DETAILED ACTION
Remarks
This communication is in response to the reply filed on 12/23/2025.
The reply cancelled claims 2-3, and 8 and added claim 20. The rejection of claims 1-19 is withdrawn as moot.
Claims 1, 4-7, and 9-20 remain.
A new rejection is provided below in view of the claim amendments.
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.
Claim(s) 18 and 19 is/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 pre-AIA the applicant regards as the invention.
As to claim 18, the claim recites “…at least one interior padding (6) which can be attached to at least one inner wall (3a) in the central region (3) in order to reduce the diameter (3b) of the central region (3) to a smaller diameter”. However, claim 18 depends from claim 1 which recites “…at least one interior padding (col. 4, ln. 4+), which can be attached to at least one inner wall in the central region to reduce the diameter of the central region”. The double positive recitation causes the claim to be unclear.
Claim 19 is rejected via dependency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As to claim 19, the claim recites “wherein the smaller diameter of the central region and the at least one interior padding in the central region of the lying device are configured to prevent a prone or supine position of the newborn or infant subject”.
However, claim 19 depends, via claim 18, from claim 1 which recites “wherein the smaller diameter of the central region and/or the at least one interior padding in the central region are configured to prevent a prone or supine position of the child”. The recitation fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
NOTE: any prior art rejection provided below is made as best understood in view of the 35 U.S.C. 112(b) issues above.
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.
Claims 1, 4-5, 7-8, 10-14 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by US 9,743,778, hereinafter D2 (previously presented).
As to claim 1.
D2 discloses a lying device (figs, 1-6), which, due to its shape, enables stable lateral positioning of a child (apparent from fig. 3), wherein the shape comprises a central region (see annotated figure 3), and a head region (see annotated figure 3), a foot region (see annotated figure 3), or both the head region (see annotated figure 3) and the foot region (see annotated figure 3) wherein the central region (see annotated figure 3) has a smaller diameter (in central region circled portion is smaller than the circled foot and/or head portions) than the head region (see annotated figure 3) and the foot region (see annotated figure 3); and
and the shape includes at least one interior padding (liner 14), attached to at least one inner wall in the central region (col. 3, ln. 15+) to reduce the diameter of the central region (insertion of the liner reduces the volume of the device = reduced diameter),
wherein the smaller diameter of the central region and the at least one interior padding (liner 14) in the central region are configured to prevent a prone or supine position of the child (apparent from fig. 3),
wherein the lying device, in plan view, has the shape of a closed hourglass, or an hourglass that is open upwards and/or downwards (see figure 3).
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As to claim 4.
D2 discloses wherein the lying device further comprises at least one mattress inlay (liner 14).
As to claim 5.
D2 discloses wherein the lying device is made wholly or partly of a material selected from the group consisting of plastic, foam, natural material, and a combination thereof (col. 5, ln. 24+).
As to claim 6.
D2 discloses wherein the child is a newborn or an infant (fig. 4).
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As to claim 7.
D2 discloses wherein the at least one mattress inlay (liner 14) comprises one linked part (fig. 2) or several separate or linked parts (see annotated figure 2), the at least one mattress inlay (14) defining a central part (see annotated figure 2), and at least one head part (see annotated figure 2), and/or a foot part (see annotated figure 2).
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As to claim 10.
D2 discloses wherein the lying device (1) is configured for use as a carrying bag (the use of ‘operatively configured to’ causes the claim to be interpreted as a functional recitation. All functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function as set forth in MPEP 2114. Accordingly, since D2 discloses all of the structural elements and the elements are capable of performing the function described, claim 10 is anticipated by D2).
As to claim 11.
D2 discloses wherein the shape of the lying device is configured by the smaller diameter of the central region (see annotated figure 3) to provide a recess for the hip of the carrier when used as a carrying bag (col. 3, ln. 5+, 66 The waisted portion is adapted to accommodate a carer's waist or hip if using a shoulder carrying strap, or a carer's thigh or lower leg if using carrying handles).
As to claim 12, see explanation for claim 11 (carrying bag).
As to claim 13.
D2 discloses wherein the edge of the lying device has a different height in the central region (see annotated figure 3), head region (see annotated figure 3) and/or foot region (see annotated figure 3; compare to fig 4 which shows different heights of e.g. 68 and central region) or is interrupted in the head and/or foot region. see fig. 4.
