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 .
Status of Claims
Claims 1-20 filed on 5/6/2025 are currently pending in the application and are presented for examination on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/15/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
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 “plurality of reinforcement tabs” (claim 11) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Figures 2 and 3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. These figures appear to be found in Rome (US 8176599) (see figures 7 and 9) which applicant has admitted as prior art in the Information Disclosure Statement filed on 5/28/2021. See MPEP § 608.02(g).
The drawings are objected to because of the following informalities:
In Figure 4, step 425 refers to “mounting tabs”, but the specification does not include any mention of a part or structure by that name.
Figure 1B has two instances of 150 “head mount” but only one of them appears to be actually pointing to the head mount structure.
Figure 1B appears to show two separate entities that are not connected. It is unclear how parts 150, 155, and 180 are meant to be connected, if at all, to the other structure in the figure. Examiner suggests adding lead lines or arrows to indicate how the applicant intends for the two structures to be connected.
Figure 3 appears to show two separate entities that are not connected. It is unclear if the two lines as shown (see circled parts on annotated figure 3 below) are meant to be connected or if they are indicating two separate entities. Examiner suggests adding a connecting line to one or both sides to clearly define the strap 205, as the applicant has done in figure 2 (see circled parts on annotated figure 2 below).
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Annotated Figure 3 (instant application)
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Annotated Figure 2 (instant application)
Figure 7A includes two instances of 704 “clip arm” but they appear to be pointing to different things (the 704 on the left side appears to be pointing to the side of the part of the clip that is in the back, while the 704 on the right side appears to be pointing to the side of the part of the clip that is in the front).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 500 (located in figure 5).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the phrase “are disclosed” which is a phrase which can be implied and “comprising” which is legal phraseology often used in patent claims. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 11 objected to because of the following informalities: “comprises;” should be “comprises:”.
Claim 19 objected to because of the following informalities: “at least on shield clip” should be “at least one shield clip”.
Appropriate correction is required.
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 4, 7, 8, 10, 11, 14, 16, 17, 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.
Regarding claim 4, the claim recites the limitation “the two shield clips are adjacent to one another”. This limitation is unclear because it is unclear when the two shield clips need to be adjacent to each other. Claim 1 requires “at least one shield clip configured to connect to the face shield sheet”, which does not positively require that the at least one shield clip is on the face shield sheet. Claim 4 does not specify if the shield clips are attached to the face shield sheet or not, so it is unclear if the shield clips need to be adjacent when attached to the face shield sheet or if the shield clips being adjacent for instance in a bag or on a table would be sufficient to meet the limitation.
Regarding claim 7, the claim recites “wherein the head mount further comprises: a cuboid cushion”. This limitation is confusing because as written it appears to require that there is a cuboid cushion in addition to the head mount. However, the disclosure describes the head mount as being (comprising) a cuboid cushion (see paragraph 77). For the purposes of examination, the limitation has been interpreted as “wherein the head mount comprises”.
Regarding claim 8, the claim recites “wherein the cinch strap further comprises: a planar, flat strap”. This limitation is confusing because as written it appears to require 2 straps: the cinch strap, and an additional planar, flat strap. However, the disclosure describes the cinch strap as being (comprising) a planar, flat strap (see paragraph 58). For the purposes of examination, the limitation has been interpreted as “wherein the cinch strap comprises”.
Regarding claim 10, the claim recites the limitation “wherein the cinch strap further comprises: smooth distal ends”. It is unclear what part of the strap applicant intends as the “distal ends”, as the term could refer to a portion of the strap that is toward either end, or the edge of the strap. Therefore, it is unclear whether applicant intends to claim that the strap is smooth along the in-plane surface of the strap near either end or along the edges of the strap that do not have teeth. See annotated figure 2 below. For the purposes of examination, this limitation has been interpreted as smooth along the in-plane surface of the strap on either end, as this is consistent with the limitation that the strap is planar and flat (claim 8).
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Annotated figure 2 (instant application)
Regarding claim 11, the claim recites the limitation “wherein the at least one reinforcement tab comprises: a plurality of reinforcement tabs configured to be disposed one on top of the other on the face shield sheet”. Claim 1 already defined the at least one reinforcement tab as being affixed to the face shield sheet, so the language in the instant claim that the plurality of reinforcement tabs are “configured to be” on the face shield sheet introduces confusion about whether the reinforcement tabs need to be affixed to the face shield sheet or not.
