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 § 103
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.
Claim(s) 1 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. No. 2014/0366271 to Marshall et al. in view of U.S. Pub. No. 2013/0152950 to Giap, in view of U.S. Pub. No. 2015/0297435 to Visco, and further in view of U.S. Pub. No. 2013/0269110 to Ackerman et al.
Claim 1, Marshall discloses an apparatus comprising alternative embodiments having a first material layer and a base defined by a second material layer and tether respectively (112b,422)(fig. 5 & 8) having a top surface and a bottom surface that has a higher firmness that the first layer providing structural support and the first material such that the base has material layers are capable of minimizing undesired movement of the base relative to the surgical table [0048][0053]; a foam top (424a) fixedly mounted to the top surface of the base to form a pad assembly, the foam top having an upper surface and a lower surface, the lower surface disposed on the base, the foam top inherently having a rebound capable of providing a fast recovery of its original shape when a force is removed and to provide friction to retain the patient in position on the surgical table [0055]; an alternative embodiment having at least one strap 14 attached to the pad assembly; wherein the pad assembly is capable of preventing bunching, and capable of movement in multiple directions. Marshall is silent to a plurality of handles and a material being releasing contact with the surgical table. Giap discloses a pad having a plurality of handles 14 and a material 841 being releasing contact with the surgical table [0110](fig. 26). It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to combine the handles and dual sticky pad of Giap with the pad of Marshall with a reasonable expectation of success because it would have provided a means to allow a safe grip on the device while positioning the patient on the operating table and prevent the pad from sliding when the operating table of Marshall is changed from a flat position to a Trendelenburg position [0079][0110]. Marshall is silent to the base constructed from a material other than foam. Visco discloses a device having a barrier material that covers the base that is capable of being made from a sturdy fabric of flexible plastic, nylon, or nonwoven material [0031][0032]. It would have been obvious for one having ordinary skill in the art before
the effective filing date of the invention to combine the nonwoven fabric with base of Marshall with a reasonable expectation of success because it would have provided infection control to isolate the patient from the surgical table of Marshall. Marshall is silent to a high friction coefficient top. Ackerman discloses a high friction coefficient top [0044]. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to combine the high friction coefficient contact surface of Ackerman with top of Marshall with a reasonable expectation of success because it would have significantly reduced the patient's tendency to shift in relation to the contact surface of Marshall. With regards to the Applicant's recitations of intended use "when the patient is lifted via the handles and when the patient is lowered into a new position on the surgical table the base reattaches to the surgical table which keeps the apparatus in place during surgery" a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed.
Claim 15, Marshall discloses the apparatus, wherein the strap further comprises hook and loop fasteners [0044].
Claim 16, Marshall discloses the apparatus wherein the strap is configured to wrap around a bed rail (R) [0044].
Claim 17, Marshall discloses the apparatus wherein the strap is capable of extending across a narrow end of an anterior hip table (fig. 1). [0066].
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. No. 2014/0366271 to Marshall et al. in view of U.S. Pub. No. 2013/0152950 to Giap, U.S. Pub. No. 2015/0297435 to Visco, U.S. Pub. No. 2013/0269110 to Ackerman et al., and further in view of U.S. Pat. No. 3,255,469 to Blecker.
Claim 2, Marshall discloses the apparatus, but is silent to the foam top comprising a pneumatic foam. Blecker discloses a pneumatic cushion comprising highly pneumatic closed cell polypropylene foam sheet layers (col. 1 lines 50-58). It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to combine the pneumatic foam of Blecker with the pad of Marshal with a reasonable expectation of success because it would have provided a pad having alow cost with excellent tensile properties, adequate retention of pneumaticity, and generally pleasing aesthetics (col. 3 lines 65-79).
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. No. 2014/0366271 to Marshall et al. in view of U.S. Pub. No. 2013/0152950 to Giap, U.S. Pub. No. 2015/0297435 to Visco, U.S. Pub. No. 2013/0269110 to Ackerman et al., and further in view of U.S. Pat. No. 4,472,847 to Gammons et al.
Claim 3, Marshall discloses the apparatus, but is silent to the base comprising a plurality of layers of a nonwoven material. Gammons discloses a patient treating mattress comprising a treating mattress 3 further comprising a plurality of layers including a thermoplastic top panel 20, thermoplastic bottom panel 21, and nonwoven fabric layer 22 for the purpose of manufacturing a base with channels to direct air therethrough for ventilation. It would have been obvious for one having ordinary skill in
the art before the effective filing date of the invention to combine the plurality of
thermoplastic and nonwoven layers of Gammons with the base of Marshall with a
reasonable expectation of success because it would have provided directed ventilation
throughout the mattress.
Claim 4, Marshall, as modified, discloses the apparatus, wherein Gammons discloses
the bottom layer comprises at least two layers of thermoplastic 20 and 21 and a bottom
layer of polyurethane material 22, therefore thermoplastic layer 21 is interpreted as the
reinforcing layer thereby meeting the limitations of the claim.
Claim 5, Marshall, as modified, discloses the apparatus, wherein Gammons discloses
thermoplastic material which may broadly include a condensed foam without the explicit
suggestion of a specific polymer. The combination of Marshall modified by Gammons
therefore reads on the limitations of the claim.
