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 Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 31, 34, 47, 50, and 51 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being disclosed by Hochschild (US Patent Application Publication 20070022540).
Regarding claim 31, Hochschild teaches an elastic pad comprising: an outer cover (Figure 3; 34 and 50) defining an enclosed receiving space, the outer cover comprising a top cover body (Figure 3; at 60), a bottom cover body (Figure 4; bottom of 34 under 73/74) and a side enclosure (Figure 3; sides of 50 and 34, by where 50 and 34 are marked) connected between the bottom cover body and the top cover body, the side enclosure detachably connected to the top cover body, the side enclosure detachably connected to the bottom cover body (Figure 3; at least portion 50 of the side enclosure is detachably connected to the top and bottom cover panels); an elastic module layer (Figure 4; 73 and 74) in the receiving space, the elastic module layer including a spring (Figure 1; 71) in a compressed state (Figure 4; the springs would be compressed at least during use with a user’s weight); an elastic pad layer (Figure 4; 52, 54, 46) also disposed in the receiving space and stacked above the elastic module layer, the elastic pad layer configured to allow: selection of a desired type and/or a desired number of elastic module layers and elastic pad layers (Paragraph 40); and selection of the side enclosure based on a total thickness of the selection of one or more of the elastic module layer and the elastic pad layer (Figure 4; the two zippers 56 and 39 allow the top layers to be removed if desired and the thickness of the mattress to be changed, see also Paragraph 24).
Regarding claim 34, Hochschild teaches the elastic module layer comprises a plurality of elastic modules arranged in an array, each elastic module including a spring (Figure 4; each spring 71 may be considered an elastic module, or each set of 2 springs may be considered an elastic module).
Regarding claim 47, Hochschild teaches the elastic pad is configured to allow use of at least two elastic pad layers and stack the at least two elastic pad layers in different orders to provide different degrees of softness and hardness (Figure 4; 46 and 52, 54, see also paragraphs 40-43 discussing adjustability and different configurations of the mattress).
Regarding claim 50, Hochschild teaches an outer cover (Figure 3; 34 and 50) configured to define an enclosed receiving space, the outer cover comprising a top cover body (Figure 4; at 60) detachably connected (Figure 4; zippers 56 and 39) to a bottom cover body (Figure 4; bottom of 34); elastic pad layers (Figure 4; 52, 54, 46) disposed in the receiving space independently of each other; the elastic pad configured to allow: selecting a desired type and/or a desired number of elastic module layers (Figure 4; 73) and elastic pad layers (see Paragraphs 39-43); and assembling the top cover body, the bottom cover body and the selected elastic module layers and elastic pad layers together to form the elastic pad (Figure 4; as shown).
Regarding claim 51, Hochschild teaches the top cover body comprises a skirt portion (Figure 4; the portion between 60 and the bottom of 34 on the sides) extending peripherally towards the bottom cover body; and/or the bottom cover body comprises a skirt portion extending peripherally towards the top cover body; or the elastic pad has no side enclosure, and the top cover body and the bottom cover body are directly joined together.
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) 32 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Nolte (US Patent Application Publication 20250064225).
Regarding claim 32, Hochschild teaches the elastic pad layer comprises and elastic buffer layer including a first-layer structure, a second-layer structure and a third-layer structure (Figure 4; 54, 52, 46), the third- layer structure having a hardness higher than the second-layer structure, the second- layer structure having a hardness higher than the first-layer structure (Claims 13 and 14, the materials for the three layers allow for a configuration where the first layer would be softest (for example soft urethane foam), the third layer would be hardest (for example hard urethane foam), and the second layer would be in the middle (for example latex foam). Hochschild does not teach the elastic pad layer comprises an elastic buffer layer including a fabric cover structure with the first, second, and third layers being within the fabric cover structure. Nolte teaches the elastic pad layer comprises an elastic buffer layer including a fabric cover structure with the first, second, and third layers being within the fabric cover structure (Paragraph 45 describes each foam piece having it’s own cover). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with various foam components) and Nolte (directed to a mattress with various foam components with covers) and arrived at a mattress with various foam components with covers. One of ordinary skill in the art would have been motivated to make such a combination because “the covers protect the foam, reduce friction between the layers, and provide identification aids so that a user can easily differentiate and manipulate the layers” as taught in Nolte (Paragraph 45).
Regarding claim 33, Hochschild teaches in the elastic buffer layer structure: (i) the first-layer structure is closest to a top surface of the elastic pad (Figure 4; 52 may be designated the first layer) and the third- layer structure is closest to a bottom surface of the elastic pad (Figure 4; 46 may be designated the third layer); or(ii) the second-layer structure is closest to the top surface of the elastic pad, and the third-layer structure is closest to a bottom surface of the elastic pad; or (iii) the third-layer structure is closest to a top surface of the elastic pad, and the first-layer structure is closest to a bottom surface of the elastic pad; or (iv) the first-layer structure is closest to a top surface of the elastic pad and the second-layer structure is closest to a bottom surface of the elastic pad; or (v) the second-layer structure is closest to a top surface of the elastic pad, and the first-layer structure is closest to a bottom surface of the elastic pad; or (vi) the third-layer structure is closest to a top surface of the elastic pad and the second-layer structure is closest to a bottom surface of the elastic pad.
