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 1-20 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 1, on line 13; in claim 3, on lines 1-2; in claims 13 and 14, on lines 1-2; each occurrence of “the specific player” and on line 15, “additional players beyond the specific player” is indefinite since it is unclear what data from the specific player is obtained to insure fit and are each of the “specific players” and “additional players” male and/or female players? Correction is required
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.
Claims 1-20 are 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 an energy
attenuation assembly/pad members (3-7) configured to be removably positioned within interior
(2a) of a shell (2), col. 3, line 64 – col. 4, line 18. 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 properties that include a first thickness and are
associated with a first pre-manufactured pad member a second set of reference properties 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 first and second pads being selected based upon a comparison between the first and second set of reference properties with first and second thickness of the first and second pre- manufactured pads, respectively. 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 pads of Marietta can be selected based upon a comparison between the first and second set of reference properties with first and second thickness of the first and second pre-manufactured pads, respectively 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 or depending on particular application thereof.
With regard to claim 4, it would have been obvious to one skilled in the art before the effective date of the claimed invention the first set of reference properties is compared to the second set of reference properties of Marietta to measure the thickness through but not limited to digital environment, etc. in order to digitally store custom fit configurations for different head sizes.
With regard to claim 7, it would have been obvious to one skilled in the art before the effective date of the claimed invention the first set of reference properties compared to the second set of reference properties having shims of Marietta will substantially have a first compression ratio of the first pre-manufactured pad being different from a second compression ratio of the second pre-manufactured pads having shims custom fitted about different sized head.
With regard to claim 10, it would have been obvious to one skilled in the art before the effective date of the claimed invention one of the first or second pre-manufactured pads of Marietta can be formed by but not limited to an additive manufacturing process, etc. as known in the protective making art.
With regard to claim 11, it would have been obvious to one skilled in the art before the effective date of the claimed invention one of the first or second pre-manufactured pads of Marietta having first and second lattice cell types, figure 5 can be formed by but not limited to an additive manufacturing process with different first and second lattice cell type defining configuration on portions thereof, etc. as known in the protective making art or depending on end use thereof.
Regarding claims 1-20, the claimed structural limitations of the product/pads has been given patentable weight. The step to determine the parameters/data of the pads for a group
of players/first and second player/plurality of player positions as a method does not positively
limit the metes and bounds of patent protection as desired.
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 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of
claims 1-12, 23-28 and 32-34 of prior U.S. Patent No. 11,399,589. This is a statutory double
patenting rejection.
Instant Application ‘427
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 configured to be removably positioned within a shell, said energy attenuation assembly including at least one pad member having:(i) an inner surface,(ii) an outer surface, and(iii) a set of pad properties; and wherein said set of pad properties of the at least one pad member is selected based upon a comparison between (a) a first set of reference properties that include a first thickness and are associated with a first pre-manufactured pad member, (b) a second set of reference properties that include a second thickness that is different than the first thickness and are associated with a second pre-manufactured pad member, and (c) data obtained from the specific player; and wherein the first and second sets of reference properties are determined from data gathered from a group of players that includes additional players beyond the specific player.
2. The protective sports helmet of claim 1, wherein the group of players have the same primary playing level.
3. 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.
4. The protective sports helmet of claim 1, wherein the first set of reference properties is compared to the second set of reference properties in a digital environment.
5. The protective sports helmet of claim 4, wherein the first and second thicknesses are determined based upon the analysis of the data gathered from the group of players, and wherein said data includes head shape data.
6. The protective sports helmet of claim 5, the head shape data obtained from the group of players using a camera.
7. The protective sports helmet of claim 1, wherein first set of reference properties includes a first compression ratio and the second set of reference properties includes a second compression ratio that is different than the first compression ratio.
8. The protective sports helmet of claim 7, wherein the first and second compression ratios are determined based upon the analysis of the data gathered from the group of players, and wherein said data includes impact data.
9. The protective sports helmet of claim 8, the impact data that is gathered from the group of players using an in-helmet impact sensor.
10. The protective sports helmet of claim 1, wherein one of the first or second pre- manufactured pads is formed by an additive manufacturing process.
11. The protective sports helmet of claim 10, wherein said pad that is formed by the additive manufacturing process includes a first region having a first lattice cell type and a second region having a second lattice cell type that is different than the first lattice cell type.
