DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Claims 18-23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 18, 2026.
Specification
The disclosure is objected to because of the following informalities:
1) On page 1, in paragraph 0001, line 2: The phrase --(now U.S. Patent No. 11,801,185)-- should be inserted after the date “January 12, 2022”.
2) On page 17, in paragraph 0082, line 7: The term “bend” should be changed to
--end--.
Appropriate correction is required.
Claim Objections
Claims 2, 7 and 16 are objected to because of the following informalities:
1) In the last line of claims 2 and 16: The term --of-- should be inserted after the term “edge”.
2) In claim 7, line 2: “incudes” should be changed to --includes--.
Appropriate correction is required.
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); and 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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 4 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 8,661,586. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 4 and 9 are generic to all that is recited in claim 15 of U.S. Patent No. 8,661,586. In other words, claim 15 of U.S. Patent No. 8,661,586 fully encompasses the subject matter of claims 2, 4 and 9 and therefore anticipates claim 2, 4 and 9. Since claims 2, 4 and 9 are anticipated by claim 15 of the patent, they are not patentably distinct from claim 15. Thus the invention of claim 15 of the patent is in effect a “species” of the “generic” invention of claims 2, 4 and 9. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 2, 4 and 9 are anticipated (fully encompassed) by claim 15 of the patent, claims 2, 4 and 9 are not patentably distinct from claim 15, regardless of any additional subject matter present in claim 15.
Claims 5 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 8,661,586 in view of U.S. Patent No. 6,751,817 to Leach. Claim 15 of U.S. Patent No. 8,661,586 is considered to disclose all of the limitations as recited in claims 5 and 6 except for wherein the first arm is spaced apart from the second arm to define an open space. Leach ‘817 provides the basic teaching of an apparatus, comprising: a body element (10) including a first arm (12) and a second arm (18), the body element
configured to maintain a user in a side position (as shown in Figure 2), and wherein the first arm (12) is spaced apart from the second arm (18) to define an open space (also as shown in Figure 1 and as described in column 2, lines 49-66 and in column 3, lines 13-19). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in claim 15 of U.S. Patent No. 8,661,586 with the first and second arms taught in Leach ‘817 with a reasonable expectation of success because this would have achieved the desirable result of “[permitting] unlimited positioning options to facilitate relief from persistent back and neck pain, respiratory and digestive disorders, and to provide a sensation of closeness, comfort and security by conforming to the body of a user, thereby permitting the user to sleep comfortably through the night” as taught by Leach ‘817 (column 2, lines 14-20).
Claims 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 8,661,586 in view of U.S. Patent No. 3,327,330 to McCullough. Claim 15 of U.S. Patent No. 8,661,586 do not specifically disclose the use of a first stitch line from an end of the inner edge of the first portion towards the outer edge of the outer sleeve where the first arm is joined to the arc portion, and a second stitch line from an end of the inner edge of the second portion towards the outer edge wherein the second arm is joined to the arc portion. McCullough provides the basic teaching of an apparatus comprising a body element (10) including a first arm (11), a second arm (12), and an angled central portion (13) that joins the first arm to the second arm (as shown in Figure 1 and as described in column
1, lines 34-36), the body element including an outer sleeve and a pillow insert (as described in column 1, lines 53-56), the outer sleeve including a first portion associated with the first arm (11) and a second portion associated with the second arm (12), the outer sleeve has an outer edge and includes a first stitch line (102) from an end of the inner edge of the first portion towards the outer edge of the outer sleeve where the first arm (11) is joined to the angled central portion (13), and a second stitch line (103) from an end of the inner edge of the second portion towards the outer edge wherein the second arm (12) is joined to the angled central portion (13) (also as shown in Figures 1-3 and as described in column 1, lines 58-64). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in claim 15 of U.S. Patent No. 8,661,586 with the first and second stitch lines taught in McCullough with a reasonable expectation of success because this would have achieved the desirable results of “[relieving] neck and shoulder pain” and “[giving] relief to headaches” as taught by McCullough (column 1, lines 19-20 & 24-25 and column 2, lines 38-41).