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565).
Regarding claim 35, Hochschild teaches each elastic module comprises a conical spring (Figure 4; 71), the elastic module layer further comprises an elastic module layer bottom layer (Figure 4; the bottom surface shown which the springs sit on). Hochschild does not specifically teach a spring support holding the conical spring, and a plurality of rail beams on the elastic module layer bottom layer, and the plurality of elastic modules are configured for mounting and sliding on the rail beams. Hunt teaches a spring support (Figure 1; 18) holding the conical spring, and a plurality of rail beams (Figure 1; 9 and 10) on the elastic module layer bottom layer, and the plurality of elastic modules are configured for mounting and sliding on the rail beams (Figure 1; as shown). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and arrived at a mattress with springs arranged on rail beams . One of ordinary skill in the art would have been motivated to make such a combination to “present means for absorbing relatively heavy jars, all without producing objectionable rebound.” as taught in Hunt (Column 1; lines 35-38).
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565) further in view of Jewitt (US Patent Application Publication 20200288875)
Regarding claim 36, Hochschild does not teach the elastic module layer bottom layer is integral with the bottom cover body. Jewitt teaches the elastic module layer bottom layer is integral with the bottom cover body (Figure 1; 18 is directly on the outer cover 20 of the mattress, see also Paragraph 77). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Jewitt (directed to a spring module situated directly on the bottom outer cover of a mattress) and arrived at a mattress with springs arranged on rail beams oriented directly on the bottom outer cover of a mattress. One of ordinary skill in the art would have been motivated to make such a combination to “eliminate or reduce the need for a mattress manufacturer to place one or more foam or fiber layers above the pocketed spring comfort layer” (or below) (Jewett Paragraphs 6-7).
Claim(s) 37 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565) further in view of Katan (US Patent Application Publication 20140366275). Examiner notes that Figure 5b of Katan has been annotated below and appears above the claim it is being used to demonstrate for additional clarity in the rejection.
Regarding claim 37, Hochschild, as modified, does not teach each rail beam is configured to engage sliding modules on left and right sides thereof, respectively, to allow elastic modules on both sides of the rail beam to slide along slide rails of the rail beam independently of each other. Katan teaches each rail beam (Figure 5b; 111) is configured to engage sliding modules on left and right sides thereof (Figure 5b; 110, and unnumbered 110 on left), respectively, to allow elastic modules on both sides of the rail beam to slide along slide rails of the rail beam independently of each other. Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and arrived at a mattress with springs arranged on rail beams of a double sided C shape. One of ordinary skill in the art would have been motivated to make such a combination because a change in the shape of a prior art device is a design consideration within the level of skill of one skilled in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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Regarding claim 38, Hochschild, as modified, does not teach each rail beam comprises: a vertical support wall connected to a middle portion of a top engaging portion; the top engaging portion forming two downward-opening top-side receiving portions at the top of the rail beam; the vertical support wall connected to a middle portion of a bottom engaging portion a bottom engaging portion forming two upward-opening bottom-side receiving portions at the bottom of the rail beam; wherein left and right sides of the spring support of each elastic module have a mating protrusion configured to mate with the top-side receiving portions and bottom-side receiving portions of the rail beam, and the mating protrusions protrude upward from a front surface on both sides of the bottom of the spring support and protrude upward from a bottom surface on both sides of the bottom of the spring support. Katan teaches each rail beam comprises: a vertical support wall connected to a middle portion of a top engaging portion; the top engaging portion forming two downward-opening top-side receiving portions at the top of the rail beam; the vertical support wall connected to a middle portion of a bottom engaging portion a bottom engaging portion forming two upward-opening bottom-side receiving portions at the bottom of the rail beam; wherein left and right sides of the spring support of each elastic module have a mating protrusion configured to mate with the top-side receiving portions and bottom-side receiving portions of the rail beam, and the mating protrusions protrude upward from a front surface on both sides of the bottom of the spring support and protrude upward from a bottom surface on both sides of the bottom of the spring support (See annotated Figure 5b of Katan, above). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and arrived at a mattress with springs arranged on rail beams of a double sided C shape. One of ordinary skill in the art would have been motivated to make such a combination because a change in the shape of a prior art device is a design consideration within the level of skill of one skilled in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 39 and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565) further in view of Katan (US Patent Application Publication 20140366275) further in view of Hsu (US Patent 8984689). Examiner notes that Figure 5b of Katan has been annotated below and appears above the claim it is being used to demonstrate for additional clarity in the rejection.
