DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1 and 13, drawn to “An inflatable protective shield” and “An inflatable protective shield system”, classified in A45B23.
II. Claim 7, drawn to “A method of using an inflatable protective shield”, classified in E04H15.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the protective shield and protective shield system while have their rotational mechanism that enable the shield to rotate around a locking cap, the locking cap is not positively recited or required by the apparatus claims, hence the apparatus can operate sans the method step of “rotating” along with its limitations as recited in claim 7 lines 5-8.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The invention requires a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). In this case, see the different class/subclass picture provided above as examples of a burdensome search created without restriction.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with attorney James Haugen on 09/24/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-6 and 13-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to because:
There is no numeral in the specification to identify the “core unit”.
No illustration is provided for the limitation of claim 3: “the inflatable protective shield is multifunctional and configured to: ... work with or without a core unit”.
There is no numeral in the specification to refer to “an anchor”. Note that while the specification mentions an anchoring system and an anchoring mechanism, none of them have a reference numeral.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the adjustable canopy system is further configured to expand diameter of the inflatable protective shield by introducing additional inflatable sections around edges of the inflatable protective shield” (specifically no additional inflatable sections illustrated in addition to the manner of introducing them to the edges) claim 2 and “secure attachment point” claim 19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claim 1 lines 2-3 recites “configured to selectively inflate, deflate, or leave specific air chambers uninflated to create”; note that language to specify that the terms “selectively inflate, deflate” refers to the air chambers, where other interpretations can be assigned such that inflate, deflate an arbitrary elements or “leave specific air chambers uninflated”. Examiner advise to review the entirety of lines 2-4 for better language. Note that aside from an adjustable canopy system, the rest of lines 2-4 are intended use language.
Claim 1 line 7 recites “smooth inner surface”, line 8 recites “smooth and efficient movement”; applicant is reminded that the terms “smooth” and “efficient” are relative terms. In other words, there is no standard in the industry nor a special definition in the specification that would define what constitutes “smooth” or what would make a movement “efficient”.
Claim 1 recites the limitation "the locking cap’s smooth inner surface" in line 7. There is insufficient antecedent basis for this limitation in the claim. Also possessive terms such as “cap’s” are not proper in claims, the proper language would be “a smooth inner surface of the locking cap”.
Claim 5 recites “to defend against potential threats and ensure safety of a user”; it appears that this recitation is too broad to include threats and means of ensuring safety that are neither disclosed nor possible for the device disclosed.
Above are non-limiting examples, examiner recommends revision of the claim set as a whole for similar issues.
Appropriate correction is required.
The issues detailed above for claims 1-6, similarly applies to claims 13-20.
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 1-6 and 13-20 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.
Claims 1 and 13 recite “an adjustable canopy system configured to selectively inflate, deflate, or leave specific air chambers uninflated to create customizable open areas”. The creation of customizable open areas does not appear to be related to the inflation, deflation, or un-inflation of the air chambers. The customizable open areas from the disclosure appear to be created by removing portions of the canopy as in figure 3 with removable section 260. As such it is unclear what the scope of the claimed limitation is. Limitation will be interpreted as best understood.
Dependent claims are rejected as depending form a rejected claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrman, US (3478759) in view of Busco, US (4000749) as motivated by Huber, US (2049380)
In regards to claim 1 Ehrman discloses:
A protective shield (assembly as shown in figs. 1, 4), comprising:
an adjustable canopy system (sections 15a-15d system shown in fig. 1); and
a rotational mechanism (mechanism shown in fig. 4 including 20s) that enables the protective shield (sections 15a-15d) to rotate around a locking cap (intended use, can be likened to common holder 14) by sliding along the locking cap's smooth inner surface (further limiting intended use; and where surfaces of plates 19 facing plates 20 are inner surfaces) or securely attaching to the locking cap (via securing plates 19 and 20), wherein the rotational mechanism ensures smooth and efficient movement of the protective shield (either when rotating holder 14, collar 27 or when loosening screw 21).
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In regards to claim 1 Ehrman does not disclose the shield being inflatable and being configured to selectively inflate, deflate, or leave specific air chambers uninflated.
Busco teaches an inflatable protective shield (10, 14), configured to selectively inflate, deflate, or leave specific air chambers uninflated (as described in Col 3 LL 21-22; “each of the panels 16 is equipped with a valve 12 for inflation”; and as shown in fig. 1 where each panel 16 has its individual valve 12) to create (intended use) customizable open areas (such as when door panel 28 is opened as shown in fig. 1 or as described below), form needed voids or non- rigid zones (un-inflated or lightly inflated panels), and adjust size and radial coverage area of the inflatable protective shield (where the size would inherently increase when fully inflated versus un-inflated configurations).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the blades or plates 15a-15d of Ehrman with the individually inflatable panels as taught by Busco because (a) a shield that when deflated occupies a small space for easier storage and transportation as taught by Huber teaching an inflatable umbrella for compact storage in column 1 lines 1-5, and (b) provide for a larger protected area when in inflated configuration.
In regards to claim 2 Ehrman as modified by Busco teaches the adjustable canopy system is further configured to expand (intended use) diameter of the inflatable protective shield by introducing additional inflatable sections around edges of the inflatable protective shield (in the manner panel 28 is additional to panels 16 and expends the diameter of shield; Busco), offering multiple size options for broader coverage.
