DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/28/25 has been entered.
Drawings
The amendments to the drawings were received on 11/28/25. These drawings are accepted and entered.
Specification
The specification amendment received on 11/28/25 have been entered.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 30, 32-34, 38, 42, 44 and 45 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chartrand (US 6,202,223) in view of Adams (US 2,611,897).
In regard to claim 30, Chartrand teaches a protective helmet for contact sports (helmet shell: 10, figure 1), the protective helmet comprising: a helmet shell (10) having: an outer surface (see figures 1 and 2), a securement opening formed through the helmet shell (opening/mounting hole: 50 in annotated figures 1 and 2 above),
a pad assembly including: a first member having a threaded projection that extends from a base (fastener: 30 and base portion: 35), a second member having a threaded protrusion that extends from a circular flange (second member: 40, threaded protrusion: 42 and circular flange: top of 40 as seen in figures 2, 6A and 6b) and wherein in an installed position, the extent of the pad assembly (pad assembly: 20) is positioned between the base of the first member (35) and an inner surface of the helmet shell (helmet shell: 10 and figures 6a, 6b), an extent of the circular flange (top of 40) is positioned adjacent to an outer surface of the helmet shell (see figure 6b), and the threaded protrusion of the second member is coupled to the threaded projection of the first member (see figure 6a and 6b).
Chartrand teaches a football helmet (column 1, lines 5-11), however, Chartrand fails to teach the football helmet having a countersunk recess that surrounds the securement opening.
Adams teaches a second fastener member (screw: 20) that includes an external surface (see figures 1-3), and wherein an extent of said external surface is flush with an extent of the outer surface of the shell (see figure 3, outer shell is plastic portion 14), creating a countersunk recess; whereby the flange is substantially flush with the outer surface of the shell (see figure 3).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the second member of the fastener in the outer shell of Chartrand as a countersunk recess as taught by Adams, since the second fastener member of Chartrand countersunk would provide a second fastener that does not stick out and therefore does not pull or scratch any external surfaces coming into contact with the helmet.
In regard to claim 32, Chartrand teaches wherein an upper surface of the second member (40) includes a recess configured to engage a device (Philips screwdriver) that facilitates manipulation of the second member with respect to the first member to attain the installed position (see recess in 40 in figure 2).
In regard to claim 33, Chartrand teaches wherein the pad assembly includes a housing and a pad member positioned within said housing (housing is treated outer surface of urethane, latex or vinyl; column 3, lines 23-26 and pad member is shock absorbing material: column 3, lines 14-29) , and wherein an extent of said housing is positioned between the first member and the pad member (housing is treated outer surface is positioned between the first member: 30 and the pad member of 20: See figure 6a).
In regard to claim 34, Chartrand teaches wherein the housing includes a first linear edge and a second linear edge (see outside edges of pad assembly: 20 in figures 6a), and wherein an obtuse angle is formed between the first and second linear edges (see angle formed between pad edge facing helmet shell and the side edge: figure 6 forming an obtuse angle).
In regard to claim 38, Chartrand teaches wherein the pad assembly includes: a housing (housing is treated surface: column 3, lines 23-26), and a pad member positioned within said housing (shock absorbing material of pad assembly: 20, column 3, lines 14-22), and wherein an extent of the housing is positioned between the first member and the pad member (see extent of outer treated surface of pad next to the fastener assembly in figure 6a and 6b).
In regard to claim 42, the combined references teach wherein the helmet shell includes a countersunk recess that is designed to receive an extend of the flange when the pad assembly is in the installed position (Adams teaches the countersunk recess in the shell that the flange of the second member extends into: see figures 1-3).
In regard to claim 44, Chartrand teaches wherein the first member is integrally formed with an extend of the pad assembly (see figure 6a and 6b: first member: 35).
In regard to claim 45, the combined references teach wherein the flange of the second member includes an external surface, and wherein an extend of said external surface is flush with an extend of the outer surface of the helmet shell (Adams teaches the countersunk recess in the shell that the flange of the second member extends into: see figures 1-3).
Claims 36 and 40 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chartrand (US 6,202,223) and Adams (US 2,611,897) as applied above and in further view of Pratt (US 6,261,042).
