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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-9 and 16-20, drawn to a system for maintaining a person in a supine position, classified in A41B 13/06.
Claims 21-25, drawn to a cover system, classified in A47G 9/04.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as for use with a changing mat or changing table, and subcombination II has separate utility such as for use with other bedding such as a flat sheet or blanket. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where Applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, Applicant must indicate which of these claims are readable upon the elected invention.
Should Applicant traverse on the ground that the inventions are not patentably distinct, Applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Jeffrey S. Bernard on March 13, 2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9 and 16-20. Affirmation of this election must be made by Applicant in replying to this Office
action. Claims 21-25 have been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “row of snaps” as recited in dependent claim 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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, 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification fails to provide proper antecedent proper antecedent basis for the limitation of “a row of snaps” as recited in dependent claim 6. (Page 12, paragraph 0050, lines 5 & 6 of the specification only mention “alternative fasteners…such as buttons, snaps, and zippers”.)
Claim Objections
Claims 5 and 19 are objected to because of the following informalities:
1) In the last line of claim 5: The term --the-- should be inserted before the term “fasteners”.
2) In the last line of claim 19, the term “transverse” should be changed to
--transversely--.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 8 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Dependent claim 8 is considered to recite positively a human organism since it recites the limitation “…of the person wearing the garment”. (The examiner respectfully suggests inserting the term --when-- before the term “wearing” in order to overcome the rejection under 35 U.S.C. 101.)
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 1-4, 7-9, 16-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4, 7-9, 16-18 and 20 are generic to all that is recited in claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164. In other words, claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164 fully encompass the subject matter of claims 1-4, 7-9, 16-18 and 20 and therefore anticipate claims 1-4, 7-9, 16-18 and 20. Since claims 1-4, 7-9, 16-18 and 20 are anticipated by claims 1, 3-8, 10-13, 16 and 17 of the patent, they are not patentably distinct from claims 1, 3-8, 10-13, 16 and 17. Thus the invention of claims 1, 3-8, 10-13, 16 and 17 of the patent is in effect a “species” of the “generic” invention of claims 1-4, 7-9, 16-18 and 20. 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 1-4, 7-9, 16-18 and 20 are anticipated (fully encompassed) by claims 1, 3-8, 10-13, 16 and 17 of the patent, claims 1-4, 7-9, 16-18 and 20 are not patentably distinct from claims 1, 3-8, 10-13, 16 and 17, regardless of any additional subject matter present in claims 1, 3-8, 10-13, 16 and 17.
Claims 5, 6 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164 in view of U.S. Patent Application Publication No. 2004/0199999 to Landry. With respect to claims 5 and 6, claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164 do not specifically disclose wherein the fasteners are snaps, and wherein the snaps are a row of snaps. Landry ‘999 provides the basic teaching of a system for maintaining a person in a supine position, comprising: a base (14, 24) including first and second tethers (122) mounted to the base (as shown in Figures 3, 14 & 15B and as described on page 3, in paragraph 0040 and on page 5, in paragraph 0059); a garment (126) including first and second tabs (i.e., left and right portions of element 128 separated by element 20, as shown in Figures 14 & 15A) attached to lateral sides of the garment (126) (also as described on page 4, in paragraph 0058 and on page 5, in paragraph 0058); wherein: a distance between the first and second tethers (122) substantially corresponds to a distance between the first and second tabs (i.e., a distance between the first and second tethers correlates with a distance between the first and second tabs such that the base and the garment are aligned with and secured to each other, as shown in Figures 14-15B and as described on page 4, in paragraph 0058 and on page 5, in paragraphs 0058 & 0059); and the first and second tethers (122) are removably attachable (via element 130) to the respective first and second tabs to secure the garment (126) in place atop the base (14, 24) (also as shown in Figures 14-15B and as described on page 4, in paragraph 0058 and on page 5, in paragraphs 0058 & 0059); wherein the first and second tethers (122) are removably attachable to the respective first and second tabs via fasteners, wherein the fasteners are snaps, and wherein the
snaps are a row of snaps (as shown in Figures 2 & 13 and as described on page 3, in paragraph 0039 and on page 4, in paragraph 0054). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the system disclosed in claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164 with the snap fasteners taught in Landry ‘999 with a reasonable expectation of success because this would have achieved the desirable result of providing an alternative and conventional fastening means for readily securing the garment to the base as taught by Landry ‘999.
