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 .
Claim Objections
Claim 1 is objected to because of the following informalities: In the fourth line of claim 1, the term “worm” should be changed to --worn--. Appropriate correction is required.
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, 20, 26 and 27 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, 20, 26 and 27 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, 20, 26 and 27 and therefore anticipate claims 1-4, 7-9, 16-18, 20, 26 and 27. Since claims 1-4, 7-9, 16-18, 20, 26 and 27 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, 20, 26 and 27. 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, 20, 26 and 27 are anticipated (fully encompassed) by claims 1, 3-8, 10-13, 16 and 17 of the patent, claims 1-4, 7-9, 16-18, 20, 26 and 27 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 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 claim 5, 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. 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, and wherein the fasteners are 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.
Response to Amendment
In response to Applicant’s arguments on page 5 of the amendment with respect to the objections to the drawings, specification, and dependent claims 5 and 19, the examiner respectfully agrees. Hence, all of these objections have been respectfully withdrawn.
Moreover, in response to Applicant’s arguments on page 6 with respect to the rejection of claim 8 under 35 U.S.C. § 101, the examiner respectfully agrees. Accordingly, this claim rejection has also been respectfully withdrawn.
Furthermore, in response to Applicant’s arguments on pages 6 and 7 of the amendment with respect to the double patenting rejections, the examiner respectfully disagrees since the claims of U.S. Patent No. 12,201,164 still disclose the claimed structural limitations of the base including first and second tethers, and the garment including first and second tabs, as recited in independent claims 1 and 16. Hence, these rejections have been respectfully maintained.
Lastly, in response to Applicant’s arguments on pages 7-9 of the amendment with respect to the claim rejections under 35 U.S.C. §§ 102 and 103, the examiner respectfully agrees. Consequently, these claim rejections have been respectfully withdrawn.
Allowable Subject Matter
The examiner respectfully asserts that none of the limitations of the system as recited in claims 1-5, 7-9, 16-20, 26 and 27 can be rejected under 35 U.S.C. §§§ 102, 103 and 112; accordingly, claims 1-5, 7-9, 16-20, 26 and 27 are considered as being allowable if the objection to claim 1 and the double patenting rejections indicated above were fully overcome.
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 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
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