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.
The term “readily” in claim 24is a relative term which renders the claim indefinite. The term “readily” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 8, 22 and 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Chetlapalli et al. (USPGPub 2013/0253396).
Regarding claims 1, 8 and 22, Chetlapalli teaches that it is known to form a friction pad from three pieces of polyurethane foam [0091](Fig. 19) wherein the pieces are cut [0090] wherein the cut section may read upon a first and second segment and a pliable core material. Chetlapalli is generally silent regarding the actual assembly of the pad. However, the examiner is taking Official Notice to inform the applicant that it is common industry practice when forming pads of a plurality of types and used in a variety of fields to make a pocket or cavity by sewing or seaming edges of two layers together and fill the cavity with a core material. This is commonly done while making other materials in other fields and similar fields as well such as pillows and plush toy manufacture or car seat manufacture. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to construct the foam core pad of Chetlapalli using techniques known pad and foam core object manufacturing methods as a combination of a known product and known manufacturing methods employed in the manufacture of similar product wherein the results of said combination would be predictable based on the generally similarity of the object of Chetlapalli to those in other similar fields. Further, it is noted that although it is stated in the claim that the attachment apparatus is “designed to” secure a pressure-mitigation apparatus to an underlying surface, the claims do not actively require that the attachment apparatus be used in conjunction with the pressure mitigation apparatus. Further there is no attachment or use step provided that would indicate that it is necessary to attach or use the attachment apparatus of the current claims in conjunction with any pressure-mitigation apparatus in order to read upon the current claims. Therefore as relates to the current claims, the claim limitations relating to the association of the attachment apparatus with the pressure-mitigation apparatus will be treated as “capable of” limitations, which is to say that the prior art object must be capable of being used as claimed but it is not required that the prior art be used as claimed in order to meet the claim limitations. Further it is generally unclear how an attachment apparatus “designed to secure, to an underlying surface, a pressure mitigation apparatus” is different from an attachment apparatus not specifically designed for the same purpose. It is unclear what additional process steps or product attributes are provided by merely designing the apparatus to be employed as claimed outside of those that are clearly stated in the claim language. Further it is noted in [0091] as cited above that Chetlapalli teaches that the core foam is a higher density foam than the frictional foam exterior. As such they are different materials and would not be expected to be chemically identical or cut from the same roll of material.
Regarding claims 27-28, Chetlapalli is silent as to the dimensions of his product although it is noted that the product of Chetlapalli is a knee brace [0001] wherein based on the figures and drawings of Chetlapalli and a reasonable estimation of common human leg dimensions, it is likely that the pads of Chetlapalli are likely roughly 2.5”X2.0” and roughly 0.25” in thickness. Therefore the pads of Chetlapalli fail to meet the relative dimensions of the current claims. However, the Court has long held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 29, the product of Chetlapalli has a surface microstructure (texture) that reasonably gives that material their non-frictional properties wherein the products of Chetlapalli are reasonably shown to conform the surfaces that they are shown to be in contact with (See Fig. 16-20).
Regarding claim 30, the teachings of Chetlapalli are as shown above. Chetlapalli fails to teach the “length-to-width ratio” claimed. However, this would constitute a mere change in shape of the article of Chetlapalli wherein the Court has long held that in the absence of a new and unexpected result arising from a change of a prior art article, the device with the altered shape is not patentably distinct from the prior art device. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claims 2-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chetlapalli et al. (USPGPub 2013/0253396) as applied to claim 1, 8, 22 and 27-30 above and further in view of Ferber (US4807301).
Regarding claims 2, the teachings of Chetlapalli are as shown above. Chetlapalli fails to teach applying an adhesive to the surface of the outside of the pad to aid in adhesion. However, Ferber teaches that is general it is known to use adhesive in conjunction with pad to cause them to better adhere to surfaces on which they are present (col. 1, line 56 through col. 2, line 5). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to apply adhesive to the pads of Chetlapalli as guided by Ferber in order to gain the adhesive quality provided by the adhesive of Ferber in the invention of Chetlapalli.
