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 .
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 1-11 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.
Claim 1 recites the limitation “a polyurethane-based composite having a hardness of 20-50 Shore A” in line 3. Applicant does not have support for this limitation in the initial disclosure. Applicant points to Fig. 28 as support for this limitation. However, Fig. 28 does not show support. The instant Fig. 28 shows different prototypes with a hardness of 15, 25, and 55 respectively. The figure 28 does not show a range of Shore A hardness of 20-50 and instead shows different hardnesses, two of which are outside of the claimed range. The instant specification further does not state any specific shore hardness. Therefore, the initial disclosure does not show support for the limitation.
Claim 1 recites the limitation “wherein the first component and the second component are in a weight ratio between 1:1 and 1:1.8” in lines 10-11. Applicant does not have support for this limitation in the initial disclosure. The instant specification Par. 0037 discusses a weight ratio of 1:1 to 1:1.5. Therefore, the initial disclosure shows support for a range of 1:1 to 1:1.5, but does not have support for the entire range of 1:1 to 1:1.8.
Claims 2-11 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Chilson (US 20150047110 A1) (previously cited) in view of Xiao et al. (US 20220169812 A1) (previously cited) and Cohen (US 20150223546 A1) (newly cited), as evidenced by PPGS for High-speed rail, car seats and Interior Molding (PPGS for High-speed rail, car seats and Interior Molding, 2025, LetichiaChem, Pages 1-3) and Polyether Polyol ED28; CAS NO.:9003-11-6 (Polyether Polyol ED28; CAS NO.:9003-11-6, 2025, Predrawn Chemicals, Pages 1-5).
Regarding claim 1, Chilson teaches a head protective gear comprising a plurality of three-dimensional inserts made of an energy absorbing material (see shock absorbing insert), the plurality of three-dimensional inserts disposed on an interior surface of the head protective gear forming an energy absorbing layer thereon, the plurality of three dimensional inserts spatially distributed on the interior surface of the head protective gear (Chilson, Abstract, Par. 0001, 0011-0016, 0018, 0020, and Figs. 1-2).
Chilson is silent regarding the energy absorbing material being a polyurethane-based composite, the polyurethane-based composite composed of at least two components, a first component of the at least two components comprising one or more isocyanates, and one or more chain extenders; and a second component of the at least two components comprising at least one hydroxyl-terminated polyol, a catalyst, a blowing agent, a surfactant, and a polyolefin, wherein the first component and the second component are in a weight ratio between 1:1 and 1:1.8 constituting an isocyanate index of at least 100.
Xiao teaches an energy absorbing material for use in head protective gear (helmet), wherein the energy absorbing material is a polyurethane-based composite, the polyurethane-based composite composed of at least two components, a first component of the at least two components comprising one or more isocyanates, and one or more chain extenders; and a second component of the at least two components comprising at least one hydroxyl-terminated polyol, a catalyst, a blowing agent, a surfactant, and a polyolefin (see crosslinker) (Xiao, Abstract, Par. 0006, 0012-0014, 0036, 0048-0055, 0066, 0069-0070, 0087-0109, and Fig. 4). Xiao teaches using 85-97 g of isocyanate, 1 g of chain extender, 100 g polyols, 3.6 g catalyst, 0.2 g blowing agent, 0.5 g surfactant, and 4 g of crosslinker (Xiao, Par. 0069-0071 and 0091), resulting in 86-98g of the first component and 108.3 g of the second component and a ratio of the first and second component of 1:1.1 to 1:1.27, which lies within the claimed range of 1:1 to 1:1.8 and therefore satisfies the claimed range, see MPEP 2144.05, I. Further, Xiao uses MDI as the isocyanate (Xiao, Par. 0091) which has two NCO groups and a molecular weight of 250 g/mol, resulting in an amount of NCO groups of 0.68-0.776 mols. Further, Xiao uses 8 g of DV-125, 58g of HPOP40, 30g of 10LD76E, and 4g of ED-28 as the polyols (Xiao, Par. 0091), which respectively have acid values of ~450, 21.5, 34, and 28 respectively as evidenced by PPGS for High-speed rail, car seats and Interior Molding (PPGS for High-speed rail, car seats and Interior Molding, pages 1-3) and Polyether Polyol ED28; CAS NO.:9003-11-6 (Polyether Polyol ED28; CAS NO.:9003-11-6, Page 3). Using a molecular weight of OH of 17 g/mol, this results in an amount of OH units of 0.35 mols. This results in an isocyanate index of 194 – 221, which lies within the claimed range of at least 100 and therefore satisfies the claimed range, see MPEP 2131.03.
