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 .
Withdrawn Rejections
The 35 U.S.C. 112(a) rejection of claims 16-30 of record in the previous Office Action mailed on 9/10/2025 has been withdrawn due to Applicant's amendment filed on 12/8/2025.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 16, 18, 26, 27, 29 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Galkiewicz et al. (US 6,984,427) [hereinafter Galkiewicz].
Regarding claim 16, Galkiewicz discloses a material, comprising a sheet of a flexible material with a first side and a second side (Fig. 4, sheet 14), both of the first side and the second side comprising a plurality of protrusions arranged in a predetermined pattern (Figs. 3A-3E and 4, protrusions 19), wherein the protrusions on the first side and/or the second side of the sheet are arranged to be equidistant from adjacent protrusions (Figs. 3A-3E and 4), the protrusions are distributed in a substantially uniform pattern throughout the first side and/or the second side of the sheet of flexible material (Figs. 3A-3E and 4), the protrusions on the first side of the sheet are arranged to be offset with respect to the protrusions on the second side of the sheet of flexible material (Fig. 4), and a distance between centers of adjacent protrusions on the first and second side of the sheet is in the range of 3-5 times a diameter of the protrusions (col. 5, lines 24-36 and lines 60-67).
The limitation “adapted to be incorporated in a wearable garment to dampen vibrations” in claim 16 is a recitation of the intended use of the claimed invention. It has been held that a claim containing 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 if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use 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. As shown above, Galkiewicz clearly teaches all the structural limitations of the claimed material. Accordingly, the material of Galkiewicz is capable of performing the intended use recited in claim 16.
Regarding claim 18, Galkiewicz discloses the protrusions being solid (Fig. 4, protrusions 19).
Regarding claim 26, Galkiewicz discloses the protrusions having a height approximately 1-3 times a thickness of the sheet of flexible material (col. 5, lines 43-59 and col. 6, lines 18-25).
Regarding claim 27, Galkiewicz discloses the protrusions having a diameter in the range 1-5 times a height of the protrusions (col. 5, lines 43-67).
Regarding claims 29 and 30, the preamble “a wearable garment” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “wearable garment” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02. Furthermore, the limitation “the wearable garment is one of a glove, a shoe insole, a shoe, a protective pad and a helmet” in claim 30 is a recitation of the intended use of the claimed invention. It has been held that a claim containing 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 if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use 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. As shown above, Galkiewicz clearly teaches all the structural limitations of the claimed material. Accordingly, the material of Galkiewicz is capable of performing the intended use recited in claim 30.
Claim Rejections - 35 USC § 103
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 17 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Galkiewicz.
Regarding claim 17, Galkiewicz teaches the claimed material as shown above, but fails to specifically teach the sheet having a thickness in the range of 0.5-2 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the sheet in Galkiewicz to be in the range of 0.5-2 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art in absence of showing unexpected results. MPEP 2144.05 (II).
Regarding claims 23-25, Galkiewicz teaches the claimed material as shown above, but fails to specifically teach the protrusions being substantially cylindrical, substantially frusto-conical, and substantially hexagonal forming a honeycomb structure. Galkiewicz teaches the protrusions can be any shape (col. 4, lines 56-65). Thus, it would have been obvious to one of ordinary skill in the art to change the shape of the protrusions in Galkiewicz to be substantially cylindrical, substantially frusto-conical, and substantially hexagonal forming a honeycomb structure, if so desired, since such a modification would have involved a mere change in the shape of the protrusions. A change in shape is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Claims 16-20 and 22-30 are rejected under 35 U.S.C. 103 as being unpatentable over Pearce et al. (US 2012/0015151) [hereinafter Pearce].
