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 .
Response to Amendments and Arguments
The amendments, filed July 16, 2026, have been entered. Claims 1, 8-11, and 16 have been amended. Although text is present for claims 17-19 and claim 17 additionally appears to include markings indicating amendments made to the claim (generally no claim text shall be present for any claim in the claim listing with the status of cancelled, see 37 C.F.R. 1.121(c)(4)(i)), claims 17-19 include status identifiers indicating they are cancelled (where identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim, see 37 C.F.R. 1.121(c)(4)(ii)), and Applicant’s remarks on page 6 additionally confirm claims 17-19 were intended to be cancelled. As such, claims 17-19 are considered canceled. Claims 1-16 and 20 are currently pending in the application.
Applicant’s request that the provisional double patenting rejection be held in abeyance is acknowledged.
The amendments to the claims have overcome the previous objections to the claims and the rejections under 35 U.S.C. 112(b). However, a new rejection to claim 11 under 25 U.S.C. 112(b) has been entered, as discussed in further detail below.
Applicant argues, on pages 7-9 of Applicant’s remarks that Hiebert (U.S. Patent No. 9,549,865) does not sufficiently disclose the subject matter of the body retention strap of claims 1 and 20.
Firstly, Applicant argues that Hiebert does not disclose body retention straps, as strap receiving members 121 are not straps in and of themselves, but are used to attach straps. However, Examiner noted in the previous office action, that “Hiebert discloses a body retention strap 121 (see Hiebert, Col. 15, lines 49-67, where straps may be passed through loops 121)” While reference number 121 is used for convenience in the rejection, as the figures of Hiebert do not illustrate the straps and therefore do not provide a reference number which may be used to quickly directly reference them, the straps are attached to loops 121, and therefore Hiebert discloses a body retention strap placed at loops 121.
Secondly, Applicant argues that secondary chambers 117 and 119 are not selectively inflatable strap pivoting elements because they are bead-filled air-evacuated chambers. Examiner respectfully disagrees. Hiebert uses air to fill (i.e. inflate) the chamber in one state (Col. 1, lines 36-45), defining an inflated state where the positioning device is soft and pliable, and then evacuates (i.e. deflates) the air to cause the positioning aid to become rigid and curve to a user’s body (Figure 12b, Col. 14, lines 15-33). As claim 20 merely requires that the selectively inflatable strap pivoting elements pivot relative to the strap in response to a transition between a deflated and inflated state, then Hiebert meets the claim,
Thirdly, Applicant argues that the body retention strap of Hiebert does not comprise a pivoting element, as the chambers 117 and 119 are not a part of the strap but rather part of the positioning device body. Examiner respectfully disagrees. Hiebert discloses a positioning device with inflatable chambers that straps around a patient and an operating table to hold the patient in a desired position during an operation. Applicant defines the body retention strap as an assembly including inflatable and deflatable chambers which define strap pivoting elements 170 and lifting elements 172 (see Applicant’s specification, paragraphs 0161-0167). As Applicant’s own definition of the body retention strap includes inflatable and deflatable chambers, then the assembly as a whole of Hiebert can define a body retention strap, which then comprises the pivoting elements 117 and 119.
Fourthly, Applicant argues that the Hiebert’s chambers do not pivot relative to adjacent portions of the strap. Examiner respectfully disagrees. As noted above the entire assembly of Hiebert can be considered the body retention strap, and as such, when the pivoting elements 117 and 119 pivot in the manner shown in Figure 12B, then they not pivot relative to adjacent portions of the strap.
Additionally, Applicant argues that Applicant’s invention provides specific technical advantages not found in the prior art, such as being capable of applying and releasing shear forces to skin in contact with the strap to enhance perfusion. It is noted that the features upon which applicant relies (i.e., enhancing perfusion) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/021,845, hereinafter referred to as the reference application, in view of Hiebert (U.S. Patent No. 9,549,865). Claim 1 of the reference application anticipates the first and second flat, flexible sheets and the seam, thereby anticipating the claimed bladder and the claimed first selectively inflatable pivoting element anticipates the selectively inflatable strap pivoting element of the instant application except for the body retention strap.
