DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment and arguments made on June 3, 2026 has been considered. In view of such the amendment has prompted this office action to be made FINAL and the arguments are moot.
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 21-44 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. In claim 21, on lines 13-14, “wherein the American football helmet is designed to meet or exceed a helmet evaluation standard” is indefinite since it offers no parameters as what evaluation standard the invention is being compared that offers unexpected results therefrom.
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.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Marietta et al. (US 3,843,970). Marietta et al. (hereinafter Marietta) discloses a protective sports helmet (1) to be worn by a specific player engaged in a sporting activity, col. 1, lines 9-20 including at least one energy attenuation assembly/first and second pre-manufactured members (3-7) with each having an outer surface oriented toward an inner surface contour configured to be removably positioned within interior (2a) of a helmet shell (2) and an inner surface oriented away from the inner surface of the helmet shell (2) , col. 3, line 64 – col. 4, line 18 and as shown in figures 1 and 7. Further, the energy attenuation assembly/pad members (3-7) including at least one pad member having an inner surface/face (30’), an outer surface/face (30) as shown in figures 2 and 3. Also, a set of pad properties of the at least one pad member (3-7) having a first set of reference property data that include a first thickness and are associated with a first pre-manufactured pad member a second set of reference property that include a second thickness with shims (28) that is different than the first thickness and are associated with a second pre-manufactured pad member, col. 5, lines 32-58 and as shown in figure 8. The shell (2) shell
further includes a front region, ,a crown region, and two side regions depending from the crown region and wherein the energy attenuation assembly/pad members (3-7) further includes a pre-manufactured pad configured to be positioned within the crown region of the helmet shell, a pre- manufactured pad configured to be positioned within the front region of the helmet shell and a pre-manufactured pad configured to be positioned within each of the side regions of the helmet shell as shown in figure 1. However, Marietta does not show the at least one energy attenuation member having first and second premanufactured members being selected based upon property thereof.
Col. 2, lines 12-25 and col. 5, lines 31-59 of Marietta discloses pad members (3-7) of
various thickness cushion pads to be substituted for any one of the pads releasably attached to the
inner surface of the helmet that is usable with head sizes of any dimensions through custom
sizing. Therefore, it would have been obvious to one skilled in the art before the effective date
of the claimed invention the first and second members of Marietta can be selected based upon
but not limited to comparison between the first and second set of reference property with first and second thickness of the first and second pre-manufactured pads, respectively, etc. so that the helmet provides a custom fit about different sized head of users/players by selectively attached to the inner surface thereof depending on impact protecting required that is worn while playing football.
In claim 21, on line 11, “data obtained from the specific player” presents functional language with no unexpected results and/or to structural limit the metes and bounds of the football helmet to a particular player and/or position.
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 21-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 34-46 of U.S. Patent No. 12,059,051. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows:
Instant Application ‘147
21. (New) An American football helmet to be worn by a specific player engaged in playing a football activity, the American football helmet comprising :an energy attenuation assembly positioned within a helmet shell, said energy attenuation assembly including at least one energy attenuation member having:(i) an inner surface oriented away from an inner surface of the helmet shell, and(ii) an outer surface oriented toward the inner surface of the helmet shell ,wherein the at least one energy attenuation member is selected using (a) a property of a first pre-manufactured energy attenuation member, (b) a property of a second pre- manufactured energy attenuation member, and (c) data obtained from the specific player; and wherein the American football helmet is designed to meet or exceed a helmet evaluation standard.
22. (New) The American football helmet of claim 21, wherein the data obtained from the specific player is head shape data gathered using a computerized scanning apparatus.
23. (New) The American football helmet of claim 21, wherein the property of the first pre- manufactured energy attenuation member is a compression ratio and the property of the second pre-manufactured member is a compression ratio that is different than the compression ratio of the first pre-manufactured member.
24. (New) The American football helmet of claim 21, wherein the first pre-manufactured energy attenuation member is formed by an additive manufacturing process.
25. (New) The American football helmet of claim 21, wherein the data obtained from the specific player includes: (i) helmet impact data gathered using an in-helmet impact sensor, or (ii) player's primary playing position.
26. (New) The American football helmet of claim 21, wherein the American football helmet includes mechanical properties selected based upon a collection of helmet impact information associated with a group of player positions, and wherein one of the player positions within the group of player positions includes the player's primary position while engaged in the sporting activity.
27. (New) The American football helmet of claim 26, wherein the helmet impact information associated with a group of player positions includes:(i) a first set of helmet impact information associated with a first player position contained in the group of player positions;(ii) a second set of helmet impact information associated with a second player position not contained in the group of player positions; and wherein a measurement within said first set of helmet impact information is statistically different from a measurement within said second set of helmet impact information.