Regarding claim 16, Pearce discloses a material, comprising a sheet of a flexible material with a first side and a second side (Figs. 1-3, 4A-4B, 7, and 8A-8B), both of the first side and the second side comprising a plurality of protrusions arranged in a predetermined pattern (Figs. 4A-4B), wherein the protrusions on the first side and/or the second side of the sheet are arranged to be equidistant from adjacent protrusions (Figs. 4A-4B), the protrusions are distributed in a substantially uniform pattern throughout the first side and/or the second side of the sheet of flexible material (Figs. 4A-4B), the protrusions on the first side of the sheet are arranged to be offset with respect to the protrusions on the second side of the sheet of flexible material (Figs. 4A-4B and 8A-8B), and the sheet of flexible material is adapted to be incorporated in a wearable garment to dampen vibrations (paragraph [0037]).
Pearce fails to specifically teach a distance between centers of adjacent protrusions on the first and second side of the sheet being in the range of 3-5 times a diameter of the protrusions.
Pearce teaches an infinite variety of patterns are within the scope of the invention and the pattern need not be uniform and can be variegated (paragraphs [0029] and [0034]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protrusions in Pearce to have a distance between centers of adjacent protrusions on the first and second side of the sheet be in the range of 3-5 times a diameter of the protrusions in order to provide the desired cushioning needs. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protrusions in Pearce to have a distance between centers of adjacent protrusions on the first and second side of the sheet be in the range of 3-5 times a diameter of the protrusions, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claim 17, Pearce fails to specifically teach the thickness of the sheet being in the range 0.5-2 mm. Pearce teaches the thickness can vary and the thickness can be 1/8 inch (3.175 mm). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the sheet in Pearce to be in the range 0.5-2 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art in absence of showing unexpected results. MPEP 2144.05 (II).
Regarding claim 18, Pearce discloses the protrusions being solid (Figs. 8A-8B).
Regarding claim 19, Pearce discloses the protrusions being hollow (Figs. 4A-4B).
Regarding claim 20, Pearce fails to specifically teach the protrusions being solid on the first side of the sheet and hollow on the second side of the sheet, or vice versa. Pearce teaches the protrusions can be any shape (paragraph [0035]). Thus, it would have been obvious to one of ordinary skill in the art to change the shape of the protrusions in Pearce to have the protrusions being solid on the first side of the sheet and hollow on the second side of the sheet, or vice versa, if so desired, since such a modification would have involved a mere change in the shape of the protrusions. A change in shape is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claim 22, Pearce fails to teach the hollow protrusions having a wall thickness in the range of 1-2 times a thickness of the sheet of flexible material. It would have been obvious to one of ordinary skill in the art to change the thickness of the wall of the protrusions in Pearce to be in the range of 1-2 times a thickness of the sheet of flexible material, if so desired, since such a modification would have involved a mere change in the size of the protrusions. A change in size is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claims 23-25, Pearce teaches the claimed material as shown above, but fails to specifically teach the protrusions being substantially cylindrical, substantially frusto-conical, and substantially hexagonal forming a honeycomb structure. Pearce teaches the protrusions can be any shape (paragraph [0035]). Thus, it would have been obvious to one of ordinary skill in the art to change the shape of the protrusions in Pearce to be substantially cylindrical, substantially frusto-conical, and substantially hexagonal forming a honeycomb structure, if so desired, since such a modification would have involved a mere change in the shape of the protrusions. A change in shape is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claim 26, Pearce fails to teach the protrusions having a height approximately 1-3 times a thickness of the sheet of flexible material. It would have been obvious to one of ordinary skill in the art to change the size of the protrusions in Pearce to have a height approximately 1-3 times a thickness of the sheet of flexible material, if so desired, since such a modification would have involved a mere change in the size of the protrusions. A change in size is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claim 27, Pearce fails to teach the protrusions having a diameter in the range 1-5 times a height of the protrusions. It would have been obvious to one of ordinary skill in the art to change the size of the protrusions in Pearce to have a diameter in the range 1-5 times a height of the protrusions, if so desired, since such a modification would have involved a mere change in the size of the protrusions. A change in size is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claim 28, Pearce teaches the flexible material is selected from the group comprising elastomers, natural rubber and synthetic rubber (paragraph [0020]).
Regarding claims 29 and 30, Pearce discloses a wearable garment comprising the material and wherein the wearable garment is one of a glove, shoe, a shoe insole, a protective pad and a helmet (paragraph [0037]).