Claims 10, 11 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 18 of U.S. Patent No. 8,661,586 in view of U.S. Patent No. 5,987,674 to Schaffner et al. Claims 15 and 18 of U.S. Patent No. 8,661,586 disclose all of the claimed limitations as recited in claims 10, 11 and 14-16 except for wherein the second arm (18) has a first portion and a second portion, the second portion including a second end of the body element (10) and extending at an angle relative to the first portion of the second arm and
in a direction away from the arc portion (14), the first end (42) of the body element is spaced apart from the second end of the body element (10) to allow access to the open space, wherein the second portion of the second arm (18) is angled inwardly towards the open space, and wherein the second portion of the second arm extends from the first portion of the second arm at a location along a length of the second arm (18) such that the second end of the body element (10) is further away from the arc portion (14) than the location is from the arc portion. Schaffner et al. provide the basic teaching of an apparatus comprising a body element (10, 40) including an arc portion (42), and an arm (44, 46) extending from the arc portion, the body element (10, 40) configured to maintain a user in a side position (as shown in Figure 5), the arm having a first portion (46) and a second portion (44), the second portion of the arm extending at an angle relative to the first portion and in a direction away from the arc portion (42), and wherein the second portion (44) of the arm extends from the first portion (46) of the arm at a location along a length of the arm such that the end of the arm is further away from the arc portion (42) than the location is from the arc portion (also as shown in Figure 5 and as described in column 5, lines 14-24). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in claims 15 and 18 of U.S. Patent No. 8,661,586 with the second portion taught in Schaffner et al. with a reasonable expectation of success because this would have achieved the desirable result of “[offering] a support range that corresponds to the motion of [a] user’s head with respect to their shoulders while also offering a support range for one or both legs of the user” as taught by Schaffner et al. (column 2, lines 62-65).
Claims 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 18 of U.S. Patent No. 8,661,586 in view of Schaffner et al. ‘674, and further in view of Leach ‘817. Claims 15 and 18 of U.S. Patent No. 8,661,586 as modified by Schaffner et al. are considered to disclose all of the limitations as recited in claims 12 and 13 except for wherein the first arm is spaced apart from the second arm to define an open space; and the first end of the body element is spaced apart from the second end of the body element to allow access to the open space. Leach ‘817 provides the basic teaching of an apparatus, comprising: a body element (10) including an arc portion (14) and a first arm (12) and a second arm (18) each extending from the arc portion, the body element configured to maintain a user in a side position (as shown in Figure 2), the first arm (12) including a first end (42) of the body element (10) and the second arm (18) including a second end (22) of the body element, wherein the first arm (12) is spaced apart from the second arm to define an open space, and the first end (42) of the body element (10) is spaced apart from the second end (22) of the body element to allow access to the open space (also as shown in Figure 1 and as described in column 2, lines 49-67 and in column 3, lines 1-4 & 13-19). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in claims 15 and 18 of U.S. Patent No. 8,661,586 as modified by Schaffner et al. with the first and second arms taught in Leach ‘817 with a reasonable expectation of success because this would have achieved the desirable result of “[permitting] unlimited positioning options to facilitate relief from persistent back and neck pain, respiratory and digestive disorders, and to provide a sensation of closeness, comfort and security by
conforming to the body of a user, thereby permitting the user to sleep comfortably through the night” as taught by Leach ‘817 (column 2, lines 14-20).
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 (i.e., changing from AIA to pre-AIA ) 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of
pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2, 4-6 and 9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leach ‘817 in view of U.S. Patent No. 4,679,262 to Davis et al. With respect to claims 2, 5 and 9, Leach ‘817 shows the claimed limitations of an apparatus, comprising: a body element (10) including a first arm (12) and a second arm (18), the body element configured to maintain a user in a side position (as shown in Figure 2), wherein the first arm (12) is spaced apart from the second arm (18) to define an open space, and wherein the body element (10) includes an arc portion (14) and the first arm (12) and the second arm (18) each extend in a direction away from the arc portion (also as shown in Figure 1 and as described in column 2, lines 49-66 and in column 3, lines 13-19). However, with further respect to claims 2 and 5, and with respect to claims 4 and 6, Leach ‘817 does not specifically disclose wherein the body element includes an outer sleeve and a pillow insert, the outer sleeve including a first portion associated with the first arm and a second portion associated with the second arm, an inner edge of the first portion of the outer sleeve and an inner edge the second portion of the outer sleeve being free of stitching; wherein each of the first portion and the second portion of the outer sleeve have stitching along an outer edge portion; the outer sleeve covers the first arm and the second arm such that the inner edge of the first portion faces the open space and the inner edge of the second portion faces the open space; and wherein the outer sleeve has an outer edge that faces away from the open space, and the outer sleeve includes a stitching along the outer edge
to form the outer sleeve. Davis et al. provide the basic teaching of an apparatus comprising a body element (30, 40) including an outer sleeve (20, 42) and a pillow insert, an inner edge (adjacent to elements 24a and 42a) of the outer sleeve being free of stitching, and the outer sleeve includes a stitching along the outer edge (26, 54) to form the outer sleeve (20, 42) (as shown in Figures 6A-7F and as described in column 7, lines 64-68; column 8; column 9 and column 10, lines 1-46). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in Leach ‘817 with the outer sleeve configuration taught in Davis et al. with a reasonable expectation of success because this would have achieved the desirable result of preventing a user from coming into contact with seams “which are likely to produce sharp or stiff edges that could cause user discomfort” as taught by Davis et al. (column 8, lines 63-68 and column 10, lines 27-31).