Claim(s) 20 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable
over U.S. Pat. No. 3,829,914 to Treat in view of U.S. Pub. No. 2014/0366271 to
Marshall et al.
Claims 20 and 23, Treat discloses an apparatus comprising: a base 20 having a
top surface, and constructed from an upper layer 22 of non-woven material and a lower
layer 24 of non-woven material with little or no stretch and with an internal reinforcement
disposed between the two layers (col. 3-4 lines 60-68 & 1-8); Treat is silent to a top
mounted to the top surface of the base the reinforcing material is made from foam. Marshall discloses an apparatus comprising a positioning pad 12 formed from a foam material that conforms to the shape of a patient and capable of minimizing undesired movement of the base relative to the surgical table [0041]; the foam top fixedly mounted to a top surface of the base to form a pad assembly, the foam top having a tacky and slip resistant top surface 40 inherently having a high friction coefficient and a lower surface, the lower surface disposed on the base, the foam top inherently having a rebound capable of providing a fast recovery of its original shape when a force is removed and to provide friction to retain the patient in position on the surgical table [0055]; and an alternative embodiment having at least one strap 14 attached to the pad assembly; wherein the pad assembly is capable of preventing bunching, the pad assembly configured for movement in multiple directions. Selecting from a plethora of known nonwoven materials is considered an obvious modification and it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to select the foam material as taught by Marshall with a reasonable expectation of success because it would have provided an equivalent and alternative material that reinforces and conforms to the shape of a patient. the Applicant's intended use recitations "when the patient is lifted via the handles and when the patient is lowered into a new position on the surgical table the base reattaches to the surgical table which keeps the apparatus in place during surgery" are drawn to the intended use and all of the Applicant’s structural limitations have been clearly addressed and the intended use does not further limit the apparatus. The apparatus itself is disclosed by Treat.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 3,829,914 to Treat in view of U.S. Pub. No. 2014/0366271 to Marshall et al. and further in view of U.S. Pat. No. 3,255,469 to Blecker,
Claim 22, Treat disclose the apparatus, but is silent to the foam top comprising a pneumatic foam. Blecker discloses a pneumatic cushion comprising highly pneumatic closed cell polypropylene foam sheet layers (col. 1 lines 50-58). It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to combine the pneumatic foam of Blecker with the pad of Assink with a reasonable expectation of success because it would have provided a pad having a low cost with excellent tensile properties, adequate retention of pneumatic, and generally pleasing aesthetics (col. 3 lines 65-79).
Claim(s) 21 and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 3,829,914 to Treat in view of U.S. Pub. No. 2014/0366271 to Marshall et al., and further in view of U.S. Pat. No. 2007/0056096 to Assink.
Claim 21 and 25-26, Treat, as modified, discloses the apparatus wherein the top is laminated to the top surface of the base, but is silent to a pressure sensitive adhesive. Assink '096 discloses a plurality of adhesives and a pressure sensitive adhesive [0072]- [0074]. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to combine the adhesive means of Assink '096 with the pads Treat with a reasonable expectation of success because it would have provided an equivalent and alternative means to secure the top to a substrate such as the laminated base or the surgical table.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 3,829,914 to Treat in view of U.S. Pub. No. 2014/0366271 to Marshall et al., and further in view of U.S. Pat. No. 2006/0278237 to Hinders et al.
Claim 24, Treat discloses the apparatus, but is silent to the foam top comprises a polyurethane foam having PCF density between 1.8-6 with an indentation load deflection of 25% with a range of 30-45 pounds per square inch. Hinders discloses an apparatus comprised of a polyurethane foam having a 1.8-6 PCF density with a 24-45 ILD [0017]. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to combine the polyurethan foam of Hinders with the pad of Treat with a reasonable expectation of success because it would have provided an equivalent and alternative foam to support hips and legs of a patient.
Response to Arguments
Applicant's arguments filed 09/29/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Throughout the prior art reference, Marshall clearly discloses a system for both positioning and securing a patient on an operating table and securing/immobilizing the patient merely occurs prior to the surgical procedure. Furthermore the system of Marshall explicitly recites having a positioning pad for positioning the patient on the operating table prior to secure the patient before the surgical procedure. As stated above, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. Marshall discloses an apparatus comprising a first material layer and a base defined by a second material layer and tether respectively (112b,422)(fig. 5 & 8) having a top surface and a bottom surface that has a higher firmness that the first layer providing structural support and the first material such that the base has material layers are capable of minimizing undesired movement of the base relative to the surgical table [0048][0053]; a foam top (424a) fixedly mounted to the top surface of the base to form a pad assembly, the foam top having an upper surface and a lower surface, the lower surface disposed on the base, the foam top inherently having a rebound capable of providing a fast recovery of its original shape when a force is removed and to provide friction to retain the patient in position on the surgical table [0055]; an alternative embodiment having at least one strap 14 attached to the pad assembly; wherein the pad assembly is capable of preventing bunching, and capable of movement in multiple directions. Giap discloses a positioning pad having a plurality of handles 14 and a material 841 being releasing contact with the surgical table [0110](fig. 26). Both Marshall and Giap disclose positioning systems that include positioning pads and the combination of references as a whole would have provided the handles and dual sticky pad of Giap with the positioning pad of Marshall and yielded predictable results that to allow a safe grip on the device when lifting and pulling the device while positioning the patient on the operating table and prevent the pad from sliding when the operating table of Marshall is changed from a flat position to a Trendelenburg position [0079][0110]. Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed. The claims a drawn to an apparatus and not a method use and the broad structural claims fail to provide a structural difference between the claimed invention and the prior art and fails to patentably distinguish the present invention from the prior art of record. Once again, the Applicant's intended use recitations "when the patient is lifted via the handles and when the patient is lowered into a new position on the surgical table the base reattaches to the surgical table which keeps the apparatus in place during surgery" are drawn to the intended use and all of the Applicant’s structural limitations have been clearly addressed and the intended use does not further limit the apparatus. The apparatus itself is disclosed by Marshall.
