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 .
Priority
The applicant is filed as a CIP of application of Application 16/023,832, and also claims priority benefit of foreign application TW107120239. The elected Species 2 (as depicted in Figs. 6-13), is not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 121 due to the reason as follows.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of priority applications, Application 16/023,832 and foreign application TW107120239, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the elected Species 2 in this application. Therefore, the elected Species 2 does not meet the priority claims.
The effective filing date of the elected Species 2 is 05/02/2024.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/26/2026 has been entered.
Claims 1-7 are currently pending in the application. Claim 7 has been previously withdrawn from further consideration. Claims 1-6 are being treated on the merits. Any rejection(s) and/or objection(s) made in the previous Office Action and not repeated below, are hereby withdrawn due to Applicant's amendments and/or arguments in the response filed on 03/26/2026.
Drawings
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 claimed feature "wherein the slide-facilitating member is entirely enclosed by the pad" in claim 1 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In claim 1, there is no antecedent basis in the specification for "wherein the slide-facilitating member is entirely enclosed by the pad"
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "slide-facilitating member" in claims 1-4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-6 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation "wherein the slide-facilitating member is entirely enclosed by the pad". By the term "entirely", the limitation requires the slide-facilitating member to be completely surrounded by the bad in every direction. However, the original disclosure fails to set forth the above feature. The specification is silent regarding the feature. All the drawings, including Fig. 11, show the slide-facilitating members 80 being at least partially exposed toward a wearer's head when in use. Therefore, the limitation constitutes new matter.
Claim 1 recites a first limitation "a slide-facilitating member directly attached to the inner surface of the pad and serving to allow the shell and the flexible frame to slide with respect to a user's head wearing the helmet when the shell receives incoming impact" and a second limitation "wherein the slide-facilitating member is entirely enclosed by the pad". As the slide-facilitating member is entirely enclosed by the pad, no sliding interface is available between the slide-facilitating member and a wearer's head when in use. The original disclosure does not provide any description how the slide-facilitating member is configured to allow the shell and the flexible frame to slide with respect to a user's head wearing the helmet when the shell receives incoming impact in such a scenario. There is a lack of written description for this limitation.
The remaining claims each depend from a rejected base claim and are likewise rejected.
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.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the buffer is covered by the casing and has the inner surface". First, there is insufficient antecedent basis for "the buffer" in the claim. Second, the claim has previously defined the shell having an inner surface, the flexible frame having an inner surface, and the pad having an inner surface. It is unclear which inner surface is being referred to. For examination purposes, the limitation has been construed to be "the buffer layer is covered by the casing and has the inner surface of the shell".
Claim 1 recites a first limitation "a slide-facilitating member directly attached to the inner surface of the pad and serving to allow the shell and the flexible frame to slide with respect to a user's head wearing the helmet when the shell receives incoming impact" and a second limitation "wherein the slide-facilitating member is entirely enclosed by the pad". As the slide-facilitating member is entirely enclosed by the pad, no sliding interface is available the slide-facilitating member and a wearer's head when in use. Then, how can the slide-facilitating member serve to allow the shell and the flexible frame to slide with respect to a user's head wearing the helmet? The claim appears to be self-conflicting. As no reasonable interpretation can be made, no prior art rejection has been attempted to claim 1 and the dependent claims in this Office action.
The remaining claims each depend from a rejected base claim and are likewise rejected.
Response to Arguments
In view of Applicant's amendment, newly modified grounds of rejection have been identified and applied. Applicant's arguments filed 03/26/2026 have been fully considered and addressed as follows.
Applicant's remarks: Applicant asserts that by combination of Chilson and Garneau, the resulted structure would include two slidable interfaces, one formed by the shear component (690) of Chilson and another formed by the slippage pads (20) of Garneau; such a configuration would cause the helmet to experience uncontrolled or unstable sliding when subjected to an external impact force.
Examiner's response: Examiner respectfully disagrees. First, Applicant does not provide any support or evidence or explanation why a configuration of two slidable interfaces would cause the helmet to experience uncontrolled or unstable sliding when subjected to an external impact force. Second, it has been a common configuration within helmet patent literature to include multiple sliding interfaces for enhanced impact diversion, such as Falone (US 2003/0070209 A1), Penner (US 2017/0347736 A1), Halldin (US 2013/0040524 A1), Halldin (WO 2021/032347 A) and many more. Therefore, Applicant's argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional relevant references cited on attached PTO-892 form(s) can be used to formulate a rejection if necessary.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIYING ZHAO whose telephone number is (571)272-3326. The examiner can normally be reached on 8:30 am - 4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KHOA HUYNH can be reached on (571)272-4888. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/AIYING ZHAO/Primary Examiner, Art Unit 3732
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