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.
Response to Arguments
The amendments have overcome the claim objections and 101 as well as 112(b) rejections set forth in the prior action.
Applicant's arguments filed 10/20/25 have been fully considered but they are not persuasive for the reasons set forth below.
Regarding claim 1, applicant disagrees with examiner’s position regarding the at least one suction cup being removably attached. Examiner maintains the position provided in the original rejection and below. There is nothing in the limitation which prevents the interpretation by the examiner. Removably attached, under the broadest reasonable interpretation standard, includes for example disassembly, pulling it off of the apparatus, and/or cutting. The suction cups are plainly removably attached, noting that removably attached simply means attached and capable of being removed. Applicant is incorrect re cutting as well – cutting is removing the attachment.
Regarding silk, see the rejection below. The reference includes example materials as a non-exhaustive exemplary list. The use of silk in no way renders the claim patentable. It is either suggested by the reference and/or would simply be design choice; see the rejection below for details.
Regarding independent claim 9, the arguments are the same regarding the removable limitation. The arguments are not persuasive for the reasons set forth above. See the rejection below for details. The arguments regarding flannel are the same as for silk. See the response above which applies equally here and see the rejection below for details. It is noted that in the arguments, applicant refers to claim 9 as requiring silk, which appears to be a typographical error and that flannel is the requirement in the claim.
Arguments regarding dependent claims are not persuasive as they depend upon the patentability of the independent claim, which is not patentable pursuant to the rejection(s) below.
Regarding claim 14, the claim and its dependents are not allowable due to the 112(a) and 112(b) issues and rejections below necessitated by applicant’s amendment. That said, in view of the arguments it would appear that improper hindsight reconstruction would be required to reject the claim as amended. Therefore, an art rejection is not presented at this time.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 recites “wherein said removable memory foam comprises a pair of memory foam suction cups aligned with said pair of suction cups of said pillow cover and attached to the memory foam via a pair of detachable adhesive members.” There original disclosure does not support or convey as required the limitation of “said removable memory foam comprises a pair of memory foam suction cups.” Paragraph 0030 describes the suction cups at issue, but does not state that the suction cups themselves are memory foam nor that the removable memory foam comprises them, rather only that the rear surface of the memory foam also has a pair of suction cups.
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 14-20 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.
Claim 14 recites “wherein said removable memory foam comprises a pair of memory foam suction cups aligned with said pair of suction cups of said pillow cover and attached to the memory foam via a pair of detachable adhesive members.” As written, it is unclear which previously recited structure is “attached to the memory foam via a pair of detachable adhesive members.” It is unclear whether the pair of memory foam suction cups is attached via the detachable adhesive members or whether said pair of suction cups is attached via the detachable adhesive members.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-5, 7, and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US Patent No. 7441292 and hereinafter “Williams”).
Re Claim 1
Williams discloses:
A travel pillow for use with an interior of a vehicle, the travel pillow comprising:
a pillow cover (106 or 104) including a front surface, a rear surface, a closed side surface, a selectively openable side surface, a top surface, and a bottom surface (see figs. 1-2 for the various surfaces; note that whether a surface is a top / bottom / side / etc. is a matter of perspective; note that the selectively openable side surface is at and around 204);
wherein said pillow cover forming a cavity therein for holding a removable memory foam (102 is the removeable foam cushion which resides in the cavity, see figs. 1; see below regarding memory foam);
wherein said selectively openable side surface having a hook and loop fastener (204; C5 L49-56);
wherein said rear surface (as depicted in fig. 1) having a least one suction cup (128) for attaching said travel pillow to an interior surface of the vehicle (this is merely 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).);
wherein the at least one suction cup is removably attached to the rear surface (see figs. 1-2; it is possible to remove the attached suction cups via a variety of means such as simply disassembly, pulling it off the apparatus, or cutting; see also C2 L51-53).
…
Williams discloses that 102 is foam, but does not explicitly state memory foam. However, Williams suggests the use of other materials (C2 L15-19). It would have been obvious to one having ordinary skill in the art prior to the effective filing date to utilize memory 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. Such a modification would have been obvious to one having ordinary skill in the art prior to the effective filing date to use memory foam for the purpose of providing a resilient, supportive, and comfortable fill material.
Williams does not explicitly disclose that the pillow cover is a silk cover. Regarding the pillow cover being a silk cover, Williams discloses the use of multiple different exemplary materials (see C4 L20-26 – “Similarly, the first cover 104 and the second cover 106 may be constructed of any material appreciated in the art, for protecting the pillow 100 and providing comfort and support, such as but not limited to: woven materials, cotton, polyester, fleece, plastic, rubber, and/or wool. In one embodiment, the second cover 106 is an envelope of soft woven material of a pleasant color and has a substantially square profile.”). While silk is not explicitly disclosed, silk is known in the beds art as a suitable pillow cover material for the purpose of having a comfortable supporting surface for a user and Williams clearly suggests the use of additional materials beyond the ones identified. It would therefore have been obvious to one having ordinary skill in the art prior to the effective filing date to have the pillow cover be a silk cover as suggested in the reference and for the purpose articulated above.
