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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In claim 20, “a means for preventing said impact-hardening foam from tearing during athletic activity by said wearer” is disclosed in the specification as “the foam and fabric, together, resist tearing”. The foam and the fabric in combination equate to claimed a means for preventing said impact-hardening foam from tearing during athletic activity by said wearer;
“a means for permitting said wearer to select a size of said balaclava based exclusively upon a size of said head of said wearer, while permitting said balaclava to fit snugly to said neck of said wearer;
a means for permitting said wearer to select a size of said balaclava based exclusively upon a size of said head of said wearer, while permitting said balaclava to fit snugly to said chest of said wearer; and
a means for permitting said wearer to select a size of said balaclava based exclusively upon a size of said head of said wearer, while permitting said balaclava to fit snugly to said back of said wearer” all are equivalent to hook and loop fasteners/straps and zippers as stated in the instant specification for permitting size adjustability while still permitting snug fit to the claimed areas (head, chest, back).
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4, 6, 7, 8, and 9 is/are rejected under 35 U.S.C. 102a(1) as being anticipated by US 7,152,252 (Gellis et al.).
Regarding claim 1, ‘252 discloses: an article of manufacture suitable to be worn by a wearer (“convertible face and head covering”, title and all figures), said article of manufacture comprising: a first layer of fabric; a second layer of fabric; a layer of foam interposed between said first layer of fabric and said second layer of fabric, wherein said layer of foam is enclosed by said first and second layers of fabric and wherein said layer of foam, said first layer of fabric and said second layer of fabric are formed together so as to create a balaclava. (figs. 6 and 7; par. 22 states, “In a current preferred embodiment, the nose and mouth portion 213 is formed as a compression molded foam laminated as a sandwich between a woven fabric on the outside, which provides some wind resistance and a soft moisture management fabric on the interior, such as a fleece. This sandwich arrangement would look like the sandwich shown in FIG. 6, with the foam being like layer 172 and the woven fabric being 170 and the fleece 171. The compression molded foam assures that the sandwich arrangement retains the molded shape.”).
Regarding claim 4, ‘252 discloses: wherein said layer of foam comprises a single, continuous sheet of foam including one or more darts (fig. 7 and par. 22 states, “As seen in FIG. 7, the mask combination 200 includes side panels 111 and 112 which have piping and sewn seams 217, 218 around the tops and along the border with central sections 213 and 230 in the middle, and a bottom piping and sewn seam 219 which secures side panels 111, 112 to bottom section 230 and forms a clean bottom. In addition, there is a piping 231 and seam 232 between bottom section 230 and nose and mouth section 213. Generally, a flange (not shown) extends beyond the bottom of the face of section 213 to form a clean and smooth connection. Generally, bottom section 230 can be made of the same materials as side panels 111 and 112. There is a piping 220 at the top of section 213 to form a clean and smooth edge for this tender contact point and a seam 221. This section of nose and mouth section 213 is formed in a tent shape so that it fits the wearer's nose without exerting undue pressure on the bridge of the wearer's nose. In a current preferred embodiment, the nose and mouth portion 213 is formed as a compression molded foam laminated as a sandwich between a woven fabric on the outside, which provides some wind resistance and a soft moisture management fabric on the interior, such as a fleece. This sandwich arrangement would look like the sandwich shown in FIG. 6, with the foam being like layer 172 and the woven fabric being 170 and the fleece 171. The compression molded foam assures that the sandwich arrangement retains the molded shape. ”).
Regarding claims 6, 7, 8 and 9 the device shown in ‘252 is disclosed as a balaclava and includes sections 112 and 111 in fig. 3a that would and can provide the claimed ‘shaped to extend to’ and ‘shaped to extend to and no further’ to the sternum and/or neck of a wearer as the ‘wearer’ can be of near infinite size and shape at least one ‘wearer’ be provided with the claimed coverage described in claims 6, 7, 8 and 9.
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.
Claim(s) 2, 3, 5, and 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘252 in view of US 2017/0105461.
Regarding claim 2, ‘252 does not teach the foam as a non-Newtonian foam.
However, ‘461 does teach: “impact absorbing material are rigid or semi-rigid, and can be made of so called “smart molecules” that harden on impact, open cell urethane foam rubber, closed cell urethane foam rubber, silicone elastomer, polycarbonate, Kevlar, textiles or the like, and formed to be worn with into custom and existing head gear or to fit a unique profile needed for a specific application [par. 84].”.
Therefore it would have been obvious to one of ordinary skill in the art of apparel design and manufacture to modify the foam used in ‘252 to be a material/foam that hardens on impact including, open cell urethane foam, for providing headgear with desired impact protective properties.
