Detailed Office Action
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered. Claims 56, 58-59, 68-70, 78-83, 86, 89, 91-93, and 96-97 are amended. Claims 1-55, 57, 71-72, and 94-95 are cancelled. Claim 62 is withdrawn from examination. Claims 56 and 58-70, 73-93, and 96-97 are pending.
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 Amendments and Arguments
Applicant’s amendments to the independent claims 56 and 93 are noted. These amendments overcome the teachings of the secondary art of SIOUL. The rejections over SIOUL are withdrawn. However, upon further search and consideration, a rejection over a new secondary art is made in this office action that are detailed below. The Examiner notes that since the rejections over SIOUL are withdrawn, Applicant’s argument regarding this prior art is moot.
Claim Objections
Claim 56 is objected to because of the following informalities: in lines 3-5, delete “the goalkeeper leg pad being wearable on and configured to protect the leg of the hockey goalkeeper,”. This limitation is redundant since it is already recited prior. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 56, 58-61, 63-70, 73-83, 86-92, and 96 are rejected under 35 U.S.C. 103 as being unpatentable over MCCLARD (US-2010/0192280 – of record), hereinafter MCCLARD in view of VAUGHN (US-2015/0128325), hereinafter VAUGHN. Note that the italicized text below are the instant claims.
Regarding claim 56, MCCLARD discloses A method for making wearable by hockey goalkeeper to protect {[abstract], [0021] note hockey glove is an equipment or pad for protection},
and an outer cover including an outer surface {[abstract] note that backer material with applied graphic is the outer cover}, the method comprising:
a) digitally printing on at least part of the outer cover such that the outer cover comprises a digitally-printed layer including digitally-printed graphics {[0023], [0026] note printing that creates a layer, [0031]/[0037] note digital};
b) applying a transparent protective layer over the digitally-printed layer after the digitally printing {[abstract] note clear or transparent layer on the graphics layer}; and
c) placing the outer cover on the protective padding {[0021] note application to the protective padding indicating that it is placed on the equipment}.
MCCLARD, however, is silent on the article being a goalkeeper leg pad. The Examiner notes that MCCLARD discloses that the article can be other objects, but is explicitly silent on a leg pad {[0020]}.
In the same filed of endeavor that is related to goalie pad, VAUGHN discloses a goalkeeper leg pad wearable by a hockey goalkeeper to protect a leg of the hockey goalkeeper, the goalkeeper leg pad comprising: protective padding configured to be wider than a given one of the legs of the hockey goalkeeper protected by the goalkeeper leg pad; and an outer cover including an outer surface that defines a front of the goalkeeper leg pad, the outer surface of the goalkeeper leg pad comprising a main frontal face and an edge projection that is at a lateral edge of the goalkeeper leg pad and projects forwardly relative to the main frontal face of the goalkeeper leg pad {[0015]-[0016], [FIG. 1] note the leg pad with foot (5), lower leg (9), knee (10), and upper leg (11) sections and the outer covering 2 that has a frontal face and since it is protecting the leg, it is wider than the leg itself, note the edge protection 15 that is at the lateral edge and project forward relative the main frontal face}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the hockey glove of MCCLARD with the leg pad of VAUGHN and have performed printing of MCCLARD on the VAUGHN’s leg pad with the claimed different locations and sizing. Note that it has been held that a simple substitution of one known element for another is likely to be obvious when predictable results are achieved {see MPEP 2143 (I)(B)}. Predicable results are achieved because in this case both are used as hockey protective equipment in the same field of endeavor.
Furthermore, and as disclosed by VAUGHN, the advantage of the edge protection is that it blocks the puck {[0016]}.
