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 Objections
Claim 20 is objected to because of the following informalities:
Claim 20, line 2-3 are suggested to recite- “are adjustable such that the angle of the converging convex shaped topsides or a distance between the shoulder rests can be increased or decreased.”
Appropriate correction is required.
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, 2, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,617,699 (“Jahangiri”). Although the claims at issue are not identical, they are not patentably distinct from each other because Jahangiri substantially discloses the elements of the instant application claims as discussed below.
With respect to claim 1, Jahangiri discloses A method of using a spinal support device on a person (claim 7- A method of treating a patient having a head and a vertebral column comprising): providing a spinal support device comprising a base unit having a longitudinal axis along first and second ends (claim 7- providing a device comprising a base unit having a longitudinal axis along first and second ends), and having a face support unit defining the first end (claim 7-and positioned at the first end, the device further comprising a first support unit having a convex topside and configured to be slidable), a pelvic support unit defining the second end (claim 7- a second support unit having a convex topside and configured to be slidable and releasably lockable along the longitudinal axis both towards and away from the first support unit so as to be capable of forming an intermediary gap between the second support unit and the first support unit), and a chest support unit positioned between said face and pelvic support units, wherein the pelvic and chest support units each have a convex shaped topside with an apex (claim 7- a base unit having a longitudinal axis along first and second ends, and having a first elevated support end having a convex topside); and positioning the person on the device in a prone position, wherein the face of the person is positioned on the face support unit (claim 7- the convex topside of the first elevated support end supports the patient's face), the apex of the chest support unit supports the center, or within .5 inches up or down therefrom, of the disc between the T6 and T7 vertebrae (claim 7- positioning a patient on the device in a face-down position, wherein, the convex topside of the first support unit supports the midpoint between the T3 and T10 vertebrae and the convex topside of the first elevated support end supports the patient's face), and the apex of the pelvic support unit supports a position on the spine at point between the L5 vertebra to 1 inch down from the top of the sacrum (claim 7- and wherein the convex topside of the second support unit supports the midpoint between L4 vertebrae and the sacrococcygeal ligament (SL)).
With respect to claim 2, Jahangiri discloses The method of claim 1, wherein the face support unit is configured to be slidable and releasably lockable along the longitudinal axis of the base unit both towards and away from the chest support unit so as to form a first gap from the face support unit and the chest support unit (claim 7- a first support unit having a convex topside and configured to be slidable and releasably lockable along the longitudinal axis of the base unit both towards and away from the first elevated support end so as to form an intermediary gap between the first support unit and the first elevated support end); and wherein the pelvic support unit is configured to be slidable and releasably lockable along the longitudinal axis of the base unit both towards and away from the chest support unit so as to form a second gap between the pelvic support unit and the chest support unit (claim 7- a second support unit having a convex topside and configured to be slidable and releasably lockable along the longitudinal axis both towards and away from the first support unit so as to be capable of forming an intermediary gap between the second support unit and the first support unit).
With respect to claim 16, Jahangiri discloses The method of claim 1, wherein the face, pelvic, and chest support units are not slidable along the longitudinal axis on the base, such that they are fixed in place (claim 7- configured to be slidable and releasably lockable).
Allowable Subject Matter
Claims 1-20 as presented in the claims filed February 9, 2023, would be allowed over the prior art of record if rewritten to overcome the Double Patenting rejection above or upon the filing of a Terminal Disclaimer. The following is an examiner’s statement of reasons for allowance:
Claim 1 would be allowable because the closest prior art of record fails to disclose A method of using a spinal support device on a person: providing a spinal support device comprising a base unit having a longitudinal axis along first and second ends, and having a face support unit defining the first end, a pelvic support unit defining the second end, and a chest support unit positioned between said face and pelvic support units, wherein the pelvic and chest support units each have a convex shaped topside with an apex; and positioning the person on the device in a prone position, wherein the face of the person is positioned on the face support unit, the apex of the chest support unit supports the center, or within .5 inches up or down therefrom, of the disc between the T6 and T7 vertebrae, and the apex of the pelvic support unit supports a position on the spine at point between the L5 vertebra to 1 inch down from the top of the sacrum.
The closest prior art of record is Shah et al US 2013/0074264 which discloses A method of using a spinal support device on a person (Fig 1): providing a spinal support device comprising a base unit having a longitudinal axis along first and second ends (Fig 1, base 100), and having a face support unit defining the first end (Fig 3, face support 110), a pelvic support unit defining the second end (Fig 3, pelvic support 120), and a chest support unit positioned between said face and pelvic support units (Fig 3, chest support 118), wherein the pelvic and chest support units each have a convex shaped topside with an apex (Fig 4, pelvic support 120 and chest support 118 shown convex with an apex); and positioning the person on the device in a prone position, wherein the face of the person is positioned on the face support unit (Fig 4, [0008], prone).
Shah, alone or in combination, is silent on the apex of the chest support unit supports the center, or within .5 inches up or down therefrom, of the disc between the T6 and T7 vertebrae, and the apex of the pelvic support unit supports a position on the spine at point between the L5 vertebra to 1 inch down from the top of the sacrum.
Claim 2 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to include limitations of the allowable base claim and if the Applicant overcame the double patenting rejection.
Claims 3-15 and 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hill US 2006/0010602- prone user support with a face, torso, and pelvic support
Porter US 2013/0269711- adjustable multi sectioned prone support
Coonrad et al US 5,014,375- adjustable multi sectioned prone support
Owens US 5,054,142- adjustable multi sectioned prone support
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM D BAKER whose telephone number is (571)270-3333. The examiner can normally be reached Monday-Friday 9:30-5:30.
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, Rachael E Bredefeld can be reached at (571)270-5237. 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.
/ADAM BAKER/Primary Examiner, Art Unit 3786