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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
Please note that a requirement for information is included in this action. See below for details.
Applicant’s arguments, see the remarks filed 1/21/26, with respect to the rejection(s) of the claims as set forth in the prior action have been fully considered and are persuasive with regard to the amended claim and the art as previously applied. Therefore, the rejections as set forth in the prior action have been withdrawn as overcome via amendment. The claim objection was overcome by amendment. The 112b rejection has been overcome by amendment. Applicant is correct in that the prior art as applied in the prior action does not meet the currently amended independent claim. However, the amendment has created new issues which necessitate the new grounds of rejection as set forth below. See below for details.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, applicant claims a body comprising “non-viscoelastic, resiliently deformable material having a rate of recovery of 2.0 seconds or less an instantaneous rate of recovery, wherein the material recovers at the same speed as an indenter foot is removed after indentation such that contact between the material and the indenter foot is maintained during a recovery time test per ASTM D3574-17, Test M.” The claim as written covers all materials having the recited characteristic, whether known now or yet to be developed. The original disclosure fails to disclose any examples / species of the claimed genus of materials. No representative examples are provided within the original disclosure. To the extent that the claim ostensibly covers a range of materials, no representative sample of that range is provided.
Notably, applicant’s claim purports to claim materials by the end result and characteristic without disclosing the materials themselves. The original disclosure provides little in the way of guidance for what materials meet the claimed limitation at issue. For example, the claim broadly includes any material, whether foam or not, which meets the characteristics per the ASTM test as claimed, with the sole limitation being that it is non-viscoelastic and resiliently deformable. Dependent claims are later introduced which include require non-viscoelastic foam as the material, the material comprising a polyol, having a particular glass-transition temperature, or having a particular coefficient of friction. However, these still only provide minimal additional disclosure. At most, the disclosed and/or claimed material at issue is a non-viscoelastic, resiliently deformable, foam comprising a high molecular weight polyol and having certain specific required characteristics with respect to glass transition temperature, coefficient of friction, and recovery time. The specific material itself or a composition which meets the claimed limitations is never disclosed. Rather, applicant solely discloses, at most, the broad class of non-viscoelastic, resiliently deformable, foams comprising a high molecular weight polyol and then simply claims and requires material characteristics without any disclosure of how they are achieved and with no indication that applicant actually possesses the asserted successful materials.
The original disclosure purports to have a working example insofar as it discloses that a successful example exists pursuant to the tables in the specification, but the original disclosure never provides specifics as to what the samples actually are, rather instead describing the sample via the testing results only. The specific material or composition which achieves the result is never disclosed.
The original disclosure only discloses a part of the purported successful formula, i.e. disclosing at most, the broad class of non-viscoelastic, resiliently deformable, foams comprising a high molecular weight polyol and nothing more regarding how to actually proceed from there to achieve the successful results and the characteristics required by the claim. There is no additional disclosure as to, for example, whether particular treatments of the material would achieve the claimed result, what specific material composition would achieve the claimed result, what specifically needs to be done to the broad class of material disclosed to achieve the claimed result (e.g. pressure treating, some operation at a particular temperature, incorporation of additional materials or elements, structure of the material itself such as having apertures / being needled / including substantial voids / etc), and so on. The reader is left to guess with only a partial story as to how the ending is achieved and is given none of the tools to fill in the gaps.
The original disclosure fails to clearly show that applicant had possession of the invention including the specific claimed material which, again, is described in large part only by the characteristics achieved and not the material itself.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the claimed invention. Specifically, applicant claims a body comprising “non-viscoelastic, resiliently deformable material having a rate of recovery of 2.0 seconds or less an instantaneous rate of recovery, wherein the material recovers at the same speed as an indenter foot is removed after indentation such that contact between the material and the indenter foot is maintained during a recovery time test per ASTM D3574-17, Test M.” The claim as written covers all materials having the recited characteristic, whether known now or yet to be developed. The original disclosure fails to disclose any examples / species of the claimed genus of materials. No representative examples are provided within the original disclosure. Further, the disclosure does not enable one to make and/or use the invention. To the extent that the claim ostensibly covers a range of materials, no representative sample of that range is provided. Notably, applicant’s claim purports to claim materials by the end result and characteristic without disclosing the materials themselves. The original disclosure provides little in the way of guidance for what materials meet the claimed limitation at issue. For example, the claim broadly includes any material, whether foam or not, which meets the characteristics per the ASTM test as claimed, with the sole limitation being that it is non-viscoelastic and resiliently deformable. Dependent claims are later introduced which include require non-viscoelastic foam as the material, the material comprising a polyol, having a particular glass-transition temperature, or having a particular coefficient of friction. However, these still only provide minimal additional disclosure. At most, the disclosed and/or claimed material at issue is a non-viscoelastic, resiliently deformable, foam comprising a high molecular weight polyol and having certain specific required characteristics with respect to glass transition temperature, coefficient of friction, and recovery time. The specific material itself or a composition which meets the claimed limitations is never disclosed. Rather, applicant solely discloses, at most, the broad class of non-viscoelastic, resiliently deformable, foams comprising a high molecular weight polyol and then simply claims and requires material characteristics without any disclosure of how they are achieved. Undue experimentation would therefore be required.
