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 .
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.
Election/Restrictions
Applicant’s election without traverse of Species II (as represented by Figs. 5-6, with figures 1-3 appearing to be generic) in the reply filed on 10/3/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Please see the drawing objection below for details regarding an issue with some of the structure in claim 1 and its dependents.
With regard to claim 12, the claim is not withdrawn at this time, but the claim is only examined with respect to the elected species (lumbar support) and will not address the non-elected portions of the claim (e.g. pillow and blanket modes).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, with regard to elected species II, the outer cover and retaining shell must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The specification identifies the outer cover as 61 and the retaining shell as 62, which are only shown with regard to non-elected species III (fig. 7). The elements are, however, described generally in paragraphs 0003 – 0004. Therefore, it appears that the elements may simply not have been labeled in figures 5-6. If that is the case, which would appear to be so given the nature of for example claim 5, then the elements should be appropriately labeled. However, if that is not the case and only non-elected species III includes those elements, they should be removed from the claims in order to prevent all currently pending claims from being withdrawn (note that claim 1 includes a retaining shell). Examiner requests that applicant please ensure and confirm in any response / amendment that the claims are either generic or directed toward the elected species.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1 – 12 are rejected on the basis that it appears to contain an improper recitation of a Markush grouping of alternatives. The recitation of “c. a set of beads, wherein the bead interior comprises the set of beads, wherein the set of beads includes a bamboo bead, a bodhi bead, a sequoia bead, a cypress bead, and a cork bead” is improper because it is open-ended and does not follow proper Markush group formatting. See MPEP 2117 for details. See below. A “Markush” claim recites a list of alternatively useable members. In re Harnisch, 631 F.2d 716, 719-20, 206 USPQ 300, 302-304 (CCPA 1980); Ex parte Markush, 1925 Dec. Comm'r Pat. 126, 127 (1924). The listing of specified alternatives within a Markush claim is referred to as a Markush group or Markush grouping. Abbott Labs v. Baxter Pharmaceutical Products, Inc., 334 F.3d 1274, 1280-81, 67 USPQ2d 1191, 1196-97 (Fed. Cir. 2003) (citing to several sources that describe Markush groups). Claim language defined by a Markush grouping requires selection from a closed group “consisting of” the alternative members. Id. at 1280, 67 USPQ2d at 1196. See also Amgen Inc. v. Amneal Pharmaceuticals LLC, 945 F.3d 1368, 1376-78, 2020 USPQ2d 3197 (Fed. Cir. 2020) (stating that there is a strong presumption that a claim element set off with “consisting of” is closed to unrecited elements.). See MPEP § 2111.03, subsection II, for a discussion of the term “consisting of” in the context of Markush groupings.
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.
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.
Claim(s) 1, 3-5, 7-8, 10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daito (JP 2019058695 A) in view of Gartrell (US PG Pub. No. 20050028284).
Re Claim 1
Daito discloses:
A bead structure (1) comprising:
a. a retaining shell (11), wherein the retaining shell is a fabric hollow structure (“the head cushion body 11 inserted into the head cover body 13 is configured by suturing a cloth of a cotton material forming the front and back as shown in FIG. The first storage portion 2 and the second storage portion 3 are formed independently by providing the first front and back suture portion 23 and the second front and rear suture portion 32 in parallel with the portion.”);
b. a bead interior (interior of 2 and 3, for example), wherein the bead interior is retained within the retaining shell (fig. 2);
c. a set of beads (5), wherein the bead interior comprises the set of beads (fig. 2).
Daito does not explicitly disclose:
wherein the set of beads includes a bamboo bead, a bodhi bead, a sequoia bead, a cypress bead, and a cork bead.
Gartrell is directed toward a cushion for supporting and comforting a head, neck, back, legs, etc. and teaches the use of pockets with any type of bead material (“The cushion object has built-in pockets filled with pellets (or any bead type material) or fibers.”). Therefore, it is known in the art that any type of bead material may be used in a cushion or similar type of support, which would include the claimed set of beads (all of which are very old and well known bead materials). Applying the teachings of Gartrell to Daito would be combining prior art elements according to known methods to yield predictable results and/or the simple substitution of one known element for another to obtain predictable results. The result of the combination would be the predictable inclusion of the particular set of beads and continuing to provide appropriate support / cushioning for the user. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date to combine the references as described above and for the reason(s) set forth above.
