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.
Claim(s) 14 and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boyer (US Patent 6,088,856).
Regarding Claim 14, Boyer discloses a pillow (10) with internal shielding storage compartment comprising:
a pillow body (see Fig. 1):
defining an internal cavity (inside opening 58);
with an outer cushion layer (44) of a deformably resilient material (“open cell low density foam”) flanking the internal cavity, having a left end, having a right end opposing the left end, having an upper end, having a lower end opposing the upper end, having an outer surface (40) continuously spanning around the pillow body, and having a pillow length separating the left and right ends (see Fig. 1);
with an inner layer (42) enclosing the internal cavity, of a substantially rigid and flexible material (“a thermal reflective, thin, flexible, metalized plastic film”) that is more rigid than the deformably resilient material of the outer cushion layer and that substantially spans the pillow length, and of a slender thickness substantially spanning the pillow body (see Figs. 1,4 and Col. 4, Lines 9-11); and
defining an opening (58) disposed proximal to the left end that is spatially coupled to the internal cavity, the opening operably configured to have a selectively opened position and a selectively closed position with at least one fastener (60 and 62) coupled to the pillow body.
Regarding Claim 17, Boyer discloses wherein the inner layer is encapsulated by the outer cushion layer when the opening is in the selectively closed position (see Fig. 2).
Regarding Claim 18, Boyer discloses wherein the inner layer is configured to attenuate radio frequencies ranging up to 3Ghz (inherent of a “thermal reflective, thin, flexible, metalized plastic film”).
Regarding Claim 19, Boyer discloses wherein the inner layer is of metallic material (see Col. 3, Lines 61-62).
Regarding Claim 20, Boyer discloses wherein the inner layer is coated with a metallic material and is made of at least one of a polymeric material (see Col. 3, Lines 61-62) and a paper-based material.
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) 1-13 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boyer (US Patent 6,088,856).
Regarding Claim 1, Boyer discloses a pillow (10) with internal shielding storage compartment comprising:
a pillow body (see Fig. 1):
defining an internal cavity (inside opening 58);
with an outer cushion layer (44) of a deformably resilient material (“open cell low density foam”) flanking the internal cavity, having a left end, having a right end opposing the left end, having an upper end, having a lower end opposing the upper end, having an outer surface (40) continuously spanning around the pillow body, and having a pillow length separating the left and right ends (see Fig. 1);
with an inner layer (42) enclosing the internal cavity, of a material (“a thermal reflective, thin, flexible, metalized plastic film”) more rigid than the deformably resilient material of the outer cushion layer and substantially spanning the pillow length, of a thickness less than 25mm, and configured to attenuate radio frequencies ranging up to 3Ghz (inherent of a “thermal reflective, thin, flexible, metalized plastic film”); and
defining an opening (58) disposed proximal to the left end that is spatially coupled to the internal cavity (see Fig. 1), the opening operably configured to have a selectively opened position and a selectively closed position with at least one fastener (60 and 62) coupled to the pillow body. Boyer fails to disclose the inner layer (42) having a thickness less than 25mm, only disclosing that it is “thin”. Applicant has not stated any sort of criticality toward the said thickness and states that material having a thickness of approximately 5-38mm is “commonly referred to as thin sheet” (see para. [0037]). It would have been obvious matter of design choice to change the thickness of Boyer’s inner layer 42 to be less than 25 mm since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). A thinner sheet would provide more flexibility while still maintaining the necessary thermal reflection characteristics as required by Boyer.
Regarding Claim 2, Boyer discloses wherein the outer surface of the outer cushion layer is of a fabric material (see Col. 3, Lines 59-61, “woven nylon based fabric”)
Regarding Claim 3, Boyer discloses wherein the outer cushion layer is of a foam material (see Col. 3, Lines 63-65).
Regarding Claim 4, Boyer discloses wherein the outer cushion layer and the inner layer are adhesively coupled to one another (see Col. 4, Lines 1-2).
Regarding Claim 5, Boyer discloses wherein the inner layer is of metallic material (see Col. 3, Lines 61-62)
Regarding Claim 6, Boyer discloses wherein the inner layer is coated with a metallic material and is made of at least one of a polymeric material and a paper-based material (see Col. 3, Lines 61-62)
Regarding Claim 7, Boyer inherently discloses wherein the inner layer further comprises: a static unflexed position with the internal cavity of a diameter that is larger than a diameter of the cavity when in a dynamically flexed position, i.e. the internal cavity will be compressed when a load is applied. Boyer fails to discloses the specific diameter ranges in each position. It would have been obvious matter of design choice to make the internal cavity have diameter ranging from 50-152mm since such a modification would have involved a mere change in the size of a component. A change is size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955). Applicant has not stated any sort of criticality toward ranges of diameter.
Regarding Claim 8, Boyer discloses wherein the inner layer spans at least 75% of the pillow length (see Figs. 1 and 4)
Regarding Claim 9, Boyer discloses wherein the inner layer is encapsulated by the outer cushion layer when the opening is in the selectively closed position (see Fig. 2).
Regarding Claim 10, Boyer discloses wherein the pillow body further comprises: two zipper tracks each flanking the opening and with the at least one fastener coupled to one of the two zipper tracks, the two zipper tracks and the at least one fastener operably configured to place the opening in the selectively closed position. Boyer suggests in Col.4, Lines 49-52 that “snaps, rivets, buttons, zippers, straps, or other fastening mechanisms of known suitable construction may be used to securely close the open end 58 when desired.” A common zipper configuration is one with two tracks with a fastener attached to both tracks.
Regarding Claim 11, Boyer discloses herein the pillow body further comprises: a clip (22) coupled to the pillow body and with two clip members operably configured to selectively open and close, thereby retaining a cable thereto.
Regarding Claim 12, Boyer discloses wherein the inner layer is of a substantially rigid and flexible material (see Col. 3, Lines 61-63).
Regarding Claim 13, Boyer discloses wherein the thickness of the inner layer unitarily spans the pillow length (see Col. 4, Lines 9-11, Figs. 1 and 4).
Regarding Claim 15, see Claim 1 rejection above.
Regarding Claim 16, see Claim 7 rejection above.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,053,112.. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘112 patent disclose the subject matter in the claims of the instant application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
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/ERIC J KURILLA/ Primary Examiner, Art Unit 3619