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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 September 2025 has been entered.
Response to Amendment
Applicant’s amendment, received 15 September 2025, is reviewed and entered. This Office Action is a non-final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Amended
16
Newly Added
32
Withdrawn
18, 26-30
Canceled
1-15, 17, 19-25, 31
Pending
16, 18, 26-30, 32
Presented for Examination
16, 32
Response to Arguments
Applicant's arguments filed 15 September 2025 have been fully considered but they are not persuasive.
112(b) Rejections
Overcome by canceling claim 25 and rejection is withdrawn.
102 Rejections
Arguments that are drawn to the amended subject matter are addressed in the rejections below.
Applicant’s remaining arguments are drawn to the functional recitations.
The recitation “configured and dimensioned to rupture” is a functional recitation. A recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Because the prior art reference and the claimed invention are structurally identical, they are expected to function in the same manner, and the prior art reference reads on the functional recitation in the claim.
Applicant is respectfully reminded that a recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the prior art protuberances have all of the same structure as the claimed protuberances, which is that they extend from the first layer. Even if the prior art protuberances are intended to be used differently, they are still capable of rupturing and will rupture under sufficient force. If there is a structural difference that allows the present invention to function as claimed, then this has not been claimed, and Examiner suggests a claim amendment incorporating the structure that permits the present protuberances to rupture in order to overcome the prior art. For example, if the protuberances are dimensioned to rupture, then what are the dimensions? Morgan has all of the claimed dimensions and so is expected to also rupture when exceeding the predefined threshold. If the present dimensions differ from the Morgan dimensions, then claiming the present dimensions would overcome the rejection.
Applicant argues that the functional limitation should not be “read out” of the claims. The functional limitations have not been “read out” of the claims. The functional limitations have been considered by the Examiner. The prior art discloses a helmet having all of the claimed structure. Therefore, it is expected to function in the same manner, and the prior art reference reads on the functional limitations.
Canceling claim 25 overcomes the rejection and the rejection is withdrawn.
In light of the above, the rejection is believed to be proper.
Election/Restrictions
The elected embodiment is Group I, figs 2A-5B, a protective layer comprising protuberances, in the reply filed on 09 November 2023.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, following features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
“the protuberances being spaced apart from one another to allow air to flow between the protuberances” in combination with “wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base” as required by claim 16 (see explanation below),
“the protuberances being spaced apart from one another to allow air to flow between the protuberances” in combination with “wherein the protuberances comprise a conical protuberance with an elliptic or polygonal base” as required by claim 32 (see explanation below),
“wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base” as required by claim 16 (all of the figures show a protective layer having protuberances of a single type and none of the figures show a protective layer having more than one of a type of protuberance as suggested by the recitation “at least one of”), and
the elliptic or polygonal base as required by claim 16 (none of the figures show the shape of the base).
Claims 16 and 32 recite “the protuberances being spaced apart from one another to allow air to flow between the protuberances.” According to para. 0024, this is the configuration shown in FIGS 5A-5B.
