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 .
Priority
Acknowledgment is made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/326,743, filed on May 21, 2021.
Specification
The disclosure is objected to because of the following informalities: On page 1, in line 4, the phrase --now U.S. Patent No. 12,171,686,-- should be inserted after the phrase “filed May 21, 2021,”.
Appropriate correction is required.
Claim Objections
Claims 1, 5-10 and 14-18 are objected to because of the following informalities:
1) In claim 1, line 3 and in claim 10, line 2: The phrase --for a plurality of users-- should be inserted after the term “device”.
2) In claim 5, line 7; claim 6, line 7; claim 14, line 6 and in claim 15, line 6: The phrase --for a first user-- should be inserted after the term “device”.
3) In the last line of claims 5 and 6; claim 8, line 9; claim 9, line 9; claim 14, line 7; claim 15, line 7; claim 17, line 8 and in claim 18, line 8: The term --first-- should be inserted before the term “user”.
4) In claim 7, line 3 and in claim 16, line 2: The term “a” should be changed to
--the--.
Appropriate correction is required.
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); and 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, 3, 5, 8, 10, 12, 14 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 4 of U.S. Patent No. 12,171,686. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, 5, 8, 10, 12, 14 and 17 are generic to all that is recited in claims 1, 3 and 4 of U.S. Patent No. 12,171,686. In other words, claims 1, 3 and 4 of U.S. Patent No. 12,171,686 fully encompass the subject matter of claims 1, 3, 5, 8, 10, 12, 14 and 17 and therefore anticipate claims 1, 3, 5, 8, 10, 12, 14 and 17. Since claims 1, 3, 5, 8, 10, 12, 14 and 17 are anticipated by claims 1, 3 and 4 of the patent, they are not patentably distinct from claims 1, 3 and 4. Thus the invention of claims 1, 3 and 4 of the patent is in effect a “species” of the “generic” invention of claims 1, 3, 5, 8, 10, 12, 14 and 17. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 3, 5, 8, 10, 12, 14 and 17 are anticipated (fully encompassed) by claims 1, 3 and 4 of the patent, claims 1, 3, 5, 8, 10, 12, 14 and 17 are not patentably distinct from claims 1, 3 and 4, regardless of any additional subject matter present in claims 1, 3 and 4.
Claims 2, 4, 6, 7, 9, 11, 13, 15, 16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 4 of U.S. Patent No. 12,171,686 in view of U.S. Patent Application Publication No. 2014/0277822 to Nunn et al. Claims 1, 3 and 4 of U.S. Patent No. 12,171,686 are considered to disclose all of the limitations as recited in claims 2, 4, 6, 7, 9, 11, 13, 15, 16 and 18 except for the use of an air mattress including a plurality of air cells, and wherein the recommendation of the setting of the electric bed device includes a firmness of the plurality of air cells. Nunn et al. provide the basic teaching of an electric bed device (12) comprising an air mattress including a plurality of air cells (14A, 14B) (as shown in Figure 1 and as described on page 1, in paragraph 0015); and an output unit (302) configured to output a recommendation of the setting of the electric bed device (12), wherein the recommendation of the setting of the electric bed device includes a firmness of the plurality of air cells (14A, 14B) (as shown in Figures 3, 4 & 6 and as described on page 2, in paragraphs 0025 & 0026; page 3, paragraph 0033 and on page 6, in paragraphs 0066-0069). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the electric bed device disclosed in claims 1, 3 and 4 of U.S. Patent No. 12,171,686 with the air mattress and recommendation taught in Nunn et al. with a reasonable expectation of success because this would have achieved the desirable result of providing at least one setting which “[correlates] strongest with more restful sleep” for a user of the electric bed device as taught by Nunn et al. (page 6, paragraph 0068).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Nishiura et al. ’686, Sayadi et al. ‘563, Sayadi et al. ‘703, Sayadi et al. ‘282, Sayadi et al. ‘461, Sayadi et al. ‘927 and Sayadi et al. ‘452.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673