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 .
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,529,484 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the patented claims or otherwise are co-extensive in scope.
Regarding claim 1, Patent 11,529,484 discloses a method of manufacturing a pad for a patient interface for contacting a patient’s skin around an entrance to an airway of the patient (Claim 1), the method comprising:
providing a resilient material by foaming on a rear side of a textile (Claim 1);
providing a plurality of fibers (Claim 1); and
fixing the plurality of fibers to a base surface of the resilient material so that the plurality of fibers extends away from the base surface (Claim 1).
Regarding claim 2, Patent 11,529,484 discloses a method of claim 1.
Patent 11,529,484 further discloses wherein the fixing the plurality of fibers includes adhering the plurality of fibers to the base surface by an adhesive (Claim 2).
Regarding claim 3, Patent 11,529,484 discloses a method of claim 2.
Patent 11,529,484 further discloses wherein the adhering the plurality of fibers includes coating the base surface with an adhesive (Claim 3), and applying the plurality of fibers onto the adhesive (Claim 3).
Regarding claim 4, Patent 11,529,484 discloses a method of claim 1.
Patent 11,529,484 further discloses wherein the fixing the plurality of fibers to the base surface is at the same time as the foaming the resilient material on the rear side of the textile, the plurality of fibers being stitched or woven to the textile and extending away from the base surface on an opposing front side of the textile (Claim 4).
Regarding claim 5, Patent 11,529,484 discloses a method of claim 4.
Patent 11,529,484 further discloses wherein the foaming the resilient material on the rear side of the textile includes at the same time foaming the resilient material directly on a cushion shaped to approximate a contour of the patient’s face (Claim 5).
Regarding claim 6, Patent 11,529,484 discloses a method of claim 1.
Patent 11,529,484 further discloses wherein the foaming includes covering at least one side of a material to be foamed by a profiled structure to form a profiled surface in the resilient material (Claim 6).
Regarding claim 7, Patent 11,529,484 discloses a method of claim 6.
Patent 11,529,484 further discloses wherein the profiled surface has a convexly curved cross-sectional profile (Claim 7).
Regarding claim 8, Patent 11,529,484 discloses a method of claim 6.
Patent 11,529,484 further discloses during the foaming, disposing a material to be foamed on a conveyor and covering a side of the material to be foamed by a profiled structure moving at a same speed as the conveyor to form the foam between the conveyor and the profiled structure, the profiled structure forming a profiled surface in the resilient material (Claim 8).
Regarding claim 9, Patent 11,529,484 discloses a method of claim 1.
Patent 11,529,484 further discloses providing a cushion shaped to approximate a contour of the patient’s face; foaming the resilient material directly on the cushion (Claim 9).
Regarding claim 10, Patent 11,529,484 discloses a method of claim 9.
Patent 11,529,484 further discloses wherein the foaming the resilient material includes applying by a mixing head a material to be foamed (Claim 10).
Claims 1, 4-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-10 of U.S. Patent No. 12,048,811 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the patented claims or otherwise are co-extensive in scope.
Regarding claim 1, Patent 12,048,811 discloses a method of manufacturing a pad for a patient interface for contacting a patient’s skin around an entrance to an airway of the patient (Claim 1), the method comprising:
providing a resilient material by foaming on a rear side of a textile (Claim 1, see Claim 5-6 and 8-9 regarding foaming of the resilient material);
providing a plurality of fibers (Claim 1); and
fixing the plurality of fibers to a base surface of the resilient material so that the plurality of fibers extends away from the base surface (Claim 1).
Regarding claim 4, Patent 12,048,811 discloses a method of claim 1.
Patent 12,048,811 further discloses wherein the fixing the plurality of fibers to the base surface is at the same time as the foaming the resilient material on the rear side of the textile, the plurality of fibers being stitched or woven to the textile and extending away from the base surface on an opposing front side of the textile (Claim 4 and 5).
Regarding claim 5, Patent 12,048,811 discloses a method of claim 4.
Patent 12,048,811 further discloses wherein the foaming the resilient material on the rear side of the textile includes at the same time foaming the resilient material directly on a cushion shaped to approximate a contour of the patient’s face (Claim 5).
Regarding claim 6, Patent 12,048,811 discloses a method of claim 1.
Patent 12,048,811 further discloses wherein the foaming includes covering at least one side of a material to be foamed by a profiled structure to form a profiled surface in the resilient material (Claim 6).
Regarding claim 7, Patent 12,048,811 discloses a method of claim 6.
Patent 12,048,811 further discloses wherein the profiled surface has a convexly curved cross-sectional profile (Claim 7).
