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
The amendment filed 6/25/26 has been entered. Claims 1-4, 6, 9-11, 15-18, 20 remain pending in the application. Applicant’s amendments to the (Specification, Drawings, and Claims) have not overcome each and every objection and 112(b) rejections previously set forth in the Non-Final Office Action mailed 3/26/26.
Information Disclosure Statement
The information disclosure statement filed 6/25/26 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
The information disclosure statement filed 6/25/26 further fails to comply with the provisions of 37 CFR 1.97(a) because it lacks the appropriate size fee set forth in 37 CFR 1.17(v). It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
It is recommended to use the Information Disclosure Statement form as provided in Patent Center for proper filing.
Specification
The abstract of the disclosure is objected to because of the following:
Abstract should “include that which is new in the art to which the invention pertains”, yet abstract is not directed to the claims
Correction is required. See MPEP § 608.01(b).
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.
Claim(s) 1-4, 6, 9-11, 15-18, 20 is/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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In Claim 1: (breadth and nature) the broadest reasonable interpretation covers a hard hat outer shell with a yield strain greater than 9% and a tensile strength between 50 MPa and 60 MPa. (amount of direction) The specification discloses enough information for one of ordinary skill in the art to make the hard hat outer shell of a rigid polymer ([0021]). (existence of working examples) The specification does not provide direction as to what polymeric materials constitute such a rigid polymer, let alone one that would have such a yield strain or tensile strength, but merely mentions a “Milwaukee material” that does not seem to be a registered or pending trademark as a known material, wherein such a material is a “polymer” and is “rigid” inasmuch as it’s of a rigid outer shell. The comparison in the specification to Material A and Material B are also not usable working examples as the specification never discloses what materials constitute Material A and Material B. (state of the prior art) At the time of filing, the state of the art was such that obtaining a polymeric hard hat would disclose the materials that make up such a polymer; in other words, the particular type of polymer is disclosed (see extrinsic evidence Enomoto et al US Publication 2013/0324645 for a novel polymeric material useful for helmets ([0124]), extrinsic evidence Squire et al US Publication 2009/0318597 for polymers with improved impact resistance that can be used to make helmets ([0020-0023]). Even if the claims were directed only to the material and not the hard hat, the state of the art at the time of filing would still disclose the materials that make up a performance polymer (see extrinsic evidence Luo et al US Publication 2013/0269977 for a rigid high-performance polymer comprising polyarylene sulfides, [0020-0021]). Thus, the disclosed example does not bear a reasonable correlation to the full scope of the claim. (level of one of ordinary skill; level of predictability; quantity of experimentation) Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of Claim 1 as there is no predictability as to what the material is. Thus, Claim 1 is not enabled by the disclosure.
In Claim 9, the broadest reasonable interpretation covers a hard hat with rigid polymer shell that has a tensile strength of greater than 35 MPa and a strain to failure between 70% and 80%. For reasons and factors similarly indicated for Claim 1, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of Claim 9. Thus, Claim 9 is not enabled by the disclosure.
In Claim 17, the broadest reasonable interpretation covers a hard hat with outer shell that has a multi-axial impact toughness greater than 27 joules. For reasons and factors similarly indicated for Claim 1, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of Claim 9. Thus, Claim 9 is not enabled by the disclosure.
Claim(s) 1-4, 6, 9-11, 15-18, 20 is/are further 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.
Specifically, beginning with Claims 1, 9, and 17, these Claims fail to comply with the written description requirement based on MPEP 2163.03(V) . “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved …see Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010).” Even more specifically from Ariad Pharms, “Finally, a separate requirement to describe one's invention is basic to patent law. Every patent must describe an invention. It is part of the quid pro quo of a patent; one describes an invention, and, if the law's other requirements are met, one obtains a patent. The specification must then, of course, describe how to make and use the invention (i.e., enable it), but that is a different task. A description of the claimed invention allows the United States Patent and Trademark Office ("PTO") to examine applications effectively; courts to understand the invention, determine compliance with the statute, and to construe the claims; and the public to understand and improve upon the invention and to avoid the claimed boundaries of the patentee's exclusive rights.”
In other words, the Claims require specific properties (functions) of the material used to make the outer shell of the hat, but the specification discloses only a “polymer” that is “rigid” ([0021]) inasmuch as it's of a rigid (outer) shell, with nothing more than “Milwaukee material” cited as the material, wherein this “Milwaukee material” is not found to be a registered or pending trademark or described in any other way than by the claimed properties and “rigid polymer.” The comparison in the specification to “Material A” and “Material B” also do not help to disclose what the “Milwaukee material” is made of, as the “Material A” and “Material B” have not been specifically disclosed either in terms of their materials.