In regards to claim 3 Ehrman as modified by Busco teaches the inflatable protective shield is multifunctional and configured to: protect gear by keeping items dry (intended use; items under plates 15a-15d in fig. 1 configuration; Ehrman); work with or without a core unit (intended use; support unit 11; Ehrman); provide buoyancy support in emergency flotation scenarios when inflated (when inflated in the manner taught by Busco); create a physical barrier to establish personal space in crowded areas (intended use; area under panels; Ehrman); and expand to create a temporary shelter (intended use; shelter under panels), providing emergency protection (intended use; in case of unexpected rain (i.e., emergency)).
In regards to claim 4 Ehrman as modified by Busco teaches the inflatable protective shield is configured to function jointly with the core unit or independently as a handheld device (with support unit 11; Ehrman).
In regards to claim 5 Ehrman as modified by Busco teaches a personal protection device (rod 11; Ehrman) configured to defend against potential threats and ensure safety of a user (as a rod can be used to deter an attaching person).
Claims 13-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ehrman, US (3478759) in view of Busco, US (4000749).
In regards to claim 13 Ehrman discloses:
An inflatable protective shield system (assembly as shown in figs. 1, 4), comprising:
an adjustable canopy system (sections 15a-15d system shown in fig. 1); and
a rotational mechanism (mechanism shown in fig. 4 including 20s) that enables the protective shield (sections 15a-15d) to rotate around a locking cap (intended use, can be likened to common holder 14) by sliding along the locking cap's smooth inner surface (further limiting intended use; and where surfaces of plates 19 facing plates 20 are inner surfaces) or securely attaching to the locking cap (via securing plates 19 and 20), wherein the rotational mechanism ensures smooth and efficient movement of the protective shield (either when rotating holder 14, collar 27 or when loosening screw 21)
a multifunctional shield (sections 15a-15d) configured to protect gear (intended use; gear placed under sections 15a-15d), work with or without a core unit (intended use; at least disclosed with support unit 11), assist individuals in water (intended use; protect from rain), create a physical barrier (intended use; from sun or rain), and expand to create a temporary shelter (intended use; shelter underneath when expended to the configuration shown in fig. 1).
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In regards to claim 13 Ehrman does not disclose the shield being inflatable and being configured to selectively inflate, deflate, or leave specific air chambers uninflated.
Busco teaches an inflatable protective shield (10, 14), configured to selectively inflate, deflate, or leave specific air chambers uninflated (as described in Col 3 LL 21-22; “each of the panels 16 is equipped with a valve 12 for inflation”; and as shown in fig. 1 where each panel 16 has its individual valve 12) to create (intended use) customizable open areas (such as when door panel 28 is opened as shown in fig. 1 or as described below), form needed voids or non- rigid zones (un-inflated or lightly inflated panels), and adjust size and radial coverage area of the inflatable protective shield (where the size would inherently increase when fully inflated versus un-inflated configurations).
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Therefore, before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the blades or plates 15a-15d of Ehrman with the individually inflatable panels as taught by Busco because (a) a shield that when deflated occupies a small space for easier storage and transportation as taught by Huber teaching an inflatable umbrella for compact storage in column 1 lines 1-5, and (b) provide for a larger protected area when in inflated configuration.
In regards to claim 14 Ehrman as modified by Busco teaches the adjustable canopy system is further configured to expand (intended use) diameter of the inflatable protective shield by introducing additional inflatable sections around edges of the inflatable protective shield (in the manner panel 28 is additional to panels 16 and expends the diameter of shield; Busco), offering multiple size options for broader coverage.
In regards to claim 15 Ehrman as modified by Busco teaches the inflatable protective shield is configured to: keep items dry (intended use; items under plates 15a-15d in fig. 1 configuration; Ehrman); function jointly or independently (intended use; support unit 11; Ehrman); act as flotation device when inflated (when inflated in the manner taught by Busco); establish personal space in crowded areas (intended use; area under panels; Ehrman); and, providing emergency protection (intended use; in case of unexpected rain (i.e., emergency)).
In regards to claim 16 Ehrman as modified by Busco teaches the inflatable shield is configured to work with the core unit or be used as a handheld device (with support unit 11; Ehrman).
In regards to claim 17 Ehrman as modified by Busco teaches a personal protection device (rod 11; Ehrman) configured to defend against potential threats and ensure safety of a user (as a rod can be used to deter an attaching person).
In regards to claim 19 Ehrman as modified by Busco teaches the locking cap (further limiting previously recited only as intended use limitation; common holder 14) is configured to facilitate the rotation of the inflatable protective shield (via rotating 14 or when screw 21 is loosened) by providing a smooth inner surface for the rotational mechanism to slide along or a secure attachment point for the rotational mechanism (alternatively secure attachment point between 19 and 20 via screw 21).
In regards to claim 20 Ehrman as modified by Busco teaches the core unit (11) is configured to act as an anchor (intended use; when inserted into the ground) for the inflatable shield when the inflatable shield is working jointly with the core unit (intended use).
Allowable Subject Matter
Claim s 6 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to PTO-892 form for list of cited references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIREF M MEKHAEIL whose telephone number is (571)270-5334. The examiner can normally be reached 10-7 Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.M/Examiner, Art Unit 3634
/CATHERINE A KELLY/Primary Examiner, Art Unit 3619
