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
The amendments filed with the written response received on 09/04/2025 have been considered and an action on the merits follows. As directed by the amendment, claims 1 and 2 have been amended. Accordingly, claims 1-6 are pending in this application.
Because of the applicant's amendment, the following in the office action filed 06/06/2025, are hereby withdrawn: the claim objections and the rejection of claims under 35 USC 112(B).
Response to Arguments
Applicant' s arguments, filed 09/04/2025, with respect to the rejection of claims 1-6 under 35 USC § 103 have been considered but are moot because the arguments do not apply to the current grounds of rejection. Applicant's arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the updated grounds of rejection.
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.
Claims 1-3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,755,678 A to Parker.
For claim 1, Parker discloses an athletic protector (102) comprising: an interior portion (105); an exterior portion (106) configured to cover the interior portion (see fig. 16); wherein the interior portion includes at least one hard member (105a), the at least one hard member is formed in an arch shape (see fig. 16), and has a length L1 in a width direction (see annotated fig. 16 below), a length L2 in a height direction orthogonal to the width direction (see annotated fig. 16 above), and
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a length L3 along the width direction (see annotated fig. 16 above), the length L1 in the width direction and the length L2 in the height direction have a relation of the length L2 being greater than one half the length L1 (see annotate fig. 16 above wherein L2 > L1/2), and the length L1 in the width direction and the length L3 have a relation of the length L3 being less than the length L1 (see annotated fig. 16 above wherein L3>L1).
It is further noted by examiner that the pad (102) of Parker has inherent lengths and the interior portions are curved to conform to the shape of a wearer wearing the protector. While Parker does not explicitly recite or label lengths, any physical object necessarily possess dimensions and lengths. Notably, the first length L1 and the second length L2 are claimed as being arbitrarily assigned to any part of the athletic protector and therefore does not distinguish the claim from the prior art. The claim describes lengths that can be measured on any comparable interior portion. Therefore, identifying theses inherent measurements in Parker is a matter of labeling known dimensions, rather than identifying novel or inventive structural features and the lengths are not considered structurally limiting.
It further would have been obvious to one of ordinary skill in the art before the effective filing date wherein Parker would be modified wherein the lengths of Parker’s guard would be modified to arrive at the claimed length parameters. The motivation for such a result lies in the fact that Parker includes a moisture-curable resin to conform and retain a customized shape of the body part onto which it is molded during curing (col. 9, lines 38-43 of Parker). A person of ordinary skill in the art, when working with such a molded and cured guard, would have understood and expected the resulting structure to have the claimed dimensions for purposes of providing a protective pad being custom-fitted to a body member to be protected (col. 9, lines 21-26), which provides enhanced impact dispersion and rigidity (col. 3, lines 21-24 of Parker).
The above embodiment of Parker does not specifically disclose a belt portion configured to be securable to the exterior portion.
However, attention is directed to another embodiment of Parker wherein a guard (120) comprises a strap (124) which is used to retain the guard to a part of the body (col. 10, line 65 to col. 11, line 9). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the above embodiment of Parker would be modified to comprise a strap (interpreted as a belt) configured to be securable to the exterior portion for purposes of retaining the guard to the part of the body meant to be protected.
Parker does not specifically disclose wherein the at least one hard member is elastically deformably such that an opening of the arch shape is enlarged or reduced.
However, although Parker does teach the material forming layer 105 is preferably formed of fiberglass fabric impregnated with a moisture-curable resin which hardens upon curing to form a rigid structure which retains shape of the body part onto which it is molded during curing (col. 9, lines 38-52), Parker also teaches that, alternatively, the layer 105 can be made of materials such as polypropylene, which offers additional flexibility and some cost savings in material (col. 9, lines 53-55). Therefore, Parker teaches cured resin fiberglass and flexible polypropylene have the have the same function of providing protection and are known in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the Parker would be modified wherein cured resin fiberglass is substituted for flexible polypropylene since the modification would amount to a simple substitution of known materials for a predictable result of offering flexibility and cost savings. In this case, the substitution would yield the predictable result of providing rigid protection while also being flexible allowing for elastically deformability such that an opening of the arch shape is enlarged or reduced without requiring more than ordinary skill in the art (see MPEP 2143(I)(B)).
For claim 2, The above embodiment of modified Parker teaches the athletic protector according to claim 1, but does not specifically disclose wherein the interior portion includes the at least one hard member including a first hard member, and a second hard member, and a first soft member, the first hard member is overlaid on an outer side of the first soft member, and the second hard member is overlaid on an inner side of the first soft member.
