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
Claims 5 and 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09 February 2026.
Claims 10-14 are properly withdrawn by Applicant.
Claim 5 is withdrawn by Examiner for being drawn to a nonelected group.
Claim 5 recites an outer covering. There is no outer covering shown in the elected group shown in FIGS 2A-2C. The only reference in the specification of an outer covering is in para. 0024 which discloses it covers protective elements 105, 110, and 115, which are features of nonelected Group I, FIGS 1A-1B.
Applicant's election with traverse of Group II, shown in FIGS 2A-2C, and corresponding to claims 1-4 and 6-9 in the reply filed on 09 February 2026 is acknowledged. The traversal is on the ground(s) that 1) the different searches and classifications of each of the five groups would not cause an undue search burden and 2) each of the 5 embodiments has the same special technical feature. This is not found persuasive because regarding the first point, this argument is moot as this is a 371 application and the restriction is on the grounds that the technical feature does not make a contribution over the prior art. Regarding the second point, even though the five groups have the same technical feature, the technical feature does not make a contribution over the prior art, which is a requirement for unity of invention. See page 2, first full paragraph of the 11/7/2025 restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
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 pleated material (claim 6) 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.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 is objected to for having multiple periods. Each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. See: MPEP 608.01(m). Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the words at the beginning of sections a-d should not be capitalized. Appropriate correction is required.
Claims 7-8 are objected to because of the following informalities: replace “padded” with –padding—for proper antecedent basis. Appropriate correction is required.
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: “first protective element”, “second protective element,” “connecting means,” and “padding element” in claim 1 and its dependents, where “element” and “means” are generic placeholders and “protective,” “connecting,” and “padding” are functional.
Para. 0023 describes the protective elements 105, 110, 115 as “typically rigid and can comprise any suitable material, including, but not limited to, molded foam, which can be made from a number of materials, including sponge foam, low or high density polypropylene foam, hard foam, open cell foam, or closed cell foam, and with various densities.”
Para. 0032 describes the connecting means 220 as elastomeric material or an accordion-like pleated material which is not elastomeric.
Para. 0029 describes the padding element as “any suitable material, including, but not limited to, foam. For example, in some embodiments, the padding element comprises irradiation cross-linked polyethylene (IXPE) foam, a sponge foam, or the like. In some embodiments, the padding element comprises IXPE foam layered on top of sponge foam [not shown]. A variety of thicknesses can be used for the padding element, depending on the body part and surface area sought to be covered. A thickness is preferably between about 0.5 mm and 15 mm, and more preferably about 5-10 mm. The padding element may further comprise aeration holes to promote circulation.”
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 § 102
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.
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.
Claim(s) 1-4, 6, and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barrett (US 1624129 A).
As to claim 1, Barrett discloses a wearable article of protective equipment for protecting a portion of a body of a user (leg guard, title), comprising:
a. A first protective element to shield said user from impacts (1);
b. A second protective element to shield said user from impacts (2);
c. A flexible connecting means joining said first protective element and said second protective element (3; col 2 line 69-71 discloses 3 is flexible leather);
d. The first protective element having a first position and second position relative to the second protective element (FIGS 3 and 4 show respective first and second positions), the flexible connecting means permitting the first protective element to reversibly move from the first position to the second position (capable of permitting and intended to permit); and
e. a padding element configured to at least partially overlap said flexible connecting means in said first position and said second position to shield said user from further impacts (4 in FIGS 3-4).
As to claim 2, Barrett discloses the wearable article of claim 1, wherein said wearable article further comprises an inner liner facing the body of the user when said wearable article is worn (16 faces the body of the user when worn; the term “inner liner” does not lend any particular structure and Barrett 16 has all of the structure of the claimed inner lining).
As to claim 3, Barrett discloses the wearable article of claim 2, wherein said padding element is located between said protective elements and said inner liner (FIG 1).
As to claim 4, Barrett discloses the wearable article of claim 1, wherein said padding element fully overlaps said flexible connecting means in the first position and in the second position (FIGS 3-4).
As to claim 6, Barrett discloses the wearable article of claim 1, wherein said flexible connecting means is constructed from an elastomeric or a pleated material (FIGS 1-3 show 3 is pleated).
As to claim 9, Barrett discloses the wearable article of claim 1, wherein said wearable article is a shin guard (at least 1 is capable of guarding and intended to guard a shin).
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.
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.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrett (US 1624129 A).
As to claim 7, Barrett does not disclose the wearable article of claim 1, wherein said padded element is 0.5-15 mm thick.
Barrett is silent as to the dimensions of the padded element. However, Barrett does disclose the padded element does not interfere in any way with the movement of the player’s ankle or foot (col 2 line 95-100). One of ordinary skill would recognize that it would be desirable to provide a padded element that is thick enough to cushion and distribute the force of the blow of a ball (Barrett col 2 line 80-85) while being thin enough so as to not interfere with the wearer’s movement (Barrett col 2 line 95-100).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padded element to be 0.5-15 mm thick, since discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padded element to be 0.5-15 mm thick, for the purpose of providing a padded element that is thick enough to cushion and distribute the force of the blow of a ball (Barrett col 2 line 80-85) while being thin enough so as to not interfere with the wearer’s movement (Barrett col 2 line 95-100).
As to claim 8, Barrett does not disclose the wearable article of claim 7, wherein said padded element is 5-10 mm thick.
Barrett is silent as to the dimensions of the padded element. However, Barrett does disclose the padded element does not interfere in any way with the movement of the player’s ankle or foot (col 2 line 95-100). One of ordinary skill would recognize that it would be desirable to provide a padded element that is thick enough to cushion and distribute the force of the blow of a ball (Barrett col 2 line 80-85) while being thin enough so as to not interfere with the wearer’s movement (Barrett col 2 line 95-100).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padded element to be 5-10 mm thick, since discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padded element to be 5-10 mm thick, for the purpose of providing a padded element that is thick enough to cushion and distribute the force of the blow of a ball (Barrett col 2 line 80-85) while being thin enough so as to not interfere with the wearer’s movement (Barrett col 2 line 95-100).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/Primary Examiner, Art Unit 3732