Regarding claim 3, the teachings of Chetlapalli in view of Ferber are as shown above. Chetlapalli in view of Ferber fails to teach covering the adhesive strips of Ferber with a protective cover until the time of intended use. However, the examiner is taking Official Notice to inform the applicant that it is common in most fields wherein, for example, two-sided adhesives strips are employed, to leave one side covered until use. Two sided adhesives strips such as these are solid in home improvement stores and have a wide variety of applications including adhering paper to surface, mounting holders to walls, mounting decorations to walls and etc. wherein the general use limitations of such products are largely unlimited. Leaving one side adhered up until the point of use of that sides allows that product to remain sticky until the point of use. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to both use two sided adhesives strips as the strips of Chetlapalli in view of Ferber and to leave one side of the strip covered until the point of uses as a use of a known strip adhesive attachment method/means to improve similar devices and/or those ready for improvement to yield predictable results based on the similarity of different products and the predictability of the use of said strips based on the knowledge of those of ordinary skill in the art that the use of such adhesives strips is well known in a variety of fields and how to use the strips most effectively is also known.
Regarding claims 4, the teachings of Chetlapalli in view of Ferber are as shown above. Ferber further shows that pads are known to be provided with perforations to ventilate the area that the pad covers from perspiration (see description of Fig. 7). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide ventilation for the pads of Chetlapalli as guided by Ferber in order to provide ventilation for the pads of Chetlapalli in view of Ferber.
Regarding claims 5-7, it is not entirely accurate to define the form of the first or second segments of Chetlapalli as rectangular or square or elliptical in form although the shape is similar to both rectangles and squares. Nonetheless, this would constitute a mere change in shape of the segments of Chetlapalli wherein the Court has long held that in the absence of a new and unexpected result arising from a change of a prior art article, the device with the altered shape is not patentably distinct from the prior art device. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 9, the perforations described above are at least capable of functioning in the manner of the openings provided in the current claim.
Regrading claim 10, the teachings of Chetlapalli in view of Ferber are as shown above. Chetlapalli in view of Ferber fails to teach the providing perforations in the pad that correspond to holes in the underlying substrate to which the pad is attached. However, it is noted that the pads of Chetlapalli are employed using straps although Chetlapalli generally method of associating the straps with the pads includes adhering the pads to the straps. However, the examiner in taking Official Notice to inform the applicant that it is known to form holes in pads and holes in objects that the straps are used to connect the pads with in general. This is done with football pads in athletic pants, posture support braces and a variety of medical devices as in a known and common way of attaching pads to surfaces. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provides holes in the pads of Chetlapalli in view of Ferber and any corresponding surface to which the pads are to be attached as a combination of a prior art pad and a prior art pad attachment method/means according to methods known to those of ordinary skill in the art wherein the results would be predictable based on the knowledge of those of ordinary skill in the art to attach pads to substrates using straps.
Claims 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Chetlapalli et al. (USPGPub 2013/0253396) as applied to claim 1, 8, 22 and 27-30 above and further in view of Skiba et al. (USPGPub 2007/0088392).
Regarding claim 21, the teachings of Chetlapalli are as shown above. Chetlapalli fails to teach wherein the core material employed is silicone or polypropylene. However, Skiba teaches that materials such as silicone rubber and polypropylene are known substitutes for polyurethane foam in support articles for the human body, in general and specifically as relates to multilayer articles that may also further comprise a core in some circumstances [0131-0135]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the silicone or polyethylene of Skiba for the polyurethane foam of Chetlapalli as a simple substitution of one known support material provided in single or multilayer structures including those with cores (wherein it is noted that bed support materials also generally fall under the broad scope of padding in general) wherein the results would be predictable based on the similarity in use and design of the products of Chetlapalli and Skiba.
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Chetlapalli et al. (USPGPub 2013/0253396) as applied to claim 1, 8, 22 and 27-30 above and further in view of Rostami (USPGPub 2014/0107408).
Regarding claims 25-26, the teachings of Chetlapalli are as shown above. Chetlapalli fails to teach attaching the apparatus to its intended support through the use of a magnet attached to the friction pad. However, Rostami teaches that it is known to attach pad to particular locations using magnets held in a cavity associated with the pad [0040](Fig. 1) wherein the magnet is aligned with an underlying surface connected to a magnetically complimentary object. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to
attach the pad of Chetlapalli to a desired location using a magnet in the cavity of the pad of Chetlapalli and a corresponding magnetically complimentary object attached to an underlying surface as guided by Rostami as an application of a known attachment technique to improve a similar pad in the same way.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Squitieri (USPGPub 2014/0048082).
