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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 April 2025 has been entered.
Priority
The pending claims are considered to be supported by the earliest provisional application, 62/760,319.
Requirement for Information
Under the authority provided under MPEP 704.10 and 37 CFR 1.105, Examiner hereby requires Applicant to submit a fully-legible copy of page 2 of Provisional Application 62/760,319. Such a submission of data is necessary, as certain captions of the present version in the file wrapper are blurry and not legible. Furthermore, as Applicant presumably has a high-resolution copy of the Provisional Application, this requirement is not deemed unduly burdensome.
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.
Claims 19 and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 recites that the curved interior surface is based on the head of the football helmet. It is presumed that Applicant meant to recite the head of an intended wearer of the helmet.
As claim 20 depends on claim 19, and as the limitations of the dependent claim do not resolve the aforementioned issue in claim 19, claim 20 is also held to be rejected.
Claim Rejections - 35 U.S.C. §102/103
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.
(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.
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 of this title, 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.
Claims 1, 2, 6, 12, 13, 23-27, 32, and 33 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2016/0302496 A1 (“Ferrara”).
Considering claims 1, 2, 6, 13, 24-26, and 32, Ferrara discloses a helmet comprising at least a shell, a slip component, and a crush component adjacent the head of an intended user, wherein the crush component is made of respective open truss structures made of struts. (Ferrara ¶¶ 0067 and 0086-0098 and Figs. 1 and 3). In particular, Ferrara discloses the crush component is formed via additive manufacturing (viz. 3D printing), wherein a single crush component has both smaller dimensioned and larger dimensioned crush elements, in which respective dimensions refer to height, depth, thickness, and/or cell size associated with the truss structures. (Id. ¶¶ 0095 and 0097). Ferrara is analogous art, for it is directed to the same field of endeavor as that of the instant application (protective article utilizing truss structures, in particular protective article in the form of a helmet).
Given the express disclosure in the reference re: varying height and cell size in a single crush component, each subportion of the crush component of different height/ cell size maps onto the claimed modular segment. Furthermore, given the express disclosure, a crush component having subportions of different height/ cell size is deemed either disclosed with sufficient specificity or alternatively obvious.
Lastly, a truss structure by definition is formed of constituent struts, which are clearly described and illustrated in Ferrara. Such a truss structure is by definition open. Furthermore, Ferrara discloses that the truss reacts to external stress via buckling. (See, e.g. id. ¶ 0195). Ferrara thus anticipates or renders obvious claims 1, 2, 6, 13, 24-26, and 32.
Considering claim 12, Ferrara discloses that the truss structure of the crush component can dissipate energy via recoverable deformation, and that the truss structure of the crush component can recover through elastomeric regeneration. (Id. ¶¶ 0090 and 0094). Both implies elastic deformation, as the alternative would be destructive deformation (also expressly named in Ferrara but is clearly different from the foregoing).
Alternatively, the slip component is disclosed to have a truss morphology and be elastically deformable. (Id. ¶¶ 0100 and 0102). The totality of the crush component (having variation in dimension) and slip component (in the form of a truss and being elastically deformable) reads on claim 12.
Considering claim 23, as discussed above, the crush component is elastomeric.
Considering claim 27, various figures in Ferrara show the intersection of three struts at a node. (See, e.g. Id. Figs. 19 and 20).
Considering claim 33, Ferrara discloses designing its helmet based on impact velocity. (Id. ¶ 0086).
Claims 1, 2, 12, 13, 21-26, 32, and 33; and claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2017/0303622 A1 (“Stone”).
Considering claims 1, 2, 21-26, 32, and 33, Stone discloses a helmet having a shell, an open impact absorbing array (mapping onto the impact mitigation layer), and a foam liner between the impact absorbing array and the head of an user. (Stone ¶¶ 0133-0144, 0151, and 0153-0160). Stone is analogous art, for it is directed to the same field of endeavor as that of the instant application (protective article, in particular protective article in the form of a helmet). Stone discloses that individual elements of its impact absorbing array is tuned for a particular impact speed and is designed to buckle and deform. (Id. ¶¶ 0133-0144).
Stone further discloses that the individual elements can be made to have walls of different thicknesses and have variation in height. (Id. ¶¶ 0059, 0155, and 0160). Given these express disclosures, elements having different heights and/or elements having different wall thicknesses are both considered to be disclosed with sufficient specificity or alternatively obvious in view of the express disclosures of the reference.
Stone differs from the claimed invention, as it does not teach the formation of the impact absorbing array via 3D printing; however, this is a product by process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113). In the instant case, the impact absorbing array are otherwise formed of elastic material and are designed to have response to load similar to the 3D printed structure of the Instant Application. Formation using 3D printing as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art unless Applicant presents evidence showing otherwise.
