rheology modifiers as set forth in claim 1.
Kataoka doesn't teach the overlay-visor comprises cellulose acetate as in claims 10 and 11. Kataoka
doesn't teach the overlay-visor comprising a viewing area and a spacer extending along at least a
portion of a periphery of the viewing area, obtainable by the method of claim 1, wherein the overlay-
visor is adapted to be releasably attached to a shield-visor as in claim 13. Kataoka doesn't teach a visor
assembly comprising a shield-visor having a surface, and an overlay-visor according to claim 13 as in
claim 17. Kataoka doesn't teach the overlay-visor is adhered to the shield-visor and the adherence is
peelably releasable as in claim 18. Kataoka doesn't teach a kit of parts comprising an overlay-visor
obtainable by the method of claim 1, according to claim 13, and a shield-visor forming a kit of parts with
the overlay visor of claim 13, as in claim 19.
Anzures teaches an analagous protective transparent support film intended to be releasably adhered to
a helmet visor, with the support film including a commercially available, pressure-sensitive silicone
based adhesive. Paragraph 52 discusses exemplary silicone based pressure sensitive adhesives including
PDMS polymers that contain silanol functionalities at the polymer chain ends and PDMDPS polymers
that contain silanol functionally at the polymer chain ends. These are often referred to as MQ resins. As
noted in the claim objection section, the MQ resin is considered as a tackifier. Paragraph 61 discloses
the adhesive may be applied to the support film by any suitable method known in the art. Marshall
teaches an analagous film/overlay-visor having optical properties and formed from cellulose acetate, the
film adhered to a consumer product, e.g. the planar surface of a consumer product, with an adhesive as
in col.12, lines 3-10 and lines 8-43 also disclose a motorcycle lens 66 incorporating said film. Marshall's
overlay-visor formed from cellulose acetate has desirable optical properties and is heat-resistant. Torre identifies a deficiency in the adhesion and cohesion properties of pressure sensitive adhesive materials and a need for stable and cost-effective PSA material with improved and versatile adhesion characteristics with respect to peel forces and shear resistance on various types of surfaces (paragraphs 9 and 10). Torre teaches that it’s known in the art to provide a pressure sensitive adhesive with a rheology modifier as one of a number of well-known additives to enhance the performance of the pressure sensitive adhesive composition (par.103).
Kataoka's modified overlay-visor is configured to releasably adhere to the shield-visor without a
mechanical retaining element as Kataoka doesn't employ any mechanical retaining elements. Therefore,
it would have been obvious to one of ordinary skill in the art before the effective filing date of the
invention to modify Kataoka's method of forming the overlay-visor to form the elastomeric material
from silicone with a tackifier as taught by Anzures, to result in a spacer providing a releasable
engagement between the helmet visor and the overlay-visor. It also would have been obvious to modify
Kataoka to form the overlay-visor comprising cellulose acetate, as Marshall teaches cellulose acetate is
heat-resistant and suitable for its optical properties. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kataoka’s elastomer material to comprise one or more shear-thinning rheology modifiers as taught by Torre, in order to improve the adhesion and cohesion properties of the elastomer material spacer in the same manner.
For claims 13, 14, and 17-19, Kataoka's modified overlay-visor 10 comprises a viewing area and a
spacer 120 extending along at least a portion of a periphery of the viewing area, obtainable by the
method of claim 1, wherein the overlay-visor 10 is adapted to be releasably attached to a shield-visor.
For claim 14, Kataoka's modified overlay-visor 10 comprises cellulose acetate as previously discussed.
For claim 17, Kataoka, as modified to meet the limitations of claims 1 and 13, teaches a visor assembly
comprising a shield-visor 9 having a surface and an overlay-visor according to claim 13. For claim 18,
Kataoka's modified overlay-visor 10 is adhered to the shield-visor 9 (par.44 of Kataoka) and the
adherence is considered as peelably releasable as the claim doesn't provide further details resulting in
the peelably releasable capability and Kataoka's modified overlay-visor is equivalent to that of claims 13
and 17. For claim 19, Kataoka's modified overlay-visor 10 and shield-visor 9 are considered as a kit of
parts. Note that claims 3-5, 7, 10, and 11 do not further limit the method of forming an overlay-visor as
they recite further structure without additional method steps, and the structure doesn't affect the
method in a manipulative sense.
For claim 25, Kataoka, as modified by Anzures and Marshall and Torre, teaches each limitation as claimed including the step of providing an overlay-visor having no recesses for engaging with mechanical
retaining elements for retaining the overlay-sheet to the shield-visor.
For claim 26, the modified Kataoka teaches an overlay-visor 10 comprising a viewing area and a
spacer 120 extending along at least a portion of a periphery of the viewing area, obtainable by the
method of claim 25, wherein the overlay-visor 10 is adapted to be releasably attachable to a shield-visor
9.
For claim 27, the modified Kataoka teaches a visor assembly comprising a shield-visor 9 having a
surface, and the overlay-visor 10 according to claim 26, wherein the overlay-visor 10 is adhered to the
shield-visor 9 and the adherence is peelably releasably, as the limitation of "peelably releasable" doesn't
provide further details of the adherence and Kataoka's modified overlay-visor is equivalent to that of
claims 25 and 26.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kataoka '992 in view of
Anzures '382 and Marshall '224 and Torre ‘622 as applied to claims 1, 13, and 17 above, and further in view of Arnold '160. Kataoka discloses the invention substantially as claimed, including a helmet 1 comprising a skull protection portion (motorcycle helmet) and a visor assembly as in claim 17, but doesn't explicitly teach the skull protection portion is opaque. Arnold teaches a helmet with an opaque skull protection portion 3 as in par.93. This is a generally known feature of helmet skull protection portions providing a desired visual aesthetic. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kataoka's skull protection portion to form as opaque in that Arnold teaches an opaque skull protection portion is known in the helmet art.
