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.
Examiner’s Comment
The current amendment appears to be fully responsive and the prior impermissible shift has been removed via the current amendment dated 12/22/25.
Response to Arguments
It is noted that the prior 112(b) rejections and claim objection have been overcome by amendment.
The remainder of Applicant’s arguments are art-related arguments. Applicant's art-related arguments filed 12/22/25 have been fully considered but they are not persuasive for the reasons set forth below. Applicant argues that there would be no motivation to a person skilled in the art to modify Stewart to have the resilient article formed of a viscoelastic material. Applicant argues that Stewart does not disclose viscoelastic materials, which is correct. If Stewart disclosed viscoelastic materials, then it would have been an anticipatory reference with regard to that limitation and would not have needed an obviousness type rejection under section 103. Applicant argues that Stewart does not provide an explicit suggestion to “select a viscoelastic material.” Again, if it had, then the reference would have disclosed the use of viscoelastic material and would have been anticipatory. Applicant agrees that Stewart lists a number of material types (see page 6 of the remarks). Applicant asserts that KSR and the MPEP require an obviousness rationale and not merely a conclusory assertion of design choice. Respectfully, examiner points to the case law (In re Leshin) used in the rejection and to the rationale which was provided in the original rejection and which is again provided below, neither of which have been addressed by applicant in the remarks. Applicant’s suggestion that only a conclusory assertion of design choice was included is not correct. Case law was utilized and an additional motivation was provided. See the rejection below for details. Applicant asserts that the 102 rejection has been overcome and that the claims are therefore allowable. The claims are not allowable. The claims are rejected below under 103 as applicant merely rolled up a limitation which was previously rejected and the arguments presented are not persuasive. Examiner notes that the material at issue is extremely common in the art (viscoelastic material, including viscoelastic polyurethane foam). Nevertheless, evidentiary references have been provided as support for the modification in view of applicant’s arguments.
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) 7-8, 10, 12, 14-17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stewart, III et al. (US PG Pub No. 20040123392 and hereinafter “Stewart”). The following references are provided as evidentiary references regarding the modification, each of which shows that it is known to use a viscoelastic material including a viscoelastic polyurethane foam in the art as articulated and described in the rejection below, i.e. for the purpose of comfortably supporting a user: Lalo (US PG Pub No. 20230190017, see [0031]); Smidel (US PG Pub No. 20220338639, see [0043] and surrounding paragraphs; Pigazzi et al. (US PG Pub. No. 20220249309, see [0066] and [0071] and [0091]; Elchaer et al. (US PG Pub. No. 20220127409, see the abstract; Aou et al. (US PG Pub. No. 20210267382, see [0002]); and Lee (US PG Pub No. 20050102757, see [0038]).
Re Claim 7
Stewart discloses:
A device configured to improve bedrest (device as shown in the figures; see, for example, fig. 1 but note that the embodiment of fig. 4 would apply equally), comprising:
a repositionable resilient article (2) for placement atop a sleeping surface and underneath one or more articles of bedding (while the apparatus is capable of being used as claimed, please note that this is mere intended use; 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 part Masham, 2 USPQ2d 1647 (1987).), the resilient article having a bottom surface (6) and a top portion (1, 5, and/or the top edge; see fig. 1), the bottom surface being configured for placement atop at a selected location of the sleeping surface (the surface is so configured; see fig. 1, see [0008], [0017], [0019], [0023]), the top portion being configured to elevate the one or more articles of bedding to above at least the level of the selected location of the sleeping surface atop which the bottom surface is placed (see fig. 1 and compare to the figures of applicant’s elected embodiment; see also [0008], [0017], [0019], [0023])…
Stewart does not explicitly disclose:
wherein the resilient article is formed of a viscoelastic material.
Stewart discloses various materials options in [0022] including foam rubber, foamed synthetic plastic, and other resilient materials as well as solid materials, gel, inflatable options, etc. Stewart therefore suggests the use of other materials. It would have been obvious to one having ordinary skill in the art prior to the effective filing date to have the resilient article formed of a viscoelastic material, 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. It would therefore have been obvious to modify Stewart so as to have the claimed limitations identified above and the modification would have been obvious to one having ordinary skill in the art prior to the effective filing date for the purpose of providing an alternative material (e.g. a resilient / flexible one) as suggested by Stewart / for the purpose of comfortably supporting a user. Further, evidentiary references have been provided (see the list above) regarding the common use of the material at issue in the art, including for the articulated purpose(s). For brevity, the list will not be repeated here; see above.