Regarding claim 3, ‘252 does teach said layer of foam comprises a single, continuous sheet of foam including one or more darts as stated per claim 4 in the 102 rejection above; but does not teach the foam is no more than 7mm thick.
Close inspection of fig. 7 from ‘252 the overall thickness of the section 213 appears to be in the claimed range or at least very close to the claimed range.
Further, ‘461 teaches explicitly, “A thickness of the impact absorbing liner can also be varied or variable to suit a wide range of activities and applications. The thickness can also be varied within the same liner to provide custom protection without compromising weight. The profile can be adaptive and variable from one area to another area. For instance, thinner and lighter sections can be applied where impact is unlikely, while heavier profiles can be strategically positioned in high impact areas for maximum impact dispersion without adding overall weight. One example would be to protect high impact areas of the skull, such as the temples and where the spinal cord and skull meet (par. 153).”.
This teaching explicitly shows the prior art recognizes the thickness dimension of an impact absorbing liner material is a results oriented optimizable variable in the production of impact protective devices that can be varied as desired to provide the desired level of increased protection from thicker dimensions but also providing desired thinner dimensions in areas of less need of protection so that the overall weight of the device is so high to affect comfort of the wearer.
Therefore it would have been obvious to one of ordinary skill in the art to modify the thickness dimension of the foam used in protective device prior to filing the invention by optimizing the thickness dimension of the impact protective material to provide the custom protective needs of a particular end use application while also keeping the overall weight of the device low for used comfort requirements.
Regarding claim 5, the combined teachings do not teach the claimed use of “plural pieces of foam”.
However, the MPEP 2144.04 is clear:
In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.");
Therefore it would have been obvious to one of ordinary skill in the art of apparel manufacture prior to filing the invention to modify the one piece foam construction of ‘252 to a piecemeal construction because the use of a one-piece construction instead of a piecemeal construction and vice versa are merely a matter of obvious engineering design choice.
Regarding claims 11 and 12, ‘252 discloses: A balaclava suitable to be worn by a wearer having a calvaria, crown of head, neck, chest and back (device in fig. 3a is a ‘balaclava’ and includes sections 111 and 112 that will/can cover claimed areas of a wearer), said balaclava comprising: a foam substantially throughout said balaclava (figs. 6 and 7; 172; par. 22), which, when said balaclava is worn by said wearer, said balaclava substantially cover at least said calvaria and neck of said wearer (device shown in fig. 3a will and can function to cover claimed areas as shown in fig. 3a and as humans are of near infinite size).
‘252 does not disclose the foam as ‘impact hardening’ foam per claim 11 substantially throughout or open cell urethane per claim 12.
However, ‘461 does teach: “impact absorbing material are rigid or semi-rigid, and can be made of so called “smart molecules” that harden on impact, open cell urethane foam rubber, closed cell urethane foam rubber, silicone elastomer, polycarbonate, Kevlar, textiles or the like, and formed to be worn with into custom and existing head gear or to fit a unique profile needed for a specific application [par. 84].” and “An impact absorbing liner for existing and custom apparel or other equipment is presented, as is apparel or accessories integrating such impact absorbing liner. The impact absorbing liner includes one or more layers of impact absorbing and/or abrasion resistant material. Each layer of impact absorbing material is sized and configured to be positioned over one or more critical areas of a wearer's body, which may be exposed to a risk of impact during an activity, lifestyle or equipment lifecycle. The impact absorbing liner further includes one or more connectors, for connecting various parts of the impact absorbing liner together and allowing the connection to be sized to fit any particular application. Each layer has a specific material designed for optimum comfort and impact reduction, abrasion resistance and overall product integrity [par.6].”.
Therefore it would have been obvious to one of ordinary skill in the art of apparel design and manufacture prior to filing the invention to modify the foam used in ‘252 to be a material/foam in any desired size/position that hardens on impact including, open cell urethane foam, for providing a protective headgear with desired impact protective properties in desired locations or positions.
Regarding claim 13, ‘252 discloses: when said balaclava is worn by said wearer, said balaclava covers at least a portion of said chest and said back of said wearer (device in fig. 3a is a ‘balaclava’ and includes sections 111 and 112 that will/can cover claimed areas of a wearer).
Regarding claim 14, ‘252 does not disclose claimed perforations.
However, ‘461 does teach, “aeration holes 402 can be applied as needed based on a desired breathability of the selected material (par. 92).”.
Therefore it would have been obvious to one of ordinary skill in the art of apparel design and manufacture prior to filing the invention to modify the foam layer to include aeration holes/perforations as needed to provide the material with the desired level of breathability.
