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 .
Election/Restrictions
Applicant’s election without traverse of Invention II directed to claims 10-20 in the reply filed on 08/04/2026 is acknowledged. Claims 1-9 have been canceled.
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.
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Claims 10, 13, 14 ,15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, and 17 of U.S. Patent No. 12,514,323.
Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 12,514,323, in claim 10, discloses an outer shell of a safety helmet comprising an infrared reflective layer disposed onto a portion of an inner surface. One of ordinary skill in the art would further find the method steps of “molding” and “applying” are routine and well-known steps in the art of helmet manufacturing and would be considered obvious to a person of ordinary skill in the art. Therefore, the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The chart below maps and identifies corresponding claims that lack patentable indistinction from both the present application and the patent at issue.
Application 19/415,939 (claims)
U.S. Patent No. 12,514,323 (claims)
10
1
13
1
14
1
15
16
16
17
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 10, 12, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3,326,478 A1 to Axelsson in view of US 2009/0265840 A1 to Favre.
For claim 10, Axelsson discloses a method of manufacturing a safety helmet comprising: providing an outer shell of the safety helmet out of a thermoplastic material (ABS, para 0028); and applying an infrared reflective layer onto at least a portion of an inner surface of the outer shell or applying the infrared reflective layer onto an insert that is connectable to the outer shell (infrared reflective layer onto an insert; para 0031 and 0034-0035).
Axelsson does not specifically disclose providing the outer shell by molding the thermoplastic material.
However, attention is directed to Favre teaching it is well known in the prior art to provide a helmet shell by injection molding a thermoplastic material, such as ABS (para 0005 of Favre), the same shell material as Axelsson. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the method of Axelsson to mold the thermoplastic outer shell as taught by Favre, since molding is a known method of forming thermoplastic helmet shells and would provide the predictable results of forming the disclosed ABS thermoplastic shell. The modification applies a well-known manufacturing technique to a known thermoplastic shell and would have been within the ordinary skill in the art with a reasonably expectation of success.
For claim 12, Axelsson discloses the method of claim 10, further comprising connecting the insert having the infrared reflective layer to the outer shell by at least one of the following: adhesive, one or more mechanical clips or fasteners, press fit, ultrasonic bonding, or any combination thereof (the entrapping/locking-in of the heat reflective layer between the head suspension and the protective shell is considered a type of mechanical fastening; paras 0016 and 0031-0032).
For claim 17, Axelsson discloses the method of claim 10, wherein the infrared reflective layer comprises at least one of the following: aluminum, gold, silver, copper, or any combination thereof (para 0009).
For claim 19, Axelsson teaches the method of claim 10, but does not specifically disclose wherein the infrared reflective layer has an optical density of at least 2.0.
However, Axelsson does teach the general conditions of the claimed invention, specifically dome shaped shell with an infrared reflective layer, except for the express disclosure of an optical density of at least 2.0. It would have been obvious to one of ordinary skill in the art before the effective filing date, barring any unforeseen result to optimize the optical density to a value of at least 2.0, since the claimed values are merely an optimum or workable range and where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. (See MPEP 2144.05 [R-5]). In this case, there are relevant facts for supporting a modification to the claimed range by routine optimization. Specifically, optimizing reflectivity of the metallic layer to ensure effective reflectiveness.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,018,220 A to Lane in view of Axelsson.
For claim 10, Lane discloses a method of manufacturing a safety helmet (col. 3, lines 26-32 and claim 1) comprising: molding an outer shell (40 and molding material 60) of the safety helmet out of a thermoplastic material (col. 2, lines 45-49).
Lane does not specifically disclose applying an infrared reflective layer onto at least a portion of an inner surface of the outer shell or applying the infrared reflective layer onto an insert that is connectable to the outer shell.
However, the insert is interpreted as an element that is formed separately from the outer shell (see para 0072 of Applicant’s specification). Therefore, Lane’s insulative layer (46) may be interpreted as an insert for purposes of applying prior art that is integrally formed with the outer shell and molding material (col. 3, lines 26-38).
