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 .
Response to Arguments
Applicant's arguments filed 05/11/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Li doesn’t expressly teach a pocket for placing the cooling system inside, 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. In this case, the cooling system of Stubbs is held inside the vest already which inherently means its set inside a pocket of some sort, Li merely shows how such cooling systems are held as depicted by Stubbs i.e. in pockets. Further delineation of the said features is needed to define over the prior art of record, since simply being placed in a nondescript pocket fails to distinguish.
Applicant argues that increasing the capacity of reservoir compared to the pad is now an obvious matter of a change in relative dimensions. However, Applicant has failed to establish the criticality of said claimed capacities, as “it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007). In this case, Stubbs discloses carrying excess fluid in the reservoir, and merely increasing the reservoir size would be obvious matter of design choice.
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)(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) 1, 2, 4, 10, 12-15, and 17-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Stubbs (US 2021/0212391 A1) as evidenced by Li et al. (US 2017/0231371 A1).
Re: Claim 1, Stubbs discloses the claimed invention including a portable liquid transport system for attachment to a supporting article worn by a wearer, said system being configured for transporting cooling or heating liquid between a reservoir and a cooling and/or heating pad, which pad is configured for wearing adjacent to a wearer's body, wherein said liquid transport system is configured to be joined to such a reservoir (20) and a pad (10) (Fig. 1), said liquid transport system comprising:
a pump (16) for generating the flow of a liquid between a reservoir and a pad, said pump comprising an inlet and an outlet, wherein said inlet is configured to be in liquid communication with a reservoir and said outlet is configured to be in liquid communication with a pad (Depicted in Fig. 1, Para. 16, pump);
wherein said liquid transport system further comprises a plurality of conduits (22, 24, 26, 38) each of said conduits being in liquid communication with at least one of said pump and said pad (Fig. 1), wherein said liquid transport system is configured for directing the flow of liquid from the reservoir into multiple flow paths when said liquid transport system is joined to a reservoir and a pad, said multiple flow paths comprising:
a first flow path (26) from a reservoir through said pump to a pad to deliver chilled or heated liquid from the reservoir to the pad (Fig. 1);
a second flow path (22) from the pad to the reservoir to recirculate the liquid back into the reservoir (Fig. 1).
Re: Claim 2, Stubbs discloses the claimed invention including combination with a supporting article comprising a body armor ballistic plate carrier (42) that supports said system on a wearer's body (Para. 14, body armor carrier).
Re: Claim 4, Stubbs discloses the claimed invention including wherein the plurality of conduits comprise:
a first conduit (26) having a first end portion and a second end portion, wherein the first end portion of the first conduit is configured for connecting to a reservoir, and wherein the second end portion of the first conduit is connected to the inlet of said pump (Fig. 1);
a second conduit (24) having a first end portion and a second end portion, wherein the first end portion of the second conduit is connected to the outlet of said pump, and wherein the second end portion of the second conduit is configured for connecting to a pad that is configured for wearing adjacent to a wearer's body (Fig. 1); and
a third conduit (22) having a first end portion and a second end portion, wherein the first end portion of the third conduit is configured for connecting to a pad that is configured for wearing adjacent to a wearer's body and said second end portion of the third conduit is configured for connecting to a reservoir (Fig. 1).
Re: Claim 10, Stubbs discloses the claimed invention including a wearable portable personal system (100) with cooling and/or heating capability, said personal system comprising:
a reservoir (20) for containing a cooling or heating substance that comprises at least some chilled or heated liquid, said reservoir being configured for carrying by a wearer on a supporting article (42) (Figs. 1 and 3, Para. 15, reservoir of cooling substance);
a pad (10) configured for wearing adjacent to a portion of a wearer's body, said pad being in liquid communication with said reservoir (Figs. 1 and 3);
a pump (16) in liquid communication with said reservoir and said pad, said pump configured for generating the flow of a liquid from one of said reservoir and said pad when said pump is activated, said pump having an inlet and an outlet (Fig. 1, Para. 16, pump generating flow within the system);
a plurality of conduits (22, 24, 26, 38), each of said conduits being in liquid communication with at least one of said pump and said reservoir, wherein said conduits are configured for directing the flow of liquid from the reservoir into multiple flow paths (Fig. 1), said multiple flow paths comprising:
a) a first flow path (26, 24) from a reservoir through said pump to a pad to deliver chilled or heated liquid from the reservoir to the pad (Fig. 1); and
b) a second flow path (22) from the pad to the reservoir to recirculate the liquid back into the reservoir (Fig. 1).
