Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 21 requires “creating the top piece of fabric with a first width greater than a second width of the bottom piece of fabric”. The originally filed disclosure does not show any difference in width between 12, 26, and 22 (see Fig. 12). Para. [0039] describes that the lengths of these sections may vary. Applicant in their remarks field 08/26/2025 states that Claim 21 has support in para. [0032] and the figures. Para. [0032] refers to the extension of the flap from the open end with no mention of widths of the top piece or bottom piece.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21 recites the limitation "creating the top piece of fabric with a first width greater than a second width of the bottom piece of fabric, where the first and second widths are along a direction perpendicular to the opening” (emphasis added). Para. [0039] of Applicant’s specification refers to lengths 50 and 52 differing, with no mention of the widths. Although not abundantly clear, it appears from Applicant’s originally filed disclosure that the “width” in claim 21 is in fact the lengths as described in para. [0039]. Further compounding this issue is Applicant’s description of the widths as “along a direction perpendicular to the opening”. There is no frame of reference provided for the opening. Does “the opening” refer to the longitudinal axis of the opening or does it refer to the direction the pillow is placed through the opening? “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).” See MPEP 2173.03.
Claim 21 further recites the limitation "the bottom side" in the second to last line of the claim. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this is limitation is referring to the “bottom piece” or a different structure of the pillow case.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-8, 13, 16-21, 23, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lusk (US 2016/0007775).
Regarding Claim 1, Lusk discloses a pillow case (100) comprising:
a top side of fabric;
a back side of fabric;
stitching (190) joining the top side of fabric to the back side of fabric, wherein at least one top side edge (122) of the top side of fabric is unstitched from at least one back side edge (121) of the back side of fabric to form an opening (120) along a bottom edge of the pillow case to provide access to an interior of the pillow case; and
a flap (150) formed as a continuous extension of the at least one top side edge toward an interior of the pillow case (see Fig. 3C), wherein
the flap extends across an entirety of the opening (see Fig. 2);
the flap is attached to only one of the top side of fabric or the back side of fabric (see Claim 14, specifically “joining a portion of the upper segment [L3] to a portion of the middle segment [L1]; and (e) joining a portion of the lower segment [L2] to a portion of the upper segment [3]”)
the flap extends inward toward the interior of the pillow case a flap length of at least 4.8 inches (see para. [0043]), and
an internal surface of the top side of fabric and the flap are continuously capable of contacting a pillow disposed inside the pillow case (see Fig. 3C and para. [0038]).
Regarding Claim 13, Lusk disclsoses a method of encasing a pillow in a pillow case, comprising:
disposing a pillow (300) in the opening of the pillow case, the pillow case having a top side of fabric, a bottom side of fabric, and a flap (150) formed as an extension of the top side of fabric, the flap sandwiched between the top side of fabric and the bottom side of fabric (see Fig. 2);
separating the flap from the top side of fabric; and
moving a bottom portion of the pillow into a space between the flap and the top side of fabric, wherein the flap extends around the bottom portion of the pillow and extends beyond the end of the back side edge of the back side fabric to completely surround the pillow with the pillow case (see par. [0038] and Figs. 7-11).
Regarding Claims 4 and 16, Lusk discloses wherein the top side of fabric is formed as a continuous sheet with the back side of fabric (see Fig. 3B).
Regarding Claims 5 and 17 Lusk discloses wherein:
the stitching is provided at a left side and a right side of the pillow case (see Fig. 3D);
the opening is disposed along a bottom edge of the pillow case (see Fig. 3C); and
the flap of the pillow case is formed from curving the continuous sheet of fabric, without stitching there along (see Fig.3C).
Regarding Claims 6 and 18, Lusk discloses wherein the stitching is a blind stitch (see para. [0032], i.e. “not visible”)
Regarding Claims 7 and 19, Lusk discloses wherein the pillow case has a rectangular shape and the opening is formed along a long side of the rectangular shape (see Fig. 3A).
Regarding Claims 8 and 20, Lusk discloses wherein the top side of fabric, the back side of fabric and the flap are formed from a single continuous sheet of material (see Fig. 3B).
Regarding Claim 21, as best understood, Lusk discloses a method of preventing visualization of both a pillow in a pillow case and of an opening of the pillow case when the pillow is disposed inside the pillow case, the method comprising:
forming a pillow case (100) from a top piece of fabric (L1), a bottom piece of fabric (L3) and a flap (150), the flap formed as an extension of the top piece of fabric, the top piece of fabric being attached (via 190) to the bottom piece of fabric each side thereof, except along the opening (120) formed at a portion of the top piece of fabric having the flap extending therefrom;
folding the flap inside the pillow case (see Fig. 2) and attaching side edges of the flap between the top piece of fabric and the bottom piece of fabric (via 190), creating the top piece of fabric with a first width (L1= 20 inches, see para. [0051]) greater than a second width (L3= 19.75 inches, see para. [0051]) of the bottom piece of fabric, where the first and second widths are along a direction perpendicular to the opening (see Fig. 2);
placing the pillow inside the opening (see Fig. 7);
extending the flap about a portion of an exterior of the pillow to prevent visualization of the pillow through the opening (see Fig. 9); and
placing the bottom side of the pillow case on a surface to prevent visualization of the opening (see Fig. 11).