Claim 3 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leach ‘817 in view of Davis et al. ‘262 as applied to claim 2 above, and further in view of Schaffner et al. ‘674. Leach ‘817 discloses a condition wherein the second arm (18) extends substantially parallel to the first arm (12) (as shown in Figure 1 and as described in column 2, lines 49-63); however, Leach ‘817 as modified by Davis et al. do not specifically disclose a condition wherein the second arm (18) has a first portion and a second portion, the second portion of the second arm extending at an angle relative to the first portion of the second arm. Schaffner et al. provide the basic teaching of an apparatus comprising a body element (10, 40) including an arc portion (42), and an arm (44, 46) extending from the arc portion, the body element (10, 40)
configured to maintain a user in a side position (as shown in Figure 5), the arm having a first portion (46) and a second portion (44), the second portion of the arm extending at an angle relative to the first portion and in a direction away from the arc portion (42) (also as shown in Figure 5 and as described in column 5, lines 14-24). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in Leach ‘817 as modified by Davis et al. with the second portion taught in Schaffner et al. with a reasonable expectation of success because this would have achieved the desirable result of “[offering] a support range that corresponds to the motion of [a] user’s head with respect to their shoulders while also offering a support range for one or both legs of the user” as taught by Schaffner et al. (column 2, lines 62-65).
Claims 7 and 8 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leach ‘817 in view of Davis et al. ‘262 as applied to claim 2 above, and further in view of McCullough ‘330. Leach ‘817 as modified by Davis et al. does not specifically disclose the use of a first stitch line from an end of the inner edge of the first portion towards the outer edge of the outer sleeve where the first arm is joined to the arc portion, and a second stitch line from an end of the inner edge of the second portion towards the outer edge wherein the second arm is joined to the arc portion. McCullough provides the basic teaching of an apparatus comprising a body element (10) including a first arm (11), a second arm (12), and an angled central portion (13) that joins the first arm to the second arm (as shown in Figure 1 and as described in column 1, lines 34-36), the body element including an outer sleeve and a pillow insert (as described in
column 1, lines 53-56), the outer sleeve including a first portion associated with the first arm (11) and a second portion associated with the second arm (12), the outer sleeve has an outer edge and includes a first stitch line (102) from an end of the inner edge of the first portion towards the outer edge of the outer sleeve where the first arm (11) is joined to the angled central portion (13), and a second stitch line (103) from an end of the inner edge of the second portion towards the outer edge wherein the second arm (12) is joined to the angled central portion (13) (also as shown in Figures 1-3 and as described in column 1, lines 58-64). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in Leach ‘817 as modified by Davis et al. with the first and second stitch lines taught in McCullough with a reasonable expectation of success because this would have achieved the desirable results of “[relieving] neck and shoulder pain” and “[giving] relief to headaches” as taught by McCullough (column 1, lines 19-20 & 24-25 and column 2, lines 38-41).