PRINCIPLES OF LAW "Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 1740.
As stated above, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. Visco explicitly recites the device 10 employing a barrier material that covers the base which is capable of being made from a sturdy fabric of flexible plastic, nylon, or nonwoven material [0031][0032]. Merely selecting from a plethora of known materials is considered an obvious modification and the combination of selecting the material explicitly taught by Visco with the positioning pad of Marshal would have yielded predictable results that provide infection control to isolate the patient from the surgical table of Marshall.
Similarly, Ackerman discloses a known material having high friction coefficient top [0044]. The combination of references as a whole would have suggested combining the high friction coefficient contact surface material of Ackerman with top of Marshall and yielded predictable results that would have significantly reduced the patient's tendency to shift in relation to the contact surface of Marshall.
Blecker discloses a pneumatic cushion comprising highly pneumatic closed cell polypropylene foam sheet layers (col. 1 lines 50-58). Once again, the selection from a plethora of known materials is considered an obvious modification and the combination of references as a whole would have suggested combining the pneumatic foam material of Blecker with the positioning pad of Marshal that would have yielding predictable results to provide a positioning pad with a known material having a low cost with excellent tensile properties, adequate retention of pneumaticity, and generally pleasing aesthetics (col. 3 lines 65-79).
Gammons discloses a patient treating mattress comprising a treating mattress 3 further comprising a plurality of material layers including a thermoplastic top panel 20, thermoplastic bottom panel 21, and nonwoven fabric layer 22 for the purpose of manufacturing a base with channels to direct air therethrough for ventilation. The combination of references as a whole would have suggested selecting the plurality of
known thermoplastic and nonwoven material layers of Gammons with the base of Marshall that would have yielding predictable results to provide directed ventilation
throughout the mattress.
As stated above, PRINCIPLES OF LAW "Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 1740. Furthermore, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. Treat discloses a positioning device comprising: a base 20 having a
top surface, and constructed from an upper layer 22 of non-woven material and a lower
layer 24 of non-woven material with little or no stretch and with an internal reinforcement
disposed between the two layers (col. 3-4 lines 60-68 & 1-8). Marshall discloses an apparatus comprising a positioning pad 12 formed from a foam material that conforms to the shape of a patient and capable of minimizing undesired movement of the base relative to the surgical table [0041]; the foam top fixedly mounted to a top surface of the base to form a pad assembly, the foam top having a tacky and slip resistant top surface 40 inherently having a high friction coefficient and a lower surface, the lower surface disposed on the base, the foam top inherently having a rebound capable of providing a fast recovery of its original shape when a force is removed and to provide friction to retain the patient in position on the surgical table [0055]; and an alternative embodiment having at least one strap 14 attached to the pad assembly; wherein the pad assembly is capable of preventing bunching, the pad assembly configured for movement in multiple directions.
As previously stated, merely selecting from a plethora of known nonwoven materials is considered an obvious modification and the combination of references as a whole would have yielding predictable results that provide an equivalent and alternative material that reinforces and conforms to the shape of a patient. The Applicant's intended use recitations "when the patient is lifted via the handles and when the patient is lowered into a new position on the surgical table the base reattaches to the surgical table which keeps the apparatus in place during surgery" are drawn to the intended use and all of the Applicant’s structural limitations have been clearly addressed and the intended use does not further limit the apparatus. The apparatus itself is disclosed by Treat.
Contrary to the Applicant’s arguments, the Applicant has provided no evidence that they were the first to discover selecting from a plethora of already known materials that is neither novel nor inventive or beyond the technical grasp of a person of ordinary skill in the art.
Once again, the Examiner has set forth reasons for combining the references, and the reasons articulated by the Examiner have rational underpinnings.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Pat. No. 10,709,626 to Gomez discloses a positioning device with handles.
U.S. Pat. No. 12,390,383 to discloses a positioning device with handles.
Conclusion
THIS ACTION IS MADE FINAL. 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 FREDRICK C CONLEY whose telephone number is (571)272-7040. The examiner can normally be reached Monday-Friday 8:30am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached on (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FREDRICK C CONLEY/Primary Examiner, Art Unit 3679