As such, Claims 1, 9, and 17 also fails to comply with the written description requirement based on MPEP 2163(I), as the specification has not provided an adequate written description as the original claim has not been described sufficiently.
Ariad Pharms further states: “the written description also ensures that when a patent claims a genus by its function or result, the specification recites sufficient materials to accomplish that function.”
Applicant has identified a variety of innovative materials that provide for a unique and innovative combination of material properties [0020]. The disclosure also states that applicant has determined that designing a hard hat outer shell utilizing an innovative material, with one or more of the properties discussed herein, allows for the design of an innovative hard had with improved performance [0022]. However, this “innovative” material is not described in such terms as to allow the public to understand and improve upon the invention and avoid the claimed boundaries, should it be patented. In other words, applicant claims the genus “rigid polymer” having particular properties, but does not disclose sufficient materials to accomplish these properties/functions.
Looking at the state of the art, similar descriptions for polymer materials and properties claimed reveal disclosures that are significantly more detailed as to the material composition than the instant disclosure, which indicates that the instant disclosure has failed to adequately describe this self-described “innovative material” for one of ordinary skill. See extrinsic evidence Luo et al US Publication 2013/0269977 for a rigid high-performance polymer comprising polyarylene sulfides ([0020-0021]); see extrinsic evidence Enomoto et al US Publication 2013/0324645 for a novel polymeric material useful for helmets ([124]); see extrinsic evidence Squire et al US Publication 2009/0318597 for polymers with improved impact resistance that can be used to make helmets ([0020-0023]). As shown in each of these cases, at minimum, the specific type of polymer is disclosed, whereas applicant has not disclosed anything other than “rigid polymer.” Therefore, applicant has failed to provide adequate written description of the material that accomplishes the functions/properties claimed.
Dependent claims are rejected at the least for depending on rejected claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim(s) 9-11, 15, 16 is/are rejected under U.S.C. 112(b).
The term "rigid" in “rigid polymer” claim 9 Line 12 is a relative term which renders the claim indefinite. The term "rigid" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. See related 112(a) rejections above; no disclosure has been provided in the original disclosure indicating what constitutes a “rigid” polymer, and therefore the metes and bounds of the term are unclear.
Dependent claims are rejected at the least for depending on rejected claims.
Examiner Notes
Claim(s) 1-4, 6, 9-11, 15-18, 20, as best understood from the disclosure, is/are currently free of U.S.C. 102/103 rejections, but is/are currently questioned under at least 35 U.S.C. 112(a) set forth in this Office action.
Response to Arguments
Applicant's arguments filed 6/25/26 pertaining to Claims 1, 9, and 17 have been fully considered but they are not persuasive. As aforementioned in the previous office action of 3/26/26, the content of these amended claims have already been addressed by res judicata—the Board has already ruled that the content of all previous claims (and therefore Claim 1 now amended to be that of previous Claim 5, Claim 9 now amended to be that of previous Claim 14, Claim 17 now amended to be that of previous Claim 19) do not overcome, at the least, the U.S.C. 112(a) enablement and written description rejections (see at least page 8 of the Board Decision of 1/2/26). To continue to have any limitations pertaining to the material or its properties will not move the case forward. Should applicant desire these limitations, filing a continuation-in-part application to add critically missing elements is an option, although the instant application will be valid as prior art.
Applicant’s arguments with respect to claims 2-4, 6, 10, 11, 15, 16, 18, 20 have been considered but are moot because of the new grounds of rejection necessitated by amendment. Regardless, the aforementioned pertaining to claims 1, 9, and 17 apply herein as well. Nevertheless, for further clarification—
Pertaining to remarks that the Board only stated agreement with the Examiner’s rejection on enablement and that the Board did not indicate that the specification does not provide support for enablement—examiner respectfully disagrees. See U.S.C. 112(a) statute herein, wherein enablement is based on the specification. To uphold an enablement rejection is to uphold the lack of support in the specification for enablement. See also statement(s) on page 6-77 of the Board Decision 1/2/26 that also indicate that there is no support in the specification for enablement (“The Examiner also finds that the Specification does not enablement one of ordinary skill in the art to make and/or use the claimed hard hats…Appellant argues…properties…are…routine…We are not persuaded…The Specification does not provide any working examples…any guidance…we discern no error in the Examiner’s enablement analysis”).