Regarding claim 15, ‘252 as already cited per claim 1 does disclose fabric sandwiching/enclosing a foam layer and the combined teachings above teach the foam of ‘252 being modified to impact hardening foam per claim 11 as prima facie obvious those teachings apply to claim 15 in the same manner.
Regarding claim 16, ‘252 does not teach explicitly the specifically claimed two-way stretch material that has an axis of non-stretch.
‘252 does teach, “Any suitable, relatively stretchy woven or non-woven, wicking or non-wicking, natural or synthetic materials can be used, depending upon the specific need [par. 16].”. Clearly showing the known and highly variable nature of stretch properties of a material and the customizable nature of the stretch properties for a specific application.
‘461 further explicitly teaches, “Primary textiles can be comprised of a woven composition that provides structural integrity for the overall shape desired to suit the design as well as provide a stretching attribute to further secure the article on a user's head [par. 160].”. This teaching shows ‘461 recognizes that fabric structural integrity/rigidity and fabric stretch characteristics are both requirements for providing an apparel device with the desired fit on a user’s body.
Therefore it would have been obvious to one of ordinary skill in the art of apparel design and manufacture prior to filing the invention to modify the fabric used in ‘252 to include desired stretch and directional stability/lack of stretch in a fabric of an apparel device to provide the device with the desired fit on a user’s body.
Regarding claim 17, the combined teachings above do not teach the claimed “zero-way stretch fusible attached to said fabric in an area that, when said balaclava is worn by said wearer, is proximal to said crown of head of said wearer.”.
‘461 does teach, “In some implementations, the impact absorbing liner is configured and formed of multiple density materials fused or otherwise connected together in a multi-ply configuration. This configuration provides additional application flexibility. For example, by having an outer layer (farthest from the body of a wearer) that is dense and rigid, an inner layer can be softer, less dense and less rigid, allowing for a more comfortable fit without sacrificing protection. Additionally, a rigid layer can be interposed between two or more non-rigid layers. Further still, the rigid layer can be implemented as a series of “bones” that form a “skeletal” structure, which is in turn surrounded or layered on top and/or the bottom by non-rigid layers. The rigid layer can fully cover the part with consistent thickness or have variable thicknesses and contours as needed for specific design requirements. The layer can be different from the other layers in size and shape or it can be identical to the non-rigid layers as needed for specific applications [par. 152].”; and “In one exemplary implementation, a hard shell can be applied as needed for additional protection in specific locations. The thickness of the shell can vary to suit applications however an anticipated range can be, but not limited to, 0.01″ thru 0.25″. This method can be particularly useful for baseball or other similar applications where a projectile can impact a user's head [par. 163].”.
These recitations do teach ‘zero stretch fusibles’ attached to fabric proximate to the head of a user. That are added to desired areas in for forming rigid areas of added protection.
Therefore it would have been obvious to one of ordinary skill in the art of apparel design and manufacture prior to filing the invention to add rigid/zero stretch material to a protective apparel device to enhance impact protection to the device.
Regarding claim 18, wherein said balaclava includes at least one pocket (‘252 discloses interior pocket 152).
Regarding claim 19, the combined teachings above already establish prima facie obviousness regarding the ‘impact hardening foam’. Regarding the mesh limitations, ‘252 does disclose in fig. 8, sections that would include both foam and mesh that covers opening 255 to allow for ventilation and rigidity beyond open space.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘252 in view of US 2017/0105461 as applied to claims above, and further in view of US 1,095,089 (Dunn).
The combined teachings do not teach the claimed opposing ear covering perforations.
However, ‘089 does teach a protective head covering garment and states: “An ear portion 17 having perforations 17 is provided on each side of the garment so as to allow the wearer to clearly distinguish sounds and to allow the escape of the air from the interior of the head section (par. 12).”.
Therefore it would have been obvious to one of ordinary skill in the art of apparel manufacture prior to filing the invention to modify a head covering device to include perforations on each side of the head near or on the ears of the wearer to allow the wearer to clearly distinguish sounds while wearing the device.
Response to Arguments
Applicant's arguments filed 9/3/2025 have been fully considered but they are not persuasive.
The claimed language actively required in instant application is fully addressed as noted above. The claimed language does not require the whole of the balaclava to be formed of the foam as being asserted by the applicant.
The foam sandwich disclosed by ‘252 does ‘form a balaclava’ as claimed and as noted in the rejection above.
Amendment to claim 11 has been fully addressed in rejection above.
No other amendments or arguments are offered.
The rejection remains and is considered to be proper.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 H MUROMOTO JR whose telephone number is (571)272-4991. The examiner can normally be reached M-Th 730-1730.
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/ROBERT H MUROMOTO JR/Primary Examiner, Art Unit 3732