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 amendment, filed 09 June 2026, is reviewed and entered. This Office Action is a final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Amended
1, 6-8
Withdrawn
5, 10-14
Pending
1-14
Presented for Examination
1-4, 6-9
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 6-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawing Objections
Overcome by the claim amendment and withdrawn.
Claim Objections
Some of the objections are overcome by the claim amendments and withdrawn. One objection remains, as set forth below.
Election/Restrictions
Applicant previously elected with traverse Group II, shown in FIGS 2A-2C, in the reply filed on 09 February 2026.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the second protective element being “coplanar” with the first protective element (claim 1), the flexible connecting means “being expandable in a plane coplanar with said first…” (claim 1).
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 is objected to for having multiple periods. There is a period after each letter a, b, c, d, and e. 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 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
Claim(s) 1-4, 6, and 9 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sheehan (US 1,622,211).
As to claim 1, Sheehan discloses a wearable article of protective equipment for protecting a portion of a body of a user (Knee brace, title), comprising: a. a[[A]] first protective element to shield said user from impacts (one of two elements 13, which protects against impacts from 6 and 7 as disclosed in col 2 line 85-100);b. a[[A]] second protective element to shield said user from impacts (the other of two elements 13, which protects against impacts from 6 and 7 as disclosed in col 2 line 85-100), said second protective element being coplanar with said first protective element (FIGS 1-2);c. a[[A]] flexible connecting means joining said first protective element and said second protective element (1-7 in FIG 4 in combination with elastic straps 19; at least 6 and 7 are resilient as disclosed in col 2 line 60-70, at least 1 and 2 include leather as disclosed in col 2 lien 70-75 and leather is known to have a degree of flexibility), said flexible connecting means being expandable in a plane coplanar with said first protective element and said second protective element (19 are elastic as disclosed in col 2 line 110-112, and so are capable of expanding in a plane coplanar with the first and second protective elements);d. t[[T]]he first protective element having a first position and second position relative to the second protective element (the first and second protective elements pivot relative to one another to result in a plurality of 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 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 (15).
As to claim 2, Sheehan 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 (10 and/ or 11).
As to claim 3, Sheehan discloses the wearable article of claim 2, wherein said padding element is located between said protective elements and said inner liner (15 is between the upper protective element 13 and the lower inner liner 10).
As to claim 4, Sheehan 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 (15 fully overlaps a portion of 19 as shown in FIG 1).
As to claim 6, Sheehan discloses the wearable article of claim 1, wherein said flexible connecting means is constructed from an elastomeric material (19 are elastic as disclosed in col 2 line 110-112).
As to claim 9, Sheehan discloses the wearable article of claim 1, wherein said wearable article is a shin guard (the brace is secured above and below the knee as disclosed in col 2 line 105-110, at least the lower portion 11 is capable of guarding the shin, the term “shin guard” does not impart any particular structure and is an intended use recitation).
Claim Rejections - 35 USC § 103
Claim(s) 1-4 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dainese (WO 02076249 A1) in view of Rock (US 20130180027 A1).
As to claim 1, Dainese discloses a wearable article of protective equipment for protecting a portion of a body of a user (glove, see figs 10A-11B), comprising: a. a[[A]] first protective element to shield said user from impacts (one of the two elements 8 shown in figs 10A-11B);b. a[[A]] second protective element to shield said user from impacts (the other of the two elements 8), said second protective element being coplanar with said first protective element (FIG 10A);c. a[[A]] flexible connecting means joining said first protective element and said second protective element (fabric layer 33, fabric has at least some degree of flexibility, 33 necessarily flexes because 33 is intended to act as a hinge as disclosed on page 9 line 4-10), d. t[[T]]he first protective element having a first position and second position relative to the second protective element (FIG 10A, FIG 11A), 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 (34).
Dainese does not disclose said flexible connecting means being expandable in a plane coplanar with said first protective element and said second protective element.
Dainese does not disclose the specific fabric of the glove. However, it is known to provide gloves in a stretch material. Furthermore, it is the purpose of the Dainese glove “to allow easy bending” and one of ordinary skill would recognize that providing one or more of the layers in an expandable material would improve the ability to bend.
Rock para. 0003 teaches providing gloves in 4-way stretch fabrics is known in the art. A four-way stretch fabric would be capable of expanding in a plane coplanar with the first and second protective element.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Dainese layer 33 to be a stretch material such that it is capable of being expandable in a plane coplanar with said first protective element and said second protective element, since it is within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide Dainese layer 33 to be a stretch material such that it is capable of being expandable in a plane coplanar with said first protective element and said second protective element so that “The wearer can move flexibly without substantial restriction from the garments” (Rock para. 0003).
As to claim 2, Dainese 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 (35).
As to claim 3, Dainese discloses the wearable article of claim 2, wherein said padding element is located between said protective elements and said inner liner (padding 34 is between 8 and 35 as shown in FIGS 10B and 11B).
As to claim 4, Dainese 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 (FIGS10A-11B).
As to claim 6, Dainese discloses the wearable article of claim 1, wherein said flexible connecting means is constructed from an elastomeric material (this is the result of the modification presented in the rejection of claim 1).
As to claim 7, Dainese does not disclose the wearable article of claim 1, wherein said padding element is 0.5-15 mm thick.
Dainese is silent as to the dimensions of the padding element. One of ordinary skill would recognize that it would be desirable to provide a padding element that is thick enough to “prevent a direct contact between the hand and the rigid surface of the protection elements” (page 9 line 10-15) while being thin enough so as to not interfere with the wearer’s movement.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padding 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 padding element to be 0.5-15 mm thick, for the purpose of providing a padded element that is thick enough to “prevent a direct contact between the hand and the rigid surface of the protection elements” (page 9 line 10-15) while being thin enough so as to not interfere with the wearer’s movement.
As to claim 8, Dainese does not disclose the wearable article of claim 7, wherein said padding element is 5-10 mm thick.
Dainese is silent as to the dimensions of the padding element. One of ordinary skill would recognize that it would be desirable to provide a padding element that is thick enough to “prevent a direct contact between the hand and the rigid surface of the protection elements” (page 9 line 10-15) while being thin enough so as to not interfere with the wearer’s movement.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padding 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 padding element to be 5-10 mm thick, for the purpose of providing a padded element that is thick enough to “prevent a direct contact between the hand and the rigid surface of the protection elements” (page 9 line 10-15) while being thin enough so as to not interfere with the wearer’s movement.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheehan (US 1622211 A).
As to claim 7, Sheehan does not disclose the wearable article of claim 1, wherein said padded padding element is 0.5-15 mm thick.
Sheehan is silent as to the dimensions of the padding element. One of ordinary skill would recognize that it would be desirable to provide a padding element that is thick enough to prevent injury (col 2 line 100-105) while being thin enough so as to not interfere with the wearer’s movement.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padding 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 padding element to be 0.5-15 mm thick, for the purpose of providing a padded element that is thick enough to prevent injury (col 2 line 100-105) while being thin enough so as to not interfere with the wearer’s movement.
As to claim 8, Sheehan does not disclose the wearable article of claim 7, wherein said padded padding element is 5-10 mm thick.
Sheehan is silent as to the dimensions of the padding element. One of ordinary skill would recognize that it would be desirable to provide a padding element that is thick enough to prevent injury (col 2 line 100-105) while being thin enough so as to not interfere with the wearer’s movement.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the padding 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 padding element to be 5-10 mm thick, for the purpose of providing a padded element that is thick enough to prevent injury (col 2 line 100-105) while being thin enough so as to not interfere with the wearer’s movement.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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