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 .
A power of attorney is of record for this application, the power of attorney filed 4/30/2025.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 16/691,436 (US 11,167,198) and 17/521,091 (US 12,303,766), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application. Claim 12 recites the first lattice cell type is a strut-based lattice cell that provides the lattice cell with either a hexahedron configuration or a tetrahedral configuration. Claim 13 recites the second lattice cell type is a strut-based lattice cell that provides the lattice cell with either a hexahedron configuration or a tetrahedral configuration. Claim 14 recites wherein the energy attenuation assembly includes a second energy attenuation member, wherein: i) when removed from within the shell of the helmet, the first energy attenuation member has an original thickness in an uncompressed state, and wherein compressing the first energy attenuation member to 25% of its original thickness requires a first force; (ii) when removed from within the shell of the helmet, the second energy attenuation member has an original thickness in the uncompressed state, and wherein compressing the second energy attenuation member to 25% of its original thickness requires a second force that is less than the first force.
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, 2, 4-9, 11, 14, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 6, 8, 10, and 11 of U.S. Patent No. 11,167,198. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1, 2, 4-9, 11, and 14-16 are set forth in claims 1-3, 5, 6, 8, 10, and 11 as follows:
Claim 1 of ‘198 includes each limitation of claim 1 of the present application.
Claim 2 of ‘198 includes each limitation of claim 2 of the present application.
Claim 3 of ‘198 includes each limitation of claims 4 and 5 of the present application.
Claim 5 of ‘198 includes each limitation of claim 6 of the present application except for “the interior open skin is positioned against the fitting region”. However, claim 5 of ‘198 recites the interior open skin is integrally formed with both the fitting region and the energy management region and is therefore considered as positioned against the fitting region. (Note that claim 6 of the present application lacks antecedent basis for “the first energy attenuation region” and is interpreted as “the energy management region”).
Claim 6 of ‘198 includes each limitation of claim 7 of the present application.
Claim 8 of ‘198 includes each limitation of claims 8 and 9 of the present application.
Claim 8 of ‘198 includes each limitation of claim 11 of the present application.
Claim 10 of ‘198 includes each limitation of claim 14 of the present application.
Claim 11 of ‘198 include each limitation of claims 15 and 16 of the present application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,167,198 in view of Harple et al. (U.S. 10,285,267). The ‘198 patent doesn’t recite the fitting region of the first energy attenuation member includes a foam material. Harple teaches a helmet 400 including an inner layer of additively manufactured material 100 for impact absorption and including a foam material as in col.5, lines 15-25, the foam also disclosed as an impact-absorbing material. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify claim 1 of ‘198 such that the fitting region of the first energy attenuation member includes a foam material as Harple teaches this structure is known in the art and provides further impact absorption and attenuation.
Claims 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,167,198 in view of McCluskey (U.S. 10,384,394). The ‘198 patent doesn’t teach an energy-absorbing elastomeric material used in the additive manufacturing process to form the energy management region. The ‘198 patent doesn’t teach a polyurethane material used in the additive manufacturing process to form the energy management region. McCluskey teaches a helmet with an energy absorbing layer formed by lattice cells forming an energy management region, and the energy absorbing elastomeric material is polyurethane. McCluskey teaches the layer is compressible and configured to disperse impact. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify claim 1 of ‘198 to disclose an energy-absorbing elastomeric material that is polyurethane used in the additive manufacturing process to form the energy management region as McCluskey teaches the elastomeric polyurethane material is suitable as a helmet pad and is capable of dispersing impact forces.
Claim Objections
Claims 1, 14, 19, and 20 are objected to because of the following informalities:
Claim 1: delete one occurrence of “the” in (B) reciting “and wherein the the..”,
Claim 14: “an uncompressed state , and” should be revised to remove excess spaces,
Claims 19 and 20: delete “processed” and insert “process”.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: Please update paragraph 1 to reflect 17/521,091 is now US 12,303,766 and 16/691,436 is now US 11,167,198.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The limitations of claims 12, 13, and 14 are missing from the specification.
Appropriate correction is required.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length. The abstract includes more than 150 words.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 12-14 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 12 and 13 recite the first/second lattice cell type is a strut-based lattice cell that provides the lattice cell with either a hexahedron configuration or a tetrahedral configuration. The specification doesn’t disclose these limitations and therefore the details as to how the strut-based lattice cell “provides the lattice cell with either a hexahedron configuration or a tetrahedral configuration” are missing such that it appears that the inventor did not have possession of the claimed invention as the time of filing. Claim 14 recites wherein the energy attenuation assembly includes a second energy attenuation member, wherein: i) when removed from within the shell of the helmet, the first energy attenuation member has an original thickness in an uncompressed state, and wherein compressing the first energy attenuation member to 25% of its original thickness requires a first force; (ii) when removed from within the shell of the helmet, the second energy attenuation member has an original thickness in the uncompressed state, and wherein compressing the second energy attenuation member to 25% of its original thickness requires a second force that is less than the first force. The originally filed specification doesn’t disclose the first energy attenuation member as having an original thickness in an uncompressed state when removed from within the shell of the helmet and the second energy attenuation member as having an original thickness in the uncompressed state when removed from within the shell of the helmet and it appears the inventor did not have possession fo the claimed invention at the time of filing.
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.
Claims 6, 7, and 12-14 are rejected under 35 U.S.C. 112(b) 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. For claim 6, there is no antecedent basis for “the first energy attenuation region” such that the scope of the claim is indefinite. Claim 7 is also rejected as it is dependent from claim 6. It appears claim 6 should recite “the energy management region”.
Claims 12 and 13 recite the first/second lattice cell type is a strut-based lattice cell that provides the lattice cell with either a hexahedron configuration or a tetrahedral configuration. It’s not clear what structure is set forth by “the first lattice cell type is a strut-based lattice cell that provides the lattice cell with either a hexahedron configuration or tetrahedral configuration”. How does the strut-based lattice cell provide the lattice cell with the hexahedron or tetrahedral configurations? Is the strut-based lattice cell of a hexahedron or tetrahedral shape?
For claim 14, it’s not clear whether the first and second energy attenuation members of the football helmet possess the claimed limitations regarding the original thicknesses and first and second forces required to compress each member to 25% of their original thicknesses ONLY when removed from within the shell of the helmet OR if these limitations are intended as further limiting the football helmet structure, as the limitations are currently recited functionally- “when removed from within the shell of the helmet”.
Allowable Subject Matter
There is no prior art applied to claims 1-20 at this time, as the combination of features set forth in independent claim 1 are not taught or considered obvious over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications should be directed to Primary Examiner Katherine Moran at (571) 272-4990 (phone). Please note that any internet communication directed to katherine.moran@uspto.gov requires prior submission of an Authorization for Internet Communications form (PTO/SB/439). The examiner can be reached on Monday-Thursday from 9:00 am to 6:00 pm, and alternating Fridays.If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Khoa Huynh, may be reached at (571) 272-4888. The official and after final fax number for the organization where this application is assigned is (571) 273-8300. General information regarding this application and
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/KATHERINE M MORAN/ Primary Examiner, Art Unit 3732