Regarding the last limitations of claim 56 reciting “wherein the digitally-printed layer and the transparent protective layer are continuous and exposed from the edge projection at the lateral edge of the goalkeeper leg pad to a medial edge of the goalkeeper leg pad in a widthwise direction of the goalkeeper leg pad”, the Examiner notes that at the effective filing date of the instant invention, it would have been obvious to have applied the MCCLARD’s printed layer and transparent protective layer continuously to the leg pad of VAUGHN from the edge that does not have the projection 15 to where the projection 15 on the other edge starts in a widthwise direction (from left to right) {[FIG. 1]}. Obviously, the artisan would not extend the printed layer and protective layer over the raised edge.
Regarding claims 58-59 and 96 limitation of “wherein the thickness of the digitally-printed layer is 1.5 times the thickness of the transparent protective layer (claim 58)” and “wherein the thickness of the digitally-printed layer is at least twice the thickness of the transparent protective layer (claim 59)”, and ““wherein a ratio of a thickness of the digitally-printed layer to a thickness of the transparent protective layer is between about 3.5 and about 5.5 (claim 96)”, Modified MCCLARD, however, is explicitly silent on these thickness ratios.
The Examiner, however, notes that MCCLARD discloses that in different embodiments, protective layer can have different thicknesses and can be thinner or thicker as compared to the backing material {[0048]}. Therefore, MCCLARD recognizes this thickness to be variable and adjustable.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have chosen the thickness of the protective layer and thickness of the digitally-printed layer such that they meet the limitations of instant claims recited above.
Note that it has been held that a modification that would involve only a mere change in size of a component or scaling up/down of an element which merely requires a change in size is generally considered as being within the skill of an artisan {see MPEP 2144.04 (IV)(B)}.
One would have been motivated to have chosen, for example, the protective layer to be thinner by factor of 1.5, 2, or 3.5-5.5, so that the printed layer underneath is more visible for aesthetic reasons. Or, one would have been motivated to have chosen a thicker printed layer since it projects a three dimensional appearance to the graphics. Selecting these ratios are all within the skill of an artisan and can be determined through routine experimentation for various applications and objectives.
Regarding claim 60, MCCLARD discloses wherein the outer cover comprises: - a base; and - a covering disposed on the base and including the digitally-printed graphics {[abstract] note backer material is the base and the clear layer and the graphics is the covering}.
Regarding claim 61, Modified MCCLARD discloses wherein the covering is adhesively bonded to the base {[0042] note use of adhesive to attach the protective layer or covering to the base}.
Regarding claim 63, Modified MCCLARD discloses wherein the base comprises foam {[0038]}.
Regarding claim 64, Modified MCCLARD discloses wherein the base comprises molded material defining a shape of the outer cover {[0039] note plastic sheet or plastic foam are obtained by molding and they have the shape of the outer cover}.
Regarding claim 65, Modified MCCLARD discloses wherein the molded material comprises molded foam {[0039] note plastic foam is molded to obtain a shape}.
Regarding claim 66, Modified MCCLARD discloses wherein the covering is bonded to the molded material after molding of the molded material {[0042]}.
Regarding claim 67 limitation of “wherein the covering comprises a plurality of separate covering pieces which include respective portions of the digitally-printed graphics and which are assembled together and affixed to the base”, Modified MCCLARD discloses that the base can be sperate pieces that can be adhesively connected {[0039]}. Modified MCCLARD, however, is silent on the covering that includes the graphics to be separate pieces that are assembled together and affixed to the base.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art, to have prepared the graphics in separate files and have printed them on the separate pieces of the base that Modified MCCLARD teaches as discussed above, and have assembled the pieces together.
One would have been motivated to do so, since printing of a separate and continuous piece by a printer (as opposed to connected pieces) is more convenient and the stresses during the printing process can be well tolerated.
