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 .
Response to Amendment
Applicant’s response of 2/6/20206 is received. Claims 1, 3, 11, and 18 are amended, claims 2, 6-10, 12, 13, 16, and 17 are cancelled, and claims 1, 3-5, 11, 14, 15, and 18-20 are pending. Terminal disclaimers were received with the response of 2/6/2026.
Note that the double patenting rejections have been revised in view of the cancellation of claims 2, 6-10, 12, 13, 16, and 17 and amendments to claim 1.
Terminal Disclaimer
The terminal disclaimers submitted 2/6/2026 were disapproved as outlined in the document of 3/2/2026. This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1: delete “the sliding members” and replace with “the sliding member” for consistency with the previously recited “a sliding member”.
Claim 3: delete “a head engaging portion comprising” as this limitation is previously set forth in claim 1 and replace with “said head-engaging portion comprising”.
Appropriate correction is required.
Specification
The specification amendment of 2/6/2026 is not entered as reference number “2104” is used to denote “protective faceguard or mask” and “face guard frame member”.
The specification (page 36) should be revised to recite said respective shock absorber is in a protected location between said first frame member and said second frame member of said head engaging portion. It currently discloses “protective location”.
Drawings
The replacement drawing was received on 2/6/2026 (Fig.45, 1pg.). The drawing is objected to because it’s not clear what structure reference number 2105 (second frame protective faceguard) is denoting, as reference number 2104 appears to denote the same structural portion of the faceguard or mask/face guard frame member. Note also that 2104 is used in the specification to denote multiple structures- “protective faceguard or mask” and “face guard frame member”. It’s difficult to ascertain the boundaries of different structural details in Figure 45 because it is a photocopy of a photograph. As set forth in 37 CFR 1.84 (l), “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The lower portion of the faceguard is missing from Figure 45. It’s not clear what structural element the newly added reference number 2107 lead line is pointing to and it appears to be pointing to the same structure as 2106.
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.
Claims 5 and 18-20 are rejected under 35 U.S.C. 112(a) 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 5 recites each of the plurality of shock absorption devices is mounted normal to the upper surface of the inner shell. However, claim 3 is amended to delete the plurality of shock absorption devices and the plurality of shock absorbers of claim 1 are a different structure. For claim 18, the originally filed specification (page 36) provides support for the shock absorbers in a protected/protective location. However there is no support for the shock absorption devices as in a protected/protective location.
Double Patenting
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).
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).
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.
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.
Claims 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 24, and 25 of U.S. Patent No. 9,949,523 in view of Roundtree (U.S. 11,013,286).
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claim 18 are set forth in claims 1, 24, and 25. It is noted that the preamble of claim 18 recites "A cricket headgear" which recites the use of the headgear for cricket, whereas the preamble of claim 24 recites "A protective headgear". The preamble of claim 18 is considered as encompassed by the scope of "A protective headgear" as the protective headgear may be worn for cricket. The claims of '523 don't recite the head-engaging portion comprising an inner shell and outer shell spaced from the inner shell and a plurality of shock absorption devices extending between the inner shell and outer shell for dampening impulse force directed to the outer shell, and the inner shell generally coextensive with the outer shell and each of the plurality of shock absorption devices is mounted normal to the upper surface of the inner shell. The plurality of shock absorption devices are equivalent to the plurality of shock absorbers of claim 24. For claim 18, Roundtree teaches a head- engaging portion (Fig.2) comprising an inner shell 12 for positioning proximate the upper portion of a human head, the inner shell 12 having an upper surface, an outer shell 14, spaced from the inner shell, and a plurality of shock absorption devices 26 extending between the inner shell 12 and the outer shell 14 for dampening impulse force directed to the outer shell 14, each of the plurality of the shock absorption devices 26 having a central axis.
For claim 19, Roundtree teaches the inner shell 12 is generally coextensive with the outer shell 14.
For claim 20, Roundtree teaches each of the plurality of shock absorption devices 26 is mounted normal to the upper surface of the inner shell 12 as Figure 2 shows the orientation and extent of the devices 26. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the claims of '523 to include the limitations of claims 18-20 of the present application, as Roundtree teaches the impact absorption devices are configured to reduce transfer to the inner shell 12 of a force that is applied to the outer shell 14 to reduce trauma to the brain of the headgear wearer.
Allowable Subject Matter
Claims 1, 3, 4, 11, 14, and 15 are allowed.
There’s no prior art applied to claims 18-20 at this time; however, the claims are not in condition for allowance.
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.
/KATHERINE M MORAN/Primary Examiner, Art Unit 3732