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 argument filed on June 22, 2026 have been considered. In view of such, newly added claims 21-45 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 33-45 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 33, on line 10, “the same type of impact applied to a front portion..” is indefinite since it is unclear if the degree of impact force applied to each of the specific football helmet and the non-position specific football helmet provided varying first and second absorbing amount of force with no unexpected results. Correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 21-32 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13 of prior U.S. Patent No.12,268,270. This is a statutory double patenting rejection.
Instant Application ‘427
21. (New) A position specific American football helmet comprising :a shell; a facemask coupled to the shell; an energy attenuation assembly configured to be positioned within the shell and having a pre-manufactured energy attenuation member; and wherein the energy attenuation assembly is designed based upon helmet impact information associated with a first group of players that primarily play a specific playing position.
22. (New) The position specific American football helmet of claim 21, wherein the specific playing position is an offensive line position; and wherein said position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a frontal portion of said position specific American football helmet as compared to the amount of force absorbed by a rear portion of said position specific American football helmet from the same impact applied to said rear portion.
23. (New) The position specific American football helmet of claim 21, wherein the specific playing position is an offensive line position; wherein said position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a frontal portion of said position specific American football helmet as compared to a non-position specific American football helmet; and, wherein the outer configuration of the shell of said position specific American football helmet is substantially similar to the outer configuration of the shell of said non- position specific American football helmet.
24. (New) The position specific American football helmet of claim 21, wherein the specific playing position is an offensive line position; a first local deformation of a frontal portion of said position specific American football helmet is configured to be greater than a second local deformation of a frontal portion of a non-position specific American football helmet; and, wherein the outer configuration of the shell of said position specific American football helmet is substantially similar to the outer configuration of the shell of said non- position specific American football helmet.
25. (New) The position specific American football helmet of claim 21, wherein the specific playing position is a quarterback position; and, wherein the position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a rear portion of said position specific American football helmet as compared to the amount of force absorbed by a frontal portion of said position specific American football helmet from the same impact applied to said frontal portion.
26. (New) The position specific American football helmet of claim 21, wherein the specific playing position is a quarterback position; wherein said position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a rear portion of the position specific American football helmet as compared to the same impact applied to a rear portion of a non-position specific American football helmet; and, wherein the outer configuration of the shell of said position specific American football helmet is substantially similar to the outer configuration of the shell of said non- position specific American football helmet.
27. (New) The position specific American football helmet of claim 21, wherein the helmet impact information associated with the first group of players is statistically different than helmet impact information associated with a second group of players that primarily play a specific playing position that differs from the specific playing position of the first group of players.
28. (New) The position specific 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 a player, wherein the head data was obtained using an electronic device.
29. (New) The position specific American football helmet of claim 21, wherein an extent of the energy attenuation assembly is formed by an additive manufacturing process.
30. (New) The position specific American football helmet of claim 21, further comprising a monitoring unit positioned within the position specific American football helmet to collect helmet impact data while a player is wearing said football helmet while engaged in playing football.
31. (New) The position specific American football helmet of claim 30, wherein said football helmet is a component of a helmet monitoring system, the helmet monitoring system further comprising a graphical user interface configured to selectively display a training opportunity indicator when the collected helmet impact data exceeds a predetermined threshold of a previously recorded collection of helmet impact data.
32. (New) The position specific American football helmet of claim 21, wherein the position specific American football helmet meets or exceeds a helmet evaluation standard associated with the quarterback position in American football; and, wherein the helmet evaluation standard is developed based on analyzing helmet impact information associated with players that primarily play the quarterback position.
US Patent ‘270
1. A position specific American football helmet comprising: a shell; a facemask coupled to the shell; an energy attenuation assembly configured to be positioned within the shell and having a pre-manufactured energy attenuation member; and wherein the position specific American football helmet is designed based upon helmet impact information associated with a first group of players that primarily play a specific playing position.
2. The position specific American football helmet of claim 1, wherein the specific playing position is an offensive line position; and wherein said position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a frontal portion of said position specific American football helmet as compared to the amount of force absorbed by a rear portion of said position specific American football helmet from the same impact applied to said rear portion.
3. The position specific American football helmet of claim 1, wherein the specific playing position is an offensive line position; and wherein said position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a frontal portion of said position specific American football helmet as compared to a non-position specific American football helmet.
