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. 12,390,020,-- should be inserted after the phrase “filed on November 12, 2024,”.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 8, 9 and 15-20 are of U.S. Patent No. 12,390,020. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 are generic to all that is recited in claims 1, 2, 5, 6, 8, 9 and 15-20 of U.S. Patent No. 12,390,020. In other words, claims 1, 2, 5, 6, 8, 9 and 15-20 of U.S. Patent No. 12,390,020 fully encompass the subject matter of claims 1-20 and therefore anticipate claims 1-20. Since claims 1-20 are anticipated by claims 1, 2, 5, 6, 8, 9 and 15-20 of the patent, they are not patentably distinct from claims 1, 2, 5, 6, 8, 9 and 15-20. Thus the invention of claims 1, 2, 5, 6, 8, 9 and 15-20 of the patent is in effect a “species” of the “generic” invention of claims 1-20. 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 1-20 are anticipated (fully encompassed) by claims 1, 2, 5, 6, 8, 9 and 15-20 of the patent, claims 1-20 are not patentably distinct from claims 1, 2, 5, 6, 8, 9
and 15-20, regardless of any additional subject matter present in claims 1, 2, 5, 6, 8, 9 and 15-20.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3, 10-12, 14 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2006/0096031 to Foster. With respect to claims 1 and 14, Foster shows the claimed limitations of a breastfeeding pillow (10, 20), comprising: a head portion (95) configured to support a head of a baby (B), a tail portion (100) located opposite the head portion and configured to support at least one leg of the baby, and a foot support (60, 70) extending from an end of the tail portion (100), the foot support configured to receive at least one foot of the baby