Considering claims 12 and 13, Stone discloses that each element of the impact absorbing array contains respective filaments, and that the impact absorbing array itself can take the form of a lattice. (Stone ¶¶ 0129-0134 and 0143).
Considering claims 19 and 20, Stone as discussed in ¶ 15-17 above also anticipates or renders obvious claims 19 and 20.
Claims 1, 2, 12, 13, 21-27, 32, and 33; and claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2018/072017 A1 (referenced below using its counterpart publication U.S. 2019/0231018 A1, “Boutin”).
Considering claims 1, 2, 21-26, 32, and 33, Boutin discloses a helmet comprising at least a shell, a 3D volumetric mesh, and an interior foam layer adjacent the head of an intended user, wherein the crush component is made of respective open truss structures made of struts. (Ferrara ¶¶ 0215-0231 and Figs. 20-22). In particular, Boutin discloses that the 3D volumetric mesh is formed via 3D printing, wherein space spanned by the 3D volumetric mesh is variable. (Id. ¶¶ 0218 and 0224; and Figs. 20-22). Boutin is analogous art, for it is directed to the same field of endeavor as that of the instant application (protective article utilizing truss structures, in particular protective article in the form of a helmet). Given these express disclosures in Boutin re: height difference in the 3D volumetric mesh, elements having different heights is considered to be disclosed with sufficient specificity or alternatively obvious in view of the express disclosures of the reference.
Boutin discloses that its 3D volumetric mesh structure can deform in such a way that the volumetric mesh regains its original shape after subjected to shock. (Id. ¶ 0227). As such, the 3D volumetric mesh is elastically deformable. Given these express disclosures in Boutin re: the 3D volumetric mesh regaining its original shape after subjected to shock, a structure capable of deforming elastically is considered to be disclosed with sufficient specificity or alternatively obvious.
Although the preferred application in Boutin is not a football helmet, the recitation “football” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Furthermore, Boutin discloses that its disclosure can be adapted to make a football helmet. (Boutin ¶ 0003).
Boutin anticipates or renders obvious claims 1, 2, 6, 12, 13, 21-26, and 32.
Considering claim 27, the polyhedral 3D volumetric mesh shown in Fig. 23 of Boutin contains at least one node at which three struts intersect.
Considering claim 33, Boutin discloses configuring the 3D volumetric mesh against a given impact (which is directly correlated with speed). (Id. ¶¶ 0134).
Considering claims 19 and 20, Boutin as discussed in ¶ 21-24 above also anticipates or renders obvious claims 19 and 20.
Claim Rejections - 35 U.S.C. §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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 28-31 are rejected under 35 U.S.C. 103 as unpatentable over WO 2018/072017 A1 (referenced below using its counterpart publication U.S. 2019/0231018 A1, “Boutin”), as applied to claim 27 above, and further in view of U.S. 2018/0071979 A1 (“Achten”).
Considering claims 28-31, Boutin differs from the claimed invention, as it is silent regarding using polyhedral structure having struts meeting the requirements of claims 28-31.
However, Boutin in general discloses polyhedral 3D volumetric mesh. (See, e.g. ¶ 0225). Cubic structure is a well-known example of a structure having polyhedral geometry, and its usage as a material for cushioning material is well known, as taught in Achten. (Achten ¶ 0084). In particular, Achten teaches that a preferred type of cubic structure is the body-centered cubic (bcc) structure, which has four across-body diagonal struts intersecting at a midpoint. (Id. ¶ 0082). Achten is analogous art, for it is directed to the same field of endeavor as that of the instant application (usage of polyhedral struts for cushioning). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have incorporated bcc structure into the polyhedral 3D volumetric mesh of Boutin, as bcc structure is known to be utilized for cushioning and energy absorption purposes. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
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 1 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 37, 59, and 62 of copending Application No. 17/317,533 in view of Boutin.
Claims 37, 59, and 62 of the ‘533 Application recite all features recited in claims 1 and 19 except the variation in thickness of the impact mitigation layer. However, in view of teachings of Boutin as discussed above, these features are obvious.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-9 and 13 of U.S. 12,145,346 in view of Boutin.
Claims 7-9 and 13 of the ‘346 Patent recite all features recited in claim 1 except for the provision of a foam layer and the variation in thickness of the impact mitigation layer. However, in view of teachings of Boutin as discussed above, these features are obvious.
Response to Arguments
In view of amendments to claims 1 and 19, all previously instated rejections have been withdrawn.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached on M-F 9:30-7.
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, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781