Regarding Claim 23, Lusk discloses wherein the top piece of fabric is formed as a continuous sheet with the back piece of fabric (see Fig. 3B).
Regarding Claim 24, Lusk discloses wherein:
stitching (190) is provided at a left side and a right side of the pillow case (see Fig. 3D) to attach the side edges of the flap between the top piece of fabric and the bottom piece of fabric;
the opening is disposed along a bottom edge of the pillow case (see Fig. 3C); and
the flap of the pillow case is formed from curving the continuous sheet of fabric, without stitching there along (see Fig.3C).
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) 2, 3, 14, 15, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lusk (US 2016/0007775).
Regarding Claims 2 ,14, and 22, Lusk discloses in para. [0043] the flap length is approximately 6 inches, 10 inches, or between approximately 5-7 inches. Lusk fails to disclose the specific range of wherein the flap length is from about 4.8 to about 9.0 inches. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I). As such it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the flap length of Lusk from about 4.8 to about 9.0 inches, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955).
Regarding Claims 3 and 15, Lusk discloses in para. [0043] the flap length is approximately 6 inches, 10 inches, or between approximately 5-7 inches. Lusk fails to disclose the specific range of wherein the flap length is from about 4.8 to about 5.5 inches. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I). As such it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the flap length of Lusk from about 4.8 to about 5.5 inches, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955).
Response to Arguments
Applicant's arguments filed 08/26/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that New independent claim 21 finds support in the original specification, such as in paragraph [0032] as well as in the Figures, such as FIG. 2, for example. — Examiner respectfully disagrees. See rejection under 35 USC § 112 (a) above.
Regarding Applicant’s argument that Applicant submits that Lusk is not enabled with respect to how to make the invention. More specifically, the procedure described with respect to FIG. 3C would not create the product. — Examiner respectfully disagrees. Lusk’s method is enabled due to the fact the pillowcase can be inverted through the pouch 150 to achieve the pillowcase shown in at least Fig. 2. Assuming, arguendo, that Applicant disagrees with this interpretation and the operability of Lusk is still in question, Examiner refers Applicant to MPEP 2121.01. “The disclosure in an assertedly anticipating reference must provide an enabling disclosure of the desired subject matter; mere naming or description of the subject matter is insufficient, if it cannot be produced without undue experimentation” (emphasis added). Lusk’s disclosure clearly enables one skilled in the art to produce the pillowcase in Lusk’s Fig. 2, as evidenced by Applicant’s remark that “As one guess, the flap of FIG. 3C may need to be folded back onto sheet 1 instead of forward onto sheet 3 as shown”.
Regarding Applicant’s argument that Claim 1 describes the feature that the flap is attached to only one of the top or the bottom side of fabric of the pillow case. This feature is neither taught nor fairly suggested by Lusk. — Examiner respectfully disagrees. Para. [0051] and Claim 14 describe how “lower segment”, i.e. flap 150 is attached to an “upper segment”, i.e. segment L3.
Regarding Applicant’s argument that claim 13 includes the feature that the flap is sandwiched between the top side of fabric and the bottom side of fabric. As discussed above, it is unclear how the flap is disposed with the device of Lusk — Examiner respectfully disagrees. The flap 150 of Lusk is sandwiched between the top side of fabric and the bottom side of fabric when fully assembled and inverted, as shown in at least Fig. 2
Regarding Applicant’s argument that the flap length is beyond a design choice that may be modified so as to be within the level of ordinary skill in the art. In the instant case, the length of the flap is designed so that the flap extends around the pillow and prevents visualization of the pillow (see claim 21). As such, such a feature is more than a design choice, but provides a feature that is not realized by the prior art. — Examiner respectfully disagrees. The flap length disclosed in para. [0043] of Lusk is 6, 10, or between approximately 5-7 inches. Therefore, Lusk’s ranges overlap or lie inside the claimed ranges. A prima facie case of obviousness exists in these instances. Modifying Lusk with the required ranges is within ordinary skill.
For clarity’s sake, Examiner provides the below comparison of Fig. 12 of Applicant’s invention to Fig. 3B of Lusk’s invention. The labels are from the specification of Applicant’s application and their equivalent terms used in the claims.
PNG
media_image1.png
772
902
media_image1.png
Greyscale
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ERIC J KURILLA whose telephone number is (571)270-7294. The examiner can normally be reached Monday-Thursday 7AM-6PM.
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, Anita Coupe can be reached at 571-270-3614. 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.
/ERIC J KURILLA/ Primary Examiner, Art Unit 3619