DETAILED ACTION
This office action is in response to the remarks and amendments filed on 12/12/25. Claims 1-3 and 6-20 are pending. Claims 1-3 and 6-20 are rejected.
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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 1-3, 7-8, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 9,949,882 to Holladay in view of US Patent Application Publication 2007/0299153 to Hager et al. (“Hager”)..
Claim 1. An operating table anti-skid pad (Holladay, Fig. 7), the pad comprising: a body having a longitudinal axis, a first edge, a second edge spaced apart and opposite from the first edge, a third edge extending between the first edge and the second edge, and a fourth edge opposite and spaced apart from the third edge (Holladay, Fig. 7; the pad is seen to have four edges); wherein the body comprises non-viscoelastic, resiliently deformable material having an instantaneous rate of recovery, wherein the material recovers at the same speed as an indenter foot is removed after indentation such that contact between the material and the indenter foot is maintained during a recovery time test per ASTM D3574-17, Test M (Holladay does not disclose specific material qualities, however various types of foam are known in the prior art, including foam with an instantaneous recovery rate, at taught by Hager, in Table 1B, Examples 1, 4, and 5, which exhibit 95% height recovery in zero seconds; also see paragraphs [0116], [0117], and [0119]; it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the claimed foam since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice; In re Leshin, 125 USPQ 416; furthermore Applicant has not disclosed that there is any criticality to the specific chosen foam, and it would have been obvious to select a foam with the desired recovery rate since doing so would have simply been combining prior art elements according to known methods to yield predictable and obvious results) wherein the material comprises an active response polyurethane having the instantaneous rate of recovery (Hagar, Table 1B, Examples 1, 4, and 5) or air infused polyurethane comprised of a combination of toluene diisocyanate (TDI) (Hagar discloses the use of TDI in at least paragraphs [0023] and [0025]) [[or]] and a high molecular weight polyol (as best understood from Applicant’s disclosure, a high-molecular weight polyol has “a molecular weight from 2000 to 10,000”; Hagar discloses prior art knowledge of such polyols for use with soft polyurethane foams in paragraph [0005], which discloses “a polyol having a molecular weight of 2000 to 8000”; it would have been an obvious matter of material choice for a user of Halladay’s apparatus to select the claimed foam, since doing so would have been simply the use of a known technique with a known device to yield predictable and obvious results; In re Leshin, 125 USPQ 416), and wherein the material provides substantially instantaneous customized support to a shape of a patient laying thereon and substantially instantaneously responds to shifting of the patient such that the body may substantially instantaneously contour to the patient in a new position (regarding foam with an instantaneous response, such foam is known in the prior art, at least as seen in ADMET1 and ADMET2, both of which disclose video of polyurethane foam that exhibits the claimed instantaneous recovery property; moreover, with respect to the technical definition of an instantaneous response as determined by ASTM D3574, the foams disclosed by Hagar in Table 1 have a height recovery time of zero seconds;, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use any of the foams of Hagar, ADMET1, or ADMET2 as an obvious matter of design choice in order to optimize a user’s comfort, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice; In re Leshin, 125 USPQ 416).
Claim 2. The pad of claim 1, wherein the rate of recovery is 1.5 seconds or less (see Hager,Table 1B, Examples 1, 4, and 5, which exhibit 95% height recovery in zero seconds).
Claim 3. The pad of claim 2, wherein the rate of recovery is 1.0 seconds or less (see Hager,Table 1B, Examples 1, 4, and 5, which exhibit 95% height recovery in zero seconds).
Claim 7. The pad of claim 1, wherein the body has a glass transition temperature of less than -20 degrees C (Hagar paragraph [0003] teaches prior art knowledge of flexible polyurethane foams with “a glass transition point within a range of from -80⁰C to -60⁰ C”; it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the claimed foam since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice; In re Leshin, 125 USPQ 416).
Claim 8. The pad of claim 7, wherein the glass transition temperature is less than -50 degrees C (Hagar paragraph [0003] teaches prior art knowledge of flexible polyurethane foams with “a glass transition point within a range of from -80⁰C to -60⁰ C”; it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the claimed foam since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice; In re Leshin, 125 USPQ 416).
Claim 12. The pad of claim 1, wherein the body further has a first surface extending between the first edge, the second edge, the third edge, and the fourth edge and a second surface opposite and spaced apart from the first surface, wherein the body has a thickness as measured between the first surface and the second surface, wherein the thickness of the body is 4 inches or less (see Holladay, column 11, lines 18-30).
Claim 13. The pad of claim 12, wherein the thickness is from about 1 inch to about 2 inches (see Holladay, column 11, lines 18-30).
Claim 14. The pad of claim 12, wherein the body has a variable the thickness (see Holladay, column 11, lines 18-30 and Fig. 7).
Claim 15. The pad of claim 1, wherein the body further has a first surface extending between the first edge, the second edge, the third edge, and the fourth edge and a second surface opposite and spaced apart from the first surface, wherein the first surface of the body defines a cutout adjacent the first edge and extending toward the second surface (Halladay teaches a cutout as seen at #730 in Fig. 7).
Claim 16. The pad of claim 15, wherein the cutout is at least partially defined by the first edge (Halladay teaches a cutout as seen at #730 in Fig. 7).
Claim 17. The pad of claim 15, wherein the cutout is semi-circular or circular as viewed in a plane defined by the first surface (Halladay teaches a semi-circular cutout as seen at #730 in Fig. 7).
Claim 18. The pad of claim 1, further comprising one or more straps extending from the third edge or the fourth edge (Halladay teaches a cutout as seen at #140, 141, 142, and 143 in Fig. 7).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent 9,949,882 to Holladay and US Patent Application Publication 2007/0299153 to Hager et al. (“Hager”), in view of US Patent Application Publication 2022/0289897 to Lewis et al. (“Lewis”).