Hiebert teaches a body retention strap 121 (Col. 15, lines 49-67, where straps may be passed through loops 121) operably associated with the bladder 114, the body retention strap including a selectively inflatable strap pivoting element 117, wherein the selectively inflatable strap pivoting element 117 is inflatable and deflatable between a deflated state and an inflated state (Figures 12A-B), and wherein the selectively inflatable strap 121 pivoting element is configured to pivot relative to adjacent portions of the body retention strap 121 in response to transition of the strap pivoting element 117 between an deflated state and an inflated state (Figures 11-12B, Col. 14, lines 14-50, and Col. 15, lines 49-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the instant application with Hiebert (both being directed to an inflatable patient support assembly) and arrived at a body retention strap. One of ordinary skill in the art would have been motivated to do so because the strap of Hiebert help to immobilize a patient in a desired position (Col. 13, line 58-Col. 4, line 6).
This is a provisional nonstatutory double patenting rejection.
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 11 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 11 recites the limitation "the first selectively inflatable compartment" in lines 1-2. It is unclear if this refers to the same “first selectively inflatable compartment” introduced in claim 10, from which claim 11 depends. For examination purposes, it is assumed "the first selectively inflatable compartment" of claim 11 is the same as "the first selectively inflatable compartment" of claim 10.
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 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiebert (U.S. Patent No. 9,549,865).
Regarding claim 20, Hiebert discloses a body retention strap 121 (see Hiebert, Col. 15, lines 49-67, where straps may be passed through loops 121) for use in connection with a support surface overlay 12 (Figure 12A-B), the body retention strap 121 comprising a selectively inflatable strap pivoting element 117, wherein the selectively inflatable strap pivoting element 117 is inflatable and deflatable between a deflated state and an inflated state (see Hiebert, Figures 12A-B), and wherein the selectively inflatable strap pivoting element 117 is configured to pivot relative to adjacent portions of the body retention strap 121 in response to transition of the strap pivoting element between an deflated state and an inflated state (see Hiebert, Figures 11-12B, Col. 14, lines 14-50, and Col. 15, lines 49-67).
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.
Claims 1-5, 10, 11, 14, and 15are rejected under 35 U.S.C. 103 as being unpatentable over Bosley (U.S. Publication No. 2021/0169719) in view of Hiebert.
Regarding claim 1, Bosley discloses a support surface overlay 100 comprising: a bladder 140 and 110, the bladder 161b and 161c including: a first flat, flexible sheet 140; a second flat, flexible sheet 110 overlying the first flat, flexible sheet 140; and a seam 123 joining the first, flat flexible sheet 140 to the second flat, flexible sheet 110 at predetermined locations (paragraphs 0048, 0050, and 0057 and Figure 3); a selectively inflatable pivoting element 161a operably associated with the bladder 161b and 161c, wherein the selectively inflatable pivoting element 161a is inflatable and deflatable between a deflated state and an inflated state (Figures 1-3 and paragraph 0055), and wherein the selectively inflatable pivoting element 161a is configured to pivot relative to adjacent portions of the support surface overlay 100 in response to transition of the pivoting element 161a between a deflated state and an inflated state (Figures 1-3).
Bosley does not disclose a body retention strap operably associated with the bladder, the body retention strap including a selectively inflatable strap pivoting element, wherein the selectively inflatable strap pivoting element is configured to pivot relative to adjacent portions of the body retention strap in response to transition of the strap pivoting element between a deflated state and an inflated state.
Hiebert teaches a body retention strap 121 (Col. 15, lines 49-67, where straps may be passed through loops 121) operably associated with the bladder 114, the body retention strap including a selectively inflatable strap pivoting element 117, wherein the selectively inflatable strap pivoting element 117 is inflatable and deflatable between a deflated state and an inflated state (Figures 12A-B), and wherein the selectively inflatable strap 121 pivoting element is configured to pivot relative to adjacent portions of the body retention strap 121 in response to transition of the strap pivoting element 117 between an deflated state and an inflated state (Figures 11-12B, Col. 14, lines 14-50, and Col. 15, lines 49-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Bosley with Hiebert (both being directed to an inflatable patient support assembly) and arrived at a body retention strap including a selectively inflatable strap pivoting element, wherein the selectively inflatable strap pivoting element is configured to pivot relative to adjacent portions of the body retention strap in response to transition of the strap pivoting element between an deflated state and an inflated state. One of ordinary skill in the art would have been motivated to do so because the strap of Hiebert help to immobilize a patient in a desired position (Col. 13, line 58-Col. 4, line 6).