Regarding claim 68-70 and 78 limitations of “wherein the digitally-printed graphics occupy at least a majority of a surface area of the front of the goalkeeper leg pad (claim 68), wherein the digitally-printed graphics span at least a majority of a length of the goalkeeper leg pad (claim 69), wherein the digitally-printed graphics span at least a majority of a width of the goalkeeper leg pad (claim 70), wherein the outer cover comprises digitally-printed sheet material including the digitally-printed graphics and extending over an entirety of the outer surface of the goalkeeper leg pad (claim 78)”, Modified MCCLARD discloses that the graphic maybe configured with any size {[0024]}. Modified MCCLARD, however, is explicitly silent on the extent of these sizes as claimed above in claims 68-70 and 78.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have sized the graphic to meet the limitations above, since it has been held that a modification that would involve only a mere change in size of a component or scaling down or up of an element which merely requires a change in size is generally considered as being within the skill of an artisan {see MPEP 2144.04 (IV)(B)}. One would have been motivated to have changed the size to accommodate various graphics and pictures to obtain the best aesthetic.
Regarding claims 73-77, VAUGHN discloses wherein: the goalkeeper leg pad comprises an upper leg portion configured to overlie an upper leg region of the leg of the hockey goalkeeper, a knee portion configured to overlie a knee of the leg of the hockey goalkeeper, a lower leg portion configured to overlie a lower leg region of the leg of the hockey goalkeeper, and a foot portion extending transversally and forwardly relative to the lower leg portion of the goalkeeper leg pad and configured to overlie a skate of the hockey goalkeeper; and the digitally-printed graphics are disposed in at least two of the upper leg portion, the knee portion, the lower leg portion, and the foot portion of the goalkeeper leg pad (claim 73), wherein the digitally-printed graphics are disposed at least in the upper leg portion and the lower leg portion of the goalkeeper leg pad (claim 74), wherein the digitally-printed graphics are disposed at least in the upper leg portion, the lower leg portion, and the foot portion of the goalkeeper leg pad (claim 75), wherein the digitally-printed graphics are disposed in the upper leg portion, the knee portion, the lower leg portion, and the foot portion of the goalkeeper leg pad (claim 76), wherein the digitally-printed graphics are disposed in at least one of the upper leg portion, the knee portion, and the lower leg portion of the goalkeeper leg pad and in the foot portion of the goalkeeper leg pad (claim 77) {the Examiner notes that printing of the graphics and sizing and placing of graphics in different locations with different sizes was discussed above during analysis of claims 56, 68-70, 78; [0015]-[0016], [FIG. 1] note the leg pad with foot (5), lower leg (9), knee (10), and upper leg (11) sections and the outer covering 2, note that the motivations stated under claim 56 regarding incorporation of VAUGHN applies here as well and not repeated}.
Regarding claims 79-83, Modified MCCLARD discloses wherein: the outer cover comprises digitally-printed sheet material including the digitally-printed graphics; and the goalkeeper leg pad is free of material sewn over the digitally-printed sheet material (claim 79), wherein the goalkeeper leg pad is free of stitching through the digitally-printed graphics (claim 80), wherein the outer surface of the article of the goalkeeper leg pad is free of stitching adjacent to the digitally-printed graphics (claim 81), wherein the outer surface of the goalkeeper leg pad is free of stitching (claim 82), wherein the goalkeeper leg pad is free of lacing extending through the outer cover and the digitally-printed graphics (claim 83) {[FIG. 5] note the sheet shape, [0049] note the gluing manner that is free of stitching, sewing or lacing}.
Regarding claim 86 limitation of “and the method comprises affixing a graphical element over the digitally-printed layer such that the graphical element constitutes part of the outer surface of the goalkeeper leg pad”, MCCLARD is silent on this limitation. The Examiner notes that MCCLARD teaches using stickers as a graphical element {[0035]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have placed the graphical element or sticker of MCCLARD on the printed graphics of MCCLARD. One would have been motivated to do so to create more artistic designs that could not have been accomplished by digital printing only.
Regarding claim 87, Modified MCCLARD discloses wherein: the outer cover comprises underlying material beneath the digitally-printed graphics; and the digitally-printed graphics cover a molded curved part of the underlying material {[0039] note the backer material that is the underlying material could be synthetic leather (see claim 64 for molding) that according to the instant specification (page 14, last paragraph) recesses are disclosed as creases/wrinkles formed in a synthetic leather to mimic natural leather; which is the same as the leather or synthetic leather of MCCLARD}.
