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 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.
Claims 4 and 12 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.
Claims 4 and 12 recite the limitation "the second section". There is insufficient antecedent basis for this limitation in the claims. These claims have an unclear line of dependency due to the antecedent basis issue. Examiner is interpreting Claim 4 as depending from Claim 3, and Claim 12 as depending from Claim 11 for examination purposes.
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, 2, 5, 7, 9, 10, 13, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leach (US 9,021,635).
Regarding Claim 1, Leach discloses a body pillow (10), comprising:
an outer cover (96) defining a pillow body formed along a longitudinal axis, the outer cover having a first end and a second end disposed along the longitudinal axis, the outer cover including a first section of stretchable material (70 or 72, see Col. 3, Lines 51 – Col. 4, Line 2; i.e. “[t]he fabric enclosure 96 material may be any suitable fabric, including but not limited to waterproof nylon, flannel, muslin, or elastic fabrics, such as spandex or cotton-spandex blends” and “fabric enclosure 96 may be formed by cutting two pieces of fabric in the desired shape, stitching the seam around the entire periphery, and then turning the enclosure inside out to place the selvages on the inside of the enclosure. Small openings left in the seam in each section of the enclosure 96 allow for the insertion of the filler material. The sections in the pillow are formed by stitching cross-wise at the desired positions for the connecting sections 70 and 72”) disposed between the first end and the second end,
a first inner pillow (32 or 52 containing filler 98)) disposed inside the outer cover, extending from a location proximate the first end of the outer cover toward the first section; and
a second inner pillow (12 containing filler 98) disposed inside the outer cover, extending from a location proximate the section of stretchable material toward the second end of the outer cover, the body pillow being configurable between a first configuration, in which the first section of is untwisted (see Fig. 1), and a second configuration, in which the first section is twisted (see at least Fig. 3).
Regarding Claim 2, Leach discloses wherein the first section is twisted about the longitudinal axis (see Fig. 3).
Regarding Claim 5, Leach discloses wherein the first section is closer to the first end than to the second end (see Fig. 1).
Regarding Claim 7, Leach discloses wherein a first axial length of the first inner pillow (32 or 52) is less than a second axial length of the second inner pillow (12, see Fig. 1).
Regarding Claim 9, Leach discloses a method of using a body pillow, comprising:
configuring the body pillow in a first configuration (see Fig. 1), wherein a first section (70 or 72) of an outer cover (96) is untwisted in the first configuration, the body pillow comprising:
the outer cover defining a pillow body formed along a longitudinal axis, the outer cover having a first end and a second end disposed along the longitudinal axis, the outer cover including a first section of stretchable material disposed between the first end and the second end (see rejection of Claim 1 above),
a first inner pillow (32 or 52 containing filler 98) disposed inside the outer cover, extending from a location proximate the first end of the outer cover toward the first section;
a second inner pillow (12 containing filler 98) disposed inside the outer cover, extending from a location proximate the section of stretchable material toward the second end of the outer cover;
adjusting the body pillow to a second configuration (see at least Fig. 3 by twisting the first section about the longitudinal axis;
using the body pillow in the second configuration (see Fig. 4).
Regarding Claim 10, Leach discloses wherein the first section is twisted about the longitudinal axis (see Fig. 3).
Regarding Claim 13, Leach discloses wherein the first section is closer to the first end than to the second end (see Fig. 1).
Regarding Claim 15, Leach discloses wherein a first axial length of the first inner pillow (32 or 52) is less than a second axial length of the second inner pillow (12, see Fig. 1).
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) 3, 4, 11, 12, 17, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leach (US 9,021,635) in view of Alletto (US 2016/0166092).
Regarding Claim 3, Leach discloses wherein:
the outer cover comprises a group of sections (32, 12, 52, 70, 72);
the first section is one section of the group of sections (70 or 72).
Leach fails to disclose at least a second section of the group of sections comprises nonstretch material. Leach generally discloses that the group of sections all comprises the same material in Col. 3, Lines 51-54. Alletto teaches a pillow with an outer cover that comprises a group of sections 32, 32A, and 44, with a second section 32 or 32A comprising a nonstretch fabric (rayon, see para. [0041]). Leach and Alletto are analogous art because they are from the same field of endeavor, i.e. pillows. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the single material outer cover of Leach with the multiple fabrics of Alletto. 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 4, Leach teaches wherein the second section is attached to the first section (see Fig. 1).