Regarding claim 14, the claim recites the limitation “a keeper connected to each end of the clip dowel”. This limitation is unclear because it is not clear whether a single “keeper” must be connected to both ends of the clip dowel, or if there are two “keepers”, each of which is connected to one end of the clip dowel. The instant disclosure appears to show two keepers, each of which is connected to one end of the clip dowel (see figure 7A-7C, all showing two keepers, one on each side). Therefore, for the purpose of examination, the claim has been interpreted as requiring two “keepers”, each of which is connected to one end of the clip dowel.
Regarding claim 16, the claim recites “wherein the head mount further comprises: a cuboid cushion”. This limitation is confusing because as written it appears to require that there is a cuboid cushion in addition to the head mount. However, the disclosure describes the head mount as being (comprising) a cuboid cushion (see paragraph 77). For the purposes of examination, the limitation has been interpreted as “wherein the head mount comprises”.
Regarding claim 17, the claim recites “wherein the cinch strap further comprises: a planar, flat strap”. This limitation is confusing because as written it appears to require 2 straps: the cinch strap, and an additional planar, flat strap. However, the disclosure describes the cinch strap as being (comprising) a planar, flat strap (see paragraph 58). For the purposes of examination, the limitation has been interpreted as “wherein the cinch strap comprises”.
Regarding claim 20, the claim recites the limitation “a keeper connected to each end of the clip dowel”. This limitation is unclear because it is not clear whether a single “keeper” must be connected to both ends of the clip dowel, or if there are two “keepers”, each of which is connected to one end of the clip dowel. The instant disclosure appears to show two keepers, each of which is connected to one end of the clip dowel (see figure 7A-7C, all showing two keepers, one on each side). Therefore, for the purpose of examination, the claim has been interpreted as requiring two “keepers”, each of which is connected to one end of the clip dowel.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rome (US 2021/0368888) in view of Danko (US 2017/0245574).
MPEP 2152.01 describes the effective filing date of a continuation-in-part application as follows: “(B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.” In the instant case, all claims require limitations which are not supported by the specification and claims of the parent application, in particular the “at least one shield clip” limitation, therefore all claims are given the effective filing date equal to the actual filing date of the new application, which is 5/6/2025. Therefore, US 2021/0368888, which was published more than one year prior to the effective filing date of the claimed invention, is available as prior art.
Regarding claim 1, Rome discloses: A face shield comprising: a face shield sheet (105); at least one reinforcement tab (120) affixed to the face shield sheet (“a reinforcement tab 120 can be installed along a top portion 110 of the face shield sheet 105” paragraph 39); a head mount (150); and a cinch strap (160) inserted through at least one mounting hole (130) in the face shield sheet (“the cinch strap 160 geometry is such that it can be threaded into the mounting holes 130 on the face shield sheet 105” paragraph 47).
Rome does not explicitly disclose: at least one shield clip configured to connect to the face shield sheet; and the head mount configured to be attached to the at least one shield clip.
However, Danko teaches: a clip on attachment (100) including a rotatable flap (110) that can be attached to headwear to provide selective shade to a user’s eyes (see paragraph 3).
Danko teaches analogous art to the instant application in the field of clip attachments for head worn items. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the clip of Danko to the top edge of the shield of Rome in order to allow the user to selectively shade their eyes from the sun or harsh overhead lights while also allowing the shade to be moved out of the way when it is not needed (see Danko, paragraph 3). Examiner notes that, as modified, the head mount is configured to be attached to the at least one shield clip because it is a loose component and can be attached as desired, as the limitation is an intended use limitation, and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114(II). As Rome as modified has all of the claimed structural limitations, it reads on the claim as written.
Regarding claim 2, Rome as modified discloses: The face shield of claim 1 wherein the at least one mounting hole comprises: two mounting holes (Rome, 130; see figure 1A showing there are two mounting holes 130) formed on the face shield sheet.
Regarding claim 3, Rome as modified does not explicitly disclose: The face shield of claim 1 wherein the at least one shield clip comprises: two shield clips.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to provide a second shield clip of Danko to attach to the face shield sheet, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, an additional shield clip would allow for improved shading capabilities because more area in front of the user’s face could be covered by using two shield clips instead of just one.