Chilson and Xiao are analogous art as they both teach energy absorbing material for use in head protective gear. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the energy absorbing material of Xiao as the energy absorbing material of Chilson. This would allow for a thermally conductive, impact absorbent material (Xiao, Par. 0012).
Modified Chilson is silent regarding the polyurethane-based composite having a hardness of 20-50 Shore A.
Cohen teaches a polyurethane-based material for forming an energy absorbing material for headgear, wherein the polyurethane-based material has a Shore A hardness of less than 60 (Cohen, Abstract, Par. 0018, 0047, and 0050), which overlaps the claimed range of 20-50 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Chilson and Cohen are analogous art as they both teach poly-urethane based materials for forming an energy absorbing material for headgear. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the polyurethane composite of modified Chilson to have a shore A hardness within the claimed range. This would allow for a soft, resilient material (Cohen, Par. 0047).
Regarding claim 2, Modified Chilson teaches the polyurethane-based composite is formulated to have a density of 0.45 g/cm3 and a transmission force of 7.6 kN (Xiao, Par. 0045, 0062, 0072, 0087-0109 and Fig. 4), which lie within the claimed ranges of 0.3 to 0.5 g/cm3 and equal to or lower than 30 kN respectively and therefore satisfy the claimed ranges, see MPEP 2131.03.
Regarding claim 3, modified Chilson teaches the plurality of three-dimensional inserts are configured into a plurality of hollow members (Chilson, Par. 0011-0018).
Regarding claims 4-5, modified Chilson teaches the hollow members may be the same, cylindrical shape (Chilson, Par. 0011-0018).
Regarding claim 6, modified Chilson teaches the hollow members have an open end and a cavity and may be a cylindrical tube structure with an irregular geometry, and may be conical, and thus teaches the a top surface area of the hollow member is smaller than a base surface thereof (Chilson, Par. 0011-0018).
Regarding claim 7, modified Chilson teaches the hollow members have two opposing ends (Chilson, Par. 0011-0018 and Fig. 1).
Regarding claim 10, modified Chilson teaches the base surface of the hollow members faces the interior surface of the head protective gear while the top surface of the hollow members faces a wearer’s head (Chilson, Abstract, Par. 0011-0018 and Fig. 1).
Regarding claim 11, modified Chilson teaches the hollow members are formed from energy and impact absorbing material that is deformable and thus teaches the hollow members are deformable against linear or angular velocities or accelerations resulting in one, two, or three-axis of motion exerted around the three-dimensional inserts (Chilson, Par. 0011-0018; Xiao, Par. 0012).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chilson in view of Xiao et al. and Cohen as evidenced by PPGS for High-speed rail, car seats and Interior Molding and Polyether Polyol ED28; CAS NO.:9003-11-6 as applied to claims 1 and 3 above, further in view of Schneider (US 20060112477 A1) (previously cited).
Regarding claim 8, modified Chilson teaches all of the elements of the claimed invention as stated above for claims 1 and 3. Modified Chilson is silent regarding the interior surface of the head protective gear having a foam layer as a base layer supporting the base of the hollow members and the plurality of hollow members is disposed thereon, and wherein the foam layer has energy absorbing capability.
Schneider teaches a head protective gear comprising an interior surface that has an energy absorbing base foam layer as a base layer thereon (Schneider, Abstract, Par. 0006, and 0021-0023).
