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 .
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, 8, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 15 of U.S. Patent No. 12,256,845. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 13 and 15 of the reference patent contain all the limitations of and encompass everything claimed by claims 1, 8, and 17 of the instant application.
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 17-20 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.
Claim 17 contains the limitation “wherein rotation of the interleaved elements is aided by low-friction layers situated between adjacent compressible elements, thereby preventing the foam material of one compressible element from rubbing against foam material of an adjacent compressible element” (emphasis added). There is no support in the written description of this application or in the parent application (now U.S. Patent No. 12,256,845) as originally filed for the ”low-friction layers” to prevent rubbing between adjacent compressible elements. Paragraph 0054 states that small-gaps may be utilized to reduce or eliminate friction between surfaces of adjacent compressible elements, but low-friction material is only described as being capable of reducing friction between adjacent compressible elements. No where in the specification is the low-friction material described as having the capability of preventing the compressible elements from rubbing against each other. As such, this limitation is considered new matter. Claims 18-20 are additionally rejected by virtue of their dependence on claim 17.
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 7-20 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.
The term “low-friction” in claims 7, 8, 11-15 and 17-20 is a relative term which renders the claim indefinite. The term “low-friction” 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 specification provides examples of some low-friction materials, such as nylon, elastane, polyester, silk, viscose, rayon, and polytetrafluoroethylene coatings among others. However, many of these materials are available in a variety of textures, and the specification does not describe by what standard these materials were determined to have sufficiently low enough friction to be considered “low-friction”. As such, “low-friction” is considered indefinite. Claims 9, 10, and 16 are additionally rejected by virtue of their dependence on claim 8.
The term “likely to” in claim 8 is a relative term which renders the claim indefinite. The term “likely to” 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. In particular, it is not clear how one would determine how sufficiently likely contact is between adjacent surfaces (e.g. a specific distance between adjacent surfaces, a certain compressibility of the material of adjacent surfaces, or a combination of factors) such that a low-friction layer of material would be coupled to said surfaces as claimed. As such, claim 8 is considered indefinite, and claims 9-16 are additionally rejected by virtue of their dependence from claim 8.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the double patenting rejection described above or upon the timely filing of a terminal disclaimer. Additionally, as set forth above, claims 7-20 are rejected under 35 U.S.C. 112(b) and claims 17-20 are additionally rejected under 35 U.S.C. 112(a), but would be allowable if rewritten or amended to overcome these rejections as well. The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, An (Patent Publication No. CN 209252178 U) is cited as being of interest for disclosing an adjustable firmness support layer for a mattress 1 comprising: a plurality of rotatable assemblies 2 and 6, wherein the plurality of rotatable assemblies 2 and 6 includes a first rotatable assembly 2 and 6 and a second rotatable assembly 2 and 6 (defined by any two of the multiple rotatable assemblies shown in Figures 1-2), the first rotatable assembly 2 and 6 including a first plurality of compressible elements 6 that are mounted on a first central axle 2 and the second rotatable assembly 2 and 6 including a second plurality of compressible elements 6 that are mounted on a second central axle 2 (Figures 1-3). Additionally, regarding claim 8, An discloses a cylindrical compressible element 6 for use in an adjustable firmness mattress 1 having a plurality of rotatable assemblies 2 and 6 each having a plurality of the compressible elements 6 (Figures 1-2), comprising: a first portion 7; a second portion 8; wherein the first portion and the second portion have different compressible properties (Figure 3). Finally, regarding claim 17, An is cited for disclosing adjustable firmness mattress 1 using a plurality of rotatable, compressible elements 6 of a foam material that have orientation-specific firmness variations such that a desired firmness setting may be achieved by rotating the compressible elements (Figures 1-3);
An does not disclose the first plurality of compressible elements interleaved with the second plurality of compressible elements; and a friction-reducing or lower-friction layer disposed between adjacent interleaved compressible elements, allowing the adjacent interleaved compressible elements to rotate relative to each other with reduced friction.
Kappenman (U.S. Publication No. 2022/0192391) is cited as being of interest for disclosing a first plurality of compressible elements (defined by a single row of compressible elements 130, Figure 1) interleaved with the second plurality of elements (defined by an adjacent, single row of compressible elements 130, Figure 1). Hoffman (U.S. Patent No. 6,061,856) is additionally cited as being of interest for teaching a friction-reducing layer disposed between adjacent compressible elements (defined by the guide tube discussed in Col. 4, lines 27-38).
However, the compressible elements of both Kappenman and Hoffman are stationary and isolated from other compressible elements located within the same and different rows. While the interleaved elements of Kappenman allow for the compressive properties of each element to be spread more uniformly in the mattress, there would be no motivation to combine the teachings of the stationary and isolated elements of Kappenman with the disclosure of rotatable and interconnected elements of An in order to arrive at interleaved, rotatable elements. Moreover, the friction reducing layer of Hoffman sits between a single compressive element and the surrounding mattress and operates to allow individual compressible elements to be more easily inserted into the mattress. The friction reducing layer of Hoffman does not operate to reduce friction directly between adjacent compressible elements. As such, there is no disclosure, teaching, or suggestion in the prior art of record such that a rejection of the independent claims may be reasonably maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yao (U.S. Publication No. 2020/0029706) which discloses a mattress comprising rotatable cushions.
DeMore (U.S. Publication No. 2018/0064253) which discloses a pillow comprising a rotatable, cylindrical, compressible element to adjust the firmness of the pillow.
Michiels (U.S. Patent No. 4,407,031) which discloses a mattress comprising cylindrical compressible elements.
Poelmans (Patent Publication No. EP 3023034 A2) which discloses a mattress comprising cylindrical compressible elements of different firmness levels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON N LABARGE whose telephone number is (571)272-6098. The examiner can normally be reached M-Th 6:30-4:30.
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/ALISON N LABARGE/Examiner, Art Unit 3673 /Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679