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 .
Information Disclosure Statement
The listing of references in the specification (see ¶ 0053, which lists three US Patent numbers) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Election/Restrictions
Applicant’s election without traverse of Species A and C in the reply filed on June 11, 2026 is acknowledged. Claims 3, 4, 13 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Upon review of the claims, Examiner notes that claims 7 and 17 recite subject matter that is not included in either of elected Species A nor C, as the “tether” is not present, as best as can be understood from the illustrations. Therefore, claims 7 and 17 are further withdrawn from further consideration as not being directed to the elected species.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities:
Claim 1, line 6: “therein” should recite “in the receptacle”
Claim 11, line 6: “therein” should recite “in the receptacle”
Appropriate correction is required.
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, 5, 6, 8-12, 15, 16 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 8-12, 15, 16 and 18-20 of copending Application No. 19/268,133 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the cited patent encompass the claimed subject matter of the present application.
Present Application Claim #
1
2
5
6
8
9
10
Cited Application Claim #
1
2
5
6
8
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Present Application Claim #
11
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15
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Cited Application Claim #
11
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15
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20
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 2, 5, 6, 8-12, 15, 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bridgers (USPN 5,911,310) in view of White (US 2005/0108800) and Bishop et al. (hereinafter “Bishop”) (US 2023/0189907).
Regarding independent claim 1, Bridgers discloses an article of equipment (inflatable shin guard #10) comprising: a main body (shell member #12) including a first surface (the surface to which reference numeral #14 is pointing in Fig. 3 of Bridgers is a first surface) operable to oppose a wearer during use (a user’s leg is capable of being against surface #14 while wearing guard #10; Examiner notes that the emphasized/italicized language is a statement of intended use that does not further structurally define the claimed invention in any patentable sense) and a second surface (the surface to which reference numeral #13 is pointing in Fig. 3 of Bridgers is a second surface) disposed on an opposite side of the main body than the first surface (see Fig. 3 of Bridgers); a first strap (leg strap #24) including a first end attached to the main body (the end of #24 that is directly attached to #12 is a first end attached to the main body) and a second end disposed on an opposite end of the first strap than the first end (the end of #24 that has #25 is a second end oppositely positioned from the first end of #24), the first strap cooperating with the first surface of the main body (all components of the guard #10 cooperate with one another in the overall assembly) to define a receptacle operable to receive a body portion of the wearer therein (there is a recess #19 (i.e. receptacle) configured to receive a leg therein); a first bladder (#30) including a first barrier element attached to a second barrier element to define a chamber having an interior void (in Fig. 3, there are two barrier elements of bladder #30 that define a fluid-housing void therein; Examiner notes that the term "element" is very broad and merely means "a component or constituent of a whole or one of the parts into which a whole may be resolved by analysis". (Noun defn. No. 1 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com); i.e. the left half of bladder #30 shown in Fig. 3 is a first barrier “element” and the right half is a second barrier “element”), the first bladder disposed within the main body, extending along a longitudinal axis between a first end and a second end of the main body (top end of #12 is a first end and the bottom end of #12 is a second end, with a longitudinal main body axis defined therebetween). Bridgers is silent to there being one of an adjustment element and a plurality of locking elements disposed within the interior void of the first bladder, and a second bladder including a third barrier element attached to a fourth barrier element to define a chamber having an interior void, the second bladder disposed within the first strap and including the other of the adjustment element and the plurality of locking elements disposed within the interior void of the second bladder.
White teaches a shin guard having a plurality of locking elements (plates #15/48 are locking elements, inasmuch as they have been defined in the claim; ¶ 0041 and 0060) which are disposed within the interior void of a pocket (plates can be disposed in pockets #27; ¶ 0044 and 0051; as seen in Fig. 7 of White).
Bishop teaches a fluid-filled member for use in apparel (see Title and Abstract of Bishop) having a first strap (generally where #36 is pointing in Fig. 20 of Bishop, either of the straps is a first strap) having a second bladder (bladder #102 within a locking structure #100) including a third barrier element (#104a; see Fig. 3B of Bishop) attached to a fourth barrier element (#104b; see Fig. 3B of Bishop) to define a chamber having an interior void (#108; as seen in Fig.3B), the second bladder disposed within the first strap (i.e. #102 is disposed within the perimeter of strap #36 of Fig. 20 of Bishop) and including the other of the adjustment element (cushioning component #124 is an adjustment element, inasmuch as the adjustment element has been defined in the claim; ¶ 0121 of Bishop) and the plurality of locking elements disposed within the interior void of the second bladder (as shown in Fig. 3B).
