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 .
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.
Claims 1-6, 9-12, and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of U.S. Patent No. 12,285,129. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 of the reference patent are generic to the subject matter of the claims of the instant application and therefore encompass all that is claimed in claims 1-6, 9-12 and 17-18 of the instant application.
Claim Objections
Claim 13 is objected to because of the following informalities:
In claim 13, line 2, “for connect” should read “for connecting”
Appropriate correction is required.
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 17-20 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.
Claim 17 contains the limitation “wherein the fabric outer enclosure is free from a seam that extends laterally across the fabric outer enclosure in or between the torso support region and the head support region.” Any negative limitation or exclusionary proviso must have basis in the original disclosure (see MPEP 2173.05(i)). The application does not discuss, show, or otherwise include a seam which extends laterally between the torso support region and the head support region but it does explicitly discus longitudinal seams which connect the ends of the pillow outer enclosure together, such that it is reasonably conveyed to one of ordinary skill in the art that it is longitudinally extending seams provide the connection between pillow ends. However, Figures 1A-1B show seams 22a and 28a which extend laterally across the fabric outer enclosure at the first and second pillow ends as discussed in paragraph 0049 of the specification. While the specification provides that the seams 22a and 28a may be replaced with a zipper, it is specified that this zipper is sewn in. Sewing in a zipper at these locations on a fabric outer enclosure would inherently require the creation of a seam between the zipper and the fabric. The application does not explicitly discuss any other alternatives to the construction of first and second ends, and therefore, the limitation of the fabric outer enclosure being “free from a seam that extends laterally across the fabric outer enclosure in” the torso support region and the head support region is considered new matter.
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 2 and 9-10 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.
Regarding claim 2, it is not clear if the “defined restriction” that is introduced in this claim is the same as the defined restriction introduced in claim 1. For examination purposes, it is assumed it may refer to the same restriction. Claims 9-10 are additionally rejected by virtue of their dependence from claim 2.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection set forth in this Office action or upon the timely filing of a terminal disclaimer. It is additionally noted that claims 2, 9, and 10 are additionally subject to a rejection under 35 U.S.C. 112(b) and claims 17-20 are additionally subject to a rejection under 35 U.S.C. 112(a) and would additionally need to be rewritten or amended to overcome these rejections as well. As claims 1-6, 9-12, and 17-20 are rejected, claims 7-8 and 13-16 are objected to for being dependent from a rejected base claim.
Regarding claim 1, King (U.S. Patent No. 4,754,510) discloses a pillow 10 comprising: a fill 24; an outer enclosure 18, 18A, 20, and 20A enclosing the fill 24, forming a filled outer enclosure 18, 18A, 20, 20A (Figure 3 and Col. 3, lines 42-55); the filled outer enclosure 18, 18A, 20, 20A having a length extending between a first pillow end 32 and an opposing second pillow end 34 (see annotated Figures 1-2, below); the filled outer enclosure defining a pillow width and a pillow thickness (see annotated Figure 2, below), wherein the pillow width is greater than the pillow thickness at the first pillow end and the pillow thickness is greater than the pillow width at the opposing second pillow end (see annotated Figures 1-2, below).
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Additionally, regarding claims 12 and 17, King discloses a pillow assembly 10 comprising: a pillow including a fabric outer enclosure 18, 18A, 20, 20A that encloses a fill 24 (Col. 3, lines 41-55), wherein the fabric outer enclosure 18, 18A, 20, 20A includes one or more wrinkles (Col. 3, lines 41-42); the fabric outer enclosure 18, 18A, 20, 20A having a first pillow end and an opposing second pillow end (see annotated Figure 4, above); a torso support region 14 adjacent the first pillow end; a head support region 34 adjacent the second pillow end (Figures 1-3 and see annotated Figures 1-2, above); the torso support region 14 having a thickness defining a minor dimension and a width defining a major dimension (see annotated Figures 1-2, above), and the head support region 12 having a thickness defining a major dimension and a width defining a minor dimension (see annotated Figures 1-2, above), the torso support region 14 extending between two corresponding opposing lateral sides of the fabric outer enclosure along the major dimension of the torso support region and between two corresponding opposing lateral sides of the fabric outer enclosure 18, 18A, 20, and 20A along the minor dimension of the torso support region 14 (Figures 1-3); the head support region 12 extending between two corresponding opposing lateral sides of the fabric outer enclosure 18, 18A, 20, and 20A along the major dimension of the head support region 12 and between two corresponding opposing lateral sides of the fabric outer enclosure 18, 18A, 20, and 20A along the minor dimension of the head support region 12 (Figures 1-3); wherein the major dimension of the torso support region 14 is radially offset relative to the major dimension of the head support region 12 when the pillow is in a relaxed state (Figure 2).
