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 .
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.
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Claims 1, 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12, and 24 of copending Application No. 17/731,839 in view of Mallinger (US 8,818,295). Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and copending Application No. 17/731,839 in view of are directed for an apparatus for supporting an individual comprising first bladder that is configured to be positioned beneath the hips of the individuals, a valve in fluid communication with the bladder, the apparatus is nonferrous, and the apparatus is used with MRI, wherein the first bladder has a midpoint centered between the first end and the second end, wherein the second end of the first bladder is spaced from the first end of the first bladder in the first direction along the longitudinal axis a second bladder having a first end, a second end, and a midpoint centered between the first end and the second end of the second bladder, wherein the midpoint of the second bladder is axially spaced along the longitudinal axis in the first direction from the midpoint of the first bladder, wherein the second bladder is configured to be positioned beneath the lower back of the individual, wherein the second bladder is configured to expand upon receiving air from the air supply in order to elevate the upper back of the individual relative to the hips of the individual. But, copending Application No. 17/731,839 when the second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated at least 12 inches above at least one other portion of the upper surface of the apparatus.
Mallinger discloses plurality of bladders and teaches separately inflating the bladders and teaches that when second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated at least 12 inches above at least one other portion of the upper surface of the apparatus (col. 4, lines 17-33).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized teaching of when the second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated at least 12 inches above at least one other portion of the upper surface of the apparatus in the invention of copending Application No. 17/731,839, to be able to expand second bladder to specific height accordingly to different patient’s comfort and procedure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-9, 11-17, 20-26 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 2022/0280366), in view of Ferguson et al. (US 2006/0174895; hereinafter Ferguson), in view of Mallinger (US 8,181,295).
Regarding claim 1, Johnson discloses a kyphotic lift for MRI imaging bed. Johnson shows an apparatus for supporting an individual at least partially positioned within a magnetic resonance imaging (MRI) machine (see fig. fig. 1B, 3A, 3B and 4B; par. [0025]), wherein the individual has hips, legs and an upper back (see fig. 4A-B), the apparatus having a longitudinal axis and an upper surface (see 1B, 3A, 3B and 4B), the apparatus comprising: a first bladder that is configured to be positioned beneath the hips of the individual (see par. [0033], [0043]), wherein the first bladder has a first end and an opposed second end that is spaced from the first end along the longitudinal axis (see fig. 1B, 3A, 3B and 4B), wherein the first bladder is configured to expand upon receiving air from an air supply (see fig. 1B, 3A, 3B and 4B; par. [0045], [0046], [0047], [0055]); and a valve in fluid communication with the first bladder, wherein the valve is configured to selectively allow air from the air supply into the first bladder (see par. [0045]), wherein the apparatus is nonferrous (see par. [0027]).
Furthermore, Johnson shows wherein the first bladder has a midpoint centered between the first end and the second end (see fig. 1B, 3B, 4B and 5), wherein the second end of the first bladder is spaced from the first end of the first bladder in the first direction along the longitudinal axis (see fig. 1B, 3B, 4B and 5).
But, Johnson fails to explicitly state a second bladder having a first end, a second end, and a midpoint centered between the first end and the second end of the second bladder, wherein the midpoint of the second bladder is axially spaced along the longitudinal axis in the first direction from the midpoint of the first bladder, wherein the second bladder is configured to be positioned beneath the lower back of the individual, wherein the second bladder is configured to expand upon receiving air from the air supply in order to elevate the upper back of the individual relative to the hips of the individual, wherein, when the second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated at least 12 inches above at least one other portion of the upper surface of the apparatus.