Bridgers, White and Bishop all teach analogous inventions in the field of protective apparel. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a plurality of locking elements into the first bladder of Bridgers, as taught by White, in order to provide protection to the user against impacts and strain injuries. It would have been further obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the strap of Bridgers to include a bladder with an adjustment element, as taught by Bishop, in order to allow a wearer to lock the size or shape of the article to a body part of the wearer for better support and fit. As a resulting of the modifications, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as detailed above) would include one of an adjustment element and a plurality of locking elements disposed within the interior void of the first bladder (via teachings of White), and a second bladder including a third barrier element attached to a fourth barrier element to define a chamber having an interior void, the second bladder disposed within the first strap and including the other of the adjustment element and the plurality of locking elements disposed within the interior void of the second bladder (via teachings of Bishop).
Regarding claim 2, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that it includes at least one elastic element (ligaments #50/60 of White; ¶ 0064 discloses the ligaments may be elasticated), the at least one elastic element including a first fastening portion (i.e. #50/60 above #49 of White in Fig. 15; Examiner notes that the term "portion" is very broad and merely means "a section or quantity within a larger thing; a part of a whole" (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com)) coupled to a first attachment region (i.e. #48/15 above #49 in Fig. 15 of White; Examiner notes that the term "region" is very broad and merely means "any large, indefinite, and continuous part of a surface or space" (Defn. No. 1 of "Collins English Dictionary – Complete and Unabridged, 12th Edition 2014" entry via TheFreeDictionary.com)) of each of the plurality of locking elements and a second fastening portion (i.e. #50/60 below #49 in Fig. 15 of White) coupled to a second attachment region (i.e. #48/15 below #49 in Fig. 15 of White) of each of the plurality of locking elements (as seen in Fig. 15 and 17 of White).
Regarding claim 5, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that each of the plurality of locking elements defines an opening (#49; Fig. 15 of White) at a central region of each locking element (i.e. #49 is at a central region of the width of 48/15, inasmuch as has been claimed by Applicant) and the first and second attachment regions are disposed proximate to the opening at the central region of each locking element (as seen in Fig. 15 and 17 of White; Examiner notes that the term "proximate" is very broad and merely means "close; very near". (Defn. No. 2 of "Random House Kernerman Webster's College Dictionary" entry via TheFreeDictionary.com); all components of the device are proximate to one another, at least to some degree).
Regarding claim 6, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the at least one elastic element (#50/60 of White, as noted above) includes an outer fastening portion (at the outer edges of #50/60) coupled to the first attachment region of the plurality of locking elements and an inner fastening portion (at the middle portion of #50/60 between the outer edges of #50/60) coupled to the second attachment region of the plurality of locking elements (as seen in Fig. 15 and 17 of White).
Regarding claim 8, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that each of the locking elements includes a pair of interface surfaces (in White, the bottom surface at one end of #15/48 and the top surface at second end of #15/48) disposed on opposite sides of each locking element (i.e. top and bottom ends of #15/48), the interface surfaces of the locking elements being in direct contact with the interface surfaces of adjacent locking elements to form a locking layer (as shown in Figs. 2, 15 and 17 of White; Examiner notes that the term "adjacent" is very broad and merely means "close to; lying near". (Defn. No. 1 of "American Heritage® Dictionary of the English Language, Fifth Edition" entry via TheFreeDictionary.com); all components of the device are adjacent to one another, at least to some degree).
Regarding claim 9, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that the adjustment element includes a compressible component (#124 of Bishop in Fig. 3B (which has been incorporated into the modified device of Bridgers, as explained above) is a compressible component; ¶ 0121 of Bishop).
Regarding claim 10, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 1 above) renders obvious all the limitations of claim 1, as set forth above, and further that it has a pump operable to selectively remove fluid from the interior void of the first bladder and the interior void of the second bladder (in Bridgers, Col. 4, Lines 23-26 and in Bishop: ¶ 0111).