4. The position specific American football helmet of claim 1, wherein the specific playing position is an offensive line position; and a first local deformation of a frontal portion of said position specific American football helmet is configured to be greater than a second local deformation of a frontal portion of a non-position specific American football helmet.
5. The position specific American football helmet of claim 1, wherein the specific playing position is a quarterback position; and wherein the position specific American football helmet is configured to absorb a larger amount of force from an impact applied to a rear portion of said position specific American football helmet as compared to the amount of force absorbed by a frontal portion of said position specific American football helmet from the same impact applied to said frontal portion.
6. The position specific American football helmet of claim 1, wherein the specific playing position is a quarterback position; and wherein said position specific American football helmet is configured to absorb a larger amount of force from an impact applied in a rear portion of the position specific American football as compared to a non-position specific American football.
7. The position specific American football helmet of claim 1, wherein the helmet impact information associated with the first group of players is statistically different than helmet impact information associated with a second group of players.
8. The position specific American football helmet of claim 1, 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 a player, wherein the head data was obtained using an electronic device.
9. The position specific American football helmet of claim 1, wherein an extent of the energy attenuation assembly is formed by an additive manufacturing process.
10. The position specific American football helmet of claim 1, further comprising a monitoring unit positioned within the position specific American football helmet to collect physiological parameter data while a player is wearing said helmet while engaged in playing football.
11. The position specific American football helmet of claim 10, wherein said football helmet is a component of a helmet monitoring system, the helmet monitoring system further comprising a graphical user interface configured to selectively display a training opportunity indicator when the collected physiological parameter data exceeds a predetermined threshold of a previously recorded collection of physiological parameter data.
12. The position specific American football helmet of claim 1, wherein the position specific American football helmet meets or exceeds a helmet standard associated with the quarterback position in football.
13. The position specific American football helmet of claim 12, wherein the helmet standard is developed based on analyzing helmet impact information associated with players that primarily play the quarterback position
Claims 21-32 of pending application ‘427 discloses substantially the same invention as US Patent ‘270 having a position specific American football helmet comprising :a shell; a facemask coupled to the shell; an energy attenuation assembly configured to be positioned within the shell and having a pre-manufactured energy attenuation member; and wherein the energy attenuation assembly is designed based upon helmet impact information associated with a first group of players that primarily play a specific playing 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 33-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 24-35 of U.S. Patent No. 12,268,270. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows:
Instant Application ‘427
33. (New) A position specific American football helmet to be worn by a player that primarily plays a specific playing position, the position specific American football helmet comprising:a shell;an energy attenuation assembly configured to be positioned within the shell and having at least one energy attenuation member; wherein the player wearing the position specific American football helmet primarily plays a lineman position, and said helmet is configured to absorb a first amount of force from an impact applied to a front portion of said shell that is different than a second amount of force absorbed from the same type of impact applied to a front portion of a shell of a non-position specific American football helmet.
34. (New) The position specific American football helmet of claim 33, wherein the position specific American football helmet is configured such that the first amount of absorbed force is larger than the second amount of absorbed force.
35. (New) The position specific American football helmet of claim 33, wherein the at least one energy attenuation member is both pre-manufactured and 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, wherein the head data was obtained using an electronic device.
36. (New) The position specific American football helmet of claim 35, wherein the electronic device is a structured-light scanner.
37. (New) The position specific American football helmet of claim 33, further comprising a monitoring unit positioned within the position specific American football helmet to collect helmet impact data while a player is wearing said football helmet while engaged in playing football.
38. (New) The position specific American football helmet of claim 37, wherein said football helmet is a component of a helmet monitoring system, the helmet monitoring system further comprising a graphical user interface configured to selectively display a training opportunity indicator when the collected helmet impact data exceeds a predetermined threshold derived from a previously recorded collection of helmet impact data.
39. (New) The position specific American football helmet of claim 33, wherein the amount of force absorbed by a rear portion of the shell of the position specific American football helmet is based upon helmet impact information associated with a group of players that primarily play said lineman position.
40. (New) The position specific American football helmet of claim 33, 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 being worn.
41. (New) The position specific American football helmet of claim 33, wherein the position specific American football helmet meets or exceeds a helmet evaluation standard that is developed based on analyzing helmet impact information associated with players that primarily play said lineman position.