Regarding claim 2, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, further discloses wherein the body retention strap 121 (see Hiebert, Col. 15, lines 49-67, where straps may be passed through loops 121) is configured to wrap around at least a portion of a body received upon the overlay (see Hiebert, Col. 15, lines 49-67).
Regarding claim 3, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, further discloses wherein the body retention strap is an upper body strap 121 (see Hiebert, Col. 15, lines 49-67, where straps may be passed through loops 121) configured to wrap around at least a portion of an upper portion of a body received upon the overlay (see Hiebert, Col. 15, lines 49-67, where, as the strap of Hiebert is capable of wrapping around a patient, Hiebert would be capable of wrapping around the upper portion of a patient’s body when the upper body is positioned on the inflatable support and therefore meets the claim, see MPEP 2114).
Regarding claim 4, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, further discloses wherein the body retention strap 121 (see Hiebert, Col. 15, lines 49-67, where straps may be passed through loops 121) is a shoulder strap configured to wrap around at least a portion of a shoulder of a body received upon the overlay 114, 117, and 119 (see Hiebert, Col. 15, lines 49-67, where, as the strap of Hiebert is capable of wrapping around a patient, Hiebert would be capable of wrapping around a portion of a patient’s shoulder if the shoulder were positioned on the inflatable support and therefore meets the claim, see MPEP 2114).
Regarding claim 5, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, further discloses wherein the body retention strap 121 (see Hiebert, Col. 15, lines 49-67, where straps may be passed through loops 121) is configured to wrap around at least a portion of an arm of a body received upon the overlay 114, 117, 119 or an underlying support surface (see Hiebert, Col. 15, lines 49-67, where, as the strap of Hiebert is capable of wrapping around a patient, Hiebert would be capable of wrapping around a portion of a patient’s arm if the arm were positioned on the inflatable support and therefore meets the claim, see MPEP 2114).
Regarding claim 10, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, further discloses wherein the bladder further comprises a first selectively inflatable compartment 161b, and wherein, the selectively inflatable strap pivoting element 161a is formed separately from the bladder (see Bosley, paragraph 0055 where the chambers 161a-c may be formed as a series interconnected by hose or pipe connections).
Regarding claim 11, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1 and 10. Bosley, as modified, further discloses wherein the bladder further comprises a first selectively inflatable compartment 161b, and wherein the selectively inflatable strap pivoting element 161a is fluidly connected to the first inflatable compartment 161b (see Bosley, paragraph 0055 where the chambers 161a-c may be formed as a series interconnected by hose or pipe connections).
Regarding claim 14, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, does not disclose a selectively inflatable bolster compartment configured to at least partially envelope a region of a body of a user disposed upon the support surface overlay.
Hiebert teaches a selectively inflatable bolster compartment 117 configured to at least partially envelope a region of a body of a user disposed upon the support surface overlay 112 (Figures 4 and 11 and Col. 16, lines 1-27).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have further combined Bosley, as modified, with Hiebert (both being directed to an inflatable patient support), and arrived at a selectively inflatable bolster compartment configured to at least partially envelope a region of a body of a user disposed upon the support surface overlay. One of ordinary skill in the art would have been motivated to do so because the wrap of Hiebert helps to support and secure a patient in a number of positions (Col. 8, lines 1-18 and Col. 16, lines 1-27).
Regarding claim 15, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1 and 14. Bosley, as modified, further discloses wherein the region of the user comprises a shoulder region or upper body region (see Hiebert, Col. 8, lines 1-18 and Col. 16, lines 1-27).
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Bosley in view of Hiebert and further in view of Pierce (U.S. Patent No. 6,357,066).
Regarding claim 6, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, does not disclose wherein the body retention strap is monolithically formed with a portion of the support surface overlay.
