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 of Group I, claims 1-19, is acknowledged. Election was made with traverse in the reply filed January 14, 2026. Claim 20 is canceled by Applicant. Claim 21 is newly filed by Applicant.
Applicant’s traversal is on the grounds that all inventions could be examined without a serious burden. This is found not persuasive because the entire application contains a number of inventions that are patentably distinct from one another and including divergent claimed subject matter that separates the inventions. Such recognized divergent subject matter is a burden to examination.
The requirement is still deemed proper and is therefore made FINAL.
Allowable Subject Matter
Claims 1-2 and 4-19 are allowed (subject to the successful filing of a Terminal Disclaimer to overcome a rejection for nonstatutory double patenting over claims 1-20 of USPN 12,144,382, detailed below). Claim 3 is currently free from prior art-based rejection(s) under 35 USC 102 and 35 USC 103 but is subject to a rejection under 35 USC 112(b) (see below). It is respectfully noted that although claims 1-19 are currently free from prior art-based rejection(s) under 35 USC 102 and 35 USC 103, further broadening amendments to independent claim(s) 1 and/or 11 may result in prior art-based rejection(s) under 35 USC 102 and/or 35 USC 103 in future office action(s).
The following is a statement of reasons for the indication of allowable subject matter: The closest pieces of prior art are USPN 8,955,168 Manzella, Jr. et al. and USPN 6,481,019 Diaz et al. The current claims are distinguished from Manzella and Diaz at least because neither Manzella nor Diaz, alone or in combination, teach, suggest, or disclose a personal protection system including a memory mounted to a garment, the memory storing data for regulating an operational characteristic of an electrically powered assembly mounted to a helmet, and a memory interface that is connected to the helmet so as to be able to at least read data stored on the memory mounted on the garment when the garment is disposed over the helmet, wherein the memory interface is electrically connected to a controller, and wherein the controller is configured to receive the data read from the memory mounted on the garment via the memory interface, and the controller is further configured to selectively operate the electrically powered assembly based on the data received from the memory interface, as recited in claim 1 or a personal protection system including a memory interface that is electrically connected to an electrically conductive contact and a controller, an electrically conductive contact mounted to a transparent face shield, and a memory mounted to a garment and connected to the electrically conductive contact of the transparent face shield, the memory configured to store data useful for regulating an operational characteristic of the electrically powered assembly mounted to a helmet, wherein, when the garment is disposed over the helmet, the memory interface is configured to read data from or write data to the memory mounted to the garment via an electrical connection defined by an electrically conductive contact of the helmet and the electrically conductive contact of the transparent face shield, as recited in claim 11. The prior art of record would not be combinable to result in the claimed invention without substantial rearrangement and improper hindsight reasoning. Dependent claims are allowable at least by virtue of their dependencies on an allowable claim.
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: “fastening feature” in claims 1 and 21.
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 Objections
Claim 1 is objected to because of the following informalities: Line 14 recites the limitation “controller,” which should be amended to recite “the controller” for purposes of proper antecedent basis.
Claim 11 is objected to because of the following informalities: Claim 11 alternately recites the limitations “the transparent face shield” (lines 13 and 15) and “the face shield” (lines 11-12 and 20). These limitations should be amended for consistency so that they all recite either “the transparent face shield” or merely “the face shield.”
Appropriate correction is required.
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.
Claim 3 is 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 3 recites the limitation “wherein the garment further comprises a including a filter portion” (lines 1-2). This limitation renders the claim indefinite because its meaning is not understood and upon information and belief it includes drafting error(s).
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.
The factual inquiries 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.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over USPN 8,955,168 Manzella, Jr. et al. in view of USPN 6,481,019 Diaz et al.
To claim 21, Manzella discloses a personal protection system (see Figures 1-11; col. 3, line 1 – col. 19, line 15) comprising:
a helmet (200) configured to be worn on a head of an individual (see for example Figures 1-2C, 3E, and 5; col. 3, line 38 – col. 5, line 43);
a fan assembly (210) mounted to the helmet (see for example, Figures 1-2E and 3E; col. 5, line 44 – col. 6, line 54);
a controller (600) connected to the fan assembly (see for example Figures 1 and 5-7; col. 15, line 29 – col. 17, line 46);
a garment (300,500) removably attached to the helmet (see for example, Figures 1, 2F-3E, and 5; col. 10, line 15 – col. 11, line 52; col. 14, line 26 – col. 15, line 28), the garment comprising:
a shell (300) adapted for being disposed over the helmet, the shell including a filter portion (504,510) (see for example Figures 1, 3A, and 5; col. 14, line 26 – col. 15, line 28);
a transparent face shield (300) secured to the shell, the transparent face shield configured to be removably attached to the helmet such that the transparent face shield is located in front of the face of the individual when attached to the helmet (see for example Figures 1-2, 2F-3E, and 5; col. 10, line 15 – col. 11, line 52; col. 14, line 26 – col. 15, line 28);
a fastening feature for releasably securing the garment to the helmet (see especially Figure 3A; col. 10, lines 46-59); and
a memory mounted to the garment (col. 16, line 60 – col. 17, line 12).
Manzella does not expressly disclose a personal protection system wherein the memory is configured to store data for regulating an operational characteristic of the fan assembly mounted to the helmet, wherein the data stored on the memory indicates a minimum fan speed for the fan assembly corresponding to the filter portion of the garment.
However, Diaz teaches a personal protection system (see Figures 1-14; col. 5, line 40 – col. 17, line 29) analogous to the personal protection system of Manzella, with the personal protection system of Diaz further comprising a memory configured to store data for regulating an operational characteristic of a fan assembly (46) mounted to a helmet (12), wherein the data stored on the memory indicates a minimum fan speed for the fan assembly corresponding to a filter portion of a garment (88) (col. 14, line 48 – col. 15, line 12).
Manzella and Diaz teach analogous inventions in the field of personal protection systems. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the memory of the personal protection system of Manzella to store data for regulating an operational characteristic of the fan assembly as taught by Diaz because Diaz teaches that this configuration is known in the art and beneficial for resuming a desired operation of the fan assembly following the replacement of a dead battery of the fan assembly (col. 14, line 48 – col. 15, line 12).
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 1-19 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,144,382.
Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite personal protection systems comprising substantially the same elements including, inter alia, a helmet, a garment, an electrically powered assembly, and a memory.
INSTANT APPLICATION
USPN 12,144,382
CLAIMS
1
1-2, 5-7, 13, 17
2
1, 13, 17
3
6, 8-9, 13, 17, 20
4
9
5
6, 8-9, 20
6
6, 9, 13, 20
7
8
8
5-7, 13, 17, 20
9
1, 13, 17
10
1, 13, 17
11
1-2, 5-7, 13, 17
12
1, 13, 17
13
5-7, 13, 17, 20
14
1, 13, 17, 20
15
6, 9, 13, 20
16
8
17
6, 8-9, 13, 17, 20
18
1, 13, 17
19
1, 13, 17
21
1-2, 5-7, 13, 17
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Additional personal protection systems analogous to the instant invention (see form PTO-892 “Notice of References Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F Griffin Hall/Primary Examiner, Art Unit 3732