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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-17 in the reply filed on Oct. 15, 2025 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The term “thin” in claims 8 and 15 is a relative term which renders the claim indefinite. The term “thin” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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) 1-3, 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reinhall et al. (US 2021/0187897 A1) (“Reinhall”).
With respect to claim 1, Reinhall discloses an insert for sports equipment (abstr.), comprising a layer including a lattice structure including a lattice structure layer, the insert being insertable into at least a portion of the sports equipment (abstr., 0005-0008).
The recitation “designed using computer aided design software and customized according to user preference as to at least one of a size, shape, a thickness and a density of the at least one lattice layer, the lattice structure subsequently formed by 3D-printing the at least one lattice layer” defines how the product is made, thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case, the recited steps imply the structure of claim 1. The reference teaches the structure.
Regarding claim 2, Reinhall teaches the insert of claim 1 comprising a base layer – element 1206 - having a front surface opposite a rear surface (0085, Fig. 12D).
As to claim 3, Reinhall teaches the insert of claim 2, wherein the front surface includes a first adhesive (0085).
With respect to claim 11, Reinhall discloses an insert for sports equipment (abstr.), comprising a base layer – element 1206 - having a front surface opposite a rear surface (0085, Fig. 12D), the front surface primed with an adhesive material (0085) and a lattice structure configured to adhere to the front surface of the base layer, the lattice structure including a lattice structure layer (abstr., 0005-0008, 0085, Fig. 12D), the insert being insertable into at least a portion of the sports equipment (0005-0008).
The recitation “designed using computer aided design software and customized according to user preference as to at least one of a size, shape, a thickness and a density of the at least one lattice layer, the lattice structure subsequently formed by 3D-printing the at least one lattice layer” defines the product by how the product is made, thus, claim 11 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case, the recited steps imply the structure of claim 11. The reference teaches the structure.
Claim Rejections - 35 USC § 103
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) 4-9, 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinhall in view of Huang (US 2004/0266546 A1).
With respect to claim 4, Reinhall teaches the insert of claim 3, but is silent regarding the rear surface including a second adhesive. Huang discloses a shock-absorbing element to be placed on a handle of sports equipment (abstr.), the element comprising a rear surface including an adhesive – element 30 – for attaching the shock-absorbing element to the handle (0033, Fig. 4). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include a second adhesive on the rear surface of the base layer of Reinhall for attaching the insert to a helmet (Reinhall, 0007-0008).
Regarding claim 5, Reinhall and Huang teach the insert of claim 4. Reinhall discloses the lattice structure is adhered to the front surface of the base layer (0085, Fig. 12D).
As to claim 6, Reinhall and Huang teach the insert of claim 5. Huang discloses a backing layer - element 32 - attached over the second adhesive at the rear surface of the base layer, the backing providing a temporary removable backing for the second adhesive (Huang, 0033, Fig. 4; Reinhall Fig. 12D).
With respect to claim 7, Reinhall and Huang teach the insert of claim 6. Reinhall discloses the lattice structure comprising a plurality of lattice layers (0085, Fig. 12D).
The recitation “each designed using computer aided design software and customized according to user preference as to at least one of said size, said shape, said thickness and said density” defines the product by how the product is made, thus, claim 7 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case, the recited steps imply the structure of claim 7. The reference teaches the structure.
Regarding claim 8, Reinhall and Huang teach the insert of claim 7. Reinhall disclosed the base layer being a thin flexible resin – polymeric cloth - (0075).
As to claim 9, Reinhall and Huang teach the insert of claim 8. The claim defines the product by how the product is made, thus, claim 9 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case, the recited steps imply the structure of claim 7. The references teach the structure.
With respect to claim 12, Reinhall teaches the insert of claim 11, but is silent regarding the rear surface including a second adhesive. Huang discloses a shock-absorbing element to be placed on a handle of sports equipment (abstr.), the element comprising a rear surface including an adhesive – element 30 – for attaching it to the handle (0033, Fig. 4). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include a second adhesive on the rear surface of the base layer of Reinhall for attaching the insert to a helmet (Reinhall, 0007-0008).
As to claim 13, Reinhall and Huang teach the insert of claim 12. The insert of Reinhall and Huang includes a backing layer – as disclosed by Huang - element 32 - attached over the second adhesive at the rear surface of the base layer, the backing layer providing a temporary removable backing for the second adhesive (Huang, 0033, Fig. 4; Reinhall Fig. 12D).
With respect to claim 14, Reinhall and Huang teach the insert of claim 13. Reinhall discloses the lattice structure comprising a plurality of lattice layers (0085, Fig. 12D).
The recitation “each designed using computer aided design software and customized according to user preference as to at least one of said size, said shape, said thickness and said density” defines the product by how the product is made, thus, claim 14 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case, the recited steps imply the structure of claim 14. The references teach the structure.
Regarding claim 15, Reinhall and Huang teach the insert of claim 14. Reinhall disclosed the base layer being a thin flexible resin – polymeric cloth - (0075).
As to claim 16, Reinhall and Huang teach the insert of claim 15. The claim defines the product by how the product is made, thus, claim 16 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case the recited steps imply the structure of claim 16; the references teach the structure.
Claim(s) 10 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reinhall in view of Huang, and further in view of Ameriguian (US 8420195 B2).
With respect to claim 10, Reinhall and Huang teach the insert of claim 9, but are silent regarding the backing layer including a pull tab to enable a user to manually peel the backing layer from the insert.
Ameriguian discloses a structure comprising a backing layer including a pull tab – element 26 - to enable a user to manually peel the backing layer from an adhesive layer (col. 4, lines 37-51, Figs. 6 and 7). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the backing layer of the insert of Reinhall and Huang a pull tab to enable a user to manually peel the backing layer from the insert.
With respect to claim 17, Reinhall and Huang teach the insert of claim 16, but are silent regarding the backing layer including a pull tab to enable a user to manually peel the backing layer from the insert.
Ameriguian discloses a structure comprising a backing layer including a pull tab – element 26 - to enable a user to manually peel the backing layer from an adhesive layer (col. 4, lines 37-51, Figs. 6 and 7). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the backing layer of the insert of Reinhall and Huang a pull tab to enable a user to manually peel the backing layer from the insert.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783