Pierce teaches wherein the body retention strap 16 and 17 is monolithically formed with a portion of the support surface overlay 1 (Figure 1 and Col. 8, line 58-Col. 9, line 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined Bosley, as modified, with Pierce (both being directed to a patient support), and arrived at the body retention strap being monolithically formed with a portion of the support surface overlay. One of ordinary skill in the art would have been motivated to do so because the vinyl material of the overlay and straps of Pierce allow for the straps to be more easily disinfected (Col. 2, lines 45-51, Col. 5, lines 39-52, Col. 8, line 58-Col. 9, line 10, and Col. 11, lines 5-12).
Regarding claim 7, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1 and 6. Bosley, as modified, further discloses wherein the body retention strap 16 and 17 is monolithically formed with the bladder 25 (see Pierce, Figure 1 and Col. 8, line 58-Col. 9, line 10).
Regarding claim 8, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1, 6, and 7. Bosley, as modified, further discloses wherein the bladder further comprises a first selectively inflatable compartment 161b and wherein the selectively inflatable strap pivoting element 161a is fluidly connected to the first selectively inflatable compartment 161b via a fluid conduit 162 internal to the bladder (see Bosley, paragraph 0055, where conduit 162 may be internal, narrowed portions between bladders 161a-c or external hose connections which connect the bladders in series).
Regarding claim 9, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1, 6, and 7. Bosley, as modified, further discloses wherein the bladder further comprises a first selectively inflatable compartment 161, and wherein the selectively inflatable strap pivoting element 161a is fluidly connected to the first selectively inflatable compartment 161b via a fluid conduit 162 external to the bladder (see Bosley, paragraph 0055, where conduit 162 may be internal, narrowed portions between bladders 161a-c or external hose connections which connect the bladders in series).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bosley in view of Hiebert and further in view of Kaforey (U.S. Publication No. 2024/0156662).
Regarding claim 12, Bosley, as modified, discloses the subject matter as discussed above with regard to claim 1. Bosley, as modified, does not disclose a flexible and resilient deformable layer integrated with the bladder, wherein the deformable layer is configured to flexibly and resiliently deform under the weight of a body disposed upon the overlay.
Kaforey teaches a flexible and resilient deformable layer 12 integrated with the bladder 20, wherein the deformable layer 12 is configured to flexibly and resiliently deform under the weight of a body disposed upon the overlay 10 (Figure 1A and paragraph 0080).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined Bosley, as modified, with Kaforey (both being directed to an inflatable patient support), and arrived at a flexible and resilient deformable layer integrated with the bladder, wherein the deformable layer is configured to flexibly and resiliently deform under the weight of a body disposed upon the overlay. One of ordinary skill in the art would have been motivated to do so because the deformable layer of Kaforey provides additional comfort for a patient resting on the overlay (paragraph 0081).
Regarding claim 13, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1 and 12. Bosley, as modified, further discloses wherein the deformable layer 12 defines at least one preformed depression 18 (see Kaforey, Figure 1A).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bosley in view of Hiebert and further in view of Kanzler (U.S. Patent No. 4,941,221).
Regarding claim 16, Bosley, as modified, discloses the subject matter as discussed above with regard to claims 1 and 14. Bosley, as modified, does not disclose a separation cut proximate the selectively inflatable bolster compartment, wherein the separation cut is configured to lift of the selectively inflatable bolster compartment with respect to adjacent portions of the support surface overlay.
Kanzler teaches a separation cut 43, 45, 47, 48, 49 proximate the selectively inflatable bolster compartment 51, 42, and 46, wherein the separation cut 43, 45, 47, 48, 49 is configured to lift of the selectively inflatable bolster compartment 51, 42, and 46 with respect to adjacent portions of the support surface overlay (Col. 4, line 44-Col. 5, line 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined Bosley, as modified, with Kanzler (both being directed to an inflatable patient turning assembly) such that the hinge is defined by a separation cut through the first flat, flexible sheet and the second flat, flexible sheet extending around a portion of the respective first selectively inflatable pivoting element. One of ordinary skill in the art would have been motivated to do so because the separation cuts of Kanzler allow for the pivot angle and direction between adjacent pivoting elements to be adjusted (Col. 4, line 44-Col. 5, line 19).
Conclusion
THIS ACTION IS MADE FINAL. 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 ALISON N LABARGE whose telephone number is (571)272-6098. The examiner can normally be reached M-F 8-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISON N LABARGE/Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