Chartrand and Adams fail to teach wherein the threaded projection of the first member includes an arrangement of external threads that are cooperatively dimensioned with an arrangement of internal threads of the threaded protrusions to facilitate coupling of the first and second members in the installed position.
In regard to claim 36, Pratt teaches wherein the threaded projection of the first member (stud: 20) includes an arrangement of external threads that are cooperatively dimensioned is cooperatively dimensioned with the threaded protrusion to facilitate coupling of the first and second members in the installed position (second member: nut body 16, figures 1 and 5, column 5, lines 60-67).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the first and second member of Chartrand and Adams to have the reverse external and internal surfaces as taught by Pratt, since the first and second members of Chartrand provided with the first member having external threads and the second member having internal threads would provide a fastening connection that has protected threads on the second member so that they do not become worn down or abraded as easily during removal and storage. Here we are taking one well-known fastening attachment (Chartrand) and reversing the arrangement of the external and internal threads (Pratt providing another well-known fastening arrangement.
In regard to claim 40, Pratt teaches wherein the second member includes a through opening extending through the flange and communicating with an interior of the threaded protrusion (second member: nut body 16, figures 1 and 5, column 5, lines 60-67).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the first and second member of Chartrand and Adams to have the reverse external and internal surfaces and through opening of the second member as taught by Pratt, since the first and second members of Chartrand provided with the first member having external threads and the second member having internal threads and a through opening would provide a fastening connection that has protected threads on the second member so that they do not become worn down or abraded as easily during removal and storage. Here we are taking one well-known fastening attachment (Chartrand) and reversing the arrangement of the external and internal threads (Pratt providing another well-known fastening arrangement.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 30, 32-34, 36-38, 40, 42, 44 and 45 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11, 399,588. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and US 11,399,588 teach a helmet shell with an opening for removably retaining a valve of an interior pad, wherein the pad has a retainer with a threaded projection and a threaded protrusion secured within the helmet shell opening, wherein the base is held with the retainer between the opening between the shell and the circular flange is positioned adjacent the outer surface of the helmet shell; and wherein a countersunk recess surrounds the opening in the shell (see pending claims 30, 32-34, 36-38, 40, 42, 44 and 45 of the instant application with the claims 1-20 as provided in US 11,399,588).
Claims 30, 32-34, 36-38, 40, 42, 44 and 45 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,779,060. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and US 9,770,060 teaches a helmet shell with an opening for removably retaining a valve of an interior pad, wherein the pad has a retainer with a threaded projection and a threaded protrusion secured within the helmet shell opening, wherein the base is held with the retainer between the opening between the shell and the circular flange is positioned adjacent the outer surface of the helmet shell and wherein a countersunk recess surrounds the opening in the shell (see pending claims 30, 32-34, 36-38, 40, 42, 44 and 45 of the instant application with the claims 1-21 as provided in US 9,770,060).
Claims 30, 32-34, 36-38, 40, 42, 44 and 45 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,624,407. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and US 10,624,407 teaches a helmet shell with an opening for removably retaining a valve of an interior pad, wherein the pad has a retainer with a threaded projection and a threaded protrusion secured within the helmet shell opening, wherein the base is held with the retainer between the opening between the shell and the circular flange is positioned adjacent the outer surface of the helmet shell and wherein a countersunk recess surrounds the opening in the shell (see pending claims 30, 32-34, 36-38, 40, 42, 44 and 45 of the instant application with the claims 1-2, 4-9, 12-14, 17, 18 and 21 as provided in US 10,624,407).
Claims 21, 23-25, 27-29, 41 and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,399,588 in view of Withnall et al. (US 2011/0271428). Both the instant application and US 11,399,588 teach a helmet shell with an opening for removably retaining a valve of an interior pad, wherein the pad has a retainer with a threaded projection and a threaded protrusion secured within the helmet shell opening, wherein the base is held with the retainer between the opening between the shell and the circular flange is positioned adjacent the outer surface of the helmet shell (see pending claims 21, 23-25, 27-29, 41 and 43 of the instant application with the claims 1-20 as provided in US 11,399,588).
However, the instant application fails to teach the ear opening and the faceguard bracket.