Regarding Claims 11 and 12, see Claims 3 and 4 rejections above.
Regarding Claim 17, Leach as modified teaches a body pillow (Leach: 10), comprising:
an outer cover (Leach: 96) defining a pillow body formed along a longitudinal axis, the outer cover comprising:
an inner side extending between opposed side margins of the outer cover, the inner side comprising a first material (Leach: see Fig. 1 and Col. 3, Lines 49-65);
an outer side extending between the opposed side margins (Leach: see Col. 3, Lines 62-65), the outer side comprising a second material that is different than the first material (Alletto: see para. [0041]);
a first end and a second end disposed along the longitudinal axis (Leach: see Fig. 1) , and
a circumferential band of material (70 or 72) positioned between the first end and the second end, the circumferential band of material comprising the first material (Leach: see Col. 3, Lines 51 – Col. 4, Line 2).
Regarding Claim 18, Leach discloses wherein the circumferential band is located at a position closer to the first end than the second end (see Fig. 1).
Regarding Claim 20, Leach as modified teaches wherein the second material is non-stretch fabric (Alletto: see para. [0041] and Claim 3 rejection above).
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 12,245,713. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent anticipate the claims of the application. For example, Claim 1 of the patent is compared to claim 1 of the instant application in the table below. The instant application is broader than that of the patent and is therefore anticipated by the patent.
Claim 1 of US Patent 12,245,713
Claim 1 of instant application 19/046,238
A body pillow comprising:
A body pillow, comprising:
an elongate outer cover defining a pillow body, the pillow body formed along a longitudinal axis, the outer cover having a first end disposed on the axis and a second end disposed on the axis to be remote from the first end;
an outer cover defining a pillow body formed along a longitudinal axis, the outer cover having a first end and a second end disposed along the longitudinal axis
the outer cover having a circumferential band formed around the axis, the circumferential band spaced from the first end of the outer cover and from the second end of the outer cover and composed of a stretch fabric;
the outer cover including a first section of stretchable material disposed between the first end and the second end,
a first inner pillow disposed inside of the outer cover, a first end of the first inner pillow disposed to be near the first end of the outer cover, a second end of the first inner pillow remote from the first end of the first inner pillow disposed to be near the circumferential band;
a first inner pillow disposed inside the outer cover, extending from a location proximate the first end of the outer cover toward the first section;
a second inner pillow disposed inside of the outer cover, a first end of the second inner pillow disposed to be near the circumferential band, a second end of the second inner pillow remote from the first end of the second inner pillow disposed to be near the second end of the outer cover;
a second inner pillow disposed inside the outer cover, extending from a location proximate the section of stretchable material toward the second end of the outer cover,
wherein the body pillow is capable of assuming each of a nontwisted configuration and a twisted configuration, wherein in the nontwisted configuration the outer cover is not helically twisted about the axis, and the second end of the first inner pillow is at a first distance from the first end of the second inner pillow;
the body pillow being configurable between a first configuration, in which the first section of is untwisted, and a second configuration, in which the first section is twisted
and wherein, in the twisted configuration, the outer cover is helically twisted about the axis at the circumferential band, and the second end of the first inner pillow is at a second distance from the first end of the second inner pillow, the second distance being greater than the first distance.
Allowable Subject Matter
Claims 6, 8, 14, 16, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and a proper Terminal Disclaimer (TD) is filed.
The following is a statement of reasons for the indication of allowable subject matter: Leach fails to disclose wherein the first section is disposed at a point approximately equidistant from the first end and the second end, wherein the outer cover is tapered from the second end to the first end, or wherein the circumferential band is located approximately equidistantly from the first end and the second end as required by each of the aforementioned claims. Leach’s first section or circumferential band is located at approximately the 1/3 or 2/3 from the first or second end. Leach’s outer cover is also not tapered as required by the claims. There is no motivation to modify Leach as specified by each of the claims. Modifying Leach as required by the claims would require impermissible hindsight.
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