Claim 16 also recites “wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base.” According to para. 0072, the protuberances 202 shown in the FIG 2A-2B embodiment are tubular or beam-shaped. According to para. 0074, the 300 are shown in the FIG 3A-3B embodiment are conical protuberances. According to para. 0077, the protuberances 400 shown in the FIG 4A embodiment are conical, beam-shaped, and/ or tubular (please note it is unclear if Applicant is describing the protuberances 400 as being conical, beam-shaped, and/ or tubular or if only conical protuberances are shown but the protuberances alternatively could be beam-shaped and/ or tubular). The disclosure is silent as to the type of protuberance shown in FIGS 5A-5B, such that it can be determined the drawings support the protuberances being spaced apart from one another to allow air to flow between the protuberances in combination with at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base. The protuberances in FIGS 5A-5B most closely resemble those of FIG 2A-2B which the disclosure describes as tubular or beam-shaped. However, the protuberances 400 in FIG 4A appear to be conical to the Examiner, but Applicant describes this shape as conical, beam-shaped, and/ or tubular, rendering it unclear what the differences is between conical, beam-shaped, and/ or tubular shapes. As best understood, “the protuberances being spaced apart from one another to allow air to flow between the protuberances” is supported by FIG 5A-5B and the protuberances in FIG 5A-5B are possibly also tubular or beam-shaped, but the figures do not support an embodiment where both “the protuberances being spaced apart from one another to allow air to flow between the protuberances” and the protuberances are conical.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
“the protuberances being spaced apart from one another to allow air to flow between the protuberances” in combination with “wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base” as required by claim 16 (see explanation below),
“the protuberances being spaced apart from one another to allow air to flow between the protuberances” in combination with “wherein the protuberances comprise a conical protuberance with an elliptic or polygonal base” as required by claim 32 (see explanation below),
“wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base” as required by claim 16 (the disclosure supports a protective layer having protuberances of a single type but not a protective layer having more than one of a type of protuberance as suggested by the recitation “at least one of”).
Claims 16 and 32 recite “the protuberances being spaced apart from one another to allow air to flow between the protuberances.” According to para. 0024, this is the configuration shown in FIGS 5A-5B.
Claim 16 also recites “wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base.” According to para. 0072, the protuberances 202 shown in the FIG 2A-2B embodiment are tubular or beam-shaped. According to para. 0074, the 300 are shown in the FIG 3A-3B embodiment are conical protuberances. According to para. 0077, the protuberances 400 shown in the FIG 4A embodiment are conical, beam-shaped, and/ or tubular (please note it is unclear if Applicant is describing the protuberances 400 as being conical, beam-shaped, and/ or tubular or if only conical protuberances are shown but the protuberances alternatively could be beam-shaped and/ or tubular). The disclosure is silent as to the type of protuberance shown in FIGS 5A-5B, such that it can be determined the specification supports the protuberances being spaced apart from one another to allow air to flow between the protuberances in combination with at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base. The protuberances in FIGS 5A-5B most closely resemble those of FIG 2A-2B which the disclosure describes as tubular or beam-shaped. However, the protuberances 400 in FIG 4A appear to be conical to the Examiner, but Applicant describes this shape as conical, beam-shaped, and/ or tubular, rendering it unclear what the differences is between conical, beam-shaped, and/ or tubular shapes. As best understood, “the protuberances being spaced apart from one another to allow air to flow between the protuberances” is supported by FIG 5A-5B and the protuberances in FIG 5A-5B are possibly also tubular or beam-shaped, but the specification does not support an embodiment where both “the protuberances being spaced apart from one another to allow air to flow between the protuberances” and the protuberances are conical.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16 and 32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The new matter is:
“the protuberances being spaced apart from one another to allow air to flow between the protuberances” in combination with “wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base” as required by claim 16 (see explanation below),
“the protuberances being spaced apart from one another to allow air to flow between the protuberances” in combination with “wherein the protuberances comprise a conical protuberance with an elliptic or polygonal base” as required by claim 32 (see explanation below),
“wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base” as required by claim 16 (the disclosure supports a protective layer having protuberances of a single type but not a protective layer having more than one of a type of protuberance as suggested by the recitation “at least one of”).
Claims 16 and 32 recite “the protuberances being spaced apart from one another to allow air to flow between the protuberances.” According to para. 0024, this is the configuration shown in FIGS 5A-5B.