Re: Claim 12, Stubbs discloses the claimed invention including combination with a supporting article comprising a body armor ballistic plate carrier that supports said system on a wearer's body (Para. 14, body armor carrier).
Re: Claim 13, Stubbs discloses the claimed invention including the body armor ballistic plate carrier (42) comprises a pocket for a ballistic plate, and the cooling/heating pad is placed inside the pocket for a ballistic plate (Depicted in Fig. 3, Para. 17, placed between body and plate and inherently capable of being placed in the pocket of the carrier as evidenced by Li in para. 41, 57).
Re: Claim 14, Stubbs discloses the claimed invention including the cooling/heating pad is placed inside the pocket for a ballistic plate and a ballistic plate is also positioned inside said pocket, wherein said cooling/heating pad is positioned between the ballistic plate and the wearer's body (Depicted in Fig. 3, Para. 17, placed between body and plate and inherently capable of being placed in the pocket of the carrier as evidenced by Li in para. 41, 57)).
Re: Claim 15, Stubbs discloses a device capable of performing the claimed method of cooling or warming a user's body comprising:
wearing a personal system with temperature adjustment capability, said system comprising:
a reservoir (20) for containing a cooling or heating substance at least some of which is a liquid;
a pad (10) configured for wearing adjacent to a portion of a wearer's body;
a pump (16) configured for generating the flow of liquid between said reservoir and said pad when said pump is activated, said pump having an inlet and an outlet (Fig. 1, Para. 16, pump generating flow within the system).;
a plurality of conduits (22, 24, 26, 38) each having a first end portion and a second end portion (Fig. 1), wherein said plurality of conduits comprise:
an outflow line (26) extending between the reservoir and the inlet of the pump (Fig. 1);
a pad inflow line (24) extending between the outlet of the pump and the pad (Fig. 1); and
a return line (22) extending between the pad and the reservoir (Fig. 1); and
activating said pump to transport liquid from said reservoir to said pad in order to cool or warm the wearer, said pump being activated so that after cooling or warming the wearer, some of said liquid is recirculated from said pad back into said reservoir (Fig. 1, Para. 16, pump generating flow within the system).
Re: Claim 17, Stubbs discloses a device capable of performing the claimed method of said system is joined to a body armor ballistic plate carrier (45) worn by the user plate (Depicted in Fig. 3, Para. 17, placed between body and plate and inherently capable of being placed in the pocket of the carrier as evidenced by Li in para. 41, 57)).
Re: Claim 18, Stubbs discloses a device capable of performing the claimed method of the body armor ballistic plate carrier comprises a pocket for a ballistic plate, and the cooling/heating pad is placed inside the pocket for a ballistic plate (Depicted in Fig. 3, Para. 17, placed between body and plate and inherently capable of being placed in the pocket of the carrier as evidenced by Li in para. 41, 57)).
Re: Claim 19, Stubbs discloses a device capable of performing the claimed method of the cooling/heating pad is placed inside the pocket for a ballistic plate and a ballistic plate is also positioned inside said pocket, wherein said cooling/heating pad is positioned between the ballistic plate and the wearer's body (Depicted in Fig. 3, Para. 17, placed between body and plate and inherently capable of being placed in the pocket of the carrier as evidenced by Li in para. 41, 57)).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stubbs (US2021/0212391 A1) as applied to claim 6 above, and further in view of Creech et al. (US 2012/0227432 A1).
