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
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
With regards to applicant’s arguments that Olivares Velasco does not teach a padding having a pillow shape – because pillows come in a variety of shapes/sizes including rectangular/trapezoidal, as best understood and shown in figure 5, Olivares Velasco’s padding (206 and/or 220) is in the shape of a pillow.
In regards to applicant’s arguments that Olivares Velasco do not teach padding in the shape of a pillow configured to enable a user to rest his/her head against a surface during rest or sleep - a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Accordingly, Olivares Velasco teaches a padding (206 and/or 220)…configured to enable a user to rest his/her head against a surface during rest or sleep.
In response to applicant's arguments against the references individually (Bowen fails to teach or even suggest padding in a shape of a pillow configured to enable to rest his/her head against a surface during rest or sleep), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 19, 22, 25, and 51-54 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.
The limitation “having a pillow shape” in claim 19 is a relative limitation which renders the claim indefinite. The term “pillow shape” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
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.
Claim(s) 19, 22, 51-59 (as best understood) is/are rejected under 35 U.S.C. 103 as being unpatentable over Olivares Velasco et al. (US 20200297052). Regarding claims 19 and 22, Olivares Velasco teaches a wearable head band comprising a flexible sleeve (202B) comprising a stretchable fabric material and including a neck end and a crown end disposed opposite the neck end; and a padding (206 and/or 220) having a pillow shape and being disposed on said flexible sleeve and covered by an outer shell (202A) having an outer surface. While Olivares Velasco teaches that the head band is stretchable (0028-0031), Olivares Velasco is nonetheless silent to whether the flexible sleeve has a lengthwise stretchability of about 5% to less than 30% and wherein the flexible sleeve has a width-wise stretchability of about 5% to less than 45%. However, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art and/or that it is within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use (0031, 0035), it would have been obvious to one of ordinary skill in the art to make the sleeve of Olivares Velasco have the claimed lengthwise and width-wise stretchability. The motivation would have been to allow the headband to flex and expand when placed on a user’s head (0028). Therefore, it would have been obvious to modify the invention to Olivares Velasco as specified in claims 19 and 22.
In regards to claims 51 and 59, the padding comprises, consists essentially of, or consists of cotton, down, microbeads, gel, fluid, expanded foam, open-cell foam, closed-cell foam, a polymer, an elastic polymer, a polyfoam, or any two or more of the foregoing (0029).
With regards to claim 52, the padding is removable from the outer shell (i.e. capable of being removed).
Regarding claim 53, the outer shell defines a padding compartment (defined by 218) into which the padding may be inserted or removed by a user.
In regards to claims 54 and 58, the padding is configured such that the user may comfortably rest the user’s head against a surface during rest or sleep.
Regarding claim 55, Olivares Velasco teaches a wearable head band comprising: a tube-shaped body (202B, figure 1) configured for placement about a user’s head; a padding compartment (defined by 218, 202A) disposed on at least a portion of the tube-shaped body; and padding (206 and/or 220) disposed within the padding compartment and configured such that a user may comfortably rest the user’s head against a surface.
With regards to claim 56, the padding is permanently secured within the padding compartment.
In regards to claim 57, the padding is removable from the padding compartment (i.e. capable of being removed).
Claim(s) 25 and is/are rejected under 35 U.S.C. 103 as being unpatentable over Olivares Velasco et al. (US 20200297052) in view of Bowen et al. (US 20130247271). While Olivares Velasco does not teach wherein the padding material comprises an inflatable air bladder and inflation port, inflatable bladders and those cushioning materials disclosed by Olivares Velasco (0029-0030) are known to be equivalents within the art. Nonetheless, Bowen teaches a headband with an inflatable bladder (0030) which is selectively inflatable, thus inherently comprising an inflation port. Olivares and Velasco are analogous because they are from the same field of endeavor, i.e. apparel. It would have been obvious to modify the padding of Olivares Velasco as taught by Bowen. The motivation would have been to selectively adjust the padding (firmness) based on the user’s preference. Therefore, it would have been obvious to modify the invention to Olivares Velasco as specified in claim 25.
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 JONATHAN LIU whose telephone number is (571)272-8227. The examiner can normally be reached Monday-Thurs, 6-6.
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/JONATHAN LIU/ Supervisory Patent Examiner, Art Unit 3631
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