King does not disclose wherein the pillow width decreases from the pillow width at the first pillow end to the pillow width at the second pillow end including across an intermediate transition zone which extends along at least a majority of the length of the filled outer enclosure including along an intermediate pillow region of the pillow that bisects the first pillow end and the second pillow end, and wherein the outer enclosure is configured to be free from a defined restriction in the outer enclosure that results in the pillow width of the filled outer enclosure to transition from decreasing to increasing in the intermediate transition zone; wherein the thickness of the torso support region monotonically increases from the first pillow end toward the head support region, and the width of the torso support region monotonically decreases from the first pillow end toward the head support region; wherein the thickness of the head support region monotonically decreases from the second pillow end toward the torso support region and the width of the head support region monotonically increases from the second pillow end toward the torso support region; a pillow case defining a pillow receiving cavity; and wherein the fabric outer enclosure is free from a seam that extends laterally across the fabric outer enclosure in or between the torso support region and the head support region.
Melcher (U.S. Publication No. 2013/0198962) is cited as being of interest for disclosing a pillow 220 (Figure 8) wherein the pillow thickness increases in a monotonically increasing trend from the pillow thickness of the first pillow end (defined by H1, Figure 7) to the pillow thickness of the second pillow end (defined by H2, see Figure 7 and paragraph 0115). However, Melcher does not disclose the pillow width decreasing monotonically from the first to the second pillow end, as required by the claims. While King discloses that the pillow width decreases from a first end to a second end and the pillow thickness increases from a first end to a second end, the pillow of King does not do so in a monotonical manner. Monotonic is defined to mean a quantity that never increases or decreases. For the width, for example, to monotonically decrease, it must only ever decrease or remain the same. If the width of the pillow increases at any point from the first end to the second end, it can no longer be described as monotonic. The central portion of the pillow of King is smaller in both width and thickness than the rest of the surrounding pillow. As best seen in Figure 3, the thickness decreases monotonically from the right end to the center portion 16, at which the thickness is at its minimum. The thickness then increases before decreasing again at the left end, and, as such, cannot be described as monotonic. Moreover, King requires this smaller central portion 16, as it provides a comfortable area in which a user may place their knees (Col. 6, lines 28-31 and Figure 8), and thus modifying King to have the claimed monotonically increase and decrease in thickness and width or respectively, to have no lateral seam which forms the smaller central portion, or such that the pillow width decreases from the pillow width at the first pillow end to the pillow width at the second pillow end including across the claimed intermediate transition zone, would eliminate this feature. As such, there is no disclosure, teaching, or suggestion in the prior art of record such that a rejection of claims 1, 12, and 17 may be reasonably maintained. Claims 2-11, 13-15, and 18-20 are additionally allowable by virtue of their dependence on claim
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zurek (U.S. Publication No. 2020/0337479) which discloses a pillow comprising torso and head support regions.
Gregory (U.S. Publication No. 2022/0061541) which discloses a pillow comprising torso and head support regions.
Fenton (U.S. Publication No. 2015/0208812) which discloses a pillow which changes in thickness and width across the length of the pillow.
Volle (U.S. Publication No. 2020/0361762) which discloses a pillow comprising torso and head support regions which change in thickness and width.
Clausse (U.S. Patent No. D894,635) which discloses a pillow comprising torso and head support regions which change in thickness and width.
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-Th 6:30-4:30.
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/ALISON N LABARGE/Examiner, Art Unit 3673
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679