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
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/624,061 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 1-19 are directed toward a “mask” (see Figs. 10-12 of instant application) which is not disclosed in the prior-filed application.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “1111” in Fig. 11 has been used to designate both lower, outside bilateral curves and inward-facing, bilateral termini.. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 19 is objected to because of the following informalities: Please change “breathing cover” in the last line of the claim to —cove—. Appropriate correction is required.
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 12 is 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 12 recites the limitation "said upper surface". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-12, 15, 16, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rudo (US 3,354,884).
Regarding Claim 1, Rudo discloses a mask which also serves as a pillow for use in a prone lying position, comprising:
an at least generally U-shaped perimeter (see Fig. 1), wherein said perimeter comprises a first side surface configured to contact a human user’s face (left side of Fig. 2);
at least one central cove and/or channel (see annotated Fig. 1 below), defined, at least in part, by said U-shaped perimeter;
a central cushioning matrix (10 and 11) comprising a compliant, supportive, resilient material (“cotton wool”, see Col. 2, Lines 11-13);
wherein said first side surface is contoured to conform to surface features of the human user’s face while the human user is lying in the prone position, face-down, with the human user’s face placed downward against it and into the central cove and/or channel (intended usage of the mask when lying prone);
a second, floor-facing surface (right side Fig. 2), provided on the opposite side of the mask from the first side surface.
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Regarding Claim 2, Rudo discloses a removable and replaceable pressure-applying insert (4), comprising a reversible fastener (7).
Regarding Claim 3, Rudo discloses wherein the removable and replaceable pressure-applying insert includes a gel, water or other heat-conductive and absorptive material (“cotton wool” impregnated with oil, see Col. 1, Lines 67-68 and Col. 2, Lines 3-5).
Regarding Claim 4, Rudo discloses wherein the removable and replaceable pressure-applying insert comprises an internal cavity (inside 5) configured to hold a material (6) for treating the human user’s skin on or about the human user’s face.
Regarding Claim 5, Rudo discloses wherein the removable and replaceable pressure-applying insert comprises a tab (see Fig. 3), configured to be gripped and manipulated manually by the human user.
Regarding Claim 6, Rudo discloses wherein the removable and replaceable pressure-applying insert comprises an applicator section (6), configured to apply a treatment to the human user.
Regarding Claim 7, Rudo discloses wherein the applicator section includes a brush or a sponge (“cotton wool” acts as a sponge for oil).
Regarding Claim 8, Rudo discloses wherein the removable and replaceable pressure-applying insert comprises an applicator section 6), configured to apply a treatment to the human user including a treatment material (“a mixture of equal proportion of coconut oil and peanut oil to which perfume has been added”, see Col. 2, Lines 3-5)).
Regarding Claim 9, Rudo discloses wherein the treatment material comprises a pharmaceutical (oil is used as a pharmaceutical for dry skin and puffy eyelids).
Regarding Claim 10, Rudo discloses wherein the treatment material comprises a moisturizer (“lubricating liquid”, see Col. 1, Lines 24-26 and “oil mixture” in Col. 2, Lines 19-22+.
Regarding Claim 11, Rudo discloses wherein the mask is configured to lift the human user’s face to a minimum clearance from a ground, floor or other surface upon which said second, floor-facing surface is placed (the mask exerts pressure on the user’s face, see Col. 1, Lines 12-15, thus “lifting” the user’s face).
Regarding Claim 12, as best understood, Rudo discloses wherein the mask is configured to allow the human user to adjust the angle of flexion or extension of the human user’s neck by placing different areas of the human user’s face against different contours of said upper surface having different levels of elevation from said second, floor-facing surface, when said second, floor-facing surface is placed upon a ground, floor or other surface (intended usage of the mask, capable of being achieved by Rudo).
Regarding Claim 15, Rudo discloses wherein said first side surface is contoured to make contact with, and apply pressure to, at least one beneficial pressure point of the human user’s face when the human user’s face is resting in the mask (see Fig. 1 and Col. 1, Lines 20-26).
Regarding Claim 16, Rudo discloses wherein said first side surface is contoured to reduce pressure to the human user’s eyes (see Fig. 1 and Fig. 3).
Regarding Claim 18, Rudo discloses wherein the generally U-shaped perimeter is also generally horseshoe-shaped, including two lower, outside bilateral curves, and two inward-facing, bilateral termini (see annotated Fig. 1 below).
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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, 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.
Claim(s) 13, 14, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudo (US 3,354,884).
Regarding Claims 13 and 14, Rudo fails to disclose wherein the material comprises a memory foam, or other high-density, small-cell foam. Examiner takes Official Notice that memory foam, or other high-density, small-cell foam is well-known within the art. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the material of Rudo with memory foam, or other high-density, small-cell foam, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 17, Rudo fails to disclose wherein the central cushioning matrix comprises, or is comprised within, a cushion measuring about 5 inches long by 5 inches wide by 2 inch thick. It would have been obvious matter of design choice to make the size of the central cushioning matrix about 5 inches long by 5 inches wide by 2 inch thick, since such a modification would have involved a mere change in the size of a component. A change In size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955).
Regarding Claim 19, Rudo discloses a method for using a mask, comprising the following step: providing a mask which also serves as a pillow, comprising:
an at least generally U-shaped perimeter (see Fig. 1), wherein said perimeter comprises a first side surface (left side of Fig. 2) configured to contact a human user’s face;
at least one central cove and/or channel (see annotated Fig. 1 above), defined, at least in part, by said U-shaped perimeter;
a central cushioning matrix (10 and 11) comprising a compliant, supportive, resilient material;
wherein said first side surface is contoured to conform to surface features of the human user’s face. Rudo fails to explicitly disclose the use of the mask while lying prone and while the human user is lying in the prone position, face-down, with the human user’s face placed downward against it and into the breathing cover and/or channel. Examiner takes Official Notice that using a mask while lying prone and placing a user’s face downward against it and into the breathing cove is well-known within the art (see e.g. Holtz US 2019/0231595 at para. [0022] and Merrill US 2023/0131013 at para. [0074]). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the use of Rudo with lying prone as known in the art. The motivation would have been to provide a comfortable rest position for stomach sleepers.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J KURILLA whose telephone number is (571)270-7294. The examiner can normally be reached Monday-Thursday 7AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC J KURILLA/Primary Examiner, Art Unit 3619