42. (New) The position specific American football helmet of claim 33, wherein the shell is designed based upon helmet impact information associated with a first group of players that primarily play the lineman position.
43. (New) The position specific American football helmet of claim 33, wherein the energy attenuation assembly is designed based upon helmet impact information associated with a first group of players that primarily play the lineman position.
44. (New) The position specific American football helmet of claim 33, wherein the at least one energy attenuation member of the energy attenuation assembly is designed based upon helmet impact information associated with a first group of players that primarily play the lineman position.
45. (New) The position specific American football helmet of claim 33, wherein an extent of the energy attenuation assembly is formed by an additive manufacturing process.
US Patent ‘270
24. A position specific American football helmet to be worn by a player that primarily plays a specific playing position, the position specific American football helmet comprising: a shell; a facemask coupled to the shell; an energy attenuation assembly configured to be positioned within the shell; wherein the player wearing the position specific American football helmet primarily plays a lineman position, and said helmet is configured to absorb a larger amount of force from an impact applied to a front portion of said helmet as compared to the amount of force absorbed from the same type of impact applied to a front portion of a non-position specific American football helmet; and wherein both the position specific American football helmet and the non-position specific American football helmet have the same facemask.
25. The position specific American football helmet of claim 24, wherein the position specific American football helmet is configured to absorb a larger amount of force from an impact applied to the front portion of the position specific American football as compared to a non-position specific American football.
26. The position specific American football helmet of claim 24, wherein the energy attenuation assembly includes a pre-manufactured member that 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, wherein the head data was obtained using an electronic device.
27. The position specific American football helmet of claim 26, wherein the electronic device is a structured-light scanner.
28. The position specific American football helmet of claim 24, further comprising a monitoring unit positioned within the position specific American football helmet to collect physiological parameter data while a player is wearing said helmet while engaged in playing football.
29. The position specific American football helmet of claim 28, wherein said football helmet is a component of a helmet monitoring system, the helmet monitoring system further comprising a graphical user interface configured to selectively display a training opportunity indicator when the collect physiological parameter data exceeds a predetermined threshold of a previously recorded collection of physiological parameter data.
30. The position specific American football helmet of claim 24, wherein the amount of force absorbed by the rear portion of the position specific American football helmet is based upon helmet impact information associated with a group of players that primarily play said lineman position.
31. The position specific American football helmet of claim 30, wherein the group of players are college or professional players.
32. The position specific American football helmet of claim 24, wherein the position specific American football helmet is designed based upon helmet impact information associated with players that primarily play said lineman position.
33. The position specific American football helmet of claim 24, 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 being worn.
34. The position specific American football helmet of claim 24, wherein the position specific American football helmet meets or exceeds the helmet standard associated with the lineman position.
35. The position specific American football helmet of claim 34, wherein the helmet standard is developed based on analyzing helmet impact information associated with players that primarily play said lineman position.
Claims 33-45 of pending application ‘427 discloses a position specific American football helmet to be worn by a player that primarily plays a specific playing position, the position specific American football helmet comprising :a shell and an energy attenuation assembly configured to be positioned within the shell and having at least one energy attenuation member; wherein the player wearing the position specific American football helmet primarily plays a lineman position, and said helmet is configured to absorb a first amount of force from an impact applied to a front portion of said shell that is different than a second amount of force absorbed from the same type of impact applied to a front portion of a shell of a non-position specific American football helmet that is substantially similar to absorb impact applied to front portion of
the helmet from the same type of impact applied to a non-position specific helmet worn while playing a lineman position as US Patent ‘270 that discloses a position specific American football helmet to be worn by a player that primarily plays a specific playing position, the position specific American football helmet comprising: a shell; a facemask coupled to the shell; an energy attenuation assembly configured to be positioned within the shell; wherein the player wearing the position specific American football helmet primarily plays a lineman position, and said helmet is configured to absorb a larger amount of force from an impact applied to a front portion of said helmet as compared to the amount of force absorbed from the same type of impact applied to a front portion of a non-position specific American football helmet; and wherein both the position specific American football helmet and the non-position specific American football helmet have the same facemask wherein the position specific American football helmet is configured to absorb a larger amount of force from an impact applied to the front portion of the position specific American football as compared to a non-position specific American football.
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.
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September 15, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732
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