Claim 16 also recites “wherein the protuberances comprise at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base.” According to para. 0072, the protuberances 202 shown in the FIG 2A-2B embodiment are tubular or beam-shaped. According to para. 0074, the 300 are shown in the FIG 3A-3B embodiment are conical protuberances. According to para. 0077, the protuberances 400 shown in the FIG 4A embodiment are conical, beam-shaped, and/ or tubular (please note it is unclear if Applicant is describing the protuberances 400 as being conical, beam-shaped, and/ or tubular or if only conical protuberances are shown but the protuberances alternatively could be beam-shaped and/ or tubular). The disclosure is silent as to the type of protuberance shown in FIGS 5A-5B, such that it can be determined the specification supports the protuberances being spaced apart from one another to allow air to flow between the protuberances in combination with at least one of the group of: a tubular protuberance a beam-shaped protuberance; and a conical protuberance with an elliptic or polygonal base. The protuberances in FIGS 5A-5B most closely resemble those of FIG 2A-2B which the disclosure describes as tubular or beam-shaped. However, the protuberances 400 in FIG 4A appear to be conical to the Examiner, but Applicant describes this shape as conical, beam-shaped, and/ or tubular, rendering it unclear what the differences is between conical, beam-shaped, and/ or tubular shapes. As best understood, “the protuberances being spaced apart from one another to allow air to flow between the protuberances” is supported by FIG 5A-5B and the protuberances in FIG 5A-5B are possibly also tubular or beam-shaped, but the specification does not support an embodiment where both “the protuberances being spaced apart from one another to allow air to flow between the protuberances” and the protuberances are conical.
Claim Rejections - 35 USC § 102
Claim(s) 16 and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morgan (US 20100000009 A1).
As to claim 16, Morgan discloses a helmet for protecting a wearer's head comprising:
a protective layer (inner layer 124 having protuberances 130) configured to, when the helmet is impacted by a force, absorb a normal component thereof by compression and rupture when a tangential component of the force exceeds a predefined threshold (compressible liner 110 is the combo of layers 124 and 128, where 124 and 128 are the same material but different densities, so disclosures of the material of 110 are also the material of 124; for the purpose of examination, layer 124 alone is interpreted as the claimed protective layer; present para. 0021 discloses a protective layer of expanded polystyrene, and Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS);” therefore since the present protective layer and the Morgan protective layer are the same material, the Morgan protective layer is expected to function in the same manner);
wherein the protective layer consists of a single layer (the portion of 124 from which protuberances 130 extend, see annotated fig 1 below) and protuberances extending from the single layer (130), the protuberances being spaced apart from one another to allow air to flow between the protuberances (para. 0044 discloses protuberances 130 are “closely spaced” from adjacent protuberances, and closely spaced is “spaced;” capable of allowing air flow due to being spaced from adjacent protuberances);
wherein the protuberances are configured and dimensioned to rupture from the single layer when exceeding the predefined threshold (present para. 0021 discloses a protective layer of expanded polystyrene, and Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS);” therefore the present protective layer and the Morgan protective layer are the same material; the Morgan protuberances have the same dimensions as the claimed protuberances; therefore, the Morgan protective layer has the same material and dimensions as the claimed protective layer and is expected to function in the same manner), the protuberances of the protective layer arranged to prevent transfer of the tangential component of the force exceeding the predefined threshold to at least one of the wearer's head and an additional layer of the helmet by rupturing from the single layer (the Morgan protuberances have the same arrangement as the claimed protuberances and are expected to function in the same manner, to include preventing transfer of the tangential component of the force exceeding the predefined threshold to at least one of the wearer's head and an additional layer of the helmet by rupturing from the single layer);
wherein the protective layer comprises closed-cell foam configured to perform said absorbing and said rupturing (Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS)” and EPS is closed-cell foam as evidenced by NPL U which states, “Expanded Polystyrene (EPS) is a lightweight closed-cell foam”; capable of performing absorbing and rupturing, depending on the amount of force applied);
wherein the protective layer is made of closed cell foam only (Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS)” and EPS is closed-cell foam);
wherein the protuberances comprise at least one of the group of: a tubular protuberance; a beam-shaped protuberance (Morgan fig 1); a conical protuberance with an elliptic or polygonal base with an elliptic or polygonal base (Morgan FIG 1 shows protuberances that closely resemble the protuberances 400 shown in Applicant’s FIG 4A which Applicant’s para. 0077 describes as conical, beam-shaped, and/ or tubular; therefore Morgan’s protuberances 130 are conical, beam-shaped, and/ or tubular at least to the degree disclosed by Applicant; Morgan para. 0048 discloses the conical protuberances 130 may have polygonal bases 138); and
wherein each protuberance is shaped to rupture where a cross-section of the protuberance is no longer resistant to the predefined threshold (Morgan’s protuberances have the same shape as the claimed protuberances and so are expected to function in the same way, to consider rupturing where a cross-section of the protuberance is no longer resistant to the predefined threshold).
