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
The amendment filed on 12/16/2025 has been fully considered. Claims 1 was amended. Claim 14 was newly added. Claims 3, 6, 8 are cancelled. Claims 7, 11, 12 and now 14 are withdrawn.
Election/Restrictions
Newly submitted claim 14 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 14 recites structure shown and described in figure 5, a non-elected species (para 0023).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 14 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1 -2, 4-5, 9, 10 and 13 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.
Claims 1 and 10 recites “the helmet liner being thinner than the protective headgear” and “liner having a thickness less than that of the protective headgear” these limitations are not supported by the originally filed disclosure.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites the helmet liner defining a body, and being thinner than the protective headgear. Claim 10 rephrases the limitation, reciting “the body is a helmet liner having a thickness less than that of the protective headgear” and is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 4-5, 9-10 and 13 are rejected under 35 U.S.C. 101 because Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-2, 4-5, 9-10 and 13 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 recites, "the second face of the body being immediately adjacent the head of the person". This is a positive recitation of human anatomy and can be corrected by using adapted to/configured for language.
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.
Claim(s) 1-2, 4-5, 9, 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grinneback et al. (US 2018/0168268) in view of Timlick (US 2019/0350295). The device of Grinneback et al. teaches,
With respect to claim 1, A method for reducing rotational acceleration during an impact to an outside surface of protective headgear (para 0008), comprising:
positioning a liner (3) between a head of a person (Figure 1) and an inside top surface (interior side of 2) of a protective headgear (2), the helmet liner having a body (3) the body having an open-cell foam which is breathable and comfortable (3; para 0037, it is further noted Poron® is a breathable, comfortable open cell foam), a first face (at 4) and a second face (inner side of 3), the first face providing a slippery exterior surface (4);
positioning the second face (inners side of 3) of the body such that it is configured to be immediately adjacent the head of the person (figure 1); positioning the slippery exterior surface (4) on the first face engaging the inside top surface of the protective headgear (para 0071, 072), using a fastener (5) secured to the first face (figure 1) such that upon impact, a sliding movement of the inside top surface of the protective headgear takes place relative the slippery exterior surface of the first face.
The device of Grinneback et al. substantially discloses the claimed invention but and the thickness of the liner being less than the headgear.
The device of Grinneback et al. in an alternative embodiment teaches, wherein the body is a helmet liner having a thickness (3) than is less than that of the protective headgear (4, 2’’ Figure 3c). The device of Grinneback et al. shows an liner that appears to have a thickness less than that of the headgear, but is silent with respect to the exact measurement. It has been cited by legal precedent in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984),cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. The device claimed by the applicant would not perform differently than the prior art device of Grinneback et al and is therefore not patentably distinct. It would have been obvious to a person having ordinary skill in the art at the time the invention as effectively filed to further modify the device of Grinneback et al. by using the thicker protective headgear taught by Grinneback et al. in a different embodiment since it would provide improved protection for the user.
The device of Grinneback et al. substantially discloses the claimed invention but is lacking the fastener recited.
The device of Timlick teaches,
using a loop fastener portion (40/42) secured to the first face (Figure 1, 20) and a mating hook fastener portion (40/42) secured to the inside top surface (20), such that, upon impact, a sliding movement of the inside top surface of the protective gear takes place along the slippery exterior surface of the first face.
It would have been obvious to a person having ordinary skill in the art to modify the prior art fasteners with the fasteners taught by Timlick to provide proper alignment of the layers (para 0052).
With respect to claim 2, wherein the body has impact absorbing properties (para 0037).
With respect to claim 4, wherein the slippery exterior surface is a polymer plastic layer on the first face (para 0070-0073) and provides wearer comfort by protecting the head from the hard outer surface.
With respect to claim 5, wherein the body is held in position at isolated locations (as shown at 5) within the protective head gear by
With respect to claim 9, wherein the body (3) is secured to a portion of the inside top surface (Figure 1) that does not directly face the head (Figure 1) , with sliding occurring on that portion of the inside top surface that is directly facing the head.
With respect to claim 10, The device of Grinneback et al substantially discloses the claimed invention but is lacking the thickness of the liner being less than the protective headgear. The device of Grinneback et al. in an alternative embodiment teaches, wherein the body is a helmet liner having a thickness (3) than is less than that of the protective headgear (4, 2’’ Figure 3c). The device of Grinneback et al. shows an liner that appears to have a thickness less than that of the headgear, but is silent with respect to the exact measurement. It has been cited by legal precedent in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984),cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. The device claimed by the applicant would not perform differently than the prior art device of Grinneback et al and is therefore not patentably distinct. It would have been obvious to a person having ordinary skill in the art at the time the invention as effectively filed to further modify the device of Grinneback et al. by using the thicker protective headgear taught by Grinneback et al. in a different embodiment since it would provide improved protection for the user.
With respect to claim 13, wherein the body comprises a polymer plastic portion (4) and an open-cell foam portion (3), as best understood, and wherein the first face corresponds to the polymer plastic portion (4) and the second face corresponds to the open-cell foam portion (3).
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection as newly applied.
Applicants arguments with respect to the new matter rejection of the limitation “liner having a thickness less than that of the protective headgear” (remarks), or as claimed “the helmet liner being thinner than the protective headgear”, is not persuasive. Applicant argument that drawings Figures 3-5 provide support for the dimensions of the elements relative to one another. The specification is silent that the drawings are to scale and therefore do not provide written description support to the claimed thickness relationship. see MPEP 2125.
Applicant argues that the device of Grinneback et al. fails to teach a liner having an open cell breathable and comfortable foam. The amount of comfort provided by an element is not measurable and is subjective. The liner is a softer element than the hard exterior shell and therefore provides some level of comfort from the shell and meets the claim as currently recited. The device of Grinneback teaches that the liner (3) is Poron® a microcellular open cell polyurethane foam.
Applicant argues that the method claims rely on the movement between a helmet liner and a headgear and that the prior art relies upon the movement of a two layers of a protective headgear. The claim language does not structurally define the headgear and liner in such a way that differentiates the liner from argued. The liner of Grinneback meets the liner in as currently recited in the claims. Applicant states that Grinneback does not show its helmet liner. The liner is shown as 3, in figure 1. Applicant asserts that the examiner is reading the claims too broadly; however, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies, relative motion is not within the layers of our protective headgear, are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The prior art of Grinneback and Timlick, in combination, upon impact, a sliding movement of the inside surface of the protective headgear takes place relative to the slippery surface of the first face.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Please Note, the art of recorded cited in the PTO-892 may be relevant to the features of the invention both claimed and unclaimed or are relevant to the overall inventive concept. The best art has been set forward in the office action, as determined by the examiner and the art references provided are to establish other significant and relevant art and to promote compact prosecution.
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 RICHALE L QUINN whose telephone number is (571)272-8689. The examiner can normally be reached Monday - Friday 9am -5pm.
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, Clinton Ostrup can be reached at 5712725559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RICHALE LEE. QUINN
Primary Examiner
Art Unit 3765
/RICHALE L QUINN/Primary Examiner, Art Unit 3732