Withnall et al. teaches a protective sports helmet with an ear opening that corresponds to a user’s ear when worn and faceguard bracket (ear opening: 12a and faceguard bracket: 16).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the football helmet of US 11,399,588 with a faceguard bracket and ear opening as taught by Withnall et al., since the football helmet of US 11,399,588 provided with a faceguard bracket and ear opening would provide a helmet that has a bracket to secure a facemask thereto for greater protection to the user and an ear opening for better hearing and breathability.
Claims 21, 23-25, 27-29, 41 and 43 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 9,770,060 in view of Withnall et al. (US 2011/0271428). Both the instant application and US 9,770,060 teaches a helmet shell with an opening for removably retaining a valve of an interior pad, wherein the pad has a retainer with a threaded projection and a threaded protrusion secured within the helmet shell opening, wherein the base is held with the retainer between the opening between the shell and the circular flange is positioned adjacent the outer surface of the helmet shell (see pending claims 21, 23-25, 27-29, 41 and 43 of the instant application with the claims 1-21 as provided in US 9,770,060).
However, the instant application fails to teach the ear opening and the faceguard bracket.
Withnall et al. teaches a protective sports helmet with an ear opening that corresponds to a user’s ear when worn and faceguard bracket (ear opening: 12a and faceguard bracket: 16).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the football helmet of US 9,770,060 with a faceguard bracket and ear opening as taught by Withnall et al., since the football helmet of US 9,770,060 provided with a faceguard bracket and ear opening would provide a helmet that has a bracket to secure a facemask thereto for greater protection to the user and an ear opening for better hearing and breathability.
Claims 21, 23-25, 27-29, 41 and 43 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,624,407 in view of Withnall et al. (US 2011/0271428). Both the instant application and US 10,624,407 teaches a helmet shell with an opening for removably retaining a valve of an interior pad, wherein the pad has a retainer with a threaded projection and a threaded protrusion secured within the helmet shell opening, wherein the base is held with the retainer between the opening between the shell and the circular flange is positioned adjacent the outer surface of the helmet shell (see pending claims 21, 23-25, 27-29, 41 and 43 of the instant application with the claims 1-2, 4-9, 12-14, 17, 18 and 21 as provided in US 10,624,407).
However, the instant application fails to teach the ear opening and the faceguard bracket.
Withnall et al. teaches a protective sports helmet with an ear opening that corresponds to a user’s ear when worn and faceguard bracket (ear opening: 12a and faceguard bracket: 16).
It would have been obvious before the effective filing date to one having ordinary skill in the art to have provided the football helmet of US 10,624,407 with a faceguard bracket and ear opening as taught by Withnall et al., since the football helmet of US 10,624,407 provided with a faceguard bracket and ear opening would provide a helmet that has a bracket to secure a facemask thereto for greater protection to the user and an ear opening for better hearing and breathability.
Response to Arguments
Applicant's arguments filed 11/28/25 have been fully considered but they are not persuasive.
Applicant argues that Chartrand in view of Adams fails to teach a helmet outer shell with a countersunk recess.
Chartrand teaches a helmet outer shell (10) made from a rigid material (column 2, lines 37-41). Further, Chartrand teaches a recess/mounting hole extending through the outer shell (recess: 50) to retain a screw therein (screw: 40) (figures 6a, 6b). The screw (40) of Chartrand extends on top of the helmet shell (see figures 6a, 6b). Adams teaches a countersunk recess to retain a screw head within an rigid outer helmet surface so that the screw does not extend about the outer surface and scratch or catch on the human body (column 2, lines 1-6). Here we are taking a well-known screw with recess (Chartrand) in an outer helmet shell and countersinking the recess within the outer surface (Adams) so that a screw sunk therein provides a smooth interface between the screw head, the recess and outer surface avoiding catching or scratching on items. The instant application, Chartrand and Adams are all in the same field of endeavor helmets.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA L HOEY whose telephone number is (571)272-4985. The examiner can normally be reached M-F: 9:00-5:30 EST.
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 T Ostrup can be reached on (571)272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALISSA L. HOEY
Primary Examiner
Art Unit 3732
/ALISSA L HOEY/Primary Examiner, Art Unit 3732