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Regarding claim 39, Hochschild, as modified, does not teach each rail beam comprises: a base on the bottom cover body; a pair of connecting walls extending upward from left and right sides of the base; a pair of end walls extending from top ends of the pair of connecting walls, with a space between the pair of end walls; the base, the pair of connecting walls, and the pair of end walls jointly providing a pair of receiving portions opening towards each other; and left and right sides of the spring support of each elastic module having a downwardly extending connecting leg, a bottom end of the connecting leg including mating projections extending away from each other, the mating projections configured to engage the pair of receiving portions of each of the rail beams. Katan teaches each rail beam comprises: a base on the bottom cover body; a pair of connecting walls extending upward from left and right sides of the base; the base, and the pair of connecting walls, jointly providing a pair of receiving portions opening towards each other; and left and right sides of the spring support of each elastic module having a downwardly extending connecting leg, a bottom end of the connecting leg including mating projections extending away from each other, the mating projections configured to engage the pair of receiving portions of each of the rail beams (Annotated Figure 5b of Katan, above). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and arrived at a mattress with springs arranged on rail beams of a double sided C shape. One of ordinary skill in the art would have been motivated to make such a combination because a change in the shape of a prior art device is a design consideration within the level of skill of one skilled in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Katan does not teach a pair of end walls extending from top ends of the pair of connecting walls, with a space between the pair of end walls. Hsu teaches a pair of end walls extending from top ends of the pair of connecting walls, with a space between the pair of end walls (Figure 6; end walls at of 431/421). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and Hsu (directed to a rail beam with an end wall) and arrived at a mattress with springs arranged on rail beams of a double sided C shape with end walls. One of ordinary skill in the art would have been motivated to make such a combination because a change in the shape of a prior art device is a design consideration within the level of skill of one skilled in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 40, Hochschild, as modified, does not teach a partition wall is provided between the two connecting walls of the base, and the partition wall has a height less than the connecting walls. Katan teaches teach a partition wall is provided between the two connecting walls of the base, and the partition wall has a height less than the connecting walls. Katan teaches a partition wall is provided between the two connecting walls of the base, and the partition wall has a height less than the connecting walls. Katan teaches teach a partition wall is provided between the two connecting walls of the base, and the partition wall has a height less than the connecting walls (Annotated Figure 5b of Katan, above). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and arrived at a mattress with springs arranged on rail beams of a double sided C shape. One of ordinary skill in the art would have been motivated to make such a combination because a change in the shape of a prior art device is a design consideration within the level of skill of one skilled in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565) further in view of Katan (US Patent Application Publication 20140366275) in view of Longman (US Patent Application Publication 20180255937).
Regarding claim 44, Hochschild, as modified, does not teach each of the rail beams comprises a plurality of rail beam segments, a forwardly-extending projection at a front end of each rail beam segment, a groove recessed inward toward the rail beam segment at a rear end of each rail beam segment, the projection and groove of adjacent rail beam segments configured to mate with each other to connect adjacent rail beam segments together. Longman teaches each of the rail beams comprises a plurality of rail beam segments (Figure 8; segments 85), a forwardly-extending projection at a front end of each rail beam segment (Figure 8; at 83), a groove recessed inward toward the rail beam segment at a rear end of each rail beam segment (Figure 8; where 83 fits together with the adjoining segment 85), the projection and groove of adjacent rail beam segments configured to mate with each other to connect adjacent rail beam segments together (Figure 8; as shown). ). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and Longchild (directed to multiple modular rail beam segments) and arrived at a mattress with springs arranged on rail beams of a double sided C shape with modular rail beam segments. One of ordinary skill in the art would have been motivated to make such a combination to provide “a spring mattress with an adjustable firmness (which) would combine two highly desirable mattress features into a single mattress” (Longman Paragraph 2).
Claim(s) 45 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565) further in view of Jewitt (US Patent Application Publication 20200288875) in view of Leng (US Patent Application Publication 20180199728).
Regarding claim 45, Hochschild teaches each elastic module has a truncated cone shape (Figure 4; 71, as shown). Hochschild does not teach the elastic pad layer further comprises an elastic balancing web layer having a plurality of openings sized to coincide with an outer diameter of the elastic modules at a predetermined height, so that the elastic balancing web layer can sleeve the plurality of elastic modules in the openings. Leng teaches the elastic pad layer further comprises an elastic balancing web layer (Figure 37b; 136) having a plurality of openings (Figure 37b; 222) sized to coincide with an outer diameter of the elastic modules at a predetermined height, so that the elastic balancing web layer can sleeve the plurality of elastic modules in the openings (Figures 37a and 37b as shown). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Jewitt (directed to a spring module situated directly on the bottom outer cover of a mattress) and Leng (directed to a spring module with an web layer) and arrived at a mattress with springs including a web layer arranged on rail beams oriented directly on the bottom outer cover of a mattress. One of ordinary skill in the art would have been motivated to make such a combination to “prevent inadvertent displacement of the top end 158 of the spring” (Leng Paragraph 220).
