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 .
Specification
The disclosure is objected to because of the following informalities: On page 1, in paragraph 0001, line 2: The phrase --now U.S. Patent No. 12,376,687,-- should be inserted after the phrase “October 11, 2022,”.
Appropriate correction is required.
Claim Objections
Claim 6 is objected to because of the following informalities: In claim 6, line 3: The term “processer” should be changed to --processor--. 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, 5, 7-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 9, 11-14 and 17-19 of U.S. Patent No. 12,376,687. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5, 7-16 and 18-20 are generic to all that is recited in claims 1-6, 8, 9, 11-14 and 17-19 of U.S. Patent No. 12,376,687. In other words, claims 1-6, 8, 9, 11-14 and 17-19 of U.S. Patent No. 12,376,687 fully encompass the subject matter of claims 1, 5, 7-16 and 18-20 and therefore anticipate claims 1, 5, 7-16 and 18-20. Since claims 1, 5, 7-16 and 18-20 are anticipated by claims 1-6, 8, 9, 11-14 and 17-19 of the patent, they are not patentably distinct from claims 1-6, 8, 9, 11-14 and 17-19. Thus the invention of claims 1-6, 8, 9, 11-14 and 17-19 of the patent is in effect a “species” of the “generic” invention of claims 1, 5, 7-16 and 18-20. 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, 5, 7-16 and 18-20 are anticipated (fully encompassed) by claims 1-6, 8, 9, 11-14 and 17-19 of the patent, claims 1, 5, 7-16 and 18-20 are not patentably distinct from claims 1-6, 8, 9, 11-14 and 17-19, regardless of any additional subject matter present in claims 1-6, 8, 9, 11-14 and 17-19.
Claims 2 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. 12,376,687 in view of U.S. Patent Application Publication No. 2016/0066703 to Chen. With respect to claim 2, claim 1 of U.S. Patent No. 12,376,687 does not specifically disclose the use of a cover including an upper surface positioned over at least a portion of the first edge, the second edge, and the first rail. Chen ‘703 provides the basic teaching of a mattress (1) provided with a cover (3) which completely surrounds the mattress (see Figure 5 and page 3, paragraph 0028). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the mattress disclosed in claim 1 of U.S. Patent No. 12,376,687 with the cover taught in Chen ‘703 with a reasonable expectation of success because this would have achieved the desirable results of “effectively [preventing a] user from direct contact with the [mattress] and effectively [improving] the comfort level of the user” as taught by Chen ‘703 (page 2, paragraph 0008).
With respect to claim 17, claim 14 of U.S. Patent No. 12,376,687 does not specifically disclose wherein the monitoring the at least one metric further comprises monitoring a respiratory rate or a heart rate of the individual on or using the mattress. Chen ‘703 also provides the basic teaching of a mattress (1) comprising a vibration sensor assembly (12) which comprises a heartbeat frequency sensor and a respiratory frequency sensor (see Figure 4; page 1, paragraph 0008; page 2, paragraph 0008; page 3, paragraph 0028 and page 4, paragraph 0031). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the mattress disclosed in claim 14 of U.S. Patent No. 12,376,687 with the monitoring taught in Chen ‘703 with a reasonable expectation of success because this would have achieved the desirable results of “[performing] real-time monitoring of the sleep state of [the user], and [taking] appropriate measures in the event of abnormalities to address in a timely manner, so as to ensure the quality of sleep [of the user]” as taught by Chen ‘703 (page 1, paragraph 0004 and the Abstract).
Claims 3 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,376,687 in view of U.S. Patent No. 5,533,218 to Fahy. Claim 1 of U.S. Patent No. 12,376,687 does not specifically disclose wherein the first rail is composed of a first material, the first rail including a plurality of cutouts positioned between the first edge and the second edge; and wherein each of the plurality of cutouts is configured to receive a plurality of inserts, the plurality of inserts composed of a second material, the second material being more compressible than the first material. Fahy ‘218 provides the basic teaching of a mattress (30) comprising a plurality of longitudinally extending cutouts (34, 37) each receiving an insert (35, 39) therein, wherein each of the inserts can have a different firmness or stiffness than the mattress (30) (see Figure 9; column 4, lines 17-29 and column 5, lines 13-31 & 39-45). The skilled artisan would have found it obvious before the effective filing date of the
claimed invention to combine the mattress disclosed in claim 1 of U.S. Patent No. 12,376,687 with the respective pluralities of cutouts and inserts taught in Fahy ‘218 with a reasonable expectation of success because this would have achieved the desirable result of “[adapting] the stiffness [of the mattress] to suit the comfort requirements of [a] user” as taught by Fahy ‘218 (column 2, lines 21-23 and column 5, lines 52-55).
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,376,687 in view of U.S. Patent Application Publication No. 2018/0168485 to Chen et al. Claim 1 of U.S. Patent No. 12,376,687 does not specifically disclose the use of a foot rail positioned adjacent to the second edge, the foot rail including a processor and a transceiver configured to communicate with the edge sensor. Chen et al. ‘485 provides the basic teaching of a mattress (10) comprising sensors, and a processor (41) which operatively communicates with first and second transceivers (50, 62) (see Figure 7; page 3, paragraph 0053 and page 4, paragraph 0057). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the mattress disclosed in claim 1 of U.S. Patent No. 12,376,687 with the processor and transceiver arrangement taught in Chen et al. ‘485 with a reasonable expectation of success because this would have achieved the desirable result of “determining the presence of [a] user on the mattress based on physiological data [of the user]…to regulate ambient environment and improve the quality of sleep [of the user]” as taught by Chen et al. ‘485 (page 1, paragraphs 0005 & 0006 and page 3, paragraph 0050).
Allowable Subject Matter
The examiner respectfully asserts that none of the limitations of the mattress as currently recited in claims 1-20 can be rejected under 35 U.S.C. §§§ 102, 103 and 112; accordingly, claims 1-20 are considered as being allowable if the claim objection and the double patenting rejections as indicated above were fully overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: U.S. Patent Nos. 12,604,995 to Bennett and 10,398,357 to Chen et al. as well as foreign patent document WO 2024/158912 A1 to Bennett all disclose the use of a smart bed comprising at least one sensor for detecting at least one attribute of a user resting on the smart bed. Furthermore, U.S. Patent No. 6,061,856 to Hoffman and foreign patent document WO 96/02173 A1 to Fahy both disclose the use of a mattress comprising a plurality of cutouts each having an insert placed therein. Lastly, U.S. Patent Application Publication No. 2025/0331654 to Grutta et al. is the corresponding patent application publication for this application.
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.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673
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