12. The protective sports helmet of claim 1, wherein the shell further includes: a front region, a crown region, and two side regions depending from the crown region; and wherein the energy attenuation assembly further includes: (i) a pre-manufactured pad configured to be positioned within the crown region of the helmet shell, (ii) a pre- manufactured pad configured to be positioned within the front region of the helmet shell ,and (iii) a pre-manufactured pad configured to be positioned within each of the side regions of the helmet shell.
13. The protective sports helmet of claim 1, wherein the data obtained from the specific player includes helmet impact data gathered using an in-helmet impact sensor.
14. The protective sports helmet of claim 1, wherein the data obtained from the specific player includes the player's primary playing position.
15. The protective sports helmet of claim 1, wherein the shell includes mechanical properties selected based upon a collection of information associated with a group of player positions, and wherein one of the player positions within the group of player positions includes the wearer's primary position while engaged in the sporting activity.
16. The protective sports helmet of claim 15, further comprising:(i) a first set of helmet impact information 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 contained in said first set of helmet impact information is statistically different from a measurement contained in said second set of helmet impact information.
17. The protective sports helmet of claim 16, wherein the measurements contained in the first and second sets of helmet impact information is the magnitude of helmet impacts received by the first player position and the second player position.
18. The protective sports helmet of claim 17, wherein first player position is a football offensive lineman and the second player position is a football running back.
19. The protective sports helmet of claim 16, further comprising:(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 contained in said first set of helmet impact information is not statistically different from a measurement contained in said second set of helmet impact information.
20. The protective sports helmet of claim 19, wherein the measurements contained in the first and second sets of helmet impact information is the number of helmet impacts received by the first player position and the second player position.
US Patent ‘589
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 configured to be removably positioned within a shell, said energy attenuation assembly including at least one pad member having: (1) an inner surface, (2) an outer surface, and (3) a set of pad properties; and wherein said set of pad properties of the at least one pad member is selected based upon a comparison between (a) a first set of reference properties that: (i) include a first thickness, and (ii) are associated with a first pre-manufactured pad member, (b) a second set of reference properties that: (i) include a second thickness that is different than the first thickness, and (ii) are associated with a second pre-manufactured pad member, and (c) data obtained from the specific player; and wherein the first and second sets of reference properties are determined from data gathered from a group of players that includes additional players beyond the specific player.
2. The protective sports helmet of claim 1, wherein the group of players have the same primary playing level.
3. 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.
4. The protective sports helmet of claim 1, wherein the first set of reference properties is compared to the second set of reference properties in a digital environment.
5. The protective sports helmet of claim 4, wherein the first and second thicknesses are determined based upon the analysis of the data gathered from the group of players, and wherein said data includes head shape data.
6. The protective sports helmet of claim 5, wherein the head shape data is obtained from the group of players using a camera.
7. The protective sports helmet of claim 1, wherein first set of reference properties includes a first compression ratio and the second set of reference properties includes a second compression ratio that is different than the first compression ratio.
8. The protective sports helmet of claim 7, wherein the first and second compression ratios are determined based upon the analysis of the data gathered from the group of players, and wherein said data includes impact data.
9. The protective sports helmet of claim 8, wherein the impact data is gathered from the group of players using an in-helmet impact sensor.
10. The protective sports helmet of claim 1, wherein one of the first or second pre-manufactured pads is formed by an additive manufacturing process.
11. The protective sports helmet of claim 10, wherein said pre-manufactured pad that is formed by the additive manufacturing process includes a first region having a first lattice cell type and a second region having a second lattice cell type that is different than the first lattice cell type.
12. The protective sports helmet of claim 1, wherein the shell further includes: a front region, a crown region, and two side regions depending from the crown region; and wherein the energy attenuation assembly further includes: (i) a pre-manufactured pad configured to be positioned within the crown region of the helmet shell, (ii) a pre-manufactured pad configured to be positioned within the front region of the helmet shell, and (iii) a pre-manufactured pad configured to be positioned within each of the side regions of the helmet shell.
23. The protective sports helmet of claim 1, wherein the data obtained from the specific player includes helmet impact data gathered using an in-helmet impact sensor.
24. The protective sports helmet of claim 1, wherein the data obtained from the specific player includes the player's primary playing position.