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As to claim 32, Morgan discloses a helmet for protecting a wearer's head comprising:
a protective layer (inner layer 124 having protuberances 130) configured to, when the helmet is impacted by a force, absorb a normal component thereof by compression and rupture when a tangential component of the force exceeds a predefined threshold (compressible liner 110 is the combo of layers 124 and 128, where 124 and 128 are the same material but different densities, so disclosures of the material of 110 are also the material of 124; for the purpose of examination, layer 124 alone is interpreted as the claimed protective layer; present para. 0021 discloses a protective layer of expanded polystyrene, and Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS);” therefore since the present protective layer and the Morgan protective layer are the same material, the Morgan protective layer is expected to function in the same manner);
wherein the protective layer consists of a single layer (the portion of 124 from which protuberances 130 extend, see annotated fig 1 below) and protuberances extending from the single layer (130), the protuberances being spaced apart from one another to allow air to flow between the protuberances (para. 0044 discloses protuberances 130 are “closely spaced” from adjacent protuberances, and closely spaced is “spaced;” capable of allowing air flow due to being spaced from adjacent protuberances);
wherein the protuberances are configured and dimensioned to rupture from the single layer when exceeding the predefined threshold (present para. 0021 discloses a protective layer of expanded polystyrene, and Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS);” therefore the present protective layer and the Morgan protective layer are the same material; the Morgan protuberances have the same dimensions as the claimed protuberances; therefore, the Morgan protective layer has the same material and dimensions as the claimed protective layer and is expected to function in the same manner), the protuberances of the protective layer arranged to prevent transfer of the tangential component of the force exceeding the predefined threshold to at least one of the wearer's head and an additional layer of the helmet by rupturing from the single layer (the Morgan protuberances have the same arrangement as the claimed protuberances and are expected to function in the same manner, to include preventing transfer of the tangential component of the force exceeding the predefined threshold to at least one of the wearer's head and an additional layer of the helmet by rupturing from the single layer);
wherein the protective layer comprises closed-cell foam configured to perform said absorbing and said rupturing (Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS)” and EPS is closed-cell foam as evidenced by NPL U which states, “Expanded Polystyrene (EPS) is a lightweight closed-cell foam”; capable of performing absorbing and rupturing, depending on the amount of force applied);
wherein the protective layer is made of closed cell foam only (Morgan para. 0045 discloses, “In an embodiment of the compressible liner 110 the foam material may be expanded polystyrene foam (EPS)” and EPS is closed-cell foam);
wherein the protuberances comprise a conical protuberance with an elliptic or polygonal base with an elliptic or polygonal base (Morgan FIG 1 shows protuberances that closely resemble the protuberances 400 shown in Applicant’s FIG 4A which Applicant’s para. 0077 describes as conical; therefore Morgan’s protuberances 130 are conical, at least to the degree disclosed by Applicant; Morgan para. 0048 discloses the conical protuberances 130 may have polygonal bases 138); and
wherein each protuberance is shaped to rupture where a cross-section of the protuberance is no longer resistant to the predefined threshold (Morgan’s protuberances have the same shape as the claimed protuberances and so are expected to function in the same way, to consider rupturing where a cross-section of the protuberance is no longer resistant to the predefined threshold).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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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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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732