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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a pillow, classified in A47G9/10.
II. Claims 13-14, drawn to a method of using a pillow, classified in A61B5/4884.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process such as lying in a single position, i.e. sleeping on said pillow.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different maingroups/subgroups or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mark Farrell on October 30th, 2025 a provisional election was made without traverse to prosecute the invention of I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-14 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 11 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 10. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 4 and 6-7 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 4, the phrase "such as, but not limited to," renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the phrase "such as, but not limited to," renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 6 and 7 recite the limitations "the second segment and the fourth segment are contoured to elevate a head position of a subject at a plurality of angles […] to cause the horizontal canal of an inner ear of the subject to be vertical" and “wherein the first segment is contoured […] to cause the membranous labyrinth of the horizontal canal of the subject's inner ear to be vertical” (emphasis added), respectively. The disclosure shows first segment 104 in Fig. 2a and in use as “Position 1” in Fig. 3, second segment 106 in Fig. 2b and in use as “Position 2” in Fig. 3, third segment 108 in Fig. 2c and in use as “Position 3” in Fig. 3, and fourth segment 110 in Fig. 2d and in use as “Position 4” in Fig. 3. The second and fourth segment accommodate a face up (2b) and face down position (2d), perpendicular to a side-lying position as shown in Figs. 2a and 2c. It is unclear how the “horizontal canal of an inner ear” or “membranous labyrinth of the horizontal canal” can both be vertical while they are in two different perpendicular positions, i.e. side-lying and face down/up. “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 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) 1-3, 5-10, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murphy (US 2020/0268183).
Regarding Claim 1, Murphy discloses a pillow (100), comprising:
a surface comprising a plurality of segments (101-115) that are sequentially arranged on the surface, wherein the plurality of segments are contoured to bring the head of a subject into respective positions during a roll maneuver of the subject while the pillow is in a flat position (see Figs. 8-9).
Regarding Claim 2, Murphy discloses wherein each segment of the plurality of segments is contoured on either side of a horizontal axis of the surface of the pillow (see Figs. 3 and 4).
Regarding Claim 3, Murphy discloses wherein the plurality of segments are made of a range of materials comprising at least one of a foam material, a wool bolus material, a micro fiber material, a down cluster, and a latex material (see para. [0045]).
Regarding Claim 5, Murphy discloses wherein the plurality of segments comprise a first segment (107), a second segment (103), a third segment (113), and a fourth segment (102).
Regarding Claim 6, as best understood, Murphy discloses wherein the second segment and the fourth segment are contoured to elevate a head position of a subject at a plurality of angles such as, but not limited to, 25 degrees from the gravitational vector to cause the horizontal canal of an inner ear of the subject to be vertical (see Figs. 8-9).
Regarding Claim 7, as best understood, Murphy discloses wherein the first segment is contoured to change the head position of the subject in certain positions to cause the membranous labyrinth of the horizontal canal of the subject's inner ear to be vertical and thereby parallel to the gravitational vector (see Figs. 8-9).
Regarding Claim 8, “wherein a set of instructions to perform the roll maneuver is specified on each segment of the plurality of segments, wherein the set of instructions comprises a marking to position the head of the subject on a corresponding segment, wherein the marking is on either side of the horizontal axis of the surface” is considered to be printed matter. “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining ‘[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.’).” See MPEP 2112.01(III), The set of “instructions” claimed are merely for how to use the pillow and are not functionally related such that the instructions limitation describe a characteristic or feature of the pillow. As such, the set of instructions and markings as claimed have been given no patentable weight.
Regarding Claim 9, see Claim 8 rejection. Also it has been held that the recitation with respect to the matter 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. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding Claim 10, Murphy discloses wherein each segment of the plurality of segments is adapted to be engaged with one or more other segments of the plurality of segments to form the surface of the pillow (see Fig. 1).
Regarding Claim 11, Murphy discloses wherein each segment of the plurality of segments is adapted to be engaged with one or more other segments of the plurality of segments to form the surface of the pillow (see Fig. 1).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murphy (US 2020/0268183).
Regarding Claim 4, as best understood, Murphy fails to disclose wherein the pillow, in the flat position, comprises a plurality of dimensions of a thickness of 75 mm, a width of 300 mm, and a length of 600 mm. Murphy states in para. [0047], “dimensions and geometries of the various portions depicted herein are not intended to be restrictive of the invention, and other dimensions or geometries are possible.” Applicant has not established criticality for the claimed dimensions. It would have been obvious matter of design choice to change the size of Murphy as required by the claim, 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).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murphy (US 2020/0268183) in view of Hawkins (US 7,681,263).
Regarding Claim 12, Murphy fails to disclose wherein each segment of the plurality of segments is adapted to be engaged with one or more other segments of the plurality of segments using a snap-fit mechanism. Hawkins teaches wherein each segment of a plurality of segments (12, 14, 16) is adapted to be engaged with one or more other segments of the plurality of segments using a snap-fit mechanism (see Col. 3, Lines 23-26). Murphy and Hawkins are analogous art because they are from the same field of endeavor, i.e. pillows. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the segments of Murphy with the snap-fit mechanism of Hawkins. The motivation would have been to make the pillow of Murphy separable, thus making the pillow easy to launder certain segments and easily portable. It has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177,179.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
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.
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/ERIC J KURILLA/Primary Examiner, Art Unit 3619