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 .
Response to Arguments
102/103 Rejections
The examiner notes that the broadening of claim 1 changes the scope of the claims. See the rejection below.
112 Rejection
The examiner notes that in the 112 rejection the specification does not provide guidance to what a “hollow cup-like structure” means. Although the examiner interpreted it correctly as noted in the remarks, this does not necessarily mean that a PHOSTA would interpret it in that manner, a cup-like structure is still unclear because it is not a well understood shape and the term “cup-like” renders the claim unclear.
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 1,5-6,9,11-12,15-21 are 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 1,
The examiner is unsure what “hollow cup-like structure” represents nor does the specification give guidance on what shapes define such a shape or structure. The examiner will interpret the limitation as being curved and hollow.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 9-12, 16, is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Publication No. 20150257555 issued to Wong.
Regarding claim 1,
Wong discloses a pillow (Wong: FIG. 1 (10)) comprising: a pair of framing portions made of a compressible material that conforms to applied pressure while providing support when a user's head leans against the framing portions; (Wong: FIG. 3a (70)) an integrated extending portion made of the same compressible material of the framing portions such that the framing portions and the integrated extending portion form an integrated pillow body, (Wong: FIG. 3A (80) may be regarded as an integrated extending portion) where the pillow body is configured to surround a user's head and to position the framing portions in front of and on opposing sides of the user's head; (Wong: FIG. 1) a pair of shells configured to fit in corresponding framing portions, (Wong: FIG. 2A (30)) the pair of shells made of a strong flexible material; (Wong: [0038] “The inner frame 30 is made with a resilient plastic or foam material.”) and at least one strap extending from at least one of the pair of shells each comprising a hollow cup-like structure extending inward into a corresponding section of the framing portions, each shell having a slot formed in a rear part of the shell (Wong: FIG. 1, at least one of (60, 100) may be interpreted as a slot) a strap having a first end attached to a first one of the shells and extending from the first end around the integrated extended portion of the pillow body to run through the slot in the shell opposite the first one of the shells to extend beyond a front edge of the framing portion a sufficient amount to mate via a hook and loop mechanism with an outer surface of the first end of the strap. (Wong: [0043] “Alternately, the closure mechanism 120 may be a length of hook-and-loop type fastening material (not shown) looped through at least one of the air apertures 60,100, or a strap with a mechanical snap fastener (not shown), or the like.” The examiner notes that the drawing shown in FIG. 4A would read on the limitation above since the slot can be interpreted as one of the apertures in the frame. )
Regarding claim 9,
Wong discloses the pillow of claim 1 where the pair of shells each have a substantially rectangular shape with a slight curve aligned with the pillow when positioned around the user's neck. (Wong: FIG. 1 and 2A)
Regarding claim 11,
Wong discloses the pillow of claim 1 where the cup-like structure includes vent openings. (Wong: FIG. 2B 3B)
Regarding claim 12,
Wong discloses the pillow of claim 1 where the pair of framing portions and integrated extending portions are made of memory foam. (Wong: [0039] and [0038] talks about the framing portions being made of memory foam.)
Regarding claim 16,
Wong discloses the pillow of claim 1 further comprising a fabric to cover a surface of the pillow body and the shells. (Wong: FIG. 9 [0053] the examiner notes that the cover would cover both outer and inner surfaces of the framing portion and shells)
Regarding claim 15,
Wong discloses the pillow of claim 1.
Wong does not appear to disclose where the strap is made of a material with low elasticity to provide an adjustable tension around the pillow.
However, Cable discloses where the strap is made of a material with low elasticity to provide an adjustable tension around the pillow. (Cable: [0015] “The fastening straps may consist of webbing (cotton or nylon), fabric, leather or synthetic material. “)
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wong directed to a pillow by making the straps from nylon as taught in Cable directed to a travel pillow since all the claimed elements were known in the prior art and one skilled in the art could have combined or modified the elements as claimed by known methods with no change in their respective functions, with a reasonable expectation of success because the modification or addition would have yielded the predicted result providing straps that are non-elastic so that the straps can be adjusted easily i.e. if the straps were elastic the pillow of Wong would not function properly.
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) 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong.
Regarding claim 4,
Wong discloses the pillow of claim 1.
Wong does not appear to disclose where the pair of shells have a substantially arrowhead shape with a slight wedge-like contour and a slight fold such that the shells are configured to cup the user's cheek and jaw area when the user wears the pillow.
However, it has been held in In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) 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. In this case, the pillow of Wong is capable of cupping the user’s cheek and jaw area depending on the size of the pillow or user’s face relative to the pillow. Such a modification would not change the operation of the prior art and would not perform any differently.