Regarding claim 24, Squitieri teaches providing a pressure mitigation intended to be attached to a support surface using straps (see Fig. 1). Squitieri fails to teach using any adhesives material between the pressure mitigation apparatus and the support surface. However, the applicants’ claim language would read upon merely placing a piece of two-sided silicone tape between the pressure mitigation apparatus and the support surface wherein the tape structure would be considered the pliable material and the adhesive on each side of it would be considered an adhesive coating and a method of permanently securing the mitigation apparatus to the underlying surface if desired. The examiner is taking Official Notice to inform the applicant that two-sided silicone tape both exists and is manufactured in a manner that comprises applying adhesive to two sided of a pliable material. The tape is used in an extremely large number of areas including arts and crafts projects, picture hanging, medical applications and automotive manufacture. Further there is already a shown desire to hold the pressure mitigation apparatus to the support surface via the use of straps wherein the use of silicone two-sided tape would merely further aid in the ability to hold the apparatus in place. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the two-sided silicone tape of the prior art in the invention of Squitieri to hold the pressure mitigation apparatus in place as an application of a known adhesion technique to a known pressure mitigation device wherein the device is ready for improvement and the results of the improvement would have been predictable based on the general wide-spread use of two-sided tape as an adhesive means.
Response to Arguments
Regarding the applicants’ arguments relating to claim 1, Chetlapalli teaches the use of two foams but these foam are foams specifically cited as having different densities. It is not the assumption of the examiner that these two foams are merely the same material somehow modified (which if it were modified it would also be “different”. These two foams are likely either chemically different, structurally different or both. A low density foam and a high density foam would not be expected to be taken from the same roll of foam. Each would be expected to be manufactured separately. This is all despite the fact that because they are cited as having different densities, they are different materials even if they are made from a similar chemical base composition.
As relates to claim 24, it is the understanding of the examiner that it is the collective position of the applicant that a standard two sided silicone tape is neither readily detachable, thereby not capable of temporary attachment and also neither capable of permanent attachment. If this were the case the question must be raised as to what is the value of a basic two sided silicone tape if not for temporary or permanent attachment. It is the position of the examiner that term readily detachable is likely a relative term that should be rejected under USC 112 (provided above) but is at least an ambiguous term. The current specification does not reasonably define the phrase “readily detachable” but one considering the plain meaning of the terms having a broadest reasonably interpretation might consider an article to be “readily detachable” if it could be easily removed without seriously damaging to the substrate to which it was attached. However, even using that interpretation the ease of removal and damage level would be relative. As relates to permanent securing, it is the position of the examiner that this term could be a relative term as well. Practically speaking, nothing is absolutely permanent. If the applicant had defined what they view as permanent means of attachment then that would be acceptable but this is not clearly defined. For example, a screw would generally be considered a permanent attachment device used to build homes that last for dozens of years. However, they are not truly permanent. Additionally those same screws can be used to provide temporary framework in the construction of homes that is later disassembled. Therefore the screw is capable of being used in what is both a permanent or readily detachable manner, similar to the two-sided tape cited by the examiner wherein the different in the means of attachment does not vary for either. The only thing that varies is whether removal takes place. If removal takes place after the cited method, then the attachment was temporary and if it at the point of examination removal has not taken place the attachment could at that point be considered permanent but it still cannot absolutely be stated that the attachment is permanent until future examination takes place.
Nonetheless, it is the feeling of the examiner that the applicant likely intends permanent securing to largely be merely describing the opposite of readily detachable. In this regard the examiner believes that the use of the word “permanently” is fine but in the end the term describes the intent of the user and does not define the attachment means. Some means are not reasonably both readily detachable and permanents. Welding might be an example. However, adhesives and tape with adhesives can last years and be intended to be used indefinitely and as such may be permanent attachment means while also being readily detached from surfaces.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
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