28. (New) The American football helmet of claim 27, wherein the measurements within the first and second sets of helmet impact information include the magnitude of helmet impacts received by the first player position and the second player position.
29. (New) The American football helmet of claim 28, wherein the first player position is a football offensive lineman and the second player position is a football running back.
30. (New) The American football helmet of claim 26, wherein the helmet impact information associated with a group of player positions includes:(i) a first set of helmet impact information associated with a first player position contained in the plurality of player positions;(ii) a second set of helmet impact information associated with a second player position not contained in the plurality of player positions; and wherein a measurement within said first set of helmet impact information is not statistically different from a measurement within said second set of helmet impact information.
31. (New) The American football helmet of claim 30, wherein the measurements contained in the first and second sets of helmet impact information include the number of helmet impacts received by the first player position and the second player position.
32. (New) The American football helmet of claim 21, wherein the properties of the first and second pre-manufactured members are determined from data gathered from a group of players that includes players beyond the specific player.
33. (New) The American football helmet of claim 21, wherein a computer program generates a model from the data obtained from the specific player, and wherein said model is configured to be digitally displayed as a 3D object.
34. (New) The American football helmet of claim 21, wherein the energy attenuation assembly exerts a pre-impact pressure that is less than 10 pounds per square inch on the specific player's head when the helmet is worn by said player.
35. (New) The American football helmet of claim 21, wherein the energy attenuation assembly exerts a pre-impact pressure that is greater than 1 pounds per square inch on at least one point of the specific player's head when the helmet is worn by said player.
36. (New) The American football helmet of claim 21, wherein the helmet evaluation standard is the NOCSAE standard.
37. (New) The American football helmet of claim 21, wherein the helmet evaluation standard is developed based on analyzing helmet impact information associated with a first group of players that primarily play a specific playing position in football.
38. (New) The American football helmet of claim 37, wherein the specific playing position is a football offensive line position; and wherein the American football helmet meets or exceeds the helmet evaluation standard associated with the football offensive line position by absorbing a larger amount of force from an impact applied to a frontal portion of the American football helmet as compared to a requirement in a helmet evaluation standard for a specific playing position that is not the football offensive line position.
39. (New) The American football helmet of claim 37, wherein the specific playing position is a football offensive line position; and a first local deformation of a frontal portion of the American football helmet is configured to be greater than a second local deformation of a frontal portion of a second American football helmet that does not meets or exceed the helmet evaluation standard associated with the football offensive line position.
40. (New) The American football helmet of claim 37, wherein the specific playing position is a football quarterback position; and wherein the American football helmet meets or exceeds the helmet evaluation standard associated with the football quarterback position by absorbing a larger amount of force from an impact applied in a rear portion of the American football helmet as compared to a requirement in a helmet evaluation standard for a specific playing position that is not the football quarterback position.
41. (New) The American football helmet of claim 37, wherein the specific playing position is a football quarterback position; and wherein a first amount of energy absorption in a rear portion of the American football helmet is greater than a second amount of energy absorption in a rear portion of a second American football helmet that does not meets or exceed the helmet evaluation standard associated with the football quarterback position.
42. (New) The American football helmet of claim 21, wherein the property of the first pre- manufactured energy attenuation member is an inner surface contour and the property of the second pre-manufactured energy attenuation member is an inner surface contour that is different than the inner surface of the first pre-manufactured energy attenuation member.
43. (New) The American football helmet of claim 26, wherein the group of player positions include football offensive line; and wherein a frontal portion of the American football helmet absorbs a larger amount of force from an impact applied to the frontal portion as compared to the amount of force absorbed by a rear portion of the American football helmet from the same impact applied to said rear portion.
44. (New) The American football helmet of claim 21, wherein the property of the first pre- manufactured energy attenuation member is a first inner surface contour, and the property of the second pre-manufactured energy attenuation member is a second inner surface contour; and wherein using the first inner surface, second inner surface, and the data obtained from the specific player to select the at least one energy attenuation member includes digitally comparing said first and second inner surface contours with information that is derived from the data obtained from the specific player.
US Patent ‘051
1. A protective sports helmet to be worn by a specific player engaged in a sporting activity, the protective sports helmet comprising: an energy attenuation assembly positioned within a shell, said energy attenuation assembly including at least one energy attenuation member having: (i) an inner surface, and (ii) an outer surface wherein the at least one energy attenuation member is selected using (a) a property of a first pre-manufactured energy attenuation member, (b) a property of a second pre-manufactured energy attenuation member, and (c) data obtained from the specific player; and wherein the protective sports helmet is designed to meet or exceed a helmet standard.