Re: Claim 6, Stubbs discloses the claimed invention except for expressly disclosing heating fluid. However, Creech teaches a portable liquid transport system configured for transporting heating liquid between a reservoir and a heating pad and/or transporting cooling fluid (Para. 105, heating or cooling fluid maybe used).
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to include heating liquid in the system as taught by Creech, since Creech states in para. 105, that such a modification allows the device to adapter depending on the user's preference, thus allowing the user to employ the system in a myriad of situations ranging from hot to cold environments.
Claim(s) 7, 20, 21, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stubbs (US2021/0212391 A1) as applied to claim 1, 10 above, and further in view of Smith et al. (US Patent No. 8,465,351).
Re: Claim 7, 20, 21, Stubbs discloses the claimed invention except for bonding layers of flexible materials to form flow channels. However, Smith teaches a cooling and/or heating pad comprised of two layers of flexible material that are bonded together adjacent to their periphery to provide a relatively flat sealed compartment with a liquid tight perimeter seal wherein said layers are also bonded together at various bond locations that are inside of the periphery to provide internal flow channels for directing the flow of liquid through the pad. (Fig. 4, Col. 5, lines 35-45, layers bonded together).
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to include layers bonder together to form flow channels as taught by Smith, since Smith states in col. 5, lines 40-45 that such a modification allows for an integral device that is packaged together and constructed with minimal components.
Re: Claim 22, Stubbs as modified by Smith in the rejection of claim 21 above discloses the claimed invention including the layers comprising said pad are also spot bonded together at various spaced apart bond locations (Smith: Depicted in Fig. 4).
Re: Claim 23, Stubbs as modified by Smith in the rejection of claim 21 above discloses the claimed invention including the bond locations and assist in adding turbulence to the flow of liquid through the pad (Smith: Depicted in Fig. 4, bond locations will cause fluid to turn back on itself causing turbulence therein).
Claim(s) 11, 16, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stubbs (US 2021/0212391 A1).
Re: Claim 11, Stubbs discloses the claimed invention including the reservoir and the pad each have a liquid holding capacity, and the liquid holding capacity of the reservoir is large (Para. 17, has extra capacity to carry excess fluid in the system) except for expressly stating greater than that of the pad. However, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date to include a reservoir with a greater capacity than the pad so that the reservoir is sized and configured to completely replace the volume of liquid in the pad to heat or cool the wearer, since Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Further, applicant appears to have placed no criticality on any particular relative capacities (see Specification wherein it is required simply that the capacity “may be” greater) and it appears that the device of Stubbs would work appropriately if made within the claimed relative capacities.
Re: Claim 16, Stubbs discloses a device capable of performing the claimed method of the reservoir and the pad each have a liquid holding capacity, and the liquid holding capacity of the reservoir is large (Para. 17, has extra capacity to carry excess fluid in the system) except for expressly stating greater than that of the pad. . However, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date to include a reservoir with a greater capacity than the pad so that the reservoir is sized and configured to completely replace the volume of liquid in the pad to heat or cool the wearer, since Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Further, applicant appears to have placed no criticality on any particular relative capacities (see Specification wherein it is required simply that the capacity “may be” greater) and it appears that the device of Stubbs would work appropriately if made within the claimed relative capacities.
Re: Claim 24, Stubbs discloses a device capable of performing the claimed method of the reservoir and the pad each have a liquid holding capacity, and the liquid holding capacity of the reservoir is large (Para. 17, has extra capacity to carry excess fluid in the system) except for expressly stating greater than that of the pad. However, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date to include the reservoir and the pad each have a liquid holding capacity, and the liquid holding capacity of the reservoir is 100% greater than that of the pad, since Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Further, applicant appears to have placed no criticality on any particular relative capacities (see Specification wherein it is required simply that the capacity “may be” greater) and it appears that the device of Stubbs would work appropriately if made within the claimed relative capacities.
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 CHARLES P. CHEYNEY whose telephone number is (571)272-9971. The examiner can normally be reached Monday - Friday, 8:00 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Paul Durand can be reached at 571-272-4459. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES P. CHEYNEY/Primary Examiner, Art Unit 3754
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