Claims 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kataoka '992 in view
of Anzures '382 and Marshall '224 and Torre ‘622. Kataoka discloses the invention substantially as claimed. Kataoka teaches a method of forming an overlay-visor 10 for personal protection equipment (for installing in the internal surface of face shields 9 such as helmet visors) comprising a viewing area (overlay-visor is transparent such that it comprises a viewing area), and a spacer 120 extending along at least a portion of a periphery of the viewing area "adhesive layer 120 is continuously disposed along an outer edge portion of the base material sheet 100." comprising a step of providing an overlay sheet 100 having no recesses for engaging with mechanical retaining elements for retaining the overlay-sheet to the shield- visor, nozzling a bead of fluid elastomeric material onto a surface of an overlay-sheet to form a spacer 120, wherein the elastomeric material is tacky when set and/or cured. The spacer 120 is disclosed in paragraph 69 as sealing a space between the base material sheet 100 of the overlay-visor 10 and the shield 9 and the spacer is formed by application of a liquid elastic pressure-sensitive adhesive to the outer edge portion of the base material sheet 100, with the adhesive applied by moving a nozzle,
through which the pressure-sensitive adhesive is ejected, to a preprogrammed position at a
preprogramed speed. Consequently, the liquid elastic pressure-sensitive adhesive can be applied to
have a desired shape, width, and height. The formed spacer 120 has an adhesive external surface facing
away from the overlay-visor 10 and wherein the adhesive is a non-permanent adhesive allowing for the
overlay-visor to be selectively removed from the helmet visor 9 and replaced as paragraph 69 discloses
the adhesive "has adhesiveness on its surface.. and has a function as an elastically deformable spacer
and a function as a removable pressure-sensitive adhesive." Kataoka doesn't teach the elastomeric
material comprises one or more silicone polymers and one or more MQ silicate resins and one or more shear-thinning rheology modifiers. Kataoka doesn’t teach the elastomer material comprises one or more shear-thinning rheology modifiers.
Anzures teaches an analagous protective transparent support film intended to be releasably adhered to
a helmet visor, with the support film including a pressure-sensitive silicone based adhesive. Paragraph
52 discusses exemplary silicone based pressure sensitive adhesives including PDMS polymers that
contain silanol functionalities at the polymer chain ends and PDMDPS polymers that contain silanol
functionally at the polymer chain ends. Paragraph 61 discloses the adhesive may be applied to the support film by any suitable method known in the art. Kataoka's modified overlay-visor 10 is configured to releasably adhere to the shield-visor 9 without a mechanical retaining element as Kataoka doesn't employ any mechanical retaining elements. Torre teaches that it’s known in the art to provide a pressure sensitive adhesive with a rheology modifier as an additive. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kataoka's method of forming the overlay-visor to form the elastomeric material from silicone polymers as taught by Anzures, to result in a spacer providing a releasable engagement between the helmet visor and the overlay-visor. It also would have been obvious to modify Kataoka to form the overlay-visor comprising cellulose acetate, as Marshall teaches cellulose acetate is heat-resistant and suitable for its optical properties. Torre identifies a deficiency in the adhesion and cohesion properties of pressure sensitive adhesive materials and a need for stable and cost-effective PSA material with improved and versatile adhesion characteristics with respect to peel forces and shear resistance on various types of surfaces (paragraphs 9 and 10). Torre teaches that it’s known in the art to provide a pressure sensitive adhesive with a rheology modifier as one of a number of well-known additives to enhance the performance of the pressure sensitive adhesive composition (par.103). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kataoka’s elastomer material to comprise one or more shear-thinning rheology modifiers as taught by Torre, in order to improve the adhesion and cohesion properties of the elastomer material spacer in the same manner.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Kataoka '992 in view of
Anzures '382 and Marshall '224 and Torre ‘622 as applied to claim 1 above, and further in view of Schuh et al. (DE 102017221072 A1). Kataoka discloses the invention substantially as claimed. However, Kataoka doesn’t teach the one or more shear-thinning rheology modifiers is chosen from the group consisting of natural gums, cellulosics, alkali soluble emulsions, alkali swellable emulsions, hydrophobically modified alkali swellable emulsions, hydrophobically modified ethoxylated urethanes, organoclays, castor oil derivatives, polyamides, calcium sulfonate derivatives, modified polyurea, and fibers. Schuh teaches a method for producing PSA compositions including an organic rheology modifier of polyamide waxes, clay minerals, or a synthetic rheology modifier of a castor oil derivative. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kataoka’s shear-thinning rheology modifier to include castor oil derivatives as taught by Schuh, as a known synthetic rheology modifier for improving the shear-thinning properties of the pressure sensitive/non-permanent adhesive of the spacer.
Response to Arguments
Applicant’s remarks have been considered. Please note that the newly added limitations necessitate revised prior art rejections as set forth herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
/KATHERINE M MORAN/Primary Examiner, Art Unit 3732