Attention is also directed to Axelsson teaching an analogous helmet with an analogous insulative layer (carrier layer 13) (para 0011 of Axelsson). Specifically, Axelsson teaches the carrier layer 13 carries a reflective layer (11) (para 0035 of Axelsson) for purposes of reflecting infrared radiation penetrating through the protective shell back toward the protective shell (para 0030 of Axelsson). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Lane would be modifier wherein an infrared reflective layer is applied onto the insulative layer during the molding/assembly process with the outer shell, for purposes of providing a layer that reflects infrared radiation penetrating through the protective shell back toward the protective shell, as taught by Axelsson (paras 0011, 0030, and 0035 of Axelsson).
For claim 11, the modified Lane teaches the method of claim 10, wherein the insert having the infrared reflective layer is integrally formed with the outer shell during molding of the outer shell (see discussion for claim 10 above and teachings of both Lane and Axelsson).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Axelsson in view Favre as applied to claim 10 above, and further in view of US 5,557,807 A to Hujar, US 2007/0074326 A1 to Komechak, and US 3,889,684 A to Lebold.
For claim 13, the modified Axelsson teaches the method of claim 10, but does not specifically disclose further comprising: inserting an evaporative cooling pad inside a cavity of the outer shell defined by the inner surface, wherein the evaporative cooling pad comprises: a top waterproof, vapor permeable layer and a bottom waterproof, vapor permeable layer with a cavity defined there between; a liquid absorbing layer positioned within the cavity; and an opening in at least one of the top and bottom layers.
However, attention is directed to Hujar teaching an article of headwear, such as a helmet, including a coolant means for cooling the head of the wearer by absorbing heat from the head of the wearer (abstract of Hujar). Specifically, Hujar teaches a pouch (6) for receiving a cooling means (7) in a cavity therein and, together, are adapted for attachment to the upper portion of the cap (3) (col. 7, lines 21-29 and fig. 2 of Hujar) for purposes of absorbing heat given off by the head of a wearer (col. 7, lines 55-61 of Hujar). More specifically, Hujar teaches the pouch (6) comprises a top waterproof layer (13) and a bottom waterproof layer (14) configured to contact the head of the wearer (col. 7, line 62 to col. 8, line 15) and connected by a zipper (col. 8, lines 16-18). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Axelsson would be modified to further comprise the steps of inserting a cooling pad positioned and attached within the interior of the outer shell, the cooling pad comprising: a top waterproof layer and a bottom waterproof layer with a cavity defined therebetween and connected by a zipper, wherein an outside surface of the bottom layer is configured to be in contact with the head of the user for purposes of providing the helmet of Axelsson with an active cooling means that further extends the cooling conditions to the wearer by absorbing heat from the head of the wearer, as taught by Hujar (abstract and col. 2,lines 6-32 of Hujar).
As modified, Axelsson does not specifically disclose the cooling pad is an evaporative cooling pad and wherein the top and bottom layers are also vapor permeable and wherein a liquid absorbing layer is positioned within the cavity.
However, attention is directed to Komechak teaching headwear including a cooling device formed of an absorptive material having high absorptive capacity and shaped as a headwear insert (abstract and para 0022 of Komechak). Specifically, Komechak teaches the insert is an absorbent material that reacts with water to create a sustained cooling effect via an evaporative cooling process (abstract and paras 0005 of 0022 of Komechak).
Therefore, the cooling means of the modified Axelsson and the cooling means of Komechak have the same function known in the art: to cool the head of a wearer wearing an article of headwear. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Axelsson would be modified wherein the cooling means (7 of Hujar, after modification to Axelsson) is substituted for Komechak’s cooling insert, formed of an absorptive material having high absorptive capacity and shaped as a headwear insert that reacts with water, to create a sustained cooling effect via an evaporative cooling process since the modification would amount to a simple substitution of known cooling means for providing a predictable result. In this case, the substitution would yield the predictable result of cooling the head of a wearer wearing an article of headwear without requiring more than ordinary skill in the art (see MPEP 2143(I)(B)). As a result, the modified Axelsson would be considered as teaching the cooling pad is an evaporative cooling pad wherein a liquid absorbing layer is positioned within the cavity.
As modified, Axelsson does not specifically disclose wherein the top and bottom layers are vapor permeable.