Regarding independent claim 11, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as such modification is applied to address independent claim 1 above) renders obvious an article of equipment comprising: a main body including a first surface operable to oppose a wearer during use and a second surface disposed on an opposite side of the main body than the first surface; a first strap including a first end attached to the main body and a second end disposed on an opposite end of the first strap than the first end, the first strap cooperating with the first surface of the main body to define a receptacle operable to receive a body portion of the wearer therein; a first bladder including a first barrier element attached to a second barrier element to define a chamber having an interior void, the first bladder disposed within the main body and extending along a longitudinal axis between a first end and a second end of the main body; a second bladder including a third barrier element attached to a fourth barrier element to define a chamber having an interior void, the second bladder disposed within the first strap (see the 35 U.S.C. 103 rejection of independent claim 1 above, which addresses all of these limitations); a plurality of locking elements disposed within the interior void of the first bladder (via teachings of White and incorporated into the device of Bridgers, as explained above), the locking elements including an interface surface operable to selectively engage an interface surface of another one of the locking elements in response to fluid being removed from the interior void of the first bladder to restrict elongation of the first bladder (as described in ¶ 0110-0111 of Bishop); and an adjustment element disposed within the interior void of the second bladder, the adjustment element including a compressible component (via teachings of Bishop and incorporated into the device of Bridgers, as explained above; see the 35 U.S.C. 103 rejection of claim 9 above) including an infill having a plurality of recesses interspaced by a plurality of ridges and operable between a relaxed state and a constricted state (Fig. 3A of Bishop shows the infill of the compressible component #124 in a relaxed state, while Figs. 3B and 3C show constricted and locked states (with recesses interspaced by ridges), respectively).
Regarding claim 12, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 11 above) renders obvious all the limitations of claim 11, as set forth above, and further that it includes at least one elastic element, the at least one elastic element including a first fastening portion coupled to a first attachment region of each of the plurality of locking elements and a second fastening portion coupled to a second attachment region of each of the plurality of locking elements (see the 35 U.S.C. 103 rejection of claim 2 above, which addresses all of these limitations).
Regarding claim 15, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 11 above) renders obvious all the limitations of claim 11, as set forth above, and further that each of the plurality of locking elements defines an opening at a central region of each locking element and the first and second attachment regions are disposed proximate to the opening at the central region of each locking element (see the 35 U.S.C. 103 rejection of claim 5 above, which addresses all of these limitations).
Regarding claim 16, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 11 above) renders obvious all the limitations of claim 11, as set forth above, and further that the at least one elastic element includes an outer fastening portion coupled to the first attachment region of the plurality of locking elements and an inner fastening portion coupled to the second attachment region of the plurality of locking elements (see the 35 U.S.C. 103 rejection of claim 6 above, which addresses all of these limitations).
Regarding claim 18, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 11 above) renders obvious all the limitations of claim 11, as set forth above, and further that each of the locking elements includes a pair of interface surfaces disposed on opposite sides of each locking element, the interface surfaces of the locking elements being in direct contact with the interface surfaces of adjacent locking elements to form a locking layer (see the 35 U.S.C. 103 rejection of claim 8 above, which addresses all of these limitations).
Regarding claim 19, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 11 above) renders obvious all the limitations of claim 11, as set forth above, and further that the compressible component is corrugated along a width of the compressible component (see Fig. 3B of Bishop, showing compressible component #124 to be corrugated widthwise).
Regarding claim 20, the modified article of Bridgers (i.e. Bridgers in view of White and Bishop, as applied to address claim 11 above) renders obvious all the limitations of claim 11, as set forth above, and further that it has a pump operable to selectively remove fluid from the interior void of the first bladder and the interior void of the second bladder (see the 35 U.S.C. 103 rejection of claim 10 above, which addresses all of these limitations).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All art cited on the PTO-892 and not relied upon in an art rejection above is deemed relevant in the field of fluid-filled articles with adjustable rigidities and/or are adapted to be worn by an animate bearer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON COLLIER whose telephone number is (571)270-5221. The examiner can normally be reached Monday - Friday 8 am - 5 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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/JAMESON D COLLIER/ Primary Examiner, Art Unit 3732
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