However, Parker does teach the interior portion of the pad is made of a multilayered cured fiberglass material (col. 9, lines 37-52).
Attention is again also directed to Parker teaching some of the layers forming interior portion may be made of polypropylene, which offers additional flexibility and cost savings in material (col. 8, lines 25-31) and is known in the art as being relatively softer when compared to the other cured and impact resistant fiberglass layers of the interior portions (col. 10, lines 18-21). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the interior portion includes a first hard member (resin cured fiber glass), a second hard member (resin cured fiber glass), and a first soft member, and other innermost layers are of a soft material (105D-105F) (relatively softer polypropylene layer), the first hard member is overlaid on an outer side of the first soft member, and the second hard member is overlaid on an inner side of the first soft member for purposes of offering a pad additional flexibility and cost savings in material, as taught by Parker (col. 8, lines 25-31).
For claim 3, the above embodiment of the modified Parker teaches the athletic protector according to claim 2, wherein the interior portion includes a second soft member having a hardness equal to or lower than a hardness of the first soft member, and the second soft member is overlaid on an inner side of the second hard member (see discussion for claim 2 above, wherein other additional layer are arranged on the innermost surfaces and are made of relative softer polypropylene).
For claim 5, the above embodiment of the modified Parker teaches the athletic protector according to claim 1, but does not specifically disclose wherein the arch shape of the hard member has a radius of curvature of not less than 30 mm and not more than 50 mm.
However, the modified Parker teaches the general conditions of the claim since the radius of curvature is inherently determined by the shape of the part of the body to be protected, which is consistent across most adjust humans within anatomical tolerances for providing protective coverage and comfort. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Parker would be modified wherein the arch shape of the hard member has a radius of curvature of not less than 30 mm and not more than 50 mm since it is not inventive to discover the optimum or workable range by routine experimentation (See MPEP 2144.05(II)). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, custom fitting the pad to the body member to be protected (col. 9, lines 21-26) since the claimed range is a predictable result that falls within the expected range of vales for athletic guards on the body part to be protected. Finally, applicant has not shown that the claimed range provides any unexpected results or advantages over Parker’s guard.
For claim 6, the above embodiment of the modified Parker teaches the athletic protector according to claim 1, but does not specifically disclose wherein the arch shape of the hard member has a length of not less than 170 mm and not more than 350 mm.
However, similar to claim 5 above, the modified Parker teaches the general conditions of the claim since the length of the protective pad is inherently determined by the shape and length of the part of the body to be protected, which is consistent across most adjust humans within anatomical tolerances for providing protective coverage and comfort. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Parker would be modified wherein the arch shape of the hard member has a length of not less than 170 mm and not more than 350 mm since it is not inventive to discover the optimum or workable range by routine experimentation (See MPEP 2144.05(II)). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, custom fitting the pad to the length and size of the body member to be protected (col. 9, lines 21-26) since the claimed range of coverage is a predictable result that falls within the expected range of vales for athletic guards on the body part to be protected. Finally, applicant has not shown that the claimed range of coverage provides any unexpected results or advantages over Parker’s guard.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Parker, as applied to claim 1 above, and further in view of US 2014/0259324 A1 to Behrend.
For claim 4, the modified Parker teaches the athletic protector according to claim 2, but does not specifically disclose wherein at least one of the first hard member and the second hard member is divided in the width direction.
However, attention is directed to Behrend teaching an analogous protective apparatus (Abstract of Behrend). Specifically, Behrend teaches the shell portion (101) is formed of puncture resistant materials (para 0031) (interpreted as “hard members”) and said shell portion is divided along a width direction at hinged portions (118 and 120) which allows for the shell to flex, articulate, conform to the shape of the wearer, and move with changes to the underlying form of the wearer (paras 0028-0029 of Behrend). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Parker would be further modified wherein at least one of the first hard member and the second hard member is divided in the width direction for purposes of allowing the Parker’s pad to flex and articulate and conform to the shape of the wearer and move with changes to the underlying form of the wearer, as taught by Behrend (paras 0028-0029 of Behrend).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICK I LOPEZ whose telephone number is (571)272-3262. The examiner can normally be reached Monday - Friday: 9:00am - 5:30pm EST.
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, Khoa Huynh can be reached at (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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/ERICK I LOPEZ/Examiner, Art Unit 3732
/KHOA D HUYNH/Supervisory Patent Examiner, Art Unit 3732