Regarding claim 88, Modified MCCLARD discloses wherein the outer cover comprises molded recesses overlying the digitally-printed graphics {see claim 87 and note that once the graphics layer and protective layer applied the recesses carryover}.
Regarding claims 89-90, Modified MCCLARD discloses wherein respective ones of the molded recesses are spaced from one another in a longitudinal direction of the goalkeeper leg pad and a widthwise direction of the goalkeeper leg pad (claim 89), wherein the molded recesses impart a texture of the outer cover such that the outer cover is textured (claim 90) {see claim 87 and a type of recesses and texture being a property of leather or synthetic leather}.
Regarding claims 91-92, Modified MCCLARD discloses comprising receiving data indicative of a desired design for the outer surface of the goalkeeper leg pad over a network, wherein the digitally-printed graphics are in accordance with the desired design for the outer surface of the goalkeeper leg pad (claim 91), wherein the desired design for the outer surface of the goalkeeper leg pad is specified by the hockey goalkeeper using a computing device of the hockey goalkeeper connected to the network (claim 92) {[0028]-[0033], [0036]-[0038]}.
Claims 84-85 are rejected under 35 U.S.C. 103 as being unpatentable over MCCLARD and VAUGHN as applied to claim 56 above, and further in view of HIGUCHI (US 4,587,142 – of record), hereinafter HIGUCHI.
Regarding claims 84-85, combination of MCCLARD and VAUGHN discloses all the limitations of claim 56 as discussed above. This combination, however, is silent on the outer cover comprising fiber.
In the same filed of endeavor that is related to leather-based layers, HIGUCHI discloses wherein the outer cover comprises fibers (claim 84), wherein: the outer cover comprises a fiber-based layer including the fibers and a polymeric layer distinct from the fiber-based layer; and the digitally-printed graphics are digitally printed on the polymeric layer (claim 85) {note that MCCLARD as discussed above, discloses using leather or synthetic layer as the base and that the protective layer is polymeric and has the graphics and separate from the base, [abstract], [C3, L62-64] note presence of fiber layer in synthetic leather}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of HIGUCHI in the combination method of MCCLARD and VAUGHN and have prepared the synthetic leather according to the teaching of HIGUCHI. As disclosed by HIGUCHI the advantage of this material is excellent air permeability, moisture vapor transmission, and water repellency {[C1, L13-15]}.
Claims 93 and 97 are rejected under 35 U.S.C. 103 as being unpatentable over MCCLARD, in view of VAUGHN, and JAMES (US-2002/0020082 – of record), hereinafter JAMES. Note that the italicized text below are the instant claims.
Regarding claim 93, MCCLARD discloses A method for making pads for a hockey goalkeeper {[abstract], [0021] note hockey glove is an equipment or pad for protection},
and an outer cover including an outer surface {[abstract] note that backer material with applied graphic is the outer cover}, the method comprising:
a) digitally printing on at least part of the outer cover such that the outer cover comprises a digitally-printed layer including digitally-printed graphics {[0023], [0026] note printing that creates a layer, [0031]/[0037] note digital};
b) applying a transparent protective layer over the digitally-printed layer after the digitally printing {[abstract] note clear or transparent layer on the graphics layer}; and
c) placing the outer cover on the protective padding {[0021] note application to the protective padding indicating that it is placed on the equipment}.
MCCLARD, however, is silent on the article being a goalkeeper leg pad. The Examiner notes that MCCLARD discloses that the article can be other objects, but is explicitly silent on a leg pad {[0020]}.