Regarding claim 46, Hochschild does not teach the openings coincide with an outer diameter at the top of the elastic modules. Leng teaches the openings coincide with an outer diameter at the top of the elastic modules (Figures 37a and 37b, 222 as shown). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Jewitt (directed to a spring module situated directly on the bottom outer cover of a mattress) and Leng (directed to a spring module with an web layer) and arrived at a mattress with springs including a web layer arranged on rail beams oriented directly on the bottom outer cover of a mattress. One of ordinary skill in the art would have been motivated to make such a combination to “prevent inadvertent displacement of the top end 158 of the spring” (Leng Paragraph 220).
Claim(s) 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Nolte (US Patent Application Publication 20250064225) in view of Leng (US Patent Application Publication 20180199728).
Regarding claim 48, Hochschild does not teach the top cover body, the bottom cover body, the side enclosure and the elastic pad layer are configured to be rolled up. Leng teaches the top cover body, the bottom cover body, the side enclosure and the elastic pad layer are configured to be rolled up (Paragraph 221 discusses rolling up the casing and padding in a mattress after removing the springs, see also Figure 37a). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Nolte (directed to a mattress with various foam components with covers) and Leng (directed to rollable padding within a mattress) and arrived at a mattress with springs and foam components with covers which are rollable. One of ordinary skill in the art would have been motivated to make such a combination so that “can be shipped and stored in a minimized space” Leng (Paragraph 221).
Claim(s) 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hochschild (US Patent Application Publication 20070022540) in view of Hunt (US Patent 1343565) further in view of Katan (US Patent Application Publication 20140366275) in view of Leng (US Patent Application Publication 20180199728).
Regarding claim 49, Hochschild teaches each elastic module has a truncated cone structure with an open lower end and a hollow interior (Figure 4; 71 as shown). Hochschild, as modified, does not teach the elastic modules are configured for removal from the rail beams and nested. Leng teaches the elastic modules are configured for removal from the rail beams and nested (Figures 38a, 39a, and 40a). Accordingly, it would have been obvious to one of ordinary skill in the art before the invention was effectively filed to have combined Hochschild (directed to a mattress with springs) and Hunt (directed to springs arranged on rail beams) and Katan (directed to a rail beam and attachment with a double sided C shape) and Leng (directed to nesting springs) and arrived at a mattress with nesting springs arranged on rail beams of a double sided C shape. One of ordinary skill in the art would have been motivated to make such a combination so that “can be shipped and stored in a minimized space” Leng (Paragraph 221).
Allowable Subject Matter
Claims 41-43 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 41, rejecting this claim would require a modification of the Katan reference, which teaches the connecting walls, which is already a secondary modification of the primary reference (as Katan is modifying Hunt which is modifying Hochschild). While the modification by Katan is an acceptable modification as it is a straightforward change in shape of the profile of the rail beam, performing a tertiary modification would not be appropriate as it would be improper hindsight, and in addition, this would be a relatively substantial modification of the rail beam structure. While there are references such as Bretis (US Patent Application Publication 20190110606) which teach staggered spring arrangement on a rail beam (see Figure 7), Bretis does not teach staggered positioning of the connecting walls of the rail beam, and again, using an additional reference to modify would be improper hindsight.
Regarding claims 42-43, in order to reject this limitation, the primary reference would first have to be modified to include the rail beams being mounted directly onto the bottom cover body, which would be a modification similar to that of claim 36 with Jewett. This would bring the rejection to a five reference rejection. The modification would then require the bottom cover body of Hochschild as modified by Jewett to contain a plurality of spaced apart sets of detachable rail beam mounting members. This would require the rail beam mounting members of Hunt (See Figure 1; 12) to be modified to be detachably located on the bottom cover body of the mattress. This would be a secondary modification, as well as a six reference rejection. Thus, such a modification would not have been obvious to one of ordinary skill in the art prior to applicant’s filing date without the benefit of improper hindsight. Examiner notes that a reference such as Lesinski does teach rail beam mounting members as shown in Figure 4, which are detachable attached to rail beams 14, and which are attached to the bottom cover (see Figure 1; at 9). However again, such a modification would be a relatively significant modification which, in combination with the other references and modifications already being made, would not have been obvious.
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.
Claims 31-51 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-47 of copending Application No. 18687795 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets relate to an elastic pad with a cover, removeable, replaceable and reconfigurable elastic pads, and an elastic module.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MORGAN J MCCLURE/Examiner, Art Unit 3673