Regarding claim 4, Rome as modified discloses: The face shield of claim 3 wherein the two shield clips are adjacent to one another (as modified, the two shield clips are adjacent to each other insofar as defined by the claim because they would both be on the face shield sheet).
Regarding claim 5, Rome as modified discloses: The face shield of claim 3 wherein the two shield clips are attached to the face shield sheet over the at least one reinforcement tab (as modified, the shield clips are attached over the reinforcement tab as the reinforcement tab is located along the top edge, and the shield clips attach on the top edge as well).
Regarding claim 6, Rome as modified discloses: The face shield of claim 1 further comprising: an adhesive (Rome, 125) disposed on the at least one reinforcement tab (Rome, “the reinforcement tab 120 can comprise an independent stiffened strip, such as a plastic strip, with adhesive 125 on one side” paragraph 39).
Regarding claim 7, Rome as modified discloses: The face shield of claim 1 wherein the head mount further comprises: a cuboid cushion (Rome, “the head mount 150 can comprise a cube or cuboid, formed of a generally soft or malleable material such as foam or rubber” paragraph 43); and an adhesive disposed on one side of the cuboid cushion (Rome, 155; “one surface of the head mount 150 can be coated with an adhesive 155” paragraph 43).
Regarding claim 8, Rome as modified discloses: The face shield of claim 1 wherein the cinch strap further comprises: a planar, flat strap (Rome, “the cinch strap 160 can comprise a planar, flat strap” paragraph 46).
Regarding claim 9, Rome as modified discloses: The face shield of claim 1 wherein the cinch strap further comprises: a plurality of teeth formed on a first edge of the cinch strap (Rome, “along most or the entire length of the two opposing edges 210 and 215 of the strap 205 are teeth 220 in a repeating and uniform pattern” paragraph 46); and a second plurality of teeth formed on a second edge of the cinch strap (Rome, “along most or the entire length of the two opposing edges 210 and 215 of the strap 205 are teeth 220 in a repeating and uniform pattern” paragraph 46).
Regarding claim 10, Rome as modified discloses: The face shield of claim 1 wherein the cinch strap further comprises: smooth distal ends (Rome, “the cinch strap is smooth and lacks teeth at the distal ends 170 of the strap” paragraph 46).
Regarding claim 11, Rome as modified discloses: The face shield of claim 1 wherein the at least one reinforcement tab comprises; a plurality of reinforcement tabs configured to be disposed one on top of the other on the face shield sheet (Rome, “multiple reinforcement tabs 120 can be overlaid or distributed on the face shield sheet 105” paragraph 39).
Regarding claim 12, Rome as modified discloses: The face shield of claim 1 wherein the at least one reinforcement tab is further configured to be concave (Rome, “the reinforcement tab 120 can be biased with a curvature so as to be concave” paragraph 41).
Regarding claim 13, Rome as modified discloses: The face shield of claim 1 wherein the at least one shield clip comprises: an outer rim comprising a U-shaped frame (see annotated figure 4 of Danko below) with two clip arms (Danko, 140, 142) attached to a clip base (see annotated figure 2 of Danko below); and a clip flap (Danko, 110).
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Regarding claim 14, Rome as modified discloses: The face shield of claim 13 further comprising: a clip dowel (Danko, 118) connected to the clip flap (see annotated figure 2 of Danko provided with the 35 USC 103 rejection of claim 13 above); and a keeper connected to each end of the clip dowel (see annotated figure 2 of Danko provided with the 35 USC 103 rejection of claim 13 above).
Regarding claim 15, Rome discloses: A face shield system comprising: a face shield sheet (105); at least one reinforcement tab (120) affixed to the face shield sheet (“a reinforcement tab 120 can be installed along a top portion 110 of the face shield sheet 105” paragraph 39); a head mount (150); two mounting holes (130) configured on the face shield sheet (“mounting holes 130 can be formed in the face shield sheet 105” paragraph 42; see figure 1A showing there are two mounting holes 130); and a cinch strap (160) inserted through at least one mounting hole in the face shield sheet (“the cinch strap 160 geometry is such that it can be threaded into the mounting holes 130 on the face shield sheet 105” paragraph 47).
Rome does not explicitly disclose: at least one shield clip configured to connect to the face shield sheet; and the head mount configured to be attached to the at least one shield clip.
However, Danko teaches: a clip on attachment (100) including a rotatable flap (110) that can be attached to headwear to provide selective shade to a user’s eyes (see paragraph 3).
