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 .
Response to Amendments and Arguments
The amendments, filed February 27, 2025, have been entered. 9, 11, and 18 have previously been cancelled. Claims 1-8, 10, 12-17, and 19-21 are currently pending in the application. Claims 14-17 were previously withdrawn. The previous objections to the claims and specification and rejections to the claims under 35 U.S.C. 112(b) have been overcome.
Applicant argues, on pages 6-10, with regard to both the double patenting rejection and the rejection of claim 1 under 35 U.S.C. 103, that Navan (U.S. Publication No. 2010/0306923), as previously cited in both rejections, does not disclose, teach, or suggest a particular manner in which adhesive is applied to the strengthening layer, and that Bansal (Patent Publication No. DE 102009003485 A1) is non-analogous art as it does not disclose bedding, cushions, mattresses, pillows, or any resilient filling enclosed within a cover, and is instead directed to a filter for a face mask. Examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Navan, while directed generally to a bedding product, that bedding product includes a vent means placed on the product which comprises a filter. The filter of Navan is provided to allow air flow through the bedding product while maintaining a barrier to particles of microbial size (see Navan, paragraph 0025). While Bansal is directed to a filter for a face mask, not a filter for bedding as Navan is, the filter of Bansal, like the filter of Navan is provided for a substantially similar purpose of providing a breathable filter (i.e. allowing for the passage of air through the filter) which maintains a barrier against particles of microbial size (see Bansal, Figure 8 and paragraph 0024). As such, the filter of Bansal is pertinent to the particular problem with which Navan was concerned (a filter with sufficient breathability and microbial protection).
Additionally, Applicant argues, on pages 6-7 of Applicant’s remarks, that, with regard to the non-statutory double patenting rejecting, that the combination of Navan and Bansal would not result in the claims of the present disclosure as Bansal does not mention apply adhesive in a patterned dot arrangement on a reinforcement layer for attachment within a bedding vent. Examiner respectfully disagrees. While Bansal does not disclose a bedding vent, Bansal was not cited for its disclosure or teaching of a bedding vent. Navan provides this disclosure, as noted in the rejection. As noted below, Bansal is directed to a layered filter for a face mask, and teaches wherein the adhesive layer 116 is formed from a plurality of dots of adhesive applied to the strengthening layer 110 (Figure 8 and paragraph 0024). While Bansal does not specify that this feature improves bond integrity under repeated deformation, this is not a feature of the claims and is not relevant to the non-statutory double patenting rejection. As Bansal in particular notes that the adhesive dots of avoid completely blocking pores present in the filter layers thereby minimizing interference with airflow through the filter (paragraph 0024), Bansal provides a motivation to one of ordinary skill in the art to apply the teaching of adhesive dots to the filter of Navan. Thus, the combination of Navan, in view of Bansal encompasses the claimed subject matter.
Additionally, Applicant argues on pages 8-9 of Applicant’s remarks that Navan provides no recognition of the problem addresses by the present application, it does not provide motivation that would lead a skilled person to modify the adhesive of Navan, and doing so would require impermissible hindsight. With regard to the arguments of hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Further, the standard for obviousness is not that the motivation to modify a reference must be present in that same reference. When making a determination of obviousness, an Examiner must consider, among other factors, the types of problems encountered in the art as a whole and what solutions to those problems are taught by the prior art (see MPEP 2141(II)(A)-(C)). While Navan itself does not contemplate potential issues with their chosen adhesive application, Bansal, being in the pertinent field of layered, breathable, anti-microbial filters, points to the issue of adhesive potentially interfering with air flow when joining the layers of a filter together. Bansal proposes that a pattern of adhesive dots applied to the layers of the filter would avoid completely blocking the pores of the filter which would minimize interference of the adhesive with airflow (see Bansal, paragraph 0024). It would have been within the level of ordinary skill in the art before the effective filing date of the present application to recognize that Navan, requiring high breathability of the filter while also having a similar layered structure laminated with adhesive, may benefit from the applying the adhesive in a dot arrangement, as taught by Bansal, for the same benefit.
Finally, Applicant argues on page 10 of Applicant’s remarks that the Affidavit, filed October 21, 2024, by Lyane Lind, notes the adhesive dot arrangement of the adhesive layer provides a significant increase in strength over the adhesive arrangement in Navan, providing unexpected results. As noted in the rejection below, Bansal teaches an adhesive layer 116 being formed from a plurality of dots of adhesive applied to the strengthening layer 110 (Figure 8 and paragraph 0024). Bansal specifically provides a benefit as to why adhesive dots may be chosen over other adhesive arrangements in a filter, as the adhesive dots of Bansal avoid completely blocking pores present in the filter layers and minimize interference with airflow through the filter (paragraph 0024). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As the claim only requires that the adhesive be formed as a plurality of dots, and does not further specify other structures or features which differentiates it from the dots of Bansal, then the combination of Navan in view of Bansal meets the claim.
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 1-6, 8, 10, 12-13, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-10, 13 of U.S. Patent No. 8,561,233 in view of Bansal (Patent Publication No. DE 102009003485 A1).
Claim 1 of the instant application is generic to all that is claimed in claim 1 of the reference patent except the reference patent does not claim an adhesive layer. Bansal teaches wherein an adhesive layer 116, wherein the adhesive layer 116 is formed from a plurality of dots of adhesive applied to the strengthening layer 110 (Figure 8 and paragraph 0024).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the features of claim 1 of the reference patent (directed to an infection control bedding product) with Bansal (directed to a filter cartridge for a mask) with an adhesive layer, the adhesive layer being formed from a plurality of dots of adhesive applied to the strengthening layer. One of ordinary skill in the art would have been motivated to do so because the adhesive dots of Bansal avoid completely blocking pores present in the filter layers and minimize interference with airflow through the filter (paragraph 0024).