Pertaining to remarks on page 7 that the MatWeb site would allow one of ordinary skill in the art to identify suitable materials—examiner respectfully disagrees. First, the site has not been provided in an information disclosure statement (IDS). Next, it is unclear whether remarks are indicating that the Milwaukee material in the claims is already known and can be determined from MatWeb site, or if remarks are indicating that Material A and Material B, to which the claimed Milwaukee material is compared to in the specification, can be determined from the MatWeb site. Furthermore, even if the MatWeb site were utilized, it is not persuasive that the site could be utilized to determine enablement or written description for the claims—for example, in determining what may constitute Materials A, B, or Milwaukee in light of Fig. 7 for notched izod values, searching for a material with notched izod impact strength between 200 to 500 J/m just for the category of polymers alone results in such an inordinate amount of results (4050 materials) that undue experimentation is certain, let alone any of the other material categories listed on the site (carbon, ceramic, fluid, metal, other engineering material, pure element). Furthermore, the MatWeb site further does not clearly show all results for proper enablement or written description as the site limits the results to the first 1000 records (see extrinsic evidence MatWeb Limit NPL). As such, the MatWeb site is not persuasive to overcome any of the rejections. Even if the MatWeb site could overcome rejections, the site was not incorporated by reference or otherwise disclosed in the original disclosure, and therefore cannot be brought into prosecution now to define enablement or written description. Even furthermore, the MatWeb site does not list all the properties as claimed (ex. claims are merely directed to tensile strength, which Fig. 3 indicates is relative to ASTM D638, while the site refers to ultimate, at break, and at yield tensile strengths without reference to any ASTM standard; no yield strain is mentioned either, let alone other variables claimed).
For reasons aforementioned, remarks on page 8 as to “routine selection and verification using handbooks” is also not persuasive, as an inordinate amount of results is presented with undue experimentation (see MPEP 2164.01).
Pertaining to remarks on page 8 that one of ordinary skill in the art would think the term “rigid polymer materials” to be “difficult to deform and include polymers such as polycarbonate, polyvinyl chloride, polyethylene, and acrylonitrile butadiene” based on the Scrap Management site—examiner respectfully disagrees. First, the site has also not been provided in an IDS. Next, none of this was incorporated by reference or otherwise disclosed in the original disclosure, and therefore utilizing these terms to define “rigid” now cannot be brought into prosecution now. Very similarly to the 112(b) rejection herein, the term “rigid” is a relative term, and therefore there is no explicit definition in the original disclosure narrowing, let alone clarifying, the broadest reasonable interpretation of the term to be limited to the description above. Furthermore, it is unclear if the remarks on page 8 that “inclusion of additional material properties in each independent claim provides further specific guidance regarding suitable properties for the outer shell polymer” in the same paragraph as addressing the term “rigid” are now defining the term “rigid” through the claimed properties. However, this is addressed below in addressing remarks of “rigid” on page 11, which seems to confirm such a stance.
Pertaining to remarks on page 8 that one of ordinary skill would rely on establishes classes of polymers known to exhibit comparable mechanical properties, and the MatWeb site would serve as confirmatory tools of suitable polymers, as the Wayback Machine establishes materials at least as of 2007—examiner respectfully disagrees. Nowhere in the original disclosure were Material A or Material B disclosed to be polymers. The only instance of the recitation of “polymer” in the specification was in [0021] pertaining to the Milwaukee material. Furthermore, the remarks themselves utilize relative terms such as “established”. Furthermore, utilizing the Wayback Machine to establish a date of the MatWeb site to 2007 is not in an IDS; and, the Wayback Machine site indicated shows no confirmation of suitable materials for Material A or B or any other specific material(s). Remarks pertaining to the MatWeb site are further not persuasive at least for reasons aforementioned.
Pertaining to remarks on pages 8 and 9 for undue experimentation having reasonable amount of guidance—examiner respectfully disagrees at least for reasons aforementioned and the rejections herein.
Pertaining to remarks on page 10 that the Board page [5] indicated that there is no evidence that a person of ordinary skill would understand [the claimed Milwaukee material] to a particular class or known material” is rectified by providing additional evidence regarding rigid polymers and resources (assumed to be the MatWeb site and Scrap Management site) – examiner respectfully disagrees. As aforementioned, even if these sites constituted classes, these were not in the original disclosure and cannot be brought into prosecution now.
