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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,528,990 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Information Disclosure Statement
It is noted that an IDS has not been filed with the instant application. The absence of an IDS could result in a reissue patent’s issuing without all the prior art documents listed on the original patent. Should applicant want any prior art documents listed in any resulting reissue, then applicant must submit an IDS listing the respective art.
Matters of Form
37 CFR 1.173 (d) requires that any changes relative to the patent must include markings wherein matter to be omitted by reissue must be enclosed in brackets and matter to be added by reissue must be underlined. The preliminary amendment to the claims improperly shows text deleted from the claim with strikethrough. Correction is required.
Defective Reissue Oath/Declaration and Claim Rejections - 35 USC § 251
The reissue oath/declaration filed on April 21, 2025 is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The reissue oath/dec fails check the second box noting that the original patent is wholly or partly inoperative or invalid “by reason of the patentee claiming more or less than he had the right to claim in the patent.” It appears Applicant intended to check this box given that their error statement details that the patent claimed less than it had the right to claim. Correction is required.
Claims 1-17 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Claim Rejections - 35 USC § 251 – Original Patent
Claims 1-6 and 13 are rejected under 35 USC 251 for failing to comply with the original patent requirement. MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
As described below with respect to 112 (a) Written Description, the original patent fails to provide sufficient written description support for reissue claims 1-6 and 13. Reissue claims 1-6 and 13 recite a support frame assembly comprising a plurality of support frames that are configured for re-arranging relative to one another between different configurations so as to change a footprint of the support frame assembly. Reissue claims 1-6 and 13 are broadened with respect to patent claims 1-6 and 13 in that the claimed rearrangement does not require “changing a curvature of the support frame assembly.” Nothing in the original disclosure supports that Applicant envisioned any rearrangement other than a rearrangement that 1) changes a curvature of the support frame assembly, 2) changes an orientation of a plurality of support frames to change a footprint of the support frame assembly or 3) includes a pivotal connection between a plurality of support frames to facilitate the change in footprint. The broadened claim language of claims 1-6 and 13 encompasses a device in which support frames are simply translationally adjustable (not pivotal) to change a footprint of the support frame assembly without any simultaneous change in relative orientation of the support frames or curvature of the support frame assembly. Nothing in Applicant’s disclosure supports that applicant envisioned this embodiment.
Claim Rejections - 35 USC § 251 - New Matter
The following is a quotation of 35 U.S.C. 251(a):
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-6 and 13 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought, as discussed in detail below in the rejections under 35 U.S.C. 112(a) for lack of written description.
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 1-6 and 13 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.
Reissue claims 1-6 and 13 recite a support frame assembly comprising a plurality of support frames that are configured for re-arranging relative to one another between different configurations so as to change a footprint of the support frame assembly. Reissue claims 1-6 and 13 are broadened with respect to patent claims 1-6 and 13 in that the claimed rearrangement does not require “changing a curvature of the support frame assembly.” Nothing in the original disclosure supports that Applicant envisioned any rearrangement other than a rearrangement that 1) changes a curvature of the support frame assembly, 2) changes an orientation of a plurality of support frames to change a footprint of the support frame assembly or 3) includes a pivotal connection between a plurality of support frames to facilitate the change in footprint. The broadened claim language of claims 1-6 and 13 encompasses a device in which support frames are simply translationally adjustable (not pivotal) to change a footprint of the support frame assembly without any simultaneous change in relative orientation of the support frames or curvature of the support frame assembly. Nothing in Applicant’s disclosure supports a claim to this broader embodiment.
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 1-6, 9-10 and 14-15 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 footprint of the support surface assembly” in line 11. This phrase lacks sufficient antecedent basis.
Claim 1 further recites “the support surface assembly variable in size, shape and curvature” in lines 19-20. A support surface assembly that is variable in size, shape and curvature is not previously recited in the claim and therefore this particular support surface assembly lacks sufficient antecedent basis. Claims 2-6, 9-10 and 11-14 are rejected as being dependent upon a rejected base claim.
Allowable Subject Matter
Claims 1 and 7, and claims dependent therefrom, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) and 35 USC 251 set forth in this Office action.
With respect to claim 1, the prior art of record fails to disclose either singly or in obvious combination a support frame assembly comprising a plurality of support frames that are configured for re-arranging relative to one another between different configurations to change a footprint of the support frame assembly and a support surface assembly forming a reconfigurable support surface comprising a plurality of interconnected flexible panels comprised of flexible and resilient strips, , a front plate assembly affixed to a front surface of the support surface assembly, the front plate assembly comprising a step down portion disposed approximately 45 degrees relative to a top of the reconfigurable support surface and a vertical portion disposed approximately 90 degrees relative to the top reconfigurable support surface wherein the plurality of interconnected flexible panels define faces oriented to extend in a vertical direction and the vertical orientation of the aces does not change with reconfigurations of the support surface assembly.
With respect to claim 7, the prior art of record fails to disclose either singly or in obvious combination a support surface assembly forming a reconfigurable support surface comprising: a plurality of panels that define faces oriented to extend in the vertical direction, the faces being intermittently bonded to each other so that the panels assume a sinusoidal pattern, the panels being flexible between bonded areas wherein the surface assembly is expandable in a lengthwise direction perpendicular to the vertical direction without substantial contraction in the support surface and the support surface assembly is variable in size, shape and widthwise curvature; and a front plate assembly affixed to a front surface of the support surface assembly, the front plate assembly comprising a step down portion disposed approximately 45 degrees relative to a top of the reconfigurable support surface and a vertical portion disposed approximately 90 degrees relative to the top reconfigurable support surface wherein the plurality of interconnected flexible panels define faces oriented to extend in a vertical direction and the vertical orientation of the faces does not change with reconfigurations of the support surface assembly.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Thorkildson (4,155,312) and Peterson (4,500,146) both disclose shelving units with adjustable frames that facilitate adjustable footprints; Lorber (2,694,611) and Siebert (10,045,611) discloses a support surface comprised of pivotally connected panels which facilitate an adjustable footprint.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH B. MCPARTLIN whose telephone number is (571)272-6854. The examiner can normally be reached M-F 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
Conferees:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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