Additionally, claims, 2, 3, 4, 5, 6, 8, 10, 12, 13, and 19 of the instant application use identical language and/or are generic to all that is claimed in claims 2, 1, 3, 4, 5, 6, 10, 13, 9, and 6 respectively.
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.
Claims 1-8, 10, 12-13 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Navan (U.S. Publication No. 2010/0306923) in view of Bansal (Patent Publication No. DE 102009003485 A1).
Regarding claim 1, Navan discloses an infection control bedding product comprising: a resiliently deformable filling material (see Navan, paragraph 0025 and 0062); and a cover 31 including a vent means 32 (see Navan, Figure 4 and paragraph 0077), wherein an aperture 38 is formed in the cover of the product and the vent means 32 is positioned over the aperture, wherein the vent means 32 comprises a filter medium including: a filter membrane 33 for the removal of particles of microbial size (see Navan, paragraphs 0086-0088 and Figure 4); a strengthening layer 35 of material for providing mechanical strength to the filter medium (see Navan, paragraphs 0073 and 0077); and an adhesive layer (defined by one of the layers of glue which binds the layers of the bedding together, see Navan, paragraph 0049), wherein the filter medium allows air flow therethrough but is substantially impermeable to liquid while maintaining a barrier to particles of microbial size (see Navan, Abstract and paragraph 0025).
Navan does not disclose wherein the adhesive layer is formed from a plurality of dots of adhesive applied to the strengthening layer.
Bansal teaches wherein the adhesive layer 116 is formed from a plurality of dots of adhesive applied to the strengthening layer 110 (Figure 8 and paragraph 0024).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Navan (directed to an infection control bedding product comprising a filter) with Bansal (directed to a filter cartridge for a mask) such that the adhesive layer is formed from a plurality of dots of adhesive applied to the strengthening layer. One of ordinary skill in the art would have been motivated to do so because the adhesive dots of Bansal avoid completely blocking pores present in the filter layers and minimize interference with airflow through the filter (paragraph 0024).
Regarding claim 2, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the layer of strengthening material 35 comprises a thermoplastic material (see Navan, paragraph 0030, where the strengthening material is polypropylene, which is thermoplastic).
Regarding claim 3, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the vent means further includes a gasket 36 adapted to ensure that edges of the vent means 32 are joined to the cover 31 forming a sealed joint therewith that is impermeable to liquid (see Navan, Figure 4 and paragraphs 0041 and 0091-0092).
Regarding claim 4, Navan discloses the subject matter as discussed above with regard to claims 1 and 3. Navan further discloses wherein the gasket 36 is of dimensions corresponding to the dimensions of the aperture 38 in the cover of the infection control product into which the vent 32 is located (see Navan, Figure 4).
Regarding claim 5, Navan discloses the subject matter as discussed above with regard to claims 1 and 3. Navan further discloses wherein the gasket 36 is manufactured of the same material as the cover 31 (see Navan, paragraph 0041).
Regarding claim 6, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the filter membrane 33 includes means for substantially preventing liquid ingress, while allowing air to permeate (Abstract and paragraph 0073), said means being provided by the filter membrane comprising a hydrophobic material or oleophobic material (see Navan, paragraphs 0031-0033).
Regarding claim 7, Navan discloses the subject matter as discussed above with regard to claims 1 and 6. Navan further discloses wherein the filter membrane 33 is manufactured of an oleophobic expanded PTFE membrane (see Navan, paragraph 0033).
Regarding claim 8, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the filter membrane 33 comprises a bacteriological filter so as to prevent the ingress of bacteria to an interior of the cover (see Navan, paragraph 0034).
Regarding claim 10, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the cover 31 of the infection control bedding product is manufactured of polyurethane coated polymeric material (see Navan, paragraph 0039).
Regarding claim 12, Navan discloses the subject matter as discussed above with regard to claims 1 and 11. Navan further discloses wherein the aperture 38 in the cover of the infection control bedding product 30 is located so that the seam of the filter medium 33 and aperture is not integral with any perimeter seam of the cover of the infection control product 30 (Figure 4).
Regarding claim 13, Navan discloses the subject matter as discussed above with regard to claims 1 and 8. Navan further discloses wherein the filter membrane 33 comprises a pore size of between 2 and 4 microns (see Navan, paragraph 0036).
Regarding claim 19, Navan discloses the subject matter as discussed above with regard to claims 1 and 6. Navan further discloses wherein the filter membrane 33 is manufactured of an oleophobic expanded PTFE membrane and comprises a backing support formed of non-woven material (see Navan, paragraph 0033).
Regarding claim 20, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the cover 31 comprises polyurethane coated nylon (see Navan, paragraph 0039).
Regarding claim 21, Navan discloses the subject matter as discussed above with regard to claim 1. Navan further discloses wherein the adhesive layer (defined by one of the layers of glue which binds the layers of the bedding together, see Navan, paragraph 0049) is configured to create a seal between the filter membrane 33 and strengthening layer 35 (see Navan, paragraphs 0042 and 0107-0108, also see Bansal, paragraph 0024-0026, where the device of Bansal is substantially impermeable to liquids).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON N LABARGE whose telephone number is (571)272-6098. The examiner can normally be reached M-F 8-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISON N LABARGE/Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679