2. The protective sports helmet of claim 1, wherein the data obtained from the specific player is head shape data gathered using a computerized scanning apparatus.
3. The protective sports helmet of claim 1, wherein the property of the first pre-manufactured energy attenuation member is a compression ratio and the property of the second pre-manufactured member is a compression ratio that is different than the compression ratio of the first pre-manufactured member.
4. The protective sports helmet of claim 1, wherein the first pre-manufactured energy attenuation member is formed by an additive manufacturing process.
5. The protective sports helmet of claim 1, wherein the data obtained from the specific player includes: (i) helmet impact data gathered using an in-helmet impact sensor, or (ii) player's primary playing position.
6. The protective sports helmet of claim 1, wherein the protective sports helmet includes mechanical properties selected based upon a collection of helmet impact information associated with a group of player positions, and wherein one of the player positions within the group of player positions includes the player's primary position while engaged in the sporting activity.
7. The protective sports helmet of claim 6, wherein the helmet impact information associated with a group of player positions includes: (i) a first set of helmet impact information associated with a first player position contained in the group of player positions; (ii) a second set of helmet impact information associated with a second player position not contained in the group of player positions; and wherein a measurement within said first set of helmet impact information is statistically different from a measurement within said second set of helmet impact information.
8. The protective sports helmet of claim 7, wherein the measurements within the first and second sets of helmet impact information include the magnitude of helmet impacts received by the first player position and the second player position.
9. The protective sports helmet of claim 8, wherein the first player position is a football offensive lineman and the second player position is a football running back.
10. The protective sports helmet of claim 6, wherein the helmet impact information associated with a group of player positions includes: (i) a first set of helmet impact information associated with a first player position contained in the plurality of player positions; (ii) a second set of helmet impact information associated with a second player position not contained in the plurality of player positions; and wherein a measurement within said first set of helmet impact information is not statistically different from a measurement within said second set of helmet impact information.
11. The protective sports helmet of claim 10, wherein the measurements contained in the first and second sets of helmet impact information include the number of helmet impacts received by the first player position and the second player position.
12. The protective sports helmet of claim 1, wherein the properties of the first and second pre-manufactured members are determined from data gathered from a group of players that includes players beyond the specific player.
13. The protective sports helmet of claim 1, wherein a computer program generates a model from the data obtained from the specific player, and wherein said model is configured to be digitally displayed as a 3D object.
14. The protective sports helmet of claim 1, wherein the energy attenuation assembly exerts a pre-impact pressure that is less than 10 pounds per square inch on the specific player's head when the helmet is worn by said player.
15. The protective sports helmet of claim 1, wherein the energy attenuation assembly exerts a pre-impact pressure that is greater than 1 pounds per square inch on at least one point of the specific player's head when the helmet is worn by said player.
16. The protective sports helmet of claim 1, wherein said data obtained from the specific player is head data collected by using a structured-light scanner.
34. The protective sports helmet of claim 1, wherein the helmet standard is the NOCSAE standard.
35. The protective sports helmet of claim 1, wherein the helmet standard is developed based on analyzing helmet impact information associated with a first group of players that primarily play a specific playing position.
36. The protective sports helmet of claim 35, wherein the specific playing position is a football offensive line position; and wherein the protective sports helmet meets or exceeds the helmet standard associated with the football offensive line position by absorbing a larger amount of force from an impact applied to a frontal portion of the protective sports helmet as compared to a requirement in a helmet standard for a specific playing position that is not the football offensive line position.
37. The protective sports helmet of claim 35, wherein the specific playing position is a football offensive line position; and a first local deformation of a frontal portion of the protective sports helmet is configured to be greater than a second local deformation of a frontal portion of a second protective sports helmet that does not meets or exceed the helmet standard associated with the football offensive line position.
38. The protective sports helmet of claim 35, wherein the specific playing position is a football quarterback position; and wherein the protective sports helmet meets or exceeds the helmet standard associated with the football quarterback position by absorbing a larger amount of force from an impact applied in a rear portion of the protective sports helmet as compared to a requirement in a helmet standard for a specific playing position that is not the football quarterback position.
39. The protective sports helmet of claim 35, wherein the specific playing position is a football quarterback position; and wherein a first amount of energy absorption in a rear portion of the protective sports helmet is greater than a second amount of energy absorption in a rear portion of a second protective sports helmet that does not meets or exceed the helmet standard associated with the football quarterback position.
