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 .
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,364,302. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows:
Instant Application ‘860
1. A rail for mounting to a helmet, the rail comprising: a rail configured to be coupled to a helmet, the rail including a front surface; with a mounting groove extending along a length of the front surface, the mounting groove open outwardly from the front surface of the rail and configured to couple to a first accessory device at two or more positions along the length of the rail; and a recess proximate an edge of the mounting rail assembly, the recess open generally perpendicular to the mounting groove and configured to receive a second accessory device, at least a portion of the recess positioned between the mounting groove and a rear surface of the mounting rail assembly.
2. The rail of claim 1 further comprising :a shim configured to be positioned between the rail and the helmet, the shim forming at least a portion of the recess.
3. The rail of claim 2, wherein the recess is formed by an indent in a front surface of the shim and the rear surface of the rail.
4. The rail of claim 1 further comprising: a fastener having a first portion positioned at least partially within the recess and a second portion configured to be coupled to the second accessory device.
5. The rail of claim 4, wherein the recess includes a protrusion and the fastener includes a plurality of prongs separated by a space, and wherein the protrusion is configured to be positioned within the space when the plurality of prongs are within the recess.
6. The rail of claim 4, wherein :the rail includes at least one indent below the mounting groove, and the fastener includes an attachment arm configured to engage the at least one indent to further couple the fastener to the rail when the fastener is positioned at least partially within the recess.
7. The rail of claim 6, wherein the attachment arm includes at least one peg configured to engage the at least one indent when the attachment arm is in an engaged position.
8. A rail assembly comprising: the rail of claim 1; and the second accessory device, the second accessory device including one or more of a mandible shield, a communication system, a gas supply mask, and a chin strap.
9. The rail of claim 4, wherein the recess includes a first recess, the mounting rail assembly further comprising: a second recess proximate the edge of the mounting rail assembly, open generally in an opposite direction of the first recess, and configured to receive a third accessory device.
10. A rail assembly comprising :the rail of claim 9; and the third accessory device, the third accessory device including one or more of a ballistic panel or applique, a visor, a goggle, a communication system, a retention system, a light, a camera, a helmet cover, a battery, a gas supply mask, a cable, and a cord.
11. The rail of claim 2, wherein the shim is configured to flex to conform to a shape of an 2 exterior surface of the helmet.
12. The rail of claim 2, wherein the shim includes an aperture configured to align with existing apertures in the rail.
13. The rail of claim 2, wherein one of the shim and the rail includes at least two projections that extend into a corresponding feature on the other of the shim and the rail to align the rail with the shim.
14. The rail of claim 2, wherein the shim includes a body with a plurality of openings extending through the body.
15. The rail of claim 1, wherein the mounting rail assembly is a unitary construct including the shim and the rail.
16. The rail of claim 4, wherein the recess includes a sidewall and the rail includes a release selectively engageable by a user to disengage the fastener from the sidewall.
17. The rail of claim 16, wherein the fastener includes a deflectable arm and the release is configured to deflect the deflectable arm to disengage the fastener from the sidewall.
18. The rail of claim 17, wherein the sidewall includes a ledge and the deflectable arm includes a rim configured to engage the ledge when the fastener is within the recess.
19. The rail of claim 16, wherein the fastener includes a brace configured to maintain the position of the fastener in the recess when the release is moved relative to the shim.
US Patent ‘302
1. A rail for mounting accessories to a helmet, the rail comprising: a front surface; a mounting groove extending along a length of the front surface, the mounting groove open outwardly from the front surface of the rail and configured to adjustably couple to a first accessory device at two or more positions along the length of the front surface; and a recess proximate an edge of the rail, the recess open generally perpendicular to the mounting groove and configured to receive a second accessory device, at least a portion of the recess positioned between the mounting groove and a rear surface of the rail.
2. The rail of claim 1 further comprising: a shim configured to be positioned between the rail and the helmet, the shim forming at least a portion of the recess.
3. The rail of claim 2, wherein the recess is formed by an indent in a front surface of the shim and the rear surface of the rail.
4. The rail of claim 2, wherein the shim is configured to flex to conform to a shape of an exterior surface of the helmet.
5. The rail of claim 1 further comprising: a fastener having a first portion positioned at least partially within the recess and a second portion configured to be coupled to the second accessory device.
6. The rail of claim 5, wherein the recess includes a protrusion and the fastener includes a plurality of prongs separated by a space, and wherein the protrusion is configured to be positioned within the space when the plurality of prongs are within the recess.
7. The rail of claim 5, wherein: the rail includes at least one indent below the mounting groove, and the fastener includes an attachment arm configured to engage the at least one indent to further couple the fastener to the rail when the fastener is positioned at least partially within the recess.
8. The rail of claim 7, wherein the attachment arm includes at least one peg configured to engage the at least one indent when the attachment arm is in an engaged position.
9. The rail of claim 5, wherein the recess includes a first recess, the mounting rail assembly further comprising: a second recess proximate the edge of the rail, open generally in an opposite direction of the first recess, and configured to receive a third accessory device.