Claim 6. The pad of claim 1, wherein the material is a non-viscoelastic foam (by definition a non-viscoelastic foam has a recovery rate of less than 3 seconds as discussed in paragraph [0175] of Lewis; Hager, Table 1B, teaches foam Examples 1, 4, and 5, which exhibit 95% height recovery in zero seconds and are therefore non-viscoelastic foams; note that Lewis has been cited herein, not to modify the teachings of Holladay or Hagar, but to describe an inherent property of those teachings; see MPEP §2131.01(II)).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 9,949,882 to Holladay and US Patent Application Publication 2007/0299153 to Hager et al. (“Hager”) in view of US Patent 9,161,876 to Pigazzi et al. (“Pigazzi”).
Claim 9. The pad of claim 1, wherein a static coefficient of friction of the material is 0.9 or greater (Holladay does not disclose specific material qualities, however various types of foam are known in the prior art, including foam with the claimed coefficient of friction; an instantaneous recovery rate, at taught by Pigazzi column 11, lines 36-37; it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the claimed foam since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice; In re Leshin, 125 USPQ 416).
Claim 10. The pad of claim 9, wherein the static coefficient of the material is 1.0 or greater (Holladay does not disclose specific material qualities, however various types of foam are known in the prior art, including foam with the claimed coefficient of friction; an instantaneous recovery rate, at taught by Pigazzi column 11, lines 36-37; it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the claimed foam since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice; In re Leshin, 125 USPQ 416).
Claim 11. The pad of claim 10, wherein the static coefficient of friction of the material is 1.1 or greater (see Pigazzi column 11, lines 36-37; Pigazzi discloses a coefficient of static friction of up to 1.0; however one of ordinary skill would have understood that a greater coefficient of friction would have been desirable in order to allow for a greater tilting angle as in Pigazzi Fig. 6, and therefore would have been motivated to select a known material with a coefficient of friction of 1.1 or greater).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent 9,949,882 to Holladay and US Patent Application Publication 2007/0299153 to Hager et al. (“Hager”), in view of US Patent Application Publication 2022/0000692 to Gomez.
Claim 19. The pad of claim 1, further comprising one or more arm tucking wings extending from the third edge or the fourth edge, wherein the one or more arm tucking wings are disposed closer to the first edge than to the second edge (Holladay and Hagar do not disclose “arm tucking wings”, however such structures are well known in the prior art, as taught by Gomez in at least Fig. 1, at #313A, 313B, 325A, 325B; also see discussion in the Abstract; it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide wings for that apparatus of Holladay in order to secure the position of a user’s arms, since doing so would have simply been combining prior art elements according to known methods to yield predictable and obvious results).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent 9,949,882 to Holladay and US Patent Application Publication 2007/0299153 to Hager et al. (“Hager”), in view of US Patent 12,053,092 to Stewart, Jr. (“Stewart”).
Claim 20. A system comprising: a pad of claim 1; and a vacuum sealed package, wherein the pad is disposed within the vacuum sealed package, the pad being compressed by a negative pressure within the vacuum sealed package (Holladay and Hagar do not disclose “a vacuum sealed package”, however vacuum sealed packages are known in the prior art, as taught by Stewart in at least the Abstract; it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide a vacuum-sealed package for that apparatus of Holladay for the reasons discussed by Stewart, those being “benefits for storing, shipping, and delivering the foundation”).
Response to Applicant's remarks and amendments
Regarding rejections under 35 USC 112(a), Applicant has amended claim 1, and additionally, Applicant persuasively argues on pages 5-6 of remarks that the originally filed disclosure contains sufficient information that one of ordinary skill in the art would have been able to make the claimed foam with the claimed an instantaneous recovery property. In view of existing prior art of record, and Applicant’s remarks, one of ordinary skill would have been able to make and use the claimed non-viscoelastic foam with an instantaneous recovery property. Examiner respectfully agrees. It is noted that formulations of non-viscoelastic foam with an instantaneous recovery property are known in the prior art (at least the disclosure of Hagar, as discussed in the above prior art rejections) and the rejections have been withdrawn.
Regarding rejections under 35 USC 112(b), Applicant has amended claim 1, and the rejections have been withdrawn.
With respect to claim 1, Applicant argues on pages 8-10 of Applicant’s remarks that the cited prior art does not teach the claimed invention, as amended. Specifically, Applicant alleges that the claimed invention requires a non-viscoelastic foam with an instantaneous recovery property and that the prior art does not teach such foam. Applicant argues that the cited videos of ADMET which show foam that has an instantaneous recovery, do not anticipate or make obvious the prior art at least because the videos do not disclose the formulation of the foam samples depicted in the videos. Examiner respectfully agrees, and the former prior art rejections have been withdrawn.
Additionally, Applicant argues that the cited prior art does not teach non-viscoelastic foam with an instantaneous recovery property, “wherein the material recovers at the same speed as an indenter foot is removed after indentation.” While the ADMET references do appear to teach instantaneous recover, it is again noted that the references are unclear as to if the foams have Applicant’s disclosed or claimed formulation as well as the instantaneous recovery property.
Applicant further argues that the cited art of Pigazzi teaches away from the claimed invention. While this may or may not be true, the argument is moot, as the rejections have been withdrawn and new rejections entered in this office action as necessitated by Applicant’s amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYLES A THROOP whose telephone number is (571)270-5006. The examiner can normally be reached 8:00 am to 5:00 pm.
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/MYLES A THROOP/Primary Examiner, Art Unit 3673