Ferguson discloses an adjustable orthopedic positioning device and method of use. Ferguson teaches a second bladder (see plurality of chambers 12, 14, 16 in fig. 3-6; par. [0028]) having a first end (see fig. 3-6; par. [0026]), a second end (see fig. 3-6; par. [0026]), and a midpoint centered between the first end and the second end of the second bladder (see fig. 3-6; par. [0026]), wherein the midpoint of the second bladder is axially spaced along the longitudinal axis in the first direction from the midpoint of the first bladder (see fig. 4 and 6), wherein the second bladder is configured to be positioned beneath the lower back of the individual (see fig 1 and par. [0023]), wherein the second bladder is configured to expand upon receiving air from the air supply (see par. [0026]), wherein, when the second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated above at least one other portion of the upper surface of the apparatus (see par. [0026], the examiner notes that when one of the bladder in fig. 4 or 6 is expanded, a portion of the upper surface of the apparatus above the expanded bladder will be elevated above at least one other portion of the upper surface of the apparatus.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of a second bladder having a first end, a second end, and a midpoint centered between the first end and the second end of the second bladder, wherein the midpoint of the second bladder is axially spaced along the longitudinal axis in the first direction from the midpoint of the first bladder, wherein the second bladder is configured to be positioned beneath the lower back of the individual, wherein the second bladder is configured to expand upon receiving air from the air supply in order to elevate the upper back of the individual relative to the hips of the individual, wherein, when the second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated above at least one other portion of the upper surface of the apparatus in the invention of Johnson, as taught by Ferguson, to provide several bladders that can be individually inflated or deflated to elevate different portion of the patient.
But, Johnson and Ferguson fail to explicitly state that the elevation is at least 12 inches.
Mallinger discloses plurality of bladders and teaches separately inflating the bladders and teaches that when second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated at least 12 inches above at least one other portion of the upper surface of the apparatus (col. 4, lines 17-33).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized teaching of when the second bladder is fully expanded, at least a portion of the upper surface of the apparatus above the second bladder is elevated at least 12 inches above at least one other portion of the upper surface of the apparatus in the invention of Johnson and Ferguson, as taught by Mallinger, to be able to expand second bladder to specific height accordingly to different patient’s comfort and procedure.
Regarding the limitations “in order to elevate the hips of the individual relative to the upper back of the individual” and “in order to elevate the upper back of the individual relative to the hips of the individual " directed to the intended use of the invention. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Therefore, as taught, the combined invention disclosed by Johnson, Ferguson and Mallinger is capable of performing the functions as set forth by applicant.
Regarding claim 2, Johnson shows a conduit in fluid communication with the valve, wherein the conduit is configured to communicate air from the air supply to the first bladder (see par. [0044], [0045]).
Regarding claim 3, Johnson shows wherein the valve is a first valve (see par. [0046]), wherein the apparatus further comprises a second valve that is in fluid communication with the bladder and configured to be actuated to release air from the first bladder (see par. [0046]).
Regarding claim 4, Johnson shows wherein the first bladder is elongated between the first end and the second end (see fig. 1A, 3B and 4B).
Regarding claim 5, Johnson shows wherein, when the first bladder is in an inflated condition, the upper surface of the apparatus above the first end of the first bladder is at a greater height than the upper surface of the apparatus above the second end of the first bladder (see fig. 3B and 4B).
Regarding claim 6, Johnson shows wherein the apparatus is at least partially wedge-shaped (see fig. 3A, 3B and 4B).
Regarding claim 7, Johnson shows wherein the first bladder is further configured to be positioned beneath the legs of the individual (see fig. 3A Abd 4B).
Regarding claim 8, Johnson shows wherein the upper surface of the apparatus defines longitudinally extending ridges (see 136a and 136b in fig. 1A; par. [0032]).
Regarding the limitations of claim 1 “that inhibit the individual from sliding transversely to the longitudinal axis of the apparatus" directed to the intended use of the invention. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Therefore, as taught, the invention Johnson, Ferguson and Mallinger is capable of performing the functions as set forth by applicant. Also, see MPEP 2114.
Regarding claim 9, Johnson shows wherein the individual has a lower back and buttocks, wherein, when the first bladder is in an inflated condition, the upper surface of the apparatus defines a structured profile that is configured to be complementary to a contour of at least a portion of the buttocks and the lower back of the individual (see fig. 4B).
Regarding claim 11, Johnson shows a rapid deflation system that is configured to, when engaged, open up large openings in bladder (see par. [0044]), and Johnson shows plurality of bladders (see fig. 5), and the same rapid deflation system applies to the plurality of bladders shows in fig. 5).
