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 .
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 21-39 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 6-7 and in claim 32, on lines 5-6, each occurrence of “wherein the American football helmet is designed to meet or exceed a helmet standard” and in claim 21, on line 9, “a first group of players that primarily play said playing position” is indefinite since it offers no parameters as what standard the invention is being compared that offer unexpected results therefrom when the football helmet is worn. Correction is required
The amendment and arguments made on June 3, 2026 have been considered. In view of
such the amendment has prompted 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 21-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-33, and 36-39 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 ‘192
21. (New) A American football helmet to be worn by a specific player engaged in a sporting activity, the American football helmet comprising: a shell; an energy attenuation assembly configured to be positioned within the shell and having one pre-manufactured energy attenuation member; 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.
22. (New) The American football helmet of claim 21, wherein the specific playing position is an offensive line position; and wherein the American football helmet meets or exceeds the helmet standard associated with said 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.
23. (New) The American football helmet of claim 21, 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 a requirement in a helmet standard for a specific playing position that is not the offensive line position.
24. (New) The American football helmet of claim 21, 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.
25. (New) The American football helmet of claim 21, 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.
26. (New) The American football helmet of claim 21, 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.
27. (New) The American football helmet of claim 21, 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.
28. (New) The American football helmet of claim 21, wherein the pre-manufactured energy attenuation 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.
29. (New) The American football helmet of claim 21, wherein the one pre-manufactured energy attenuation member is formed by an additive manufacturing process.
30. (New) The American football helmet of claim 21, wherein the helmet standard is the NOCSAE standard.
31. (New) The American football helmet of claim 21, 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.
32. (New) The American football helmet of claim 21, 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 standard associated with the football quarterback position.
33. (New) The American football helmet of claim 21, wherein a computer is utilized in selecting the pre-manufactured energy attenuation member.
34. (New) The American football helmet of claim 21, wherein the first group of players are football offensive linemen; 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.
35. (New) The American football helmet of claim 21, 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.
36. (New) The American football helmet of claim 21, wherein the specific playing position is a football quarterback position; and 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 standard associated with the football quarterback position.
37. (New) The American football helmet of claim 21, 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.
38. (New) The American football helmet of claim 21, wherein a computer is utilized to select the pre-manufactured energy attenuation member amongst a group of pre-manufactured energy attenuation members.
39. (New) The American football helmet of claim 21, wherein said helmet impact information includes at least one of: (i) helmet impact data gathered using an in-helmet impact sensor, and (ii) the player's primary playing position.
US Patent ‘051
25. A protective sports helmet to be worn by a specific player engaged in a sporting activity, the protective sports helmet comprising: a shell; an energy attenuation assembly configured to be positioned within the shell and having one pre-manufactured energy attenuation member; wherein the protective sports 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.
26. The protective sports helmet of claim 25, wherein the specific playing position is an offensive line position; and wherein the protective sports helmet is a football helmet that meets or exceeds the helmet standard associated with said 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.
27. The protective sports helmet of claim 25, wherein the specific playing position is an offensive line position; and wherein the protective sports 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.
28. The protective sports helmet of claim 25, wherein the specific playing position is an 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 offensive line position.
29. The protective sports helmet of claim 25, wherein the specific playing position is a quarterback position; and wherein the protective sports helmet is a football helmet that 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.
30. The protective sports helmet of claim 25, wherein the specific playing position is a quarterback position; and wherein the protective sports helmet is a football helmet that 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.
31. The protective sports helmet of claim 25, 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.
32. The protective sports helmet of claim 25, wherein the pre-manufactured 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.
33. The protective sports helmet of claim 25, wherein the one pre-manufactured energy attenuation member is formed by an additive manufacturing process.
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.
.
Claims 21-39 of pending application discloses a American football helmet to be worn by a specific player engaged in a sporting activity, the American football helmet comprising: a shell; an energy attenuation assembly configured to be positioned within the shell and having one pre-manufactured energy attenuation member; 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 is substantially similar to claims 25-33, and 36-39 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: a shell; an energy attenuation assembly configured to be positioned within the shell and having one pre-manufactured energy attenuation member; wherein the protective sports 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.
The term “American” prior to “football helmet” in pending application ‘192 in claims
21-39 does not structurally change the scope of the helmet as presented in US Patent ‘051.
Allowable Subject Matter
Claims 21-39 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection as set forth in this Office action.
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 TEJASH PATEL whose telephone number is (571)272-4993. The examiner can normally be reached Monday-Thursday 9am -5pm.
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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.
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August 26, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732
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