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 9, 2026 has been considered. In view of
such the amendment with new claims 21-45 has prompted the 112-2nd, 103 and 35 USC 101 nonstatutory double patenting rejections mailed on 2/3/26 withdrawn and this office action to be made FINAL and the arguments are moot.
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 21-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-24 and 43-51 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 ‘173
21. (New) An American football helmet to be worn by a specific player, the helmet comprising: a shell configured to receive a head of the player; an energy attenuation assembly positioned within the shell, said energy attenuation assembly including a pre-manufactured energy attenuation member configured to be positioned within the shell and being selected from a group of pre-manufactured energy attenuation members using head data obtained from the specific player; and wherein said group of pre-manufactured energy attenuation members includes:(a) a first pre-manufactured energy attenuation member having a first set of properties, and(b) a second pre-manufactured energy attenuation member having a second set of properties that is different than the first set of properties of the first pre-manufactured energy attenuation member; and wherein the American football helmet applies a pre-impact pressure that is less than 10 pounds per square inch on at least one location of the specific player's head.
22. (New) The American football helmet of claim 21, wherein the head data is obtained from the specific player using a portable electronic device.
23. (New) The American football helmet of claim 21, wherein a computer program is used to generate a digital head model from the head data obtained from the specific player.
24. (New) The American football helmet of claim 21, wherein the first set of properties of the first pre-manufactured energy attenuation member includes an inner surface, and the second set of properties of the second pre-manufactured energy attenuation member includes an inner surface; and wherein said inner surface of the first pre-manufactured energy attenuation member and said inner surface of the second pre-manufactured energy attenuation member are compared against data derived from the obtained head data as part of said selection of the pre-manufactured member from the group of pre-manufactured members.
25. (New) The American football helmet of claim 21, wherein when the helmet is worn by said specific player, the pre-impact pressure that is applied on at least one location of the specific player's head is greater than 1 pounds per square inch.
26. (New) The American football helmet of claim 21, wherein the first set of properties of the first pre-manufactured energy attenuation member and second set of properties of the second pre-manufactured energy attenuation member are determined from data gathered from a group of players that includes players other than the specific player.
27. (New) The American football helmet of claim 21, wherein said American football helmet includes mechanical properties selected based upon a collection of information associated with a specific playing position.
28. (New) The American football helmet of claim 27, wherein the specific playing position is offensive line; and the mechanical properties of the American football helmet are selected to ensure that a frontal portion of the 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 football helmet from the same impact applied to said rear portion.
29. (New) The American football helmet of claim 21, further comprising: a shell ;wherein the American football helmet is designed to meet or exceed a helmet standard associated with a specific playing position in American football, wherein the helmet standard is developed based on analyzing helmet impact information associated with a first group of players that primarily play said specific playing position.
30. (New) The American football helmet of claim 29, wherein the specific playing position is an offensive line position; and wherein the American football helmet meets or exceeds the helmet standard associated with the offensive line position by absorbing a larger amount of force from an impact applied to a frontal portion of the football helmet as compared to the amount of force absorbed by a rear portion of the football helmet from the same impact applied to said rear portion.
31. (New) The American football helmet of claim 29, wherein the specific playing position is an offensive line position; and wherein the American football helmet is a football helmet that meets or exceeds the helmet standard associated with the offensive line position by absorbing a larger amount of force from an impact applied to a frontal portion of the football helmet as compared to a requirement in a helmet standard for a specific playing position that is not the offensive line position.
32. (New) The American football helmet of claim 29, wherein the specific playing position is an 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 standard associated with the offensive line position.
33. (New) The American football helmet of claim 29, wherein the specific playing position is a quarterback position; and wherein the American football helmet meets or exceeds the helmet standard associated with said quarterback position by absorbing a larger amount of force from an impact applied to a rear portion of the football helmet as compared to the amount of force absorbed by a frontal portion of the football helmet from the same impact applied to said frontal portion.
34. (New) The American football helmet of claim 29, wherein the specific playing position is a quarterback position; and wherein the American football helmet meets or exceeds the helmet standard associated with the quarterback position by absorbing a larger amount of force from an impact applied in a rear portion of the football helmet as compared to a requirement in a helmet standard for a specific playing position that is not the quarterback position.
35. (New) The American football helmet of claim 29, wherein development of the helmet standard further includes analyzing helmet impact information associated with a second group of players that do not primarily play said specific playing position, wherein the helmet impact information associated with the first group of players is different than the helmet impact information associated with the second group of players.
36. (New) The American football helmet of claim 21, wherein at least the first pre- manufactured energy absorption member is digitally selected from a group of pre- manufactured energy attenuation members based on a comparison between: (i) the pre- manufactured energy attenuation member contained in the group of pre-manufactured energy attenuation members, and (ii) head data of the specific player obtained using an electronic device.
37. (New) The American football helmet of claim 21, wherein the one pre-manufactured energy attenuation member is formed by an additive manufacturing process.
38. (New) The American football helmet of claim 29, wherein the specific playing position is a football offensive line position; and wherein the American football 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 American football helmet as compared to a requirement in a helmet standard for a specific playing position that is not the football offensive line position.
