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 1/6/2026 in which claims 1-7 were presented for examination of which claims 1-7 were rearranged in unproper way, for example, the claims filed on 1/6/2026 do not identify the claims as (AMENDED) or (NEW). The original claims 1-7 were filed as the method of using the product, the newly filed claims are directed to the method of using the product (claims 1-4) and the product (claims 5-7).
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 5-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-18 of U.S. Application No. 18/135,612 which was allowed. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to the subject matter of having a helmet with magnets to prevent injuries from impact.
Election/Restrictions
Applicant’s election of species F corresponding to claims 1-7 in the reply filed on 1/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claims 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morgan et al. (U.S. Pub. No2018/0110281 A1).
Regarding claims 5-7, Morgan et al. “Morgan” discloses a magnetic motion detection system (See Figs. 1-11) comprising: a sensor (See para. 0059) arranged in an internal body (16) worn by a person's head (See Fig. 11), the internal body (16) positioned inside of a helmet shell (12 as shown in Fig. 10); the helmet shell (12) configuring (capable) to emit a magnetic flux (See Figs. 5A-B) and capable of rotating independently of the internal body (because of the opposite magnetic polarity); wherein the helmet shell (12) is configured (capable) to experience tangential impacts (when there is an impact), resulting in a rotational and tangential acceleration of the helmet shell independent of the internal body (because of the opposite magnet plurality); the sensor (See above) configured (capable) to detect an acceleration data of the magnetic flux resulting from the rotational and tangential acceleration (See para. 0059); a controller (46) operatively connected to the sensor (See para. 0059), the controller (46) configured (capable) to perform an action based on the acceleration data (See para. 0059).
Regarding claims 1-4, Morgan et al. has been previously discussed, but their teachings will again be summarized below. Organ teaches a helmet system having magnets to prevent injuries from impacts. Under the principles of anticipating, if a prior art device, in its normal and usual operation, would inherently perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir.1986). MPEP 2112.02
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 Monday-Friday 8 am-5 PM EST.
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/KHALED ANNIS/Primary Examiner, Art Unit 3732