Pertaining to remarks on page 10 that the amended claims include additional material property limitations to address Board page [5]—examiner respectfully disagrees, at least for res judicata reasons aforementioned. See statement(s) on pages 4, 5, 6, and 8 of the Board Decision 1/2/26 that already indicated that these amended limitations already did not overcome the rejections.
Pertaining to remarks on page 10 that MPEP 2163 indicates that a functional or performance characteristics can satisfy written description and that the claims are not an abstract result—examiner respectfully disagrees. First, the rejections herein are not directed to the claims being abstract; the rejections are not under U.S.C. 101. Next, MPEP 2163 indicates that the function has to be clearly established strong correlation to structure. No structure for any material disclosed herein, other than a broad “polymer” is disclosed (ex. the chemical structure of the repeating monomer, or a specifically known polymer with well-known structure, such as cotton). No structure that describes the polymer is disclosed, only measured material properties, and comparisons to undisclosed Material A and undisclosed Material B.
Pertaining to remarks on page 10 that the invention read in light of the specification indicates measurable properties and demonstrates possession of a defined and recognizable class of materials—examiner respectfully disagrees. Merely disclosing a “polymer” with some measurable properties does not demonstrate possession, especially in light of the rest of the specification.
Pertaining to remarks on page 11 that Claim 9 has “mechanical property boundaries that further define the meaning of “rigid”—examiner respectfully disagrees. First, remarks seem to confirm that applicant intends for the term “rigid” to be defined by material property/properties. However, the metes and bounds of the term are still not clear, especially in light of the remarks. The remarks indicate that independent claim 9 recite tensile strength and strain to failure ranges, but then indicates that the specification and dependent claims further disclose ranges of tensile strength and yield strain. Therefore, what material property/properties actually constitute the term “rigid”? Is it only the tensile strength and strain to failure range that is required to meet the metes and bounds of the term “rigid”? Is it the tensile strength, strain to failure, and yield strain that is required? And yet the remarks then indicate that “the range of strain to failure…indicate to a person of ordinary skill that elastomeric polymers do not correspond to the “rigid” polymer” which seem to indicate that only the strain to failure range is required to meet the metes and bounds of the term “rigid.” The remarks are not clear, with at least three different interpretations. Furthermore, the original disclosure never explicitly defined the otherwise relative term “rigid” as being met by material property/properties of tensile strength and yield strain only or any other metes and bounds now remarked upon. Should it be applicant’s stance that the term “rigid” is defined by some material property/properties, it is recommended to delete the term “rigid” (especially as it provides no contribution to the scope of the claim then), and instead have the material property/properties claimed as applicant had intended to define the term. To disagree otherwise is again to indicate that the term “rigid” adds some contribution to the scope of the claim that is not defined, further indicating 112(b) indefiniteness issues pertaining to metes and bounds, if not also additional written description issues.
Summarily, as aforementioned, to continue to have any limitations pertaining to the material or its properties will not move the case forward. Should applicant desire these limitations, filing a continuation-in-part application to add critically missing elements is an option. If there were allowable subject matter overcoming rejections herein, the Board would have indicated as such. Adding dependent claims into the independent claims will not overcome rejections—for example, previous Claim 5 was already the content of Claims 1 and 5; as such, to amend previous Claim 1 with previous Claim 5 resulting in the amended Claim 1 is merely re-arguing the same claim, which the Board has already ruled upon. Regardless of what dependent claims are added into the previous independent claims, the content of the previous independent claims were already ruled upon by the Board, and would therefore follow any amendments to the claims. If there were allowable subject matter in any of the independent or dependent claims overcoming, at the least, the 112(a) enablement and written description rejections, including and not limited to the combination of independent claims, the combination of dependent claims, the combination of various independent claim(s) with various dependent claim(s), the Board would have already indicated as such. If there were allowable subject matter in the specification or elsewhere in the original disclosure overcoming, at the least, the 112(a) enablement and written description rejections, the Board would also have already indicated as such. In other words, the claims are not enabled by the specification/original disclosure, and the claims lack written description by the specification/original disclosure. Further amending the claims will not be able to overcome at the least the enablement/written description rejections because there is nothing in the specification/original disclosure to amend the claims with that would also overcome the enablement/written description issues without also 112(a) new matter issues in the claims and/or new matter issues in the specification, which is why a continuation-in-part to add critical elements to the specification/original disclosure would be necessary.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
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/GRACE HUANG/Primary Examiner, Art Unit 3732
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