39. (New) The American football helmet of claim 29, wherein the specific playing position is a football quarterback position; and wherein the American football 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 American football helmet as compared to a requirement in a helmet standard for a specific playing position that is not the football quarterback position.
40. (New) The American football helmet of claim 29, wherein the specific playing position is a football quarterback position; anda 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 standard associated with the football quarterback position.
41. (New) The American football helmet of claim 27, wherein the specific playing position is football offensive line; and wherein the selected mechanical properties are configured such that 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.
42. (New) The American football helmet of claim 21, wherein a computer is utilized in selecting the pre-manufactured member from the group of pre-manufactured members.
43. (New) The American football helmet of claim 21, 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.
44. (New) The American football helmet of claim 21, wherein the American football helmet applies a pre-impact pressure that is less than 10 pounds per square inch on at least one location of the specific player's head.
47. (New) The American football helmet of claim 29, 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 in football.
US Patent ‘051
17. A protective sports helmet to be worn by a specific player, the helmet comprising: a shell configured to receive a head of the player; an energy attenuation assembly positioned within the shell, said energy attenuation assembly including a pre-manufactured energy attenuation member configured to be positioned within the shell and being selected from a group of pre-manufactured energy attenuation members using head data obtained from the specific player; and wherein said group of pre-manufactured energy attenuation members includes: (a) a first pre-manufactured energy attenuation member having a first set of properties, and (b) a second pre-manufactured energy attenuation member having a second set of properties that is different than the first set of properties of the first pre-manufactured energy attenuation member; and wherein the protective sports helmet: (i) meets or exceeds a helmet standard, and (ii) applies a pre-impact pressure that is less than 10 pounds per square inch on at least one location of the specific player's head, when the protective sports helmet is worn by the specific player.
18. The protective sports helmet of claim 17, wherein the head data is obtained from the specific player using a structured-light scanner.
19. The protective sports helmet of claim 17, wherein a computer program is used to generate a digital head model from the head data obtained from the specific player.
20. The protective sports helmet of claim 17, wherein the first set of properties of the first pre-manufactured energy attenuation member includes an inner surface, and the second set of properties of the second pre-manufactured energy attenuation member includes an inner surface; and wherein said inner surface of the first pre-manufactured energy attenuation member and said inner surface of the second pre-manufactured energy attenuation member are compared against data derived from the obtained head data as part of said selection of the pre-manufactured member from the group of pre-manufactured members.
21. The protective sports helmet of claim 17, wherein when the helmet is worn by said specific player, the pre-impact pressure that is applied on at least one location of the specific player's head is greater than 1 pounds per square inch.
22. The protective sports helmet of claim 17, wherein the first set of properties of the first pre-manufactured energy attenuation member and second set of properties of the second pre-manufactured energy attenuation member are determined from data gathered from a group of players that includes players other than the specific player.
23. The protective sports helmet of claim 17, wherein said protective sports helmet includes mechanical properties selected based upon a collection of information associated with a specific playing position.
24. The protective sports helmet of claim 23, wherein said protective sports helmet is a football helmet and the specific playing position is offensive line; and the mechanical properties of the protective sports helmet are selected to ensure that a frontal portion of the 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 football 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 21-45 of pending application ‘173 discloses an American football helmet to be worn by a specific player, the helmet comprising: a shell configured to receive a head of the player; an energy attenuation assembly positioned within the shell, said energy attenuation assembly including a pre-manufactured energy attenuation member configured to be positioned within the shell and being selected from a group of pre-manufactured energy attenuation members using head data obtained from the specific player; and wherein said group of pre-manufactured energy attenuation members includes:(a) a first pre-manufactured energy attenuation member having a first set of properties, and(b) a second pre-manufactured energy
attenuation member having a second set of properties that is different than the first set of
properties of the first pre-manufactured energy attenuation member; and wherein the American
football helmet applies a pre-impact pressure that is less than 10 pounds per square inch on at
least one location of the specific player's head. which is substantially similar to claims 17-24 and
43-51 that discloses a protective sports helmet to be worn by a specific player, the helmet
comprising: a shell configured to receive a head of the player; an energy attenuation assembly
positioned within the shell, said energy attenuation assembly including a pre-manufactured
energy attenuation member configured to be positioned within the shell and being selected from
a group of pre-manufactured energy attenuation members using head data obtained from the
specific player; and wherein said group of pre-manufactured energy attenuation members
includes: (a) a first pre-manufactured energy attenuation member having a first set of properties,
and (b) a second pre-manufactured energy attenuation member having a second set of properties
that is different than the first set of properties of the first pre-manufactured energy attenuation
member; and wherein the protective sports helmet: (i) meets or exceeds a helmet standard, and
(ii) applies a pre-impact pressure that is less than 10 pounds per square inch on at least one
location of the specific player's head, when the protective sports helmet is worn by the specific
player. Furthermore, the term “American” prior to “football helmet” in pending application ‘173
claims 21-45 does not structurally change the scope of the helmet as presented in US Patent
‘051.
Allowable Subject Matter
Claims 21-45 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection as set forth in this Office action.
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.
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August 25, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732
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