DETAILED ACTION
This is in response to a request for continued examination (RCE) filed on 3/2/26 in which claims 1-6, 9-11, 14-20 are presented for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/2/26 has been entered.
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) 1-6, 9-11, 14-20 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) 1-6, 9-11, 14-20 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, 14-16 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) 1-6, 9-11, 14-20, 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 with respect to claims 1-6, 9-11, 14-20 have been considered but are moot because of the new grounds of rejection necessitated by amendment. Therefore, see aforementioned rejections for the argued missing limitations. Nevertheless, for clarification—
Pertaining to remarks on page 6 that amending the term “material” out of the claims renders the claims allowable—examiner respectfully disagrees. As indicated in the Board decision of 1/2/26 (attention is directed to page 4), the examiner (and the Board, via affirming the examiner with “examiner…finds that 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’…the examiner makes similar findings regarding claims 9 and 17…we see no error in this aspect of the examiner’s rejection”) has already indicated that the material, and therefore any related recitations such as the yield strength and tensile strength (Claim 1), tensile strength and strain to failure (Claim 9) and multi-axial impact toughness (Claim 17), are not supported under written description. A similar conclusion was reached regarding the enablement rejection (see also page 7 “we discern no error in the Examiner’s enablement analysis”) regarding the material and therefore these properties.
Pertaining to remarks on page 7 that the amendment to Claim 9, by claiming a “rigid polymer” renders the claims allowable—examiner respectfully disagrees. The amended limitation (previously of Claim 12) was already indicated by the examiner as failing both the written description and enablement rejection, which was affirmed by the Board (page 7). Amending the limitation into the independent claim does not change the conclusion of the enablement and written description rejections, as the original disclosure for the limitation remains the same. Although remarks believe that [0021] reciting the “rigid polymer” overcomes the rejections, examiner notes that this recitation was already addressed in the previous written description and enablement rejections when examiner discussed “rigid” and “polymer” (the rejections are now further indicated with [0021] herein for further clarity), and was affirmed by the Board decision. Furthermore, the Board also affirmed the rejections of Claim 12 (see page 8 for summary).
Pertaining to remarks on page 7 that applicant disagrees with page 7 of the Board decision to affirm the enablement rejection because one of ordinary skill would understand rigidity to include polymers such as “polyvinyl chloride, polyethylene, and acrylonitrile butadiene styrene”—examiner respectfully disagrees. The Board has already ruled that the specification does not provide support for enablement. The fact that remarks need to bring in examples/metes and bounds such as aforementioned to define the term “rigid’ when these materials were never disclosed in the original disclosure further shows that there is no enablement or written description for such a relative term. Examiner’s rejection, affirmed by the Board, has already Board-persuasively indicated that it would not have been obvious to one of ordinary skill in the art per the Wands Factor analysis in the enablement rejection.
The remaining remarks are similarly addressed as aforementioned.
In other words, the remarks are generally already addressed via res judicata. The Board has already ruled that what seems to be the critical (allegedly inventive) concept of the application cannot overcome the 112(a) written description and enablement rejections. 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 the critically missing elements is an option.
Conclusion
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