Regarding claim 8, Patent 12,048,811 discloses a method of claim 6.
Patent 12,048,811 further discloses during the foaming, disposing a material to be foamed on a conveyor and covering a side of the material to be foamed by a profiled structure moving at a same speed as the conveyor to form the foam between the conveyor and the profiled structure, the profiled structure forming a profiled surface in the resilient material (Claim 8).
Regarding claim 9, Patent 12,048,811 discloses a method of claim 1.
Patent 12,048,811 further discloses providing a cushion shaped to approximate a contour of the patient’s face; foaming the resilient material directly on the cushion (Claim 9).
Regarding claim 10, Patent 12,048,811 discloses a method of claim 9.
Patent 12,048,811 further discloses wherein the foaming the resilient material includes applying by a mixing head a material to be foamed (Claim 10).
Claims 2-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5-6, 8-9 of U.S. Patent No. 12,048,811 in view of Anthony (U.S 2012/0055485 A1).
Regarding claim 2, Patent 12,048,811 discloses a method of claim 1.
Patent 12,048,811 is silent regarding wherein the fixing the plurality of fibers includes adhering the plurality of fibers to the base surface by an adhesive.
However, Anthony teaches the adhering of a plurality of fibers through coating the base surface with adhesive and applying the fibers onto the adhesive (Paragraph 0106 and 0108; A fiber layer can be bonded to a base layer through use of adhesive).
It would have been obvious to one having ordinary skill in the prior art before the effective filing date of the claimed invention to have modified the device of Patent 12,048,811 to have included adhering the plurality of fibers to a base surface with adhesive, such as that taught by Anthony, in order to provide a known and strong bond to avoid the fiber layer from falling off (Paragraph 0108).
Regarding claim 3, Patent 12,048,811 discloses a method of claim 2.
Anthony further teaches wherein the adhering the plurality of fibers includes coating the base surface with an adhesive, and applying the plurality of fibers onto the adhesive (Paragraph 0106 and 0108).
Allowable Subject Matter
Claims 1-10 would be allowable over the prior art, with the filing of a Terminal Disclaimer to overcome the Double Patenting Rejections above.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the closest prior art is Willard (U.S 2015/0040909 A1) and Asvadi (U.S 2014/0251338 A1) and Lang (U.S 2005/0199239 A1) and Thary (U.S 5,096,760 A) and Higgins (U.S 2002/0160144 A1) and Fathi (U.S 2017/0154866 A1) and Barlow (U.S 2013/0220327 A1) and Derringer (U.S 2011/0209701 A1) and Romagnoli (U.S 2014/0158136 A1).
Willard discloses a method of manufacturing a pad for a patient interface for contacting a patient's skin around an entrance to an airway of the patient (see Fig. 1-3 and 11), the method comprising: providing a resilient foam material (cushion 12, see Fig. 11 and Paragraph 0035) next to a rear side of a textile (spacer/liner 114, see Fig. 11; Paragraph 0062), the resilient material including a first surface directly engaging the rear side and a base surface opposite to the first surface (the cushion has first surface 36 to contact the textile and an opposite base surface 38). Alternatively, Willard discloses a plurality of fibers of 114 connected to the first surface 36 through adhesive (Paragraph 0062).
However, Willard is silent regarding providing a plurality of fibers; and fixing the plurality of fibers directly to the base surface of the resilient material so that the plurality of fibers extends away from the base surface. The device of Willard only has textiles/fibers disposed on one end of the cushion, and therefore does not disclose both a textile and a plurality of fibers on distinct and opposite sides of the cushion. Furthermore, the limitations of “providing a resilient material by foaming on a rear side of a textile” implies that the resilient material is deposited onto the textile as a foam, and thereby forms a mechanical bond with the textile. In contrast, the cushion is merely adhered to the textile through adhesive, rather than ‘by foaming’. Similarly, Asvadi and other similar prior art do not disclose ‘foaming’ a resilient material on a textile, and instead merely includes that a foam portion may be enclosed within textile, and as such does not describe any mechanical bonding between the two. The prior art does not teach or suggest the foaming of a resilient material onto a textile and further on an opposing side having the fibers embedded or otherwise fixed onto the foamed resilient material so that the fibers extend therefrom and would only be obvious through impermissible hindsight reasoning or through arbitrary reconstruction of the prior art devices/methods.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS WILLIAM GREIG whose telephone number is (571)272-5378. The examiner can normally be reached Monday - Thursday: 7:30AM - 5:00PM.
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/THOMAS W GREIG/Examiner, Art Unit 3785
/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785
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