With respect to the Wands factors, see below.
With respect to the breadth of the claims, the examiner finds that the claims are very broad with regard to the material and highly specific with regard to the characteristics of the material. See above.
With regard to the nature of the invention, examiner finds that the invention is a support pad with specific material properties required.
With regard to the state of the prior art, examiner finds that support pads, anti-skid pads, and operating tables including pads are commonly known in the art in general. The prior art further includes viscoelastic and non-viscoelastic materials in supports such as pads. The prior art in this area does not readily appear to include specifics regarding the instantaneous rate of recovery and ASTM tests, and specifics regarding the material are far less common than general disclosures as to foams and broad categories of foam.
Similarly the level of ordinary skill in the art mirrors the state of the prior art. While general structures are common, the specifics of the materials being claimed do not appear to be within the level of ordinary skill in the art and would require undue experimentation to achieve based upon the current original disclosure.
With regard to the level of predictability in the art as to the material at issue, there does not appear to be a high level of predictability in the art. Applicant’s disclosure solely encompasses, at most, the broad class of non-viscoelastic, resiliently deformable, foams comprising a high molecular weight polyol and nothing more regarding how to predictably achieve the claimed material limitations.
The amount of direction provided by the inventor is minimal with regard to the specifics of the claimed subject matter at issue. The disclosure does generally disclose the broad structure in the claim (e.g. an operating table cover), but fails to provide direction with regard to achieving a material with the claimed required result, instead merely asserting success.
The original disclosure purports to have a working example insofar as it discloses that a successful example exists pursuant to the tables in the specification, but the original disclosure never provides specifics as to what the samples actually are, rather instead describing the sample via the testing results only. The specific material or composition which achieves the result is never disclosed.
Given the above, the quantity of experimentation needed to make or use the invention based on the content of the disclosure is high. The original disclosure includes some experimental results, but fails to disclose how to actually achieve the results. The original disclosure only discloses a part of the purported successful formula, i.e. disclosing at most, the broad class of non-viscoelastic, resiliently deformable, foams comprising a high molecular weight polyol and nothing more regarding how to actually proceed from there to achieve the successful results and the characteristics required by the claim. There is no additional disclosure as to, for example, whether particular treatments of the material would achieve the claimed result, what specific material composition would achieve the claimed result, what specifically needs to be done to the broad class of material disclosed to achieve the claimed result (e.g. pressure treating, some operation at a particular temperature, incorporation of additional materials or elements, structure of the material itself such as having apertures / being needled / including substantial voids / etc), and so on. The reader is left to guess with only a partial story as to how the ending is achieved and is given none of the tools to fill in the gaps.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for the full scope of the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Specifically, applicant claims a body comprising “non-viscoelastic, resiliently deformable material having a rate of recovery of 2.0 seconds or less an instantaneous rate of recovery, wherein the material recovers at the same speed as an indenter foot is removed after indentation such that contact between the material and the indenter foot is maintained during a recovery time test per ASTM D3574-17, Test M.” The claim as written covers all materials having the recited characteristic, whether known now or yet to be developed. The original disclosure fails to disclose any examples / species of the claimed genus of materials. No representative examples are provided within the original disclosure. Further, the disclosure does not enable one to make and/or use the invention. To the extent that the claim ostensibly covers a range of materials, no representative sample of that range is provided. The scope of the claim exceeds the scope of what is enabled within the original disclosure and one skilled in the art could not make and use the entirety of the scope of the claimed invention without undue experimentation. Applicant’s claim purports to claim materials by the end result and characteristic without disclosing the materials themselves. Undue experimentation would therefore be required. With respect to the Wands factors, see above. See above for additional details as necessary.
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 1-20 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.
Claim 1 recites the limitation “… having a rate of recovery of 2.0 seconds or less an instantaneous rate of recovery.” It is unclear what is meant by the recitation as written given the grammar issues present. For example, it is unclear whether the rate of recovery needs to be less than 2.0 seconds, whether the rate of recovery of 2.0 seconds or less is considered to be instantaneous, whether the rate of recovery is required to be instantaneous and the 2.0 seconds or less was inadvertently left in the claim, or whether some other interpretation is intended. The recitation therefore renders the claim indefinite. All claims depending from claim 1 are indefinite for the same reason.