Claims 10-15 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leach ‘817 in view of Schaffner et al. ‘674. With respect to claims 10-12, Leach ‘817 does the claimed limitations of an apparatus comprising a body element (10) including an arc portion (14) and a first arm (12) and a second arm (18) each extending from the arc portion, the body element configured to maintain a user in a side position (as shown in Figure 2), the first arm including a first end (42) of the body element, wherein the first arm (12) has a length shorter than a length of the second arm (18) (as shown in Figure 1), and wherein the first arm is spaced
apart from the second arm to define an open space (also as described in column 2, lines 49-67 and in column 3, lines 1-4 & 13-19). However, with further respect to claims 10 and 12, and with respect to claims 13-15, Leach ‘817 does not specifically disclose wherein the second arm (18) has a first portion and a second portion, the second portion including a second end of the body element (10) and extending at an angle relative to the first portion of the second arm and in a direction away from the arc portion (14), the first end (42) of the body element is spaced apart from the second end of the body element (10) to allow access to the open space, wherein the second portion of the second arm (18) is angled inwardly towards the open space, wherein the second portion of the second arm extends from the first portion of the second arm at a location along a length of the second arm (18) such that the second end of the body element (10) is further away from the arc portion (14) than the location is from the arc portion, and wherein the body element (10) includes an outer sleeve and a pillow insert removably disposable within the outer sleeve. Schaffner et al. provide the basic teaching of an apparatus comprising a body element (10, 40) including an outer sleeve (16) and a pillow insert (18) removably disposable within the outer sleeve (as shown in Figure 4 and as described in column 3, lines 63-67 and in column 4, lines 1-4), an arc portion (42), and an arm (44, 46) extending from the arc portion, the body element (10, 40) configured to maintain a user in a side position (as shown in Figure 5), the arm having a first portion (46) and a second portion (44), the second portion of the arm extending at an angle relative to the first portion and in a direction away from the arc portion (42), and wherein the second portion (44) of the arm extends from the first portion (46) of the arm at a location along a length of the arm such that the end of the arm is
further away from the arc portion (42) than the location is from the arc portion (also as shown in Figure 5 and as described in column 5, lines 14-24). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in Leach ‘817 with the second portion taught in Schaffner et al. with a reasonable expectation of success because this would have achieved the desirable result of “[offering] a support range that corresponds to the motion of [a] user’s head with respect to their shoulders while also offering a support range for one or both legs of the user” as taught by Schaffner et al. (column 2, lines 62-65).
With respect to claim 17, Leach ‘817 as modified by Schaffner et al. does not specifically disclose a condition wherein the second portion (44) of the second arm extends at an angle up to about 25 degrees relative to the first portion (46) of the second arm. It would have been obvious to one having ordinary skill the art before the effective filing date of the claimed invention to provide the apparatus of Leach ‘817 as modified by Schaffner et al. with a second portion of the second arm which extends at an angle up to about 25 degrees relative to the first portion of the second arm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 27, 205 USPQ 215 (CCPA 1980).
Claim 16 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Leach ‘817 in view of Schaffner et al. ‘674 as applied to claim 15 above, and further in view of Davis et al. ‘262. Leach ‘817 as modified by Schaffner et al. is considered to disclose all of the claimed
limitations as recited in claim 16 except for wherein an inner edge of the first portion of the outer sleeve (16) and an inner edge of the second portion of the outer sleeve being free of stitching. Davis et al. provide the basic teaching of an apparatus comprising a body element (30, 40) including an outer sleeve (20, 42) and a pillow insert, and an inner edge (adjacent to elements 24a and 42a) of the outer sleeve being free of stitching (as shown in Figures 6A-7F and as described in column 7, lines 64-68; column 8; column 9 and column 10, lines 1-46). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the apparatus disclosed in Leach ‘817 as modified by Schaffner et al. with the outer sleeve configuration taught in Davis et al. with a reasonable expectation of success because this would have achieved the desirable result of preventing a user from coming into contact with seams “which are likely to produce sharp or stiff edges that could cause user discomfort” as taught by Davis et al. (column 8, lines 63-68 and column 10, lines 27-31).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: U.S. Patent Nos. D1,124,713; D1,052,927; D1,011,798; D970,260; D968,130; D923,971; D914,398; D906,013; 10,736,444 and D769,649, and U.S. Patent Application Publication No. 2016/0106238 as listed in the attached PTO-892 Notice of References Cited form all illustrate the use of an apparatus comprising a body element including first and second arms, wherein the first arm has a length shorter than a length of the second arm. The remaining U.S. and foreign patent documents not relied upon and listed in the attached PTO-
892 Notice of References Cited form all share a common Applicant and common inventors with this application, and disclose the use of an apparatus comprising a body element including an outer sleeve and a pillow insert, wherein an inner edge of the outer sleeve is free of stitching.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G SANTOS whose telephone number is (571)272-7048. The examiner can normally be reached Monday-Friday 9am-11:30am and 2pm-7:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin C Mikowski can be reached at 571-272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673
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