In the same filed of endeavor that is related to goalie pad, VAUGHN discloses a pair of goalkeeper leg pads for a hockey goalkeeper, the goalkeeper leg pads being wearable on legs of the hockey goalkeeper to protect the legs of the hockey goalkeeper, each goalkeeper leg pad comprising: protective padding configured to be wider than a given one of the legs of the hockey goalkeeper protected by the goalkeeper leg pad; and an outer cover including an outer surface that defines a front of the goalkeeper leg pad, the outer surface of the goalkeeper leg pad comprising a main frontal face and an edge projection that is at a lateral edge of the goalkeeper leg pad and projects forwardly relative to the main frontal face of the goalkeeper leg pad {[0015]-[0016], [FIG. 1] note the leg pad with foot (5), lower leg (9), knee (10), and upper leg (11) sections and the outer covering 2 that has a frontal face and since it is protecting the leg, it is wider than the leg itself, note the edge protection 15 that is at the lateral edge and project forward relative the main frontal face}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the hockey glove of MCCLARD with the leg pad of VAUGHN and have performed printing of MCCLARD on the VAUGHN’s leg pad with the claimed different locations and sizing. Note that it has been held that a simple substitution of one known element for another is likely to be obvious when predictable results are achieved {see MPEP 2143 (I)(B)}. Predicable results are achieved because in this case both are used as hockey protective equipment in the same field of endeavor.
Furthermore, and as disclosed by VAUGHN, the advantage of the edge protection is that it blocks the puck {[0016]}.
Regarding the next limitations of claim 93 reciting “wherein the digitally-printed layer and the transparent protective layer are continuous and exposed from the edge projection at the lateral edge of the goalkeeper leg pad to a medial edge of the goalkeeper leg pad in a widthwise direction of the goalkeeper leg pad”, the Examiner notes that at the effective filing date of the instant invention, it would have been obvious to have applied the MCCLARD’s printed layer and transparent protective layer continuously to the leg pad of VAUGHN from the edge that does not have the projection 15 to where the projection 15 on the other edge starts in a widthwise direction (from left to right) {[FIG. 1]}. Obviously, the artisan would not extend the printed layer and protective layer over the raised edge.
Combination of MCCLARD and VAUGHN, however, is silent on the last limitation of claim 93 reciting: wherein the digitally-printed graphics of a left one of the goalkeeper leg pads depict a left part of an object and the digitally-printed graphics of a right one of the goalkeeper leg pads depict a right part of the object that is visually combinable with the left part of the object to visually form the object.
In the same field of endeavor that is related to footwear with continuous design, James discloses wherein the digitally-printed graphics of a left one of the goalkeeper leg pads depict a left part of an object and the digitally-printed graphics of a right one of the goalkeeper leg pads depict a right part of the object that is visually combinable with the left part of the object to visually form the object {note digitally printing is disclosed by MCCLARD as discussed above, [FIG. 1] note matching graphics 32/34 on the left and right article that creates a continuous image}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of JAMES in the combination method of MCCLARD and VAUGHN and have created the matching graphics as disclosed by JAMES. As shown by JAMES {[FIG. 1]} this matching graphics provides for a complete picture and an aesthetic appearance.
Regarding claim 97 limitation of “wherein a ratio of a thickness of the digitally-printed layer to a thickness of the transparent protective layer is between about 3.5 and about 5.5”, Modified MCCLARD, however, is explicitly silent on these thickness ratios.
The Examiner, however, notes that MCCLARD discloses that in different embodiments, protective layer can have different thicknesses and can be thinner or thicker as compared to the backing material {[0048]}. Therefore, MCCLARD recognizes this thickness to be variable and adjustable.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have chosen the thickness of the protective layer and thickness of the digitally-printed layer such that they meet the limitations of instant claims recited above.
Note that it has been held that a modification that would involve only a mere change in size of a component or scaling up/down of an element which merely requires a change in size is generally considered as being within the skill of an artisan {see MPEP 2144.04 (IV)(B)}.
One would have been motivated to have chosen, for example, the protective layer to be thinner by factor of 3.5-5.5, so that the printed layer underneath is more visible for aesthetic reasons. Or, one would have been motivated to have chosen a thicker printed layer since it projects a three dimensional appearance to the graphics. Selecting these ratios are all within the skill of an artisan and can be determined through routine experimentation for various applications and objectives.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748