Requirement for Information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application. It is noted that the art area involved is the beds art, table art, operating / surgical supports art, cushions / bedding / pads and similar art, and resiliently deformable materials art. Within the art areas, the particular claimed subject matter is the claimed material (see claim 1 and associated dependent claims). The information required is necessary to examination as it relates to the 112 issues as described in the action and also with regard to the art, specifically materials which encompass, meet, or are relevant to the claimed limitations. See MPEP 704 for details.
In response to this requirement, please provide the following as set forth below. With regard to any and all of the below, please provide the title, citation, date, and copy of each document.
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
Dated copies of any and all documents, whether patents, non-patent literature, or other documents of any type which are material, pertinent, and/or relevant to patentability of the disclosed and/or claimed invention, including but not limited to documents which relate to applicant’s possession of the claimed invention and enablement of the claimed invention. The above is with regard to any and all claims, not solely limited to claim 1.
Dated copies of any and all documents relating to material names and/or compositions which meet the disclosed and/or claimed invention (any and all claims, not limited to solely claim 1). For example, with regard to claim 1, material names and/or compositions for any and all materials (whether foam or otherwise) which have the following qualities: non-viscoelastic, resiliently deformable material having a rate of recovery of 2.0 seconds or less an instantaneous rate of recovery, wherein the material recovers at the same speed as an indenter foot is removed after indentation such that contact between the material and the indenter foot is maintained during a recovery time test per ASTM D3574-17, Test M.
Identification of all material names and/or compositions which meet the disclosed and/or claimed invention (any and all claims, not limited to solely claim 1). For example, with regard to claim 1, material names and/or compositions for any and all materials (whether foam or otherwise) which have the following qualities: non-viscoelastic, resiliently deformable material having a rate of recovery of 2.0 seconds or less an instantaneous rate of recovery, wherein the material recovers at the same speed as an indenter foot is removed after indentation such that contact between the material and the indenter foot is maintained during a recovery time test per ASTM D3574-17, Test M.
The title, citation and copy of each publication / document that any of the inventors relied upon to develop the claimed material. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.
Identification of precisely which portions of the disclosure provide written description support for the claimed invention.
Identification of precisely which portions of the disclosure provide enablement support for the claimed invention.
Identification of precisely which portions of the disclosure provide scope of enablement support for the claimed invention.
Commercial databases: a list of any and all relevant commercial database known to any of the inventors that could be searched for materials meeting any of the claims, including claim 1 .
Search: Whether a search of the prior art was made, and if so, what was searched. If a search was performed, please state the citation for each prior art collection searched. If any art retrieved from the search was considered material to demonstrating the knowledge of a person having ordinary skill in the art to the disclosed invention, please provide the citation for each piece of art considered and a copy of the art.
Keywords: In response to this requirement, please provide a list of keywords that are particularly helpful in locating publications related to the claimed materials.
Related information: A copy of any and all non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
Information used to draft application: A copy of any and all non-patent literature, published applications, or patents (U.S. or foreign) that was used to draft the application.
Information used in invention process: A copy of any and all non-patent literature, published applications, or patents (U.S. or foreign) that was used in the invention process, such as but not limited to by designing around or providing a solution to accomplish an invention result.
Improvements: Where the claimed invention is an improvement, identification of what is being improved.
In Use: Identification of any and all uses of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
The name and citation of any particularly relevant indexed journal, or treatise. A copy of the aforementioned is required.
The trade name of any goods or services the claimed subject matter is embodied in as well as any and all dated copies of documents relating to patentability of the disclosed and/or claimed invention.
The citation for, the dates initially published and copies of any advertising and promotional literature prepared for any goods or services the claimed subject matter has been embodied in.
The citation for and copies of any journal articles describing any goods or services the claimed subject matter has been embodied in.
The trade names and providers of any goods or services in competition with the goods or services the claimed subject matter has been embodied in.
Any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with the goods or services the claimed subject matter has been embodied in.
Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application. Regarding the identification of applications filed before June 8, 1995, 35 U.S.C. 122(a) requires the identified applications to be kept in confidence by the Office and no information concerning the same is to be given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director. See MPEP § 103 and Hyatt v. United States Patent and Trademark Office, No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014 WL 2446176).
Identification of and documents related to any products and services embodying the disclosed subject matter of the claims, including but not limited to claim 1, and identification of the properties of similar products and services found in the prior art.
A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
The timing fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97.
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
This Office action has an attached / included requirement for information under 37 CFR 1.105 (see above). A complete reply to this Office action must include a complete reply to the attached / included requirement for information. The time period for reply to the attached / included requirement coincides with the time period for reply to this Office action.
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 DAVID E SOSNOWSKI whose telephone number is (571)270-7944. The examiner can normally be reached 8:30 AM - 3:30 PM and 9 PM through 11:59 PM Monday through Friday, generally.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID E. SOSNOWSKI/
Primary Patent Examiner
Art Unit 3673
/David E Sosnowski/Primary Patent Examiner, Art Unit 3673