Re Claim 3
Daito as modified above discloses:
further including bead passages (51 – “openings 51 at both ends”) formed through bead bodies of the set of beads (see fig. 2), wherein the bead passages allow aromatic release from the bead bodies (the passages exist and therefore allow the claimed aromatic release).
Re Claim 4
Daito as modified above discloses:
further including an outer cover covering the retaining shell (see fig. 1 for example; outer cover 13).
Re Claim 5
Daito as modified above discloses:
wherein the retaining shell is formed as a plurality of rows (e.g. 2 and 3; see fig. 2), wherein the set of beads are stuffed into at least a first bead row (2 or 3), a second bead row (the other of 2 and 3)…
Daito as modified above does not explicitly disclose:
a third bead row and a fourth bead row.
It would have been obvious to one having ordinary skill in the art prior to the effective filing date to include additional rows stuffed with beads as claimed, i.e. a third bead row and a fourth bead row, since it has been held that mere duplication of essential working parts of a device involve only routine skill in the art. In re Regis Paper Co. v. Bemis Co., 193 USPQ 8. Such a modification would have been obvious to one having ordinary skill in the art prior to the effective filing date for the purpose of providing additional customization, allowing additional folding to occur, allowing more variety of fill, and/or to suit a user’s preference as to the feel of a plurality of raised rows.
Re Claim 7
Daito as modified above discloses:
further including bead passages (51 – “openings 51 at both ends”) formed through bead bodies of the set of beads (see fig. 2), wherein the bead passages allow aromatic release from the bead bodies (the passages exist and therefore allow the claimed aromatic release).
Re Claim 8
Daito as modified above discloses:
further including an outer cover covering the retaining shell (see fig. 1 for example; outer cover 13).
Re Claim 10
Daito as modified above discloses:
further including bead passages (51 – “openings 51 at both ends”) formed through bead bodies of the set of beads (see fig. 2), wherein the bead passages allow aromatic release from the bead bodies (the passages exist and therefore allow the claimed aromatic release).
Re Claim 12
Daito as modified above discloses:
wherein the retaining shell can be configured for use as a pillow in a pillow mode, a lumbar support in a lumbar support mode, and a blanket in a blanket mode (the shell can be configured as claimed, i.e. it has the capability to be used as a lumbar support so as to suit a user’s preference).
Claim(s) 2, 6, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Daito (JP 2019058695 A) in view of Gartrell (US PG Pub. No. 20050028284) and further in view of Official Notice.
Re Claims 2, 6, 9, and 11
Daito as modified above discloses all claim limitations, see above, except:
further including bead grooves formed on the set of beads, wherein the bead grooves increase the surface roughness of a bead surface, wherein bead grooves from different beads contact each other.
Daito discloses beads which are in contact with each other since they are simply stuffed into the pocket without any structure to separate the beads (see fig. 2, for example). Daito is silent as to whether or not there are any bead grooves on the set of beads. Examiner hereby takes official notice that it is old and well known for beads to include bead grooves formed on the set of beads, wherein the bead grooves increase the surface roughness of a bead surface, wherein bead grooves from different beads contact each other for the purpose of lowering manufacturing costs (i.e. no smoothing step needed), for a particular design or texture to be observed or felt by a user, and/or to provide some interlocking ability between beads. It would therefore have been obvious to one having ordinary skill in the art prior to the effective filing date to modify the beads to include the limitation(s) above for the purpose as articulated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Similar cushions, pillows, and other support type products are provided, many of which include bead structures such as beads in pockets or other containers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID E SOSNOWSKI whose telephone number is (571)270-7944. The examiner can normally be reached 8:30 AM - 3:30 PM and 9 PM through 11:59 PM Monday through Friday, generally.
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, Justin 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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/DAVID E. SOSNOWSKI/
Primary Patent Examiner
Art Unit 3673
/David E Sosnowski/Primary Patent Examiner, Art Unit 3673