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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 and 29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Considering claim 1, the specification is devoid of any discussion related to recording test results of applied pressure, mechanical impulse or mechanical power. Furthermore, there is no mention of calculating the applied pressure, the mechanical impulse, or mechanical power. Still further, there is no discussion of comparing measured values of applied pressure, mechanical impulse or mechanical power against known applied pressure, mechanical impulse or mechanical power to then make suggested adjustments or provide analysis. This is considered new matter.
Considering claim 2, there is no discussion at all of providing known applied pressure, mechanical impulse or mechanical power based on human interactions with the same or similar testing surface.
Considering claim 4, there is no discussion of comparing the claimed test results and no discussion of storing the claimed test results, and therefore, there is no discussion of comparing these results to one another to make any evaluations.
Considering claim 10, there is no discussion of calculating pressure input, mechanical impulse or mechanical power from acceleration-vs-time impact time history.
Considering claim 18, there is no discussion of measurements of impulse, power, applied pressure and pressure.
Considering claim 19, there is no discussion of the replaceable impact interface simulating or mimicking a human head or a human head donning a helmet.
Considering claim 29, the specification is devoid of any discussion of the replaceable impact interface mimicking a human head. There is no discussion related to recording test results of applied pressure, mechanical impulse or mechanical power. Furthermore, there is no mention of calculating the applied pressure, the mechanical impulse, or mechanical power. Still further, there is no discussion of comparing measured values of applied pressure, mechanical impulse or mechanical power against known applied pressure, mechanical impulse or mechanical power to then make suggested adjustments or provide analysis. This is considered new matter.
Claims 3, 5-9 and 11-17 are rejected based on their dependency upon their respective rejected base claims.
Considering that the subject matter of claims 1-19 is directed to new matter, a prior art rejection on the merits is not being made at this time. Claim 29 contains new matter in an optional form, as opposed to claim 1 which does not contain the original test results still present in claim 29.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires “the one or more- drop-mass is configured for attachment and detachment of one or more replaceable impact interfaces”.
However, claim 7 now removes that required feature by claiming that “the one or more drop-mass is a first drop-mass, wherein the first mass is replaceable a second drop-mass, and wherein the second drop-mass is not configured to attach or detach replaceable impact interfaces”. Claim 7 cannot inherent all of the limitations of claim 1 if it contradicts the requirements of claim 1 by making the drop-mass not configured to attach or detach replaceable impact interfaces. Perhaps Applicant should amend claim 1 to have the features of claim 7? Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Dickson et al. (US 2021/0381951 A1) in view of Petel et al. (US 2020/0225133 A1).
Considering claim 29, Dickson discloses a system comprising:
- one or more processors, one or more controllers, or both one or more processors and one or more controllers ([0112]);
- a drop assembly comprising a drop-mass connected to a track 54, wherein the drop-mass is configured for attachment and detachment of one or more replaceable impact interfaces (other footwear; see paragraph [0088]), and wherein the track is adjustable to change an angle at which the drop-mass is dropped (Figures 1-2; [0074-79]; [0086]; [0088]; [0097]);
- one or more sensors [0025];
- wherein the drop-mass, with or without a replaceable impact interface attached to the drop-mass, can be dropped onto a surface in one or more of a vertical orientation, a substantially vertical orientation, an angled orientation, or a diagonal orientation ([0095]), thereby generating one or more of, applied pressure test results, mechanical power test results, mechanical impulse test results, deceleration data test results, force data test results, motion data test results, or acceleration data test results ([0024-25]; [0029]; [0079-82]; [0102-105]);
- wherein the one or more processors, the one or more controllers, or both the one or more processors and the one or more controllers, are operative to calculate the one or more of, applied pressure test results, mechanical power test results, mechanical impulse test results, deceleration data test results, force data test results, motion data test results, or acceleration data test results ([0027]; [0112]);
- wherein one or more of, applied pressure test results, mechanical power test results, mechanical impulse test results, deceleration data test results, force data test results, motion data test results, or acceleration data test results, are compared against known applied pressure test results, mechanical power test results, mechanical impulse test results, deceleration, force, motion, or acceleration data related to one or more surface interactions ([0158-166]); and
- wherein, based on the comparison between (a) the one or more of, applied pressure test results, mechanical power test results, mechanical impulse test results, deceleration data test results, force data test results, motion data test results, or acceleration data test results, and (b) the known applied pressure test results, mechanical power test results, mechanical impulse test results, deceleration, force, motion, or acceleration data, the system outputs one or more of:
- suggested adjustments to the drop-mass;
- suggested adjustments to the drop-mass and surface interaction;
- suggested adjustments to the angle of the track;
- an analysis of a safety of the surface or a performance of the surface ([0002]; [0009], [0138]).
The invention by Dickson relates to a surface performance test apparatus for acquiring surface performance test information, including, but not limited to, head impact criteria ([0138]) and the use of actuators, footforms, footwear, with or without footwear, but Dickson fails to explicitly disclose that the one or more replaceable impact interfaces are configured to mimic a human head, helmet or both. Given that Dickson is concerned with gathering head impact criteria data from a surface with its apparatus, it seems obvious that they would use an impactor that mimics a human head, given that they mimic a human foot or animal hoof when they are testing foot/shoe interaction related information ([0088]).
Regardless, Petel already teaches the use of an headform or helmet used as an impactor (Abstract; Figure 1; [0052]; Claim 8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a helmet or headform as the impactor of Dickson, as taught by Petel. As it is concerned with head impact criteria detection of a playing surface, Dickson would benefit from the use of the helmet or headform impactor because it mimics the real world situation being simulated and evaluated.
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive.
Applicant’s arguments against claims 1-6 and 8-19 are unpersuasive because Dickson isn’t solely isolated to just shoe safety, but rather also gathers surface performance test information not specifically related to traction.
Applicant’s arguments against claims 1-6 and 8-19 are ultimately moot based on the 112 rejections applied above. Furthermore, it appears that the current iteration of claim 1 is a separate and distinct invention over the originally filed invention. Should an art rejection ultimately be required, an election by original presentation may be pursued.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan M Dunlap whose telephone number is (571)270-1335. The examiner can normally be reached Mon-Fri 10AM - 7PM.
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/JONATHAN M DUNLAP/Primary Examiner, Art Unit 2855 April 4, 2026