DETAILED ACTION
Claims 1-20 are pending in this application. 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 § 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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 1-20, under Step 1, the claims recite a process, machine, manufacture, or composition of matter. Under Step 2A claims 1-20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites: a method comprising: receiving an input regarding a mattress assembly, the input including an indication of a desired feel of the mattress assembly, the mattress assembly including a plurality of current layers of rearrangeable foam layers; identifying a replacement layer based on the plurality of current layers, a list of available layers, and the indication of the desired feel; providing a recommendation including the identified replacement layer and a recommended layer arrangement; and rearranging the mattress assembly based on the recommendation by removing a first layer from the plurality of current layers and inserting the replacement layer into the mattress assembly based on the recommended layer arrangement.
The above limitations set forth a procedure for organizing human activity, such as by performing commercial interactions including marketing activity and business relations. This is because the claim recites the steps performed in order to recommend a mattress arrangement (Specification ¶0003). Accordingly, under step 2A (prong 1) the claim recites an abstract idea because the claim recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas. MPEP 2106.04.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. Claim 1 recites no additional elements. In view of the above, representative claim 1 does not integrate the abstract idea into a practical application and does not provide an inventive concept (“significantly more”) under Steps 2A and 2B, and is therefore ineligible for patenting.
Dependent claims 2-5 recite limitations which are similarly directed to and elaborate on the judicial exception (abstract idea) of claim 1. Thus, each of claims 2-5 are held to recite a judicial exception under Step 2A (prong 1) for at least similar reasons as discussed above.
Furthermore, claims 2-5 do not set forth further additional elements. Considered both individually and as a whole, claims 2-5 do not integrate the recited exception into a practical application for at least similar reasons as discussed above.
Lastly, under step 2B, dependent claims 2-5 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and specified at a high level of generality.
Dependent claims 6, 13, and 20 recite the additional element of a database.
This additional element is not sufficient to integrate the abstract idea into a practical application. This is because the additional element of claims 6, 13, and 20 is recited at a high level of generality (i.e. as generic computing hardware) such that it amounts to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or merely uses a computer as a tool to perform an abstract idea). Further, the additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as computers or computing networks).
Secondly, the additional element is insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claims 1- 20 do not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Taken individually or as a whole the additional elements of claim 6, 13, and 20 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment. MPEP 2106.05.
Claims 7-20 are parallel, i.e. recite similar concepts and elements, to claims 1-6, analyzed above, and the same rationale is applied.
In view of the above, claims 1-20 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,315,000 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are anticipated by the patented claims.
Reasons for Allowability Over the Prior Art
The prior art includes Murphy et al., US Patent 8,296,976 B2 which teaches a method for communicating performance attributes including multiple layers of material that a consumer assembles into a mattress based on preferences or suggestions from the manufacturer but does not teach identifying a replacement layer based on the plurality of current layers and a list of available layers and rearranging the mattress assembly based on the recommendation by removing a first layer from the plurality of current layers and inserting the replacement layer into the mattress assembly based on the recommended layer arrangement or providing a recommendation for rearranging the mattress assembly, the recommendation including the identified replacement layer and a recommended layer arrangement.
The prior art also includes Kilgore et al., US PG Pub 2015/0320228 A1, which teaches a foam block mattress assembly and Lesley, US PG Pub 2016/0128489 A1, which teaches a rotatable mattress. However, neither reference cures the deficiencies noted above. Non-patent literature Radwan, Ahmed, et al. teaches the effect of different mattress designs on promoting sleep quality, pain reduction, and spinal alignment in adults with or without back pain; systematic review of controlled trials but similarly does not cure the noted deficiencies. The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable over the prior art as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B SEIBERT whose telephone number is (571)272-5549. The examiner can normally be reached Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi can be reached at 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B SEIBERT/Primary Examiner, Art Unit 3688
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