Regarding claim 12, Johnson shows wherein the apparatus comprises a valve system (see par. [0045]), wherein the valve system comprises the valve (see par. [0045]), wherein the valve system is configured to selectively allow air from the air supply into one of the first or second bladders and selectively release air from the first and second bladders (see par. [0055]).
Regarding claim 13, Johnson discloses a kyphotic lift for MRI imaging bed. Johnson shows a system comprising: a magnetic resonance imaging (MRI) machine (see abstract; par. [0025], claim 24), wherein the MRI machine comprises a bed having a top portion (see par. [0028], [0029]); and an apparatus as in claim 1 any one of the preceding claims, wherein the apparatus is positioned on the top portion of the bed (see par. [0029]).
Regarding claim 14, Johnson shows wherein the apparatus is coupled to the bed (see par. [0029]).
Regarding claim 15, Johnson shows wherein the apparatus is configured to rotate about a vertical axis that is perpendicular to the longitudinal axis (see fig. 3A-3E).
Regarding claim 16, Johnson shows further comprising the air supply (see 365 in fig. 3A; par. [0045]).
Regarding claim 17, Johnson shows wherein the air supply is a pump (see par. [0045]).
Regarding claim 20, Johnson shows comprising a vacuum supply that is configured to be selectively fluidly coupled to the first bladder (see par. [0043], [0047]).
Regarding claim 21, Johnson shows the method comprising: positioning the individual so that the hips of the individual are above the first bladder (see fig. 4A); inflating the first bladder until a lower portion of the body is sufficiently elevated that the head of the patient is receivable within the head coil (see fig. 4A; par. [0050]).
Regarding claim 22, Johnson shows with the individual at least partially positioned within the MRI machine, generating, using the MRI machine, images of the individual (see claim 24).
Regarding claim 23, Johnson shows ceasing use of the MRI machine (see claim 24, the examiner notes that after the imaging procedure is done then the MIR machine will be ceased); and deflating the first bladder of the apparatus (see par. [0043], [0047]).
Regarding claim 24, Regarding the limitations “... to raise the shoulders of the individual" directed to the intended use of the invention. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Therefore, as taught, the combined invention disclosed by Johnson, Ferguson and Mallinger is capable of performing the functions as set forth by applicant.
Regarding claim 25, Johnson, Ferguson and Mallinger disclose the invention as substantially as described in the 103 rejection above, furthermore, Ferguson teaches that the first and second bladders overlap along the longitudinal axis (see 18 in par. [0026], also see fig. 4 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized the teaching of the first and second bladders overlap along the longitudinal axis in the invention of Johnson, to provide a compact single patient adjustable positioning device with multiple of expandable bladders.
Regarding claim 26, Johnson, Ferguson and Mallinger disclose the invention as substantially as described in the 103 rejection above, furthermore, Mallinger teaches when the first bladder is inflated, the upper surface above the first bladder slopes downwardly in the first direction (see fig. 1 and 3), when the second bladder is inflated, the upper surface above the second bladder slopes upwardly in the first direction (see fig. 1 and 3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed the invention, to have utilized the teaching of when the first bladder is inflated, the upper surface above the first bladder slopes downwardly in the first direction, when the second bladder is inflated, the upper surface above the second bladder slopes upwardly in the first direction in the invention of Johnson and Ferguson, as taught by Mallinger, to provide inflated or deflated the plurality of bladders in specific shape to elevate different portion of the patient.
Response to Arguments
The previous drawing object has been withdrawn in view of Applicant filling of drawings on 06/13/2025.
The previous rejection under 35 USC 112 (b) has been withdrawn in view of Applicant cancelation of claim 10, and amendments to claims 21- and 24.
Applicant’s arguments with respect to prior art rejection have been considered but are moot because the new ground of rejection does not rely on any rejection applied in the prior office action of record for any teaching or matter specifically challenged in the argument. The examiner has provided new prior art Ferguson and Mallinger to address the amended claim 1.
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 SHAHDEEP MOHAMMED whose telephone number is (571)270-3134. The examiner can normally be reached Monday to Friday, 9am to 5pm.
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, Anne M Kozak can be reached at (571)270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAHDEEP MOHAMMED/Primary Examiner, Art Unit 3797