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 Rejections - 35 USC § 112
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 1-11 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.
Regarding claim 1, it is unclear what is meant by “the first and second surfaces extend opposite to each other between the perimeter side”. The specification and drawings describe a first and second surfaces but does not extend opposite to each other nor between the perimeter side. Fuhrer there is only on perimeter side claimed such that there can not be “between” the perimeter side.
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 and 6-11 are is/are rejected under 35 U.S.C. 102a1 as being anticipated by Oohira et al. (US 20050015037).
Regarding claim 1, Oohira teaches an article of manufacture comprising:
a piece of material having a perimeter side, a first surface, and a second surface (figures 1a-b), the piece of material forming a mammogram (intended use) pad configured to cushion a user's breast to help reduce pain to the breast caused by a mammogram (intended use) wherein: the piece of material is sized and shaped to position on a user's breast (intended use); the perimeter side defines the perimeter of the piece of material extending between the first and second surfaces (figures 1a-b); the first and second surfaces extend opposite to each other between the perimeter side (figures 1a-b); and the piece of material comprises a radiolucent foam pad configured not to interfere with the x-ray imaging of a mammogram (para 66, intended use).
Regarding claim 2, Oohira teaches the piece of material further comprises an adhesive such that the piece of material is adhereable and removable from adherence to a user's skin when the piece of material is positioned on the user's breast (para 55, intended use).
Regarding claim 3, Oohira teaches the first surface comprises the radiolucent foam pad configured not to interfere with the x-ray imaging of a mammogram; and the second surface comprises a radiolucent piece of fabric configured not to interfere with the x-ray imaging of a mammogram (para 66, intended use).
Regarding claim 4, Oohira teaches the perimeter side is X-shaped (figure 1a).
Regarding claim 6, Oohira teaches a method of using the article of manufacture of claim 1 comprising positioning the piece of material on a user's breast such that the first surface faces toward the user's skin to cushion the user's breast to help reduce pain to the breast caused by a mammogram (figures 1a-b, intended use).
Regarding claim 7, Oohira teaches conducting a mammogram on the user's breast with a mammogram machine while the piece of material is positioned on the user's breast (figures 1a-b, intended use).
Regarding claim 8, Oohira teaches removing the piece of material from the positioning on the user's breast (figures 1a-b, intended use).
Regarding claim 9, Oohira teaches a method of using the article of manufacture of claim 2 comprising positioning and adhering the piece of material on a user's breast such that the first surface faces toward the user's skin to cushion the user's breast to help reduce pain to the breast caused by a mammogram (figures 1a-b, intended use).
Regarding claim 10, Oohira teaches conducting a mammogram on the user's breast with a mammogram machine while the piece of material is positioned and adhered on the user's breast (figures 1a-b, intended use).
Regarding claim 11, Oohira teaches removing the piece of material from the user's breast (figures 1a-b, intended use).
Claim(s) 1-4 and 6-11 are is/are rejected under 35 U.S.C. 102a1 as being anticipated by Raimondo (US 5919180).
Regarding claim 1, Raimondo teaches an article of manufacture comprising:
a piece of material having a perimeter side, a first surface, and a second surface (figures 1-4), the piece of material forming a mammogram pad configured to cushion a user's breast to help reduce pain to the breast caused by a mammogram (intended use) wherein: the piece of material is sized and shaped to position on a user's breast; the perimeter side defines the perimeter of the piece of material extending between the first and second surfaces (figures 1-4); the first and second surfaces extend opposite to each other between the perimeter side (figures 1-4); and the piece of material comprises a radiolucent foam pad configured not to interfere with the x-ray imaging of a mammogram (intended use).
Regarding claim 2, Raimondo teaches the piece of material further comprises an adhesive such that the piece of material is adhereable and removable from adherence to a user's skin when the piece of material is positioned on the user's breast (figures 1-4, intended use).
Regarding claim 3, Raimondo teaches the first surface comprises the radiolucent foam pad configured not to interfere with the x-ray imaging of a mammogram; and the second surface comprises a radiolucent piece of fabric configured not to interfere with the x-ray imaging of a mammogram (figures 1-4, intended use).
Regarding claim 4, Raimondo teaches the perimeter side is X-shaped (figure 2).
Regarding claim 6, Raimondo teaches a method of using the article of manufacture of claim 1 comprising positioning the piece of material on a user's breast such that the first surface faces toward the user's skin to cushion the user's breast to help reduce pain to the breast caused by a mammogram (figures 1-4, intended use).
Regarding claim 7, Raimondo teaches conducting a mammogram on the user's breast with a mammogram machine while the piece of material is positioned on the user's breast (figures 1-4, intended use).
Regarding claim 8, Raimondo teaches removing the piece of material from the positioning on the user's breast (figures 1-4, intended use).
Regarding claim 9, Raimondo teaches a method of using the article of manufacture of claim 2 comprising positioning and adhering the piece of material on a user's breast such that the first surface faces toward the user's skin to cushion the user's breast to help reduce pain to the breast caused by a mammogram (figures 1-4, intended use).
Regarding claim 10, Raimondo teaches conducting a mammogram on the user's breast with a mammogram machine while the piece of material is positioned and adhered on the user's breast (figures 1-4, intended use).
Regarding claim 11, Raimondo teaches removing the piece of material from the user's breast (figures 1-4, intended use).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oohira.
Regarding claim 5, Oohira fails to teach the piece of material has a length of about 5.23 inches, a width of about 3.5 inches, and a thickness between the first surface and the second surface of about 0.16 inches.
However, it would have been an obvious to one having ordinary skill in the art at the time the invention was made to adapt claimed size, 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. Thus, one would be motivated to adapt a different size for different body part to provide comfort.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOON K SONG whose telephone number is (571)272-2494. The examiner can normally be reached M to Th 10am to 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Makiya can be reached at 571-272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOON K SONG/Primary Examiner, Art Unit 2884