Re Claim 8
Stewart as modified above discloses:
wherein the resilient article defines a triangular cross-sectional profile (fig. 1).
Re Claim 10
Stewart as modified above discloses:
wherein the resilient article defines an equilateral triangular cross-sectional profile (fig. 1 and see [0022]).
Re Claim 12
Stewart as modified above discloses:
wherein the top portion of the resilient article defines a linear edge (fig. 1).
Re Claim 14
Stewart as modified above discloses:
wherein the bottom surface of the resilient article is generally flat (fig. 1).
Re Claim 15
Stewart as modified above discloses:
wherein the bottom surface of the resilient article is configured for placement against and engagement with a corresponding portion of the sleeping surface (see fig. 1 and compare to the figures of applicant’s elected embodiment; see also [0008], [0017], [0019], [0023]).
Re Claim 16
Stewart as modified above discloses:
wherein the resilient article is formed of a rigid material (solid material; [0022]).
Re Claim 17
Stewart as modified above discloses:
wherein the resilient article is formed of a flexible material ([0022]).
Re Claim 19
Stewart as modified above discloses all claim limitations, see above, except:
wherein the resilient article is formed of a viscoelastic polyurethane foam.
The modification above addressed forming the resilient article of a viscoelastic material, but the modification did not explicitly state and address forming it of a viscoelastic polyurethane foam. The use of this material (viscoelastic polyurethane foam) is obvious for the same reasons as the more broad viscoelastic material. Both the broader recitation and the more specific are extremely common and well-known, etc. See below for details and see above as well.
Stewart discloses various materials options in [0022] including foam rubber, foamed synthetic plastic, and other resilient materials as well as solid materials, gel, inflatable options, etc. Stewart therefore suggests the use of other materials. It would have been obvious to one having ordinary skill in the art prior to the effective filing date to have the resilient article formed of a viscoelastic material including a viscoelastic polyurethane 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. It would therefore have been obvious to modify Stewart so as to have the claimed limitations identified above and the modification would have been obvious to one having ordinary skill in the art prior to the effective filing date for the purpose of providing an alternative material (e.g. a resilient / flexible one) as suggested by Stewart / for the purpose of comfortably supporting a user. Further, evidentiary references have been provided (see the list above) regarding the common use of the material at issue in the art, including for the articulated purpose(s). For brevity, the list will not be repeated here; see above.
Re Claim 20
Stewart discloses:
A system for improving bedrest (device as shown in the figures; see, for example, fig. 1 but note that the embodiment of fig. 4 would apply equally) comprising:
a resilient article (2; [0022]) configured to be associated with a sleeping surface and being configured for placement underneath one or more articles of bedding placed atop that sleeping surface (see fig. 1 and compare to the figures of applicant’s elected embodiment; see also [0008], [0017], [0019], [0023]), the resilient article having a bottom portion (6) being operative for association with the sleeping surface at a selected location of the sleeping surface (see fig. 1 and compare to the figures of applicant’s elected embodiment; see also [0008], [0017], [0019], [0023]), and the resilient article having a top portion (1, 5, and/or the top edge; see fig. 1) configured to elevate the one or more articles of bedding to above at least the level of the selected location of the sleeping surface with which the bottom portion is operative for association with (see fig. 1 and compare to the figures of applicant’s elected embodiment; see also [0008], [0017], [0019], [0023]).
Stewart does not explicitly disclose:
wherein the resilient article is formed of a viscoelastic material.
Stewart discloses various materials options in [0022] including foam rubber, foamed synthetic plastic, and other resilient materials as well as solid materials, gel, inflatable options, etc. Stewart therefore suggests the use of other materials. It would have been obvious to one having ordinary skill in the art prior to the effective filing date to have the resilient article formed of a viscoelastic material, 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. It would therefore have been obvious to modify Stewart so as to have the claimed limitations identified above and the modification would have been obvious to one having ordinary skill in the art prior to the effective filing date for the purpose of providing an alternative material (e.g. a resilient / flexible one) as suggested by Stewart / for the purpose of comfortably supporting a user. Further, evidentiary references have been provided (see the list above) regarding the common use of the material at issue in the art, including for the articulated purpose(s). For brevity, the list will not be repeated here; see above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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