DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-7, 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,082,701 as shown in the table below comparing the claims of the current application with U.S. Patent No. 12,082,701. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claims 1-6 and 9-13 are taught by claims 1-10 of US Patent No. 12,082,701.
US Application 18,825,272 Claims
US Patent No. 12,082,701 Claims
Limitations missing from US Patent No. 12,082,701
1
1
2
2
3
4
4
6
5
9
6
10
7
1
8
The mattress of claim 1, wherein the first end extends perpendicularly between the lateral sides, and the second end is spaced apart from the first end and extends perpendicularly between the lateral sides, the seams defining the flowpath as being generally rectangular for flow of fluid to the target region.
9
1
10
2
11
4
12
9
13
10
14
1
15
The insert of claim 9, wherein the first end extends perpendicularly between the lateral sides, and the second end is spaced apart from the first end and extends perpendicularly between the lateral sides, the seams defining the flowpath as being generally rectangular for flow of fluid to the target region.
Claims 1-6, 8-13 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,278,125 as shown in the table below comparing the claims of the current application with U.S. Patent No. 11,278,125 . Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claims 1-6, 8-13 and 15 are taught by claims 1-10 of US Patent No. 11,278,125.
US Application 18,825,272 Claims
US Patent No. 11,278,125 Claims
Limitations missing from US Patent No. 11,278,125
1
1
2
2
3
4
4
6
5
9
6
10
7
The mattress of claim 1, wherein the first end is an arched end extending between the lateral sides, and the second end is an arched spaced apart from the first end and extending between the lateral sides, the seams defining the flowpath as being generally arched for flow of fluid to the target region.
8
1
9
1
10
2
11
4
12
9
13
10
14
The insert of claim 9, wherein the first end is an arched end extending between the lateral sides, and the second end is an arched spaced apart from the first end and extending between the lateral sides, the seams defining the flowpath as being generally arched for flow of fluid to the target region.
15
1
Claim Objections
Claims 7 and 14 are objected to because of the following informalities: In claim 7, line 2, and claim 14, line 2, the phrase “and the second end is an arched spaced apart” should be changed to read - - and the second end is an arch spaced apart - -. Appropriate correction is required.
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 3 and 11 are 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 term “closer to the first end of the insert” in claim 3 and claim 11 is a relative term which renders the claim indefinite. The term “closer” 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. The Examiner suggests rewording the claim to read - -closer to the first end of the insert than the second end of the insert - -to clarify the comparison.
Allowable Subject Matter
Claims 1-15 are rejected on the ground of nonstatutory double patenting as presented above. However, the closest prior art of record does not disclose or make obvious the current claims. Therefore, the following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record to US Patent Pub. No. 2011/0041246 to Li et al. (hereinafter Li) discloses a mattress (see cushion structure 110 of Li as shown in at least Fig. 6B) extending in longitudinal and lateral directions (Figs. 6A and 6B of Li) and including a fluid flowpath for channeling fluid through the mattress from an inlet through the mattress (see at least Fig. 6B of Li which shows ducts 625 for providing air into the cushioning structure from cooling unit 122), the flowpath configured to distribute the fluid to a preferred target region of the topper (see the interior regions of the cushion 110 of Li), [….] wherein the inlet includes a first inlet positioned on the first lateral side of the insert and a second inlet positioned on a second lateral side of the insert (see the two inlets provided on either lateral side of the cushion 110 which are closest to the cooling unit 122 of Li), each of the first and second inlets connected to a respective intake conduit (see ducts 625 of Li), the intake conduits converging such that a stream of air from each of the inlets combines together to direct air through the flowpath that includes a working region (the flow path is not shown in Fig. 6B of Li but since the air inlets are positioned directly across from one another and the outlet is positioned at an end opposite the cooling unit, it is clear that the stream of air from each of the inlets would combine together) and the air dissipates thought the working region (paragraph [0082] of Li).
Li does not disclose wherein the mattress comprises an insert enclosed by a ticking, the insert defining the flowpath with seams bounding the flowpath and separating the flowpath from margins through which the fluid does not flow, the seams defining a first lateral side, a second lateral side spaced apart from and parallel to the first lateral side, a first end extending between the lateral sides, and a second end spaced apart from the first end and extending between the lateral sides, the seams defining the flowpath for flow to the target region.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PG Pub. No. 2002/0100121 to Kocurek teaches a cooling cover with inlets (first and second portions 46, 48) and dividers (70, 72) separating the region with the tubes with peripheral edges of the cover.
US Patent No. Irani is cited for teaching an air blanket with margins (non-inflation zones 16a) defined by seams (Fig. 2).
US Patent No. 7,291,163 to Gammos is cited for teaching a seam defining an inflatable zone of an apparatus for providing conditioned air to a patient.
US Patent No. 4,777,802 to Feher is cited for teaching an air conditioned blanket with seams separating inflation zones.
US Patent No. 5,882,349 to Wilkerson et al. is cited for teaching a moisture control coverlet with multiple inlets.
US Patent No 9,131,781 to Zaiss is cited for teaching an air distribution pad adapted to fit on an upper surface of a mattress with margins that are separated from a working region of the pad. However, airflows between the sections 48 and 46b as shown by the streams of air 50 in Fig. 4.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L BAILEY whose telephone number is (571)272-8476. The examiner can normally be reached M-F 7:30 AM-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin Mikowski can be reached at (571) 272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.L.B/Examiner, Art Unit 3673
/JUSTIN C MIKOWSKI/Supervisory Patent Examiner, Art Unit 3673
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