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 .
Response to Amendments and Arguments
The amendments, filed July 16, 2026, have been entered. Claims 2, 9, and 15 have been amended. Claims 1, 4, and 21 have been cancelled. Claims 2-3 and 5-20 are currently pending in the application. The amendments to the claims and specification have overcome the previous objections presented in the previous Office Action. Additionally, the cancellation of claims 4 and 21 have rendered the previous rejections under 35 U.S.C. 112(b) moot. The nonstatutory double patenting rejection remains pending.
Applicant argues that the previously cited prior art of Rochlin (U.S. Publication No. 2005/0123736) does not disclose, teach, or suggest the newly amended subject matter of the plurality of elongated inserts being shaped and sized such that they are capable of claimed compression pattern during use of the pillow. However, a new rejection has been entered with Contreras (U.S. Patent No. 6,235,391) being cited for this feature. In Applicant’s paragraphs 0006-0007, Applicant notes that because the length of the elongated inserts is more than 6 inches, the pillow is able to achieve the claimed compression profile of at least some elongated inserts being compressed and loaded in tension while remaining elongated inserts are uncompressed. As such, it appears elongated inserts with a length of 6 inches would be capable of performing the claimed function. As the elongated inserts of Contreras can be up to 7 inches, then the elongated inserts of Contreras are sized and shaped such that at least some elongated inserts are compressed and loaded in tension while remaining elongated inserts are uncompressed.
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 2-4, 8-9, 12, 14, 17-19 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8-10, 13-16, 20-21, and 23 of U.S. Patent No. 12,295,514. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent contain all the limitations of and therefore encompass all that is claimed in the stated claims of the instant application. Specifically, claims 1 and 9 of the reference patent encompass claim 2 of the instant application, claims 1, 2, 3, 8, 10, 13, 14, 17, 20, 21, and 23 of the reference patent encompass claims 2, 3, 4, 8, 9, 12, 14, 15, 18, and 19 of the instant application, respectively. In addition, dependent claims 9, 16, and 23 of the reference patent encompass all that is claimed in claims 2, 9, and 15 of the instant application (where both independent claims 2, 9, and 15 of the instant include the limitation of the elongated inserts being entangled), dependent claim 21 of the instant application contains the same limitations of the material of the elongated inserts as included in dependent claim 23 of the reference patent.
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.
Claims 2-3, 5, 8-10, 12, 15-16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Contreras (U.S. Patent No. 6,235,391).
Regarding claim 2, Contreras (U.S. Patent No. 6,235,391) discloses a bedding pillow comprising: an outer cover 20; an internal compartment disposed within the outer cover 20 (Figure 1); and a plurality of elongated inserts 34 disposed in the internal compartment of the outer cover 20 (Figure 1, Col. 4, lines 17-28), wherein the plurality elongated inserts 34 are shaped and sized so at least some elongated inserts of the plurality of elongated inserts are entangled such that during use of the bedding pillow the at least some elongated inserts 34 of the plurality of elongated inserts are compressed and loaded in tension while remaining elongated inserts of the plurality of elongated inserts are uncompressed (Col. 4, lines 17-28, where the inserts may be up to 7 inches long, where the length of the inserts is provided to avoid clumping and nesting of the filling, and see Applicant’s specification where filling a personal cushion device with pieces of resilient material having a length larger than 6 inches is a size and shape that results in the claimed compression).
Regarding claim 3, Contreras discloses the subject matter discussed above with regard to claim 2. Contreras further discloses wherein the plurality of elongated inserts comprise an open cell foam material (Col. 3, lines 43-50).
Regarding claim 5, Contreras discloses the subject matter discussed above with regard to claim 2. Contreras further discloses wherein a first end 46 of a first elongate insert 34 is entangled with a second elongate insert 34 in a compressed portion of the bedding pillow, and a second end 48 of the first elongate insert is entangled with a third elongate insert 34 in an uncompressed portion of the bedding pillow (Figure 1 and Col. 3, lines 25-43, where a pillow cover 20 is filled with many of the inserts 34, Col. 4, lines 17-28, where the inserts may be up to 7 inches long, where the length of the inserts is provided to avoid clumping and nesting of the filling, and see Applicant’s specification where filling a personal cushion device with pieces of resilient material having a length larger than 6 inches is a size and shape that results in the claimed compression).
Regarding claim 8, Contreras discloses the subject matter discussed above with regard to claim 2. Contreras further discloses wherein the plurality of elongated inserts 34 have varying lengths (Col. 4, lines 17-28, where the inserts may be up to 7 inches long).