However, attention is directed to Lebold teaching a water retaining envelope containing an absorbent pad filled with cooled fluid and encased with a cover to permit application of the pad to various parts of the body (abstract of Lebold). Specifically, Lebold teaches the absorbent pad filled with cooled fluid (interpreted as a cooling means) is likewise retained within a water impervious pad (col. 1, lines 21-34 of Lebold). Notably, Lebold teaches improved cooling results are obtained by using a pouch formed of micro-porous film (col. 4, lines 18-22 of Lebold), wherein a micro-porous film is interpreted as providing vapor permeability. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Axelsson would be further modified wherein the top and bottom layers are vapor permeable by comprising a micro-porous film at the boundary for purposes of improving the cooling results when using a moistened absorbent material as the cooling medium, as taught by Lebold (col. 4, lines 18-22 of Lebold).
For claim 14, the modified Axelsson teaches the method of claim 13, wherein the liquid absorbing layer is configured to become saturated with a cooling liquid added to the cavity through the opening (see discussion for claim 13 above, and particularly, the teachings of Komechak, providing the cooling element of the modified Axelsson is an absorptive material that reacts with water to create a sustained cooling effect via an evaporative cooling process (abstract and paras 0005 of 0022 of Komechak)).
For claim 15, the modified Axelsson teaches the method of claim 14, wherein the top waterproof, vapor permeable layer and the bottom waterproof, vapor permeable layer are configured to allow passage of the cooling liquid in a direction out of the cavity in vapor form but not allow passage of the cooling liquid in liquid form (see discussion for claim 13 above, and particularly the teachings of Lebold, providing the top and bottom layers of the modified Axelsson are water impervious but is also comprised of a micro-porous film for providing vapor permeability) (col. 4, lines 18-22 of Lebold).
For claim 16, the modified Axelsson teaches the method of claim 14, wherein the evaporative cooling pad is configured to allow heat to be transferred from the head of the user to the evaporative cooling pad, thereby evaporating the cooling liquid in the cavity (see discussion for claim 13, particularly the teachings of Hujar and Komechak, providing the modified Axelsson with the function of absorbing heat from the head of the wearer to evaporate the liquid within the cooling pad).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Axelsson, as applied to claim 10, and in further view of US 2013/0337393 A1 to Henn.
For claim 18, Axelsson discloses the method of claim 10, but does not specifically disclose wherein the infrared reflective layer comprises at least one of the following: doped titanium dioxide, doped or undoped indium tin oxide, doped cerium oxide, doped manganese oxide, iron (III) oxide, cadmium sulfide, chromium trioxide, or any combination thereof.
However, Axelsson does teach the heat reflective layer comprises a metal layer; such a metal layer is preferably made of aluminum, but may further be made of other material like silver or gold; and the metal layer may be provided in the form of a metallization on a substrate, for example may be provided as a coating, by sputter deposition or by electroplating; and alternatively, the metal layer may be provided in the form of a film or foil (para 0009).
Attention is also directed to Henn teaching an infrared reflecting filter coating comprising doped titanium dioxide (paras 0006 and 0067 of Henn). Therefore, Axelsson’s and Henn’s reflective coatings have the same function and are known in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date to use doped titanium dioxide for the infrared reflective layer since the modification would amount to a simple substitution of known components for a predictable result. In this case, the substitution would yield the predictable result of reflecting infrared light, as taught by Henn (para 0067), without requiring more than ordinary skill in the art to accomplish (see MPEP 2143(I)(B)).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Axelsson, as applied to claim 10, and in further view of US 5,653,222 A to Newman.
For claim 20, Axelsson discloses the method of claim 10, but does not specifically disclose wherein the infrared reflective layer has a hemispherical emissivity of less than 0.2.
However, attention is directed to Newman teaching an analogous radiation shield (51). Specifically, Newman teaches the radiation shields are similarly constructed of relatively thin, treated, or polished aluminum sheets and both upper and lower sides of the aluminum shields are treated to create a highly infrared reflective, low emissivity surfaces with hemispheric emittance of less than 0.2 and preferably less than 0.05 for purposes of sufficiently reflecting heat radiation (col. 5, lines 15-24 of Newman). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Axelsson would be modified wherein the infrared reflective layer has a hemispherical emissivity of less than 0.2 for purposes of sufficiently reflecting heat radiation away from a specific surface, as taught by Newman.
Conclusion
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/ERICK I LOPEZ/Examiner, Art Unit 3732
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