Danko teaches analogous art to the instant application in the field of clip attachments for head worn items. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the clip of Danko to the top edge of the shield of Rome in order to allow the user to selectively shade their eyes from the sun or harsh overhead lights while also allowing the shade to be moved out of the way when it is not needed (see Danko, paragraph 3). Examiner notes that, as modified, the head mount is configured to be attached to the at least one shield clip because it is a loose component and can be attached as desired, as the limitation is an intended use limitation, and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114(II). As Rome as modified has all of the claimed structural limitations, it reads on the claim as written.
Regarding claim 16, Rome as modified discloses: The face shield system of claim 15 wherein the head mount further comprises: a cuboid cushion (Rome, “the head mount 150 can comprise a cube or cuboid, formed of a generally soft or malleable material such as foam or rubber” paragraph 43); and an adhesive disposed on one side of the cuboid cushion (Rome, 155; “one surface of the head mount 150 can be coated with an adhesive 155” paragraph 43); and a protective cover (Rome, 180) overlaying the adhesive disposed on one side of the cuboid cushion (Rome, “the adhesive 155 can be covered again, by a cover 180” paragraph 43).
Regarding claim 17, Rome as modified discloses: The face shield system of claim 15 wherein the cinch strap further comprises: a planar, flat strap (Rome, “the cinch strap 160 can comprise a planar, flat strap” paragraph 46); a plurality of teeth formed on a first edge of the cinch strap (Rome, “along most or the entire length of the two opposing edges 210 and 215 of the strap 205 are teeth 220 in a repeating and uniform pattern” paragraph 46); and a plurality of teeth formed on a second edge of the cinch strap (Rome, “along most or the entire length of the two opposing edges 210 and 215 of the strap 205 are teeth 220 in a repeating and uniform pattern” paragraph 46).
Regarding claim 18, Rome discloses: A face shield comprising: a face shield sheet (105); a head mount (150); and a cinch strap (160) inserted through at least one mounting hole (130) in the face shield sheet (“the cinch strap 160 geometry is such that it can be threaded into the mounting holes 130 on the face shield sheet 105” paragraph 47) and configured to be bound around a head (“the cinch strap 160 can be configured to fit around a user’s head” paragraph 45; see also paragraph 55).
Rome does not explicitly disclose: at least one shield clip configured to connect to the face shield sheet; and the head mount configured to be attached to the at least one shield clip.
However, Danko teaches: a clip on attachment (100) including a rotatable flap (110) that can be attached to headwear to provide selective shade to a user’s eyes (see paragraph 3).
Danko teaches analogous art to the instant application in the field of clip attachments for head worn items. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to add the clip of Danko to the top edge of the shield of Rome in order to allow the user to selectively shade their eyes from the sun or harsh overhead lights while also allowing the shade to be moved out of the way when it is not needed (see Danko, paragraph 3). Examiner notes that, as modified, the head mount is configured to be attached to the at least one shield clip because it is a loose component and can be attached as desired, as the limitation is an intended use limitation, and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). See MPEP 2114(II). As Rome as modified has all of the claimed structural limitations, it reads on the claim as written.
Regarding claim 19, Rome as modified discloses: The face shield of claim 18 wherein the at least on shield clip comprises: an outer rim comprising a U-shaped frame (see annotated figure 4 of Danko provided with the 35 USC 103 rejection of claim 13 above) with two clip arms (Danko, 140, 142) attached to a clip base (see annotated figure 2 of Danko provided with the 35 USC 103 rejection of claim 13 above); and a clip flap (Danko, 110).
Regarding claim 20, Rome as modified discloses: The face shield of claim 19 further comprising: a clip dowel (Danko, 118) connected to the clip flap (see annotated figure 2 of Danko provided with the 35 USC 103 rejection of claim 13 above); and a keeper connected to each end of the clip dowel (see annotated figure 2 of Danko provided with the 35 USC 103 rejection of claim 13 above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Landis (US 2022/0125137), Lee (US 2020/0100657), and Paoluccio (US 5471679) teach face shields with head mounts that are attached to the shield using one or more clips.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA T DUCKWORTH whose telephone number is (571)272-1458. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
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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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/BRIANNA T. DUCKWORTH/Examiner, Art Unit 3732
/PATRICK J. LYNCH/Primary Examiner, Art Unit 3732