Modified Chilson and Schneider are analogous art as they both teach head protective gear. IT would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the foam layer of Schneider on the interior surface of the head protective gear of modified Chilson. This would allow for moisture absorbent material that absorbs energy when the head protective gear is impacted (Schneider, Par. 0021-0023). This would further result in the base layer of foam supporting the base of the hollow members and the plurality of hollow members being disposed thereon.
Regarding claim 9, modified Chilson teaches the base layer is in a bowl-shaped or hemispherical structure (Chilson, Par. 0012-0013 and Fig. 1; Schneider, Fig. 1).
Response to Arguments
Applicant’s remarks and amendments filed 17 April 2026 have been fully considered.
Applicant requests withdrawal of the rejections under 35 USC § 112 set forth in the previous office action.
The rejections under 35 USC § 112 set forth in the previous office action have been withdrawn due to the present claim amendments.
On page 7 of the remarks and the Chan declaration, Applicant first argues that the instant invention with the claimed shore hardness has superior mechanical properties over the prior art of record. This is not found persuasive for the following reasons:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). The nonobviousness of a broader claimed range [or genus] can be supported by evidence based on unexpected results from testing a narrower range [or species] if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See MPEP 716.02(d), I. Applicant only provides inventive and comparative data utilizing a single, specific isocyanate, chain extender, catalyst, blowing agent, surfactant, and polyolefin, whereas the instant claims broadly recite a isocyanate, chain extender, catalyst, blowing agent, surfactant, and polyolefin. Applicant further utilizes a specific combination of 4 different polyols, whereas the instant claim 1 broadly recites “at least one hydroxyl-terminated polyol. One of ordinary skill in the art would be unable to determine a trend based upon this limited data to reasonably extend the probative data to the much more broadly claimed features as discussed above. Therefore, the inventive and comparative examples are not commensurate in scope with the claimed invention in view of MPEP 716.02(d), I.
Also, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d), II.
Applying the required analysis noted above, it is clear that the data provided in the examples is not commensurate with the scope of the claims and does not show criticality in establishing unexpected results as follows. The inventive examples utilize a specific weight ratio of all of the components, whereas the inventive claims do not recite a specific weight amount of each component. The inventive examples only utilize a Shore A hardness of 25, whereas the instant claims broadly recite a range of 20-50. The inventive examples only utilize a ratio of the first composition to the second composition of 1:1.67 whereas the instant claim 1 broadly recites a range of 1:1 to 1:1.8. No comparative examples are given outside of the claimed range. The inventive examples only utilize a density of 0.35 g.cm3, whereas the instant claim 1 does not recite any density, and the instant claim 2 recites a density range of 0.3-0.5 g/cm3. No comparative examples are given outside of the claimed range. One of ordinary skill in the art would not be able to reasonably conclude that all possible claimed content ranges/ratios would necessarily yield the asserted superior and unexpected results.
In view of the foregoing, the data provided is not commensurate in scope with the instant claims as required by MPEP 716.02(d). When all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. As such, Applicant’s argument that the instant invention has superior and unexpected results in unconvincing.
Secondly, on page 8 of the remarks, Applicant argues that the prior art of record does not teach the claimed shore hardness. This is found moot.
The grounds of rejection have been updated above in view of the present claim amendments. In the grounds of rejection above, newly cited Cohen is relied upon to render obvious the claimed shore hardness.
Thirdly, on page 8 of the remarks, Applicant argues that Xiao does not teach the claimed ratio of first component to second component. This is not found persuasive for the following reasons:
Xiao teaches using 85-97 g of isocyanate, 1 g of chain extender, 100 g polyols, 3.6 g catalyst, 0.2 g blowing agent, 0.5 g surfactant, and 4 g of crosslinker (Xiao, Par. 0069-0071 and 0091), resulting in 86-98g of the first component and 108.3 g of the second component. This results in a ratio of the first and second component of 1:1.1 to 1:1.27, which lies within the claimed range of 1:1 to 1:1.8 and therefore satisfies the claimed range, see MPEP 2144.05, I. While Xiao teaches an example utilizing different ratio, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. Therefore, Xiao teaches the claimed ratio and Applicant’s argument is unpersuasive.
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 THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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