As to claim 14, fig. 2 shows the same thickness.
Claims 1, 16, 17, 18, 19, 20 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by US 5,524,640, hereinafter D1 (previously presented).
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As to claim 1.
D1 discloses a lying device (figs, 1-6), which, due to its shape, enables stable lateral positioning of a child (apparent from fig. 5), wherein the shape comprises
a central region (see annotated figure 5), and a head region (see annotated figure 5),
the shape includes at least one interior padding (col. 4, ln. 4+), which can be attached to at least one inner wall in the central region to reduce the diameter of the central region (the use of ‘can be’ indicates this is not required but is interpreted as an intended use recitation),
wherein the smaller diameter of the central region and/or the at least one interior padding in the central region are configured to prevent a prone or supine position of the child (col. 5, 12+; Fig. 5 shows a configuration to provide support in a side lying position).
D1 does not disclose wherein the lying device, in plan view, has the shape of a closed hourglass, or an hourglass that is open upwards and/or downwards. At the top of MPEP 2144.04, it explains that various modifications, including changes in size and shape, are “common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients.” Specifically, §§IV. A cites, 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), wherein the Federal Circuit 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.
The applicant has not disclosed that having wherein the lying device, in plan view, has the shape of a closed hourglass, or an hourglass that is open upwards and/or downwards solves any stated problem or is for any particular purpose above the fact that enables stable lateral positioning of a child. This is shared by D1. Further, there is no readily apparent significance or advantage to this limitation. Thus, a device having the claimed relative shape would not perform differently than the prior art device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of D1 to have the claimed shape, because this modification does not patentably distinguish the claimed device, nor cause the device to perform differently, and thus the modification of the dimensions would have been obvious.
As to claim 16.
D1 discloses a method of treating a newborn or infant subject comprising using the lying device according to claim 1 (see explanation for claim 1) for the treatment or prevention of occipital flattening (plagiocephaly) in the subject (as in fig. 5; also col. 2, ln. 35+).
As to claim 17.
D1 discloses wherein the smaller diameter of the central region (3) of the lying device is configured to prevent a prone or supine position of the newborn or infant subject (as in fig. 5).
As to claim 18.
D1 discloses at least one interior padding (col. 4, ln. 4+) which can be attached to at least one inner wall in the central region in order to reduce the diameter of the central region to a smaller diameter the use of ‘can be’ indicates this is not required but is interpreted as an intended use recitation).
aa 19.
D1 discloses wherein the smaller diameter of the central region and/or the at least one interior padding in the central region are configured to prevent a prone or supine position of the child (col. 5, 12+; Fig. 5 shows a configuration to provide support in a side lying position).
As to claim 20.
D1 discloses wherein the side walls are additionally stabilized by a strap or belt, positioned above or on the upper side of the child lying in the device and secured to the child, to maintain a lateral position of the child in the device (col. 3, ln. 53+, it may also be advantageous to optionally provide waist-belt connectors 84 at or adjacent to sides of the bottom portion 24. In this case, the waist-belt connectors 84 are slots formed within the base 20 and spaced slightly outboard of the liner 14. A suitable waist belt can thus be threaded through the waist-belt connector slots 86, and buckled across a waist of the child 28 in the shell 12).
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 9,743,778, hereinafter D2 (previously presented).
As to claim 9.
D2 does not explicitly disclose: wherein the lying device (1) has the dimensions (width x length) of 25-50 x 60-100 cm, wherein the outer walls of the lying device (1) are between 15-30 cm high. At the top of MPEP 2144.04, it explains that various modifications, including changes in size and proportion, are “common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients.” Specifically, §§IV. A cites, 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), wherein the Federal Circuit 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.
The applicant has not disclosed that having the device with the claimed dimensions solves any stated problem or is for any particular purpose. Further, there is no readily apparent significance or advantage to this limitation. Thus, a device having the claimed relative dimensions would not perform differently than the prior art device such as that of D2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of D2 to have the claimed dimensions, because this modification does not patentably distinguish the claimed device, nor cause the device to perform differently, and thus the modification of the dimensions would have been obvious.
As to claim 15, see explanation for claim 9.
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.
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or pointed out by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. T. Newton, Esq. whose telephone number is (313)446-4899. The examiner can normally be reached 0700-1500 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SPE 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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/J. T. Newton/Primary Examiner, Art Unit 3673 11 March 2026