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 .
Claim Objections
Claim(s) 43 and 55 is/are objected to because of the following informalities:
Claim 43, Ln. 2 recites “a patient’s forehead” which should read “the patient’s forehead” following after claim 41
Claim 55, Ln. 1 recites “an apex of the bump” which should read “the apex of the bump” following after claim 54
Appropriate correction is required.
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.
Claim(s) 44 is/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 44 recites the limitation "the shank extends approximately 180° around the bend and into the return arm" which deems the claim indefinite. The limitation defines the shank as itself forming a 180° turn separately from the bend. However, claim 41 has separately recited the shank and the bend. In the disclosed invention the shank 611 transitions into the bend 614 and then into the return arm 612. The shank itself does not undergo its own 180° turn separately from the bend. For the purposes of examination the limitation will be interpreted as reading "the hook portion extends approximately 180° from the shank around the bend and into the return arm".
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim(s) 41-44, 46, 51-52, 54 and 59-60 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 5-6, 20-21, 23-24, 38-39 and 41-42 of U.S. Patent No. 11,179,357. Although the claims at issue are not identical, they are not patentably distinct from each other because all requirements of instant claim 41 are found within the overall requirements of each of patent claims 2, 20 and 38 (e.g. the instantly claimed “hook portion” vs. the patent claim “hook connector portion”), the instant claim merely being broader in scope. A further mapping of dependent claims is as follows:
Instant claim 42 as obvious in view of patent claims 2, 20 and 38 – the use of the hook connector portion to secure the forehead coupler with the rib of the hook connector portion obviously would have obviously suggested to one of ordinary skill in the art the coupler connection as at a distal end of the forehead support, as opposed to a proximal end toward the respiratory mask
Instant claim 43 as obvious in view of patent claims 2, 20 and 38 – the sandwiching of the forehead coupler against the shank would have obviously suggested to one of ordinary skill in the art the shank as proximal to the patient’s forehead
Instant claim 44 as obvious in view of patent claims 2, 20 and 38 – the sandwiching of the forehead coupler between the shank and the return arm would have obviously suggested to one of ordinary skill in the art the 180 degree turn recited by the instant claim
Instant claim 46 as obvious in view of patent claims 3, 21 and 39 – the rib being separated from the return arm by the bend would have obviously suggested to one of ordinary skill in the art the ability to flex away recited by the instant claim
Instant claim 51 vs. patent claims 5, 23 and 41
Instant claim 52 vs. patent claims 5, 23 and 41
Instant claim 54 as obvious in view of patent claims 5, 23 and 41 – the end portion of the return arm extending towards the shank would have obviously suggested to one of ordinary skill in the art the end portion including a bump
Instant claim 59 as obvious in view of patent claims 3, 21 and 39 – it is noted that the claim only recites a function which the bend of the patent claims would have been obviously expected to be able to perform based at least upon the positioning of the rib relative to the bend
Instant claim 60 vs. patent claims 6, 24 and 42
Claim(s) 45 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 20 and 38 of U.S. Patent No. 11,179,357 in view of Sprinkle et al. (U.S. Pub. 2004/0182398). Patent claims 2, 20 and 38 are silent as to whether an external surface of the return arm is convexly curved.
Sprinkle teaches a forehead support assembly 30a including a snap hook 170 (¶0077; Figs. 16-18) including a return arm (Fig. 17 #174; ¶0078) which is convexly curved. Sprinkle teaches a convexly curved return arm as providing the benefit of resiliently securing the forehead support during use (¶¶0078, 0080).
It would have been prima facie obvious to one having ordinary skill in the art at the time of the effective filing of the invention to have specified in any of patent claims 2, 20 and 38 an external surface of the return arm is convexly curved in order to provide the benefit of resiliently securing the forehead support during use in view of Sprinkle.
Allowable Subject Matter
Claims 41-60 are allowed over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 41, the prior art fails to teach or suggest a frame for a respiratory mask including all elements and orientations required by the instant claim. Several notes are initially made regarding the claim language. The term “hook portion” is given a plain language meaning of a portion having a generally U-shape, to form an opening as a hook. Additionally, the structures of the coupler connection are all recited as part of a forehead support. Finally, the rib is recited as a distinct structure from the hook portion and must therefore be a separately identifiable structure and/or piece of material from all elements recited as the hook portion.
Sprinkle et al. (U.S. Pub. 2004/0182398) teaches a configuration relatable to claim 41 in Figs. 16-18 but fails to at least teach or suggest the forehead support of the claim including the claimed rib. The only structure in Sprinkle between body portion 172 and end portion 174, forming the snap hook 170- of Figs. 16-18, is pin 188. However, pin 188 is attached to reinforcing member 180 which is part of the forehead strap assembly 80a (¶0079). One of ordinary skill in the art would not have considered as headgear strap to reasonably be read as part of the frame of a respiratory mask.
Davidson et al. (U.S. Pub. 2008/0276937) teaches a configuration relatable to claim 41 in Figs. 23-1 to 23-4 but fails to at least teach or suggest the forehead support of the claim including the claimed hook portion. The neck 800 in Davidson would not be reasonably read as a hook portion when considering a plain language of “hook portion” as a portion having a generally U-shape, to form a hook. The neck 800 of Davidson is not in any way intended to operate as or designed in the shape of a hook.
Chang (U.S. Pub. 2011/0048425) teaches a forehead support unit 3 with a lateral opening at slotted connector 312 which is readable as a hook portion. However, the forehead frame 31 is generally a continuous structure and piece of material and thus there is no element reasonably readable at slotted connector 312 as the claimed rib, with the rib needing to be distinct from the hook portion. For example, in the annotated Fig. 4 below there is no possible “rib” to be read which is not better read as part of the hook portion instead of as a separate structure. It would be an unfair reading to attempt to read the claimed rib from Chang.
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Chang – Annotated Fig. 4 showing possible “hook portion” and “shank”
Zhan et al. (U.S. Pub. 2016/0136375) teaches a forehead support 501 with a bottom opening at first connection structure 501c which is readable as a hook portion. However, similar to what was discussed immediately above regarding Chang the forehead support 501 is generally a continuous structure and piece of material and thus there is no element reasonably readable as the claimed rib, with the rib needing to be distinct from the hook portion. The discussion above related to the annotated Fig. 4 of Chang would be similarly applied to forehead support 501 in Fig. 2 of Zhan to show how Zhan also has no possible “rib” which would not be better read as part of the hook portion instead of as a separate structure. It would be an unfair reading to attempt to read the claimed rib from Zhan.
It is thus found that one having ordinary skill in the art would only have arrived at the instantly claimed invention by way of improper hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, see PTO-892 for additional attached references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH D BOECKER whose telephone number is (571)270-0376. The examiner can normally be reached M-F 9:00 AM - 4:00 PM.
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/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785
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