Regarding claim 9, Contreras discloses a bedding pillow comprising: an outer cover 20; an internal compartment disposed within the outer cover 20 (Figure 1); and a plurality of elongated inserts 34 disposed in the internal compartment of the outer cover 20 (Figure 1, Col. 4, lines 17-28), the plurality of elongated inserts 34 comprising a first end 46, a second end 48, and a length between the first end and the second end (Figure 3 and Col. 3, lines 51-56), wherein the plurality of elongated inserts 34 are shaped and sized so at least some of the elongated inserts of the plurality of elongated inserts are entangled such that during use of the bedding pillow the at least some elongated inserts 34 of the plurality of elongated inserts 34 are compressed and loaded in tension while remaining elongated inserts 34 of the plurality of elongated inserts are uncompressed (Col. 4, lines 17-28, where the inserts may be up to 7 inches long, where the length of the inserts is provided to avoid clumping and nesting of the filling, and see Applicant’s specification where filling a personal cushion device with pieces of resilient material having a length larger than 6 inches is a size and shape that results in the claimed compression).
Regarding claim 10, Contreras discloses the subject matter discussed above with regard to claim 9. Contreras further discloses wherein the first end 46 of a first elongate insert 34 is entangled with a second elongate insert 34 in a compressed portion of the bedding pillow, and the second end 48 of the first elongate insert is entangled with a third elongate insert 34 in an uncompressed portion of the bedding pillow (Figure 1 and Col. 3, lines 25-43, where a pillow cover 20 is filled with many of the inserts 34, Col. 4, lines 17-28, where the inserts may be up to 7 inches long, where the length of the inserts is provided to avoid clumping and nesting of the filling, and see Applicant’s specification where filling a personal cushion device with pieces of resilient material having a length larger than 6 inches is a size and shape that results in the claimed compression).
Regarding claim 12, Contreras discloses the subject matter discussed above with regard to claim 9. Contreras further discloses wherein the plurality of elongated inserts 34 have varying lengths (Col. 4, lines 17-28, where the inserts may be up to 7 inches long).
Regarding claim 15, Contreras discloses a bedding pillow comprising: an outer cover 20; an internal compartment disposed within the outer cover 20 (Figure 1); and a plurality of elongated inserts 34 disposed in the internal compartment of the outer cover 20 (Figure 1, Col. 4, lines 17-28), the plurality of elongated inserts 34 comprising open cell foam (Col. 3, lines 43-50), a first end 46, a second end 48, an intermediate portion 26, 28, and 40, and a length between the first end and the second end (Figure 3 and Col. 3, lines 51-56), wherein the plurality of elongated inserts 34 are shaped and sized so at least some of the elongated inserts 34 of the plurality of elongated inserts are entangled such that during use of the bedding pillow the at least some elongated inserts 34 of the plurality of elongated inserts 34 are compressed and loaded in tension while remaining elongated inserts 34 of the plurality of elongated inserts 34 are uncompressed (Col. 4, lines 17-28, where the inserts may be up to 7 inches long, where the length of the inserts is provided to avoid clumping and nesting of the filling, and see Applicant’s specification where filling a personal cushion device with pieces of resilient material having a length larger than 6 inches is a size and shape that results in the claimed compression).
Regarding claim 16, Contreras discloses the subject matter discussed above with regard to claim 15. Contreras further discloses wherein the first end 46 of a first elongate insert 34 is entangled with a second elongate insert 34 in a compressed portion of the bedding pillow, and the second end 48 of the first elongate insert is entangled with a third elongate insert 34 in an uncompressed portion of the bedding pillow (Figure 1 and Col. 3, lines 25-43, where a pillow cover 20 is filled with many of the inserts 34, Col. 4, lines 17-28, where the inserts may be up to 7 inches long, where the length of the inserts is provided to avoid clumping and nesting of the filling, and see Applicant’s specification where filling a personal cushion device with pieces of resilient material having a length larger than 6 inches is a size and shape that results in the claimed compression).
Regarding claim 18, Contreras discloses the subject matter discussed above with regard to claim 15. Contreras further discloses wherein the plurality of elongated inserts 34 have varying lengths (Col. 4, lines 17-28, where the inserts may be up to 7 inches long).
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.
Claims 6-7, 11, 13, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Contreras in view of Rochlin (U.S. Publication No. 2005/0123736).
Regarding claim 6, Contreras discloses the subject matter discussed above with regard to claim 2. Contreras does not explicitly disclose wherein the plurality of elongated inserts are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts.