25. The protective sports helmet of claim 1, wherein the shell includes mechanical properties selected based upon a collection of information associated with a group of player positions, and wherein one of the player positions within the group of player positions includes the wearer's primary position while engaged in the sporting activity.
26. The protective sports helmet of claim 25, further comprising: (A) a first set of helmet impact information with a first player position contained in the group of player positions; (B) 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 contained in said first set of helmet impact information is statistically different from a measurement contained in said second set of helmet impact information.
27. The protective sports helmet of claim 26, wherein the measurements contained in the first and second sets of helmet impact information is the magnitude of helmet impacts received by both of the first player position and the second player position.
28. The protective sports helmet of claim 27, wherein the first player position is a football offensive lineman and the second player position is a football running back.
position is a football defensive lineman.
32. The protective sports helmet of claim 1, further comprising a reference surface generated from the data obtained from the specific player, and wherein (i) the first pre-manufactured pad member has a first inner surface positioned interior to said reference surface when both the first inner surface and the reference surface are compared in a digital environment, and (ii) the second pre-manufactured pad member has a second inner surface positioned exterior to said reference surface when both the second inner surface and the reference surface are compared in a digital environment.
33. The protective sports helmet of claim 32, wherein the reference surface generated from the data obtained from the specific player is a surface that substantially matches an outer surface of the specific player's head.
34. The protective sports helmet of claim 1, wherein the first pre-manufactured pad member causes the energy attenuation assembly to exert a pre-impact pressure of 1 to 10 pounds per square inch on the specific player's head when the helmet is worn by said player, and wherein the second pre-manufactured pad member does not cause the energy attenuation assembly to exert a pre-impact pressure of 1 to 10 pounds per square inch on the specific player's head when the helmet is worn by said player.
35. The protective sports helmet of claim 13, further comprising an outer head surface derived from the data obtained from the specific player; and wherein (i) the first pre-manufactured pad member has a first inner surface positioned interior to said outer head surface when both the first inner surface and the outer head surface are compared in a digital environment, and (ii) the second pre-manufactured pad member has a second inner surface positioned exterior to said outer head surface when both the second inner surface and the outer head surface are compared in a digital environment.
36. The protective sports helmet of claim 13, wherein said first thickness is statistically different than said second thickness.
37. The protective sports helmet of claim 13, wherein said comparison of the first thickness associated with the first pre-manufactured pad member, the second thickness associated with the second pre-manufactured pad member, and the head data obtained from the specific player occurs in a digital environment.
38. The protective sports helmet of claim 13, wherein said head data obtained from the specific player is used to generate a digital head model, and wherein a compression surface derived from the digital head model is inset a predetermined distance from an outer surface of the digital head model.
39. The protective sports helmet of claim 38, wherein the first pre-manufactured pad member has an inner surface positioned a first distance away from the compression surface and the second pre-manufactured pad member has an inner surface positioned a second distance away from the compression surface, wherein said second distance is greater than said first distance; and wherein a thickness of the at least one pad member is equal to said first thickness associated with the first pre-manufactured pad member.
40. The protective sports helmet of claim 13, wherein the energy attenuation assembly includes an inner surface that does not precisely match the topography of a surface derived from the head data.
Claims 1-20 of pending application ‘427 discloses exactly the same invention as US
Patent ‘589 having 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
configured to be removably positioned within a shell, said energy attenuation assembly
including at least one pad member having:(i) an inner surface,(ii) an outer surface, and(iii) a set
of pad properties; and wherein said set of pad properties of the at least one pad member is
selected based upon a comparison between (a) a first set of reference properties that include a
first thickness and are associated with a first pre-manufactured pad member, (b) a second set
of reference properties that include a second thickness that is different than the first thickness
and are associated with a second pre-manufactured pad member, and (c) data obtained from
the specific player; and wherein the first and second sets of reference properties are
determined from data gathered from a group of players that includes additional players beyond
the specific player.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same
invention verbatim that of claims 1-20 from each of co-pending Applications No. 19/026,147,
19/026,156, 19/026,173, 19/026,180, 19/027,367 and 19/026,192, respectively.
This is a provisional statutory double patenting rejection since the claims directed to the
same invention have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure. Each of the prior art references cited on PTO-892 disclose a helmet having impact
absorbing pads selectively attached to an inner surface thereof.
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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February 4, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732