DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-12 of U.S. Patent No. 12, 584,732. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows:
Instant Application ‘439
1. A method for creating an American football helmet to be worn by a football player, the method comprising: providing a plurality of pre-manufactured pad members to be installed within a helmet shell, the pre-manufactured pad members including: (i) at least two rear pad members, each having a set of distinct, predetermined dimensions and (ii) at least two front pad members, each having a set of distinct, predetermined dimensions; using an electronic scanning device to obtain a 3D scan of the player’s head, the 3D scan including anatomical data of the player’s head; providing at least one computer in electronic communication with said scanning device, said at least one computer comprising at least one electronic storage device comprising software instructions; and, executing the software instructions to configure at least one processor to: receive and process the 3D scan of the player’s head; evaluate, using a best fit analysis, said anatomical data in the 3D scan against the distinct, predetermined dimensions of said rear pad members to identify which rear pad member from amongst the at least two rear pad members has distinct, predetermined dimensions that satisfy the best fit analysis, whereby the identified rear pad member can be subsequently installed within the helmet shell; evaluate, using a best fit analysis, said anatomical data in the 3D scan against the distinct, predetermined dimensions of the front pad members to identify which front pad member from amongst the at least two front pad members has distinct, predetermined dimensions that satisfy the best fit analysis, whereby the identified front pad member can be subsequently installed within the helmet shell.
2. The method for creating a protective football helmet of claim 1, the method further comprises providing one or more databases with one or more lookup tables associating each of the plurality of rear pad members with respective one or ones of the front pad members, wherein the lookup tables include (i) dimension ranges for each of the at least two rear pad members, and (ii) dimension ranges for each of the at least two front pad members.
3. The method for creating a protective football helmet of claim 1, further providing the pre-manufactured pad members with at least two rear crown members, each having a set of distinct, predetermined dimensions and, wherein the processor evaluates, using a best fit analysis, said anatomical data against the distinct, predetermined dimensions of said crown pad members to identify which crown pad member has distinct, predetermined dimensions that satisfy the best fit analysis, whereby the identified crown pad member can be installed within the helmet shell.
4. The method for creating a protective football helmet of claim 1, further providing the pre-manufactured pad members with at least two side pad members, each having a set of distinct, predetermined dimensions and, wherein the processor evaluates said anatomical data against the distinct, predetermined dimensions of said side pad members to identify which side pad member has distinct, predetermined dimensions that satisfy the best fit analysis, whereby the identified side pad can be subsequently installed within the helmet shell.
5. The method for creating a protective football helmet of claim 1, wherein the best fit analysis involves determining how closely the anatomical data corresponds to both: the first and second sets of distinct, predetermined dimensions of the rear pad members, and the first and second sets of distinct, predetermined dimensions of the front pad members.
6. The method for creating a protective football helmet of claim 5, wherein the method further comprises installing both the identified rear pad member and the identified front pad member in the helmet shell; and wherein the helmet shell is selected from amongst a plurality of helmet shells, each having a set of distinct, predetermined dimensions. The method for creating a protective football helmet of claim 5, wherein the method further comprises the processor evaluating said anatomical data against the distinct, predetermined dimensions of the plurality of helmet shells to identify which helmet shell from amongst the plurality of helmet shells has the distinct, predetermined dimensions that satisfy the best fit analysis, whereby the identified helmet shell receives the identified pad members during their installation. The method for creating a protective football helmet of claim 1, wherein the identified rear pad member comprises a plurality of distinct rear pad elements.
7. The method for creating a protective football helmet of claim 1, wherein the identified front pad member comprises a plurality of distinct front pad elements.
8. The method for creating a protective football helmet of claim 5, wherein the identified rear pad member comprises a plurality of rear pad elements.
US Patent 12,584,732
7. A method for creating a protective football shoulder pad to be worn by a football player, the method comprising: providing a plurality of distinct types of pre-manufactured fitting components that include: a first arch member having a first set of distinct, predetermined dimensions, and a second arch member having a second set of distinct, predetermined dimensions; using an electronic scanning device to obtain a 3D scan of the player's torso, the 3D scan including anatomical data of the player's torso; providing at least one computer in electronic communication with said scanning device, said at least one computer comprising at least one electronic storage device comprising software instructions; and, executing the software instructions to configure at least one processor to: receive and process the anatomical data from the 3D scan of the player's torso; comparing said anatomical data against the first set of distinct, predetermined dimensions of the first arch member; comparing said anatomical data against the second set of distinct, predetermined dimensions of the second arch member; and, identifying one of the first or second arch members for installation in the protective football shoulder pad based upon said comparison involves a best fit analysis between the anatomical data and the first and second set of distinct, predetermined dimensions.
8. The method for creating a protective football shoulder pad of claim 7, wherein the best fit analysis involves how closely the anatomical data corresponds to both the first set of distinct, predetermined dimensions of the first arch member and the second set of distinct, predetermined dimensions of the second arch member.
9. The method for creating a protective football shoulder pad of claim 7, the method further comprises: providing the pre-manufactured fitting components that further include: a first shoulder cap member having a first set of distinct, predetermined dimensions, and a second shoulder cap member having a second set of distinct, predetermined dimensions; executing the software instructions to configure at least one processor to: compare said anatomical data against the first set of distinct, predetermined dimensions of the first shoulder cap member; and compare said anatomical data against the second set of distinct, predetermined dimensions of the second shoulder cap member; and, identifying one of the first or second shoulder cap members for installation in the protective football shoulder pad based upon said comparison involves a best fit analysis between the anatomical data and the first and second set of distinct, predetermined dimensions of the shoulder cap members.
10. The method for creating a protective football shoulder pad of claim 8, the method further providing one or more databases with one or more lookup tables associating each of the first and second arch members with each of the respective first and second shoulder cap members, wherein the lookup tables include (i) dimension ranges for each of the two arch members, and (ii) dimension ranges for each of the two shoulder cap members.
11. The method for creating a protective football shoulder pad of claim 7, wherein each of the first and second arch members include a rigid outer layer and a flexible inner pad layer.
12. The method for creating a protective football shoulder pad of claim 7, wherein each of the first and second arch members comprises a separate rigid outer shell and a separate flexible inner pad member.
Regarding claim 1, the conflicting claim does not recite method of creating a football helmet using a 3D scan in electronic communication with computer to predetermine at least two front pads and at least two rear pads based on anatomical data. However, claims 7-12 recite method of creating a football shoulder pad using a 3D scan in electronic communication with computer to predetermine at least two arch members and at least wot cap members based on anatomical data. Therefore, it is inherent that the 3D scanning being in electronic communication with a computer having anatomical data of creating football helmet and shoulder pads are equivalent protective devices worn on the body. According, pending claims 1-8 and patentably indistinct from patent claims 7-12 in US Patent ‘732.
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the double patent rejection as set forth in this Office action.
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June 25, 2026 /TAJASH D PATEL/ Primary Examiner,
Art Unit 3732
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