Rochlin (U.S. Publication No. 2005/0123736) teaches wherein the plurality of elongated inserts 26 are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts 26 (Figures 2-3 and paragraphs 0024-0025 and 0031-0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Rochlin (both being directed to filled pillows) such that the plurality of elongated inserts are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts. One of ordinary skill in the art would have been motivated to do so because air gaps allow for the free transfer of air and moisture, allows for heat to be dissipated away from a user’s body (paragraphs 0024-0025 and 0031-0032).
Regarding claim 7, Contreras discloses the subject matter discussed above with regard to claim 2. Contreras does not explicitly disclose wherein the plurality of elongated inserts are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts.
Rochlin teaches wherein the plurality of elongated inserts 26 are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts 26 (Figures 2-3 and paragraphs 0024-0025 and 0031-0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Rochlin (both being directed to filled pillows) such that the plurality of elongated inserts are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts. One of ordinary skill in the art would have been motivated to do so because air gaps allow for the free transfer of air and moisture, allows for heat to be dissipated away from a user’s body (paragraphs 0024-0025 and 0031-0032).
Regarding claim 11, Contreras discloses the subject matter discussed above with regard to claim 9. Contreras does not explicitly disclose wherein the plurality of elongated inserts are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts.
Rochlin (U.S. Publication No. 2005/0123736) teaches wherein the plurality of elongated inserts 26 are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts 26 (Figures 2-3 and paragraphs 0024-0025 and 0031-0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Rochlin (both being directed to filled pillows) such that the plurality of elongated inserts are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts. One of ordinary skill in the art would have been motivated to do so because air gaps allow for the free transfer of air and moisture, allows for heat to be dissipated away from a user’s body (paragraphs 0024-0025 and 0031-0032).
Regarding claim 13, Contreras discloses the subject matter discussed above with regard to claim 9. Contreras does not explicitly disclose wherein the plurality of elongated inserts are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts.
Rochlin teaches wherein the plurality of elongated inserts 26 are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts 26 (Figures 2-3 and paragraphs 0024-0025 and 0031-0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Rochlin (both being directed to filled pillows) such that the plurality of elongated inserts are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts. One of ordinary skill in the art would have been motivated to do so because air gaps allow for the free transfer of air and moisture, allows for heat to be dissipated away from a user’s body (paragraphs 0024-0025 and 0031-0032).
Regarding claim 17, Contreras discloses the subject matter discussed above with regard to claim 15. Contreras does not explicitly disclose wherein the plurality of elongated inserts are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts.
Rochlin (U.S. Publication No. 2005/0123736) teaches wherein the plurality of elongated inserts 26 are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts 26 (Figures 2-3 and paragraphs 0024-0025 and 0031-0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Rochlin (both being directed to filled pillows) such that the plurality of elongated inserts are disposed in the internal compartment such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts. One of ordinary skill in the art would have been motivated to do so because air gaps allow for the free transfer of air and moisture, allows for heat to be dissipated away from a user’s body (paragraphs 0024-0025 and 0031-0032).
Regarding claim 20, Contreras discloses the subject matter discussed above with regard to claim 15. Contreras does not explicitly disclose wherein the plurality of elongated inserts are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts.
Rochlin teaches wherein the plurality of elongated inserts 26 are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts 26 (Figures 2-3 and paragraphs 0024-0025 and 0031-0032).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Rochlin (both being directed to filled pillows) such that the plurality of elongated inserts are sized and shaped such that the internal compartment comprises air gaps between at least some of the plurality of elongated inserts. One of ordinary skill in the art would have been motivated to do so because air gaps allow for the free transfer of air and moisture, allows for heat to be dissipated away from a user’s body (paragraphs 0024-0025 and 0031-0032).
Claims 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Contreras in view of Reuben (U.S. Publication No. 2019/0075948).
Regarding claims 14 and 19, Contreras discloses the subject matter as discussed above with regard to claims 9 and 15, respectively. Contreras does not disclose loose filler material mixed with the plurality of elongated inserts disposed in the internal compartment.
Reuben teaches loose filler material 28 mixed with the plurality of elongated inserts 25 disposed in the internal compartment (Figure 2C and paragraph 0036).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified Contreras with Reuben (both being directed to filled pillows) and arrived at a loose filler material mixed with the plurality of elongated inserts disposed in the internal compartment. One of ordinary skill in the art would have been motivated to do so because the loose filler material of Reuben stabilizes the core of loose filler material (paragraph 0036).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALISON N LABARGE whose telephone number is (571)272-6098. The examiner can normally be reached M-F 8-4:00.
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/ALISON N LABARGE/Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
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