With respect to claim 19, Landry ‘999 further teaches wherein the base is a fitted cover (14) having an elastic band (22a, 22b or 22c) extending transversely across a bottom opening of the fitted cover (as shown in Figures 2 & 3 and as described on page 2, in paragraph 0038 and on page 3, in paragraphs 0038 & 0040). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the system disclosed in claims 1, 3-8, 10-13, 16 and 17 of U.S. Patent No. 12,201,164 with the base taught in Landry ‘999 with a reasonable expectation of success because this would have achieved the desirable result of providing a simple fastening element which ensures that the base is secured in place to a mattress when in use as taught by Landry ‘999.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be
considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-9 and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Landry ‘999. With respect to claim 1, Landry ‘999 shows the claimed limitations of a system for maintaining a person in a supine position, comprising: a base (14, 24) including first and second tethers (122) mounted to the base (as shown in Figures 3, 14 & 15B and as described on page 3, in paragraph 0040 and on page 5, in paragraph 0059); a garment (126) including first and
second tabs (i.e., left and right portions of element 128 separated by element 20, as shown in Figures 14 & 15A) attached to lateral sides of the garment (126) (also as described on page 4, in paragraph 0058 and on page 5, in paragraph 0058); wherein: a distance between the first and second tethers (122) substantially corresponds to a distance between the first and second tabs (i.e., a distance between the first and second tethers correlates with a distance between the first and second tabs such that the base and the garment are aligned with and secured to each other, as shown in Figures 14-15B and as described on page 4, in paragraph 0058 and on page 5, in paragraphs 0058 & 0059); and the first and second tethers (122) are removably attachable (via element 130) to the respective first and second tabs to secure the garment (126) in place
atop the base (14, 24) (also as shown in Figures 14-15B and as described on page 4, in paragraph 0058 and on page 5, in paragraphs 0058 & 0059).
With respect to claims 2-6, the reference further discloses wherein the base is a rigid substrate, a sheet, a fitted sheet (14), a mattress (24), a pad, or a cushion (as shown in Figures 3, 14 & 15B and as described on page 3, in paragraph 0040 and on page 5, in paragraph 0059); wherein the first and second tethers (122) are removably attachable to the respective first and second tabs via fasteners (130), wherein the fasteners are hook-and-loop fasteners (as shown in Figures 13-15A, 16 & 18 and as described on page 4, in paragraphs 0053, 0054 & 0056 and on page 5, in paragraphs 0058-0060); wherein the fasteners are snaps, and wherein the snaps are a row of snaps (as shown in Figures 2 & 13 and as described on page 3, in paragraph 0039 and on page 4, in paragraph 0054).
With respect to claims 7-9, the reference further discloses wherein the first and second tabs correspond in length to the respective first and second tethers (122) (i.e., the respective lengths of the first and second tabs correlate with the first and second tethers such that the base and the garment are aligned with and secured to each other, as shown in Figures 14-15B and as described on page 4, in paragraph 0058 and on page 5, in paragraphs 0058 & 0059); wherein the first and second tabs are configured to be positioned above the hips of the person when wearing the garment (126) (as shown in Figure 1 and as described on page 2, in paragraph 0036); and wherein the first and second tethers (122) are positioned inward of lateral sides of the base (14, 24), and inward of opposing ends of the base (as shown in Figures 14 & 15B).
With respect to claim 16, the reference shows the claimed limitations of a system for maintaining an infant in a supine position, comprising: a garment (126) configured to be worn by the infant, the garment including first and second tabs (i.e., left and right portions of element 128 separated by element 120, as shown in Figures 14 & 15A) attached to opposing lateral sides of the garment (126) (also as described on page 4, in paragraph 0058 and on page 5, in paragraph 0058); and a base (14, 24) configured to be laid on by the infant in a supine position, the base including first and second tethers (122) attached to a top of the base configured to removably attach to the respective first and second tabs of the garment (126) to secure the garment to the base (14, 24) (as shown in Figures 3, 14 & 15B and as described on page 3, in paragraph 0040 and on page 5, in paragraph 0059).
With respect to claims 17-19, the reference further discloses wherein the first and second tethers (122) removably attach to the respective first and second tabs via fasteners (130) wherein the fasteners are hook-and-loop fasteners or snaps (as shown in Figures 2, 13-15A, 16 & 18 and as described on page 3, in paragraph 0039; page 4, paragraphs 0053, 0054 & 0056 and on page 5, in paragraphs 0058-0060); and the base is a fitted cover (14) having an elastic band (22a, 22b or 22c) extending transversely across a bottom opening of the fitted cover (as shown in Figures 2 & 3 and as described on page 2, in paragraph 0038 and on page 3, in paragraphs 0038 & 0040).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Landry ‘999. Landry '999 discloses the use of a reinforcing layer (i.e., the central portion of element 128 attached to element 126 via stitching 120 as shown in Figures 14 & 15A and as described on page 4, in paragraph 0058) attached to the fitted cover (14) (via elements 122 & 130) and extending from the first tether (122) to the second tether (122) to maintain a substantially constant maximal spacing between the first and second tethers. However, Landry '999 discloses that the reinforcing layer "is selected any fabric type" (as described on page 5, in paragraph 0058) as opposed to being "made from a no-stretch or low-stretch material" as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the
claimed invention to provide the system of Landry '999 with a reinforcing layer which is made from a no-stretch or low-stretch material, since it has been held to be within the general skill of a worker in the art to select a 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Coates ‘940 and Coates ‘354.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G SANTOS whose telephone number is (571)272-7048. The examiner can normally be reached Monday-Friday 9am-11:30am and 2pm-7:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin C Mikowski can be reached at 571-272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673