Claims 16, 17, 19 and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Sias et al. (US 4,605,582) [hereinafter Sias].
Regarding claim 16, Sias discloses a material, comprising a sheet of a flexible material with a first side and a second side (Figs. 1-3, pad 10), both of the first side and the second side comprising a plurality of protrusions arranged in a predetermined pattern (pods 18 and pillars 22), wherein the protrusions on the first side and/or the second side of the sheet are arranged to be equidistant from adjacent protrusions (Figs. 4-7), the protrusions are distributed in a substantially uniform pattern throughout the first side and/or the second side of the sheet of flexible material (Figs. 1-7), and the protrusions on the first side of the sheet are arranged to be offset with respect to the protrusions on the second side of the sheet of flexible material (Figs. 1-3, pods 18 and pillars 22).
Sias fails to specifically teach a distance between centers of adjacent protrusions on the first and second side of the sheet being in the range of 3-5 times a diameter of the protrusions.
Sias teaches that the number of protrusions (pods and pillars) can be varied depending upon the use of the pad (col. 5, lines 4-5).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protrusions in Sias to have a distance between centers of adjacent protrusions on the first and second side of the sheet be in the range of 3-5 times a diameter of the protrusions in order to provide the desired cushioning needs. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protrusions in Sias to have a distance between centers of adjacent protrusions on the first and second side of the sheet be in the range of 3-5 times a diameter of the protrusions, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
The limitation “adapted to be incorporated in a wearable garment to dampen vibrations” in claim 16 is a recitation of the intended use of the claimed invention. It has been held that a claim containing 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 if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use 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. As shown above, Sias teaches all the structural limitations of the claimed material. Accordingly, the material of Sias is capable of performing the intended use recited in claim 16.
Regarding claim 17, Sias fails to specifically teach the thickness of the sheet being in the range 0.5-2 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the sheet in Sias to be in the range 0.5-2 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art in absence of showing unexpected results. MPEP 2144.05 (II).
Regarding claim 19, Sias discloses the protrusions being hollow (Fig. 8; claim 24).
Regarding claim 21, Sias discloses a through-going hole is arranged at a center of each hollow protrusion on the first side and/or the second side of the sheet (Figs. 3 and 8, apertures 38 and 40).
Regarding claim 22, Sias discloses the hollow protrusions having a wall thickness in the range 1-2 times a thickness of the sheet of flexible material (claim 28)
Regarding claim 23, Sias discloses the protrusions being substantially cylindrical (claims 28-29; col. 3, lines 7-8).
Regarding claim 24, Sias discloses the protrusions being substantially frusto-conical (col. 3, lines 7-8).
Regarding claim 25, Sias teaches the claimed material as shown above, but fails to specifically teach the protrusions being substantially hexagonal forming a honeycomb structure. It would have been obvious to one of ordinary skill in the art to change the shape of the protrusions in Sias to be substantially hexagonal forming a honeycomb structure, if so desired, since such a modification would have involved a mere change in the shape of the protrusions. A change in shape is generally recognized as being within the level of ordinary skill in the art and is therefore obvious. MPEP 2144.04.
Regarding claim 26, Sias teaches the protrusions having a height approximately 1-3 times a thickness of the sheet of flexible material (claim 28).
Regarding claim 27, Sias teaches the protrusions having a diameter in the range 1-5 times a height of the protrusions (claims 28-29).
Regarding claim 28, Sias teaches the flexible material comprising elastomer (col. 4, lines 28-35).
Regarding claims 29 and 30, the preamble “a wearable garment” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “wearable garment” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02. Furthermore, the limitation “the wearable garment is one of a glove, a shoe insole, a shoe, a protective pad and a helmet” in claim 30 is a recitation of the intended use of the claimed invention. It has been held that a claim containing 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 if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use 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. As shown above, Sias teaches all the structural limitations of the claimed material. Accordingly, the material of Sias is capable of performing the intended use recited in claim 30.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781