10. A rail assembly comprising: the rail of claim 9; and the third accessory device, the third accessory device including one or more of a ballistic panel or applique, a visor, a goggle, a communication system, a retention system, a light, a camera, a helmet cover, a battery, a gas supply mask, a cable, and a cord.
11. The rail of claim 5, wherein the recess includes a sidewall and the rail includes a release selectively engageable by a user to disengage the fastener from the sidewall.
12. The rail of claim 11, wherein the fastener includes a deflectable arm and the release is configured to deflect the deflectable arm to disengage the fastener from the sidewall.
13. The rail of claim 12, wherein the sidewall includes a ledge and the deflectable arm includes a rim configured to engage the ledge when the fastener is within the recess.
14. The rail of claim 11, wherein the fastener includes a brace configured to maintain the position of the fastener in the recess when the release is moved relative to the shim.
15. A rail assembly comprising: the rail of claim 1; and the second accessory device, the second accessory device including one or more of a mandible shield, a communication system, a gas supply mask, and a chin strap.
16. The rail of claim 1, wherein the mounting rail assembly is a unitary construct including the shim and the rail.
Conflicting claims 1 of each of the pending application ‘860 and US Patent ‘302 discloses a rail for mounting to a helmet, the rail comprising: a rail configured and inherently coupled to a helmet, the rail including a front surface; with a mounting groove extending along a length of the front surface, the mounting groove open outwardly from the front surface of the rail and configured to couple to a first accessory device at two or more positions along the length of the rail; and a recess proximate an edge of the mounting rail assembly, the recess open generally perpendicular to the mounting groove and configured to receive a second accessory device, at
least a portion of the recess positioned between the mounting groove and a rear surface of the
mounting rail assembly.
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.
Claim 20 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 16 of prior U.S. Patent No. 11,889,879. This is a statutory double patenting rejection.
Instant Application ‘860
20. A mounting rail system comprising: a rail configured to be coupled to a helmet, the rail including a mounting groove extending along a length of the rail, open outwardly from the helmet, and configured to couple to a first accessory device at two or more positions along the length of the rail; a recess proximate an edge of the mounting rail assembly, the recess open generally perpendicular to the mounting groove, and configured to receive a second accessory device; and a shim removably coupled to a rear surface of the rail, the shim positioned between the rail and the helmet when the rail is coupled to the helmet, the shim forming at least a portion of the recess.
US Patent ‘879
16. A mounting rail system comprising: a rail configured to be coupled to a helmet, the rail including a mounting groove extending along a length of the rail, open outwardly from the helmet, and configured to couple to a first accessory device at two or more positions along the length of the rail; a recess proximate an edge of the rail, the recess open generally perpendicular to the mounting groove, and configured to receive a second accessory device; and a shim removably coupled to a rear surface of the rail, the shim positioned between the rail and the helmet when the rail is coupled to the helmet, the shim forming at least a portion of the recess.
Conflicting claim 20 of the pending application ‘860 and claim 16 of US Patent ‘879 each discloses same invention having a rail mounting rail system comprising: a rail configured to be coupled to a helmet, the rail including a mounting groove extending along a length of the rail, open outwardly from the helmet, and configured to couple to a first accessory device at two or more positions along the length of the rail; a recess proximate an edge of the mounting rail assembly, the recess open generally perpendicular to the mounting groove, and configured to receive a second accessory device; and a shim removably coupled to a rear surface of the rail, the shim positioned between the rail and the helmet when the rail is coupled to the helmet, the shim forming at least a portion of the recess.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bataille et al. (US 2004/0143888) in view of Franzino et al. (2022/0071336). Bataille et al (hereinafter Bataille) discloses a rail (10) configured to be coupled to a helmet (10), the rail including a front surface; with a mounting groove extending along a length of the front surface, the mounting groove open outwardly from the front surface of the rail and configured to couple to a first accessory device (30,31) at two or more positions along the length of the rail (10), subparagraph 38 and as shown in figures 6 and 7. Further, a recess/central opening (11) proximate an edge of the mounting rail assembly, the recess open generally perpendicular to the mounting groove and at least a portion of the recess (11) is positioned between the mounting groove and a rear surface of the mounting rail assembly as shown in figure 1. However, Bataille does not show the mounting groove configured to receive a secondary accessory device.
Franzino et al. (herein after Franzino) discloses a helmet having a rail with a mounting groove that receives first and secondary accessory devices (17, 81) as shown in figures 1A and 1B.
It would have been obvious to one skilled in the art before the effective date of the
claimed invention that the mounting groove of Bataille can be provided with a secondary
accessory device as taught by Franzino that includes but not limited to a communication system,
etc. in a convenient and adjustable manner with respect to the rail or as required for a particular
application thereof.
Allowable Subject Matter
Claims 2-7, 9-19 would be allowable if rewritten to overcome the nonstatutory double patenting rejection as 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. Each of the prior art references cited on PTO-892 discloses a helmet having a rail coupled to an accessory device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEJASH PATEL whose telephone number is (571)272-4993. The examiner can normally be reached Monday-Thursday 9am -5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available
to registered users. To file and manage patent submissions in Patent Center, visit:
https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
information about Patent Center and https://www.uspto.gov/patents/docx for information about
filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)
at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service
Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
March 5, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732