Alternatively or in addition to the above, it would have been obvious to one having ordinary skill in the art prior to the effective filing date to have the pillow cover be a silk cover as claimed, 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.
Re Claim 2
Williams as modified above discloses:
wherein the at least one suction cup is a pair of suction cups (C6 L36-39).
Re Claim 3
Williams as modified above discloses:
wherein said pillow cover is washable (C6 L7-20).
Re Claim 4
Williams as modified above discloses:
wherein said pair of suction cups is equidistant from a respective said closed side surface and said selectively openable side surface (C6 L31-45, with the disclosed suction cups being able to be disposed anywhere along the second cover).
Re Claim 5
Williams as modified above discloses as claim limitations, see above, except:
wherein said travel pillow having a length from 4.0” to 12.0”, a width from 3.0” to 9.0”, and a height from 1.0″ to 4.0”.
Williams discloses that variations in size are apparent to one of ordinary skill in the art (C6 L52-60). It would have been obvious matter of design choice to have said travel pillow have a length from 4.0” to 12.0”, a width from 3.0” to 9.0”, and a height from 1.0″ to 4.0”, since such a modification would have involved a mere change in the size of a component. A change is size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). Such a modification would have been obvious to one of ordinary skill in the art prior to the effective filing date as disclosed by Williams and also for the purpose of providing a size range which would support a head of a user and/or which is typical for travel pillows.
Re Claim 7
Williams as modified above discloses:
wherein said memory foam is cuboidal (figs. 1-2 and see also C4 L26-30).
Re Claim 9
Williams discloses:
A travel pillow for use with an interior of a vehicle, the travel pillow comprising:
a pillow cover (106 or 104) including a front surface, a rear surface, a closed side surface, a selectively openable side surface, a top surface, and a bottom surface (see figs. 1-2 for the various surfaces; note that whether a surface is a top / bottom / side / etc. is a matter of perspective; note that the selectively openable side surface is at and around 204);
wherein said pillow cover forming a cavity therein for holding a removable memory foam (102 is the removeable foam cushion which resides in the cavity, see figs. 1; see below regarding memory foam);
wherein said selectively openable side surface having a hook and loop fastener (204; C5 L49-56);
wherein said rear surface having a pair of suction cups (128 and see C6 L36-39) for attaching said travel pillow to an interior surface of the vehicle (this is merely 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).);
wherein said pair of suction cups are removably attached to the rear surface (see figs. 1-2; it is possible to remove the attached suction cups via a variety of means such as simply disassembly, pulling it off the apparatus, or cutting; see also C2 L51-53).
…
Williams discloses that 102 is foam, but does not explicitly state memory foam. However, Williams suggests the use of other materials (C2 L15-19). It would have been obvious to one having ordinary skill in the art prior to the effective filing date to utilize memory 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. Such a modification would have been obvious to one having ordinary skill in the art prior to the effective filing date to use memory foam for the purpose of providing a resilient, supportive, and comfortable fill material.
Williams does not explicitly disclose that the pillow cover is a flannel cover. Regarding the pillow cover being a flannel cover, Williams discloses the use of multiple different exemplary materials (see C4 L20-26 – “Similarly, the first cover 104 and the second cover 106 may be constructed of any material appreciated in the art, for protecting the pillow 100 and providing comfort and support, such as but not limited to: woven materials, cotton, polyester, fleece, plastic, rubber, and/or wool. In one embodiment, the second cover 106 is an envelope of soft woven material of a pleasant color and has a substantially square profile.”). While flannel is not explicitly disclosed, flannel is known in the beds art as a suitable pillow cover material for the purpose of having a comfortable supporting surface for a user and Williams clearly suggests the use of additional materials beyond the ones identified. It would therefore have been obvious to one having ordinary skill in the art prior to the effective filing date to have the pillow cover be a flannel cover as suggested in the reference and for the purpose articulated above.
Alternatively or in addition to the above, it would have been obvious to one having ordinary skill in the art prior to the effective filing date to have the pillow cover be a silk cover as claimed, 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.
Re Claim 10
Williams as modified above discloses:
wherein said pillow cover is washable (C6 L7-20).
Re Claim 11
Williams as modified above discloses:
wherein said pair of suction cups is equidistant from a respective said closed side surface and said selectively openable side surface (C6 L31-45, with the disclosed suction cups being able to be disposed anywhere along the second cover).
Re Claim 12
Williams as modified above discloses all claim limitations, see above, except:
wherein said travel pillow having a length from 4.0” to 12.0”, a width from 3.0” to 9.0”, and a height from 1.0″ to 4.0”.
Williams discloses that variations in size are apparent to one of ordinary skill in the art (C6 L52-60). It would have been obvious matter of design choice to have said travel pillow have a length from 4.0” to 12.0”, a width from 3.0” to 9.0”, and a height from 1.0″ to 4.0”, since such a modification would have involved a mere change in the size of a component. A change is size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). Such a modification would have been obvious to one of ordinary skill in the art prior to the effective filing date as disclosed by Williams and also for the purpose of providing a size range which would support a head of a user and/or which is typical for travel pillows.
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.
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