40. The protective sports helmet of claim 1, wherein the property of the first pre-manufactured energy attenuation member is an inner surface and the property of the second pre-manufactured energy attenuation member is an inner surface that is different than the inner surface of the first pre-manufactured energy attenuation member.
41. The protective sports helmet of claim 1, wherein a computer is utilized in selecting the at least one energy attenuation member.
42. The protective sports helmet of claim 6, wherein the group of player positions include football offensive line; and wherein a frontal portion of the protective sports helmet absorbs a larger amount of force from an impact applied to the frontal portion as compared to the amount of force absorbed by a rear portion of the protective sports helmet from the same impact applied to said rear portion.
43. The protective sports helmet of claim 17, wherein the helmet standard is the NOCSAE standard.
44. The protective sports helmet of claim 17, wherein the helmet standard is developed based on analyzing helmet impact information associated with a first group of players that primarily play a specific playing position.
45. The protective sports helmet of claim 44, wherein the specific playing position is a football offensive line position; and wherein the protective sports helmet meets or exceeds the helmet standard associated with the football offensive line position by absorbing a larger amount of force from an impact applied to a frontal portion of the protective sports helmet as compared to a requirement in a helmet standard for a specific playing position that is not the football offensive line position.
46. The protective sports helmet of claim 44, wherein the specific playing position is a football quarterback position; and wherein the protective sports helmet meets or exceeds the helmet standard associated with the football quarterback position by absorbing a larger amount of force from an impact applied in a rear portion of the protective sports helmet as compared to a requirement in a helmet standard for a specific playing position that is not the football quarterback position.
47. The protective sports helmet of claim 44, wherein the specific playing position is a football quarterback position; and a first amount of energy absorption in a rear portion of the protective sports helmet is greater than a second amount of energy absorption in a rear portion of a second protective sports helmet that does not meets or exceed the helmet standard associated with the football quarterback position.
48. The protective sports helmet of claim 23, wherein the specific playing position is football offensive line; and wherein the selected mechanical properties are configured such that a frontal portion of the protective sports helmet absorbs a larger amount of force from an impact applied to the frontal portion as compared to the amount of force absorbed by a rear portion of the protective sports helmet from the same impact applied to said rear portion.
49. The protective sports helmet of claim 17, wherein a computer is utilized in selecting the pre-manufactured member from the group of pre-manufactured members.
50. The protective sports helmet of claim 17, wherein head data obtained from the specific player includes at least one of: (i) helmet impact data gathered using an in-helmet impact sensor, and (ii) the player's primary playing position.
51. The protective sports helmet of claim 1, wherein the property of the first pre-manufactured energy attenuation member is a first inner surface, and the property of the second pre-manufactured energy attenuation member is a second inner surface; and wherein using the first inner surface, second inner surface, and the data obtained from the specific player to select the at least one energy attenuation member includes digitally comparing said first and second inner surfaces with information that is derived from the data obtained from the specific player.
Claims 21-35 of pending application ‘147 discloses an American football helmet to be worn by a specific player engaged in playing a football activity, the American football helmet comprising :an energy attenuation assembly positioned within a helmet shell, said energy attenuation assembly including at least one energy attenuation member having:(i) an inner surface oriented away from an inner surface of the helmet shell, and(ii) an outer surface oriented toward the inner surface of the helmet shell ,wherein the at least one energy attenuation member is selected using (a) a property of a first pre-manufactured energy attenuation member, (b) a property of a second pre- manufactured energy attenuation member, and (c) data obtained from the specific player; and wherein the American football helmet is designed to meet or exceed a helmet evaluation standard that is substantially similar to claims 1-15 of US Patent ‘051 that discloses a protective sports helmet to be worn by a specific player engaged in a sporting activity, the protective sports helmet comprising: an energy attenuation assembly positioned within a shell, said energy attenuation assembly including at least one energy attenuation member having: (i) an inner surface, and (ii) an outer surface wherein the at least one energy attenuation member is selected using (a) a property of a first pre-manufactured energy attenuation member, (b) a property of a second pre-manufactured energy attenuation member, and (c) data obtained from the specific player; and wherein the protective sports helmet is designed to meet or exceed a helmet standard.
Furthermore, claims 36-44 of pending application are substantially similar to claims 34-42 and 51 of US Patent ‘051. The term “American” prior to “football helmet” in pending
application ‘147 in claims 21-44 does not structurally change the scope of the helmet as presented in US Patent ‘051.
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 TEJASH PATEL whose telephone number is (571)272-4993. The examiner can normally be reached Monday-Thursday 9am -5pm.
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, Clinton Ostrup can be reached at (571) 272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
August 26, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732
Prosecution Insights