Regarding claim 5,
Wong discloses the pillow of claim 4 where the shells are mounted on an outer surface of the framing portions, the pillow further comprising an outer fabric to cover the outer surface of the framing portions and the shells mounted therein. (Wong: FIG. 4A see also FIG. 9 and [0053] “In one embodiment, the travel pillow 10 further includes a flexible cover 230 (FIG. 9) that has an opening 240 therethrough into which the inner frame 30 and the outer cushion 70 are inserted.”)
Regarding claim 6,
Wong discloses the pillow of claim 4 further comprising an inner fabric covering an inner surface of the framing portions thereby providing a soft surface to contact the user's face. (Wong: FIG. 9 [0053] the examiner notes that the cover would cover both outer and inner surfaces of the framing portion)
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of U.S. Publication No. 20200221888 issued to Cable.
Regarding claim 15,
Wong discloses the pillow of claim 1.
Wong does not appear to disclose where the strap is made of a material with low elasticity to provide an adjustable tension around the pillow.
However, Cable discloses where the strap is made of a material with low elasticity to provide an adjustable tension around the pillow. (Cable: [0015] “The fastening straps may consist of webbing (cotton or nylon), fabric, leather or synthetic material. “)
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wong directed to a pillow by making the straps from nylon as taught in Cable directed to a travel pillow since all the claimed elements were known in the prior art and one skilled in the art could have combined or modified the elements as claimed by known methods with no change in their respective functions, with a reasonable expectation of success because the modification or addition would have yielded the predicted result providing straps that are non-elastic so that the straps can be adjusted easily i.e. if the straps were elastic the pillow of Wong would not function properly.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of U.S. Publication No. 20230404284 issued to Tesser.
Regarding claim 17,
Wong discloses the pillow of claim 16 where the fabric is a first fabric, (Wong: [0053] the cover is a first fabric)
Wong does not appear to disclose the pillow further comprising a second and third fabric to cover each of the shells, the second and third fabrics being combined with the first fabric.
However, Tesser discloses multiple covers and fabrics (Tesser: [0033] made from a combination of different fabrics)
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cover of Wong to comprise of different fabrics as taught in Tesser which would cover the shells since the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) In this case, producing covers for the shells is obvious in view of Tesser because Tesser discusses using different fabrics or the same fabrics for the inner/outer covers.
Regarding claim 18,
Wong in view of Tesser discloses the pillow of claim 16 where the fabric is made of a soft material selected from a group consisting of a jersey material, nylon, lycra, polyester, cotton polyester blend. (Tesser: [0020])
However, Tesser discloses where the fabric is made of a soft material selected from a group consisting of a jersey material, nylon, lycra, polyester, cotton polyester blend. (Tesser: [0033] made from a combination of different fabrics)
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cover of Wong to comprise of different fabrics as taught in Tesser which would cover the shells since the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) In this case, producing covers for the shells is obvious in view of Tesser because Tesser discusses using different fabrics or the same fabrics for the inner/outer covers.
Regarding claim 19,
Wong in view of Tesser discloses the pillow of claim 17 where the fabric is made of a material selected from a group consisting of a jersey material, nylon, lycra, polyester, cotton polyester blend, and a mesh material. (Wong: [0011])
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wong in view of U.S. Publication No. 20170071349 issued to Wong 2.
Regarding claim 20,
Wong discloses the pillow of claim 10.
Wong does not appear to disclose where each one of the pair of shells is an outer shell, the pillow further comprising a pair of inner shells inserted in the framing portions, the inner shells configured to receive the corresponding ones of the pair of outer shells.
However, Wong 2 discloses where each one of the pair of shells is an outer shell, the pillow further comprising a pair of inner shells inserted in the framing portions, the inner shells configured to receive the corresponding ones of the pair of outer shells. (Wong 2 (260) the framing grommets, may be interpreted as a pair of inner shells that are within the framing portions and receive the outer shells.)
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify Wong directed to a pillow by framing grommets into the outer shells as taught in Wong 2 directed to a pillow since all the claimed elements were known in the prior art and one skilled in the art could have combined or modified the elements as claimed by known methods with no change in their respective functions, with a reasonable expectation of success because the modification or addition would have yielded the predicted result of increasing the resiliency of the outer shell.
Regarding claim 21,
Wong in view of Wong 2 discloses the pillow of claim 20 where the inner shells are insert molded into a foam material that forms the framing portions. (Wong: [0038] and [0038] talks about the inner shells being made from foam material)
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 ADAM C ORTIZ whose telephone number is (303)297-4378. The examiner can normally be reached Monday - Friday 7:30 am-3:30 pm.
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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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/ADAM C ORTIZ/Primary Examiner, Art Unit 3673