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 .
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 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.
DETAILED ACTION
This is in response to an amendment filed on 5/27/2025 in which claim 1 was presented for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/23/2025 was considered by the examiner.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,336,585. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter of a helmet having a shell, inner liner, outer liner and dampers/limit mechanism between the inner and outer liners to dampen an impact on the head of the wearer.
Election/Restrictions
This is a continuation of the parent application 17/722,249 now US Patent 12,336,585. Applicant's elected Figs. 14-15 in the reply filed on 1/25/2024 of the parent application. Since this is a continuation, it is assumed that the same Figures 14-15 will be chosen to be examined. This is not a divisional application.
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.
Claim 1 is 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “and/or” which is indefinite because it is unclear what the metes and bounds the applicant is claiming.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoshizaki et al. (U.S. Pub. No. 2014/0013491 A1).
Regarding claim 1, Hoshizaki et al. “Hoshizaki” discloses a helmet (See Figs. 8A-8C) comprising:
a rigid outer shell at the outer layer (Para. 0016, line 3) of which is considered as the outer shell that is disposed within and coupled to an outer liner/layer (11), it is also noted that para. 0078 further disclose that the device can be used with existing technologies and that the device is placed between the shell (outer shell) and the skull of the wearer meaning that the entire device has three layers an outer shell, an outer liner and an inner liner;
a liner assembly (11, 12),
an outer liner (11) disposed within and coupled to the outer shell (as explained above); and
an inner liner (12) disposed within and coupled to the outer liner (11) as shown in Figs. 1 and 6;
a limit mechanism (or damper) (14), the damper (14) disposed on the liner assembly (11, 12 which is sandwiched between the inner and outer liners as shown for example in Figs. 1 and 6), and configured (capable) to prevent over-rotation and/or over-displacement between the outer liner and the inner liner.; and
it is noted that the damper is capable to allow omnidirectional movement of the inner liner relative to the outer liner and the outer shell for example in a direction generally orthogonal to the surface of the head so as to absorb the impacts (Para. 0009) and lateral direction (Para. 0031).
Conclusion
The prior art made of record and not relied upon is considered (See PTO-892) pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHALED ANNIS whose telephone number is (571)270-1563. The examiner can normally be reached on Monday-Friday 8 am-5 PM EST.
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, Alissa Tompkins can be reached on 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHALED ANNIS/
Primary Examiner, Art Unit 3732