DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
2. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature “a coupler that is configured to removably couple the welding display system to a suspension system attached to the protective shell” and the feature “the lens comprises a first lens, and the protective shell includes a second lens” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
3. 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).
4. 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).
5. The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
6. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
7. Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,790,802. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Claim 1: Claim 1 and 3 of the ‘802 patent provides a teaching of a welding display system, comprising:
a coupler configured to removably couple the welding display system to a protective shell (see col. 13:20-24)
a display screen configured to display a welding metric, a user biometric, or an environmental metric; and (see col. 13:25-26)
a camera sensor positioned to capture image data when the welding display system is coupled to the protective shell (see col. 13:28-30).
The difference between claim 1 of the application and claim 1 of the patent lies in the fact that the patent claim includes more elements and is thus much more specific. For example, claim 1 of the ‘802 patent includes a limitation directed to a welding helmet. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct.
Claim 3 of the ‘802 patent provides a teaching of wherein the coupler comprises a fastener, a latch, or a clip.
Claim 3: Claim 4 of the ‘802 patent provides a teaching of a processor configured to:
receive the image data from the camera sensor, (col. 13:38)
derive a simulated welding environment based on the image data, (col. 13: 39-40) and
display the simulated welding environment on the display screen (see col. 13:41-42).
Claim 4: Claim 5 of the ‘802 patent provides a teaching of wherein the processor is configured to:
derive one or more parameters based on the image data captured by the camera sensor (see col. 13:45-46), and
derive the simulated welding environment based on the one or more parameters (see col. 13:47-48).
Claim 5: Claim 6 of the ‘802 patent provides a teaching of a tracking system configured to track a movement of a head when the welding display system is worn on the head.
Claim 6: Claim 7 and 8 of the ‘802 patent provides a teaching of wherein the processor is configured to derive a viewing orientation based on the movement of the head tracked by the tracking system, and adjust the display of the simulated welding environment on the display screen based on the viewing orientation.
Claim 7: Claim 1 of the ‘802 patent provides a teaching of wherein the protective shell comprises a welding helmet or a protective face shield.
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 21, 25-26 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.
10. On claim 21, the specification fails to support “a coupler that is configured to removably couple the welding display system to a suspension system attached to the protective shell”. The specification paragraph 24 only provides a teaching suspension that attaches the helmet shell 38 to the headgear assembly 32. It is silent on a “coupler that is configured to removably couple the welding display system to a suspension system attached to the protective shell”. As such, the specification provided fails to provide written description support for the claim limitation.
11. On claim 25, the limitation requires where the lens comprises a first lens and the protective shell includes a second lens. The examiner notes that this particular limitation is missing from the drawing and the specification. FIG. 4-6 is silent on the first lens and the protective shell includes a second lens. Furthermore, the specification is also silent on what the applicant consider to be first and second lens. As such, the specification provided fails to provide written description support for the claim limitation. Claim 26 is rejected due to its dependence to claim 25.
Claim Rejections - 35 USC § 102
12. 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.
13. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
14. Claims 1-2 and 5-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lyons et al US 20150234189 A1
Claim 1: The Lyons reference provides a teaching of a welding display system, comprising:
The Lyons reference provides a teaching of a coupler configured to removably couple the welding display system to a protective shell (see FIG. 4b and paragraph 81 frame 19);
The coupler comprising a fasterener or a latch (see paragraph 83 “toaster-like mechanism to allow the mobile computing device to be inserted into the main body and click into place, wherein another push allows the device to be released” and paragraph see paragraph 153-154 item 544).
The Lyon reference provides a teaching of a display screen (see paragraph 79 screen 52) and camera sensor positioned to capture image data when the welding display system is coupled to the protective shell (see FIG 4a item 54 and paragraph 79 “hole 12 allows the mobile computing device's 50 camera 54 to be fully utilized,”).
With respect to the limitation of “to display a welding metric, a user biometric, or an environmental metric” are interpreted as an intended use limitation that do not result in a structural difference between the Lyons prior art and the limitation of claim 1. The Lyons reference without being modified can perform the function of display(ing) a welding metric, a user biometric, or an environmental metric.
Claim 5: The Lyon reference provides further including a tracking system configured to track a movement of a head when the welding display system is worn on the head (see paragraph 121).
Claim 6: The Lyon reference wherein the processor is configured to derive a viewing orientation based on the movement of the head tracked by the tracking system, and adjust the display of the simulated welding environment on the display screen based on the viewing orientation (see paragraph 129-130).
Claim 22: The Lyons reference provides a teaching wherein the protective shell is configured to move about the coupler
Claim 23: The Lyon reference provides a teaching of transparent lens (see paragraph 97 lens assembly).
Claim 24: The Lyons reference wherein the lens comprises the display screen
Claim Rejections - 35 USC § 103
15. 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.
16. 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.
17. Claims 3-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lyons et al US 20150234189 and in view of Zboray US 20100062406
Claim 3: The Lyon wherein comprising a processor configured to: receive the image data from the camera sensor (see paragraph 86).
However, the Lyon reference is silent on the teaching of derive a simulated welding environment based on the image data, and display the simulated welding environment on the display screen. However, the Zboray reference provides a teaching of derive a simulated welding environment based on the image data (see paragraph 32), and display the simulated welding environment on the display screen (see paragraph 33).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Lyon reference with the feature of derive a simulated welding environment based on the image data, and display the simulated welding environment on the display screen, as taught by the Zboray reference, in order to provide a realistic training scenario (see paragraph 32)
Claim 4: The Lyon reference provides teaching of derive one or more parameters based on the image data captured by the camera sensor (see paragraph 93 and 95).
The Lyon reference is silent on a teaching of wherein the processor is configured to: derive the simulated welding environment based on the one or more parameters.
However, the Zboray reference provides a teaching of wherein the processor is configured to: derive the simulated welding environment based on the one or more parameters (see paragraph 51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Lyon reference with the feature of wherein the processor is configured to: derive the simulated welding environment based on the one or more parameters, as taught by the Zboray reference, in order to provide a realistic training scenario (see paragraph 32)
Claim 7: The Lyon reference provides a teaching of wherein the protective shell comprises a welding helmet or a protective face shield.
However, the Zboray reference provide a teaching of wherein the protective shell comprises a welding helmet or a protective face shield (see FIG. 7c item 900).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Lyon reference with the feature of wherein the protective shell comprises a welding helmet or a protective face shield, as taught by the Zboray reference, in order to provide a realistic training scenario (see paragraph 32)
Allowable Subject Matter
18. Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
19. Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
20. The applicant’s argued that the Lyons reference is silent on the teaching of coupler comprising a fastener, latch or clip. The examiner pointed to the paragraph 153-154 pointed 544 as structure that helps to couple to fasten or latch the display to the protective shell. The applicant argued that the structure 544 is meant to center the device instead of fastening or latching the display device. The examiner respectfully disagrees. The Lyons reference teaches that “the ramped protrusions 544 being larger than the nubs 546 are compressed against the rear face of the smartphone even more. The compression of the foam surfaces on both faces of the smartphone securely retains it within the vertical pocket 510” (see paragraph 154 last two sentences). The examiner takes this particular disclosure shows explicitly how the structure 544 fastened or latch the display device with the protective shell.
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 ROBERT J UTAMA whose telephone number is (571)272-1676. The examiner can normally be reached 9:00 - 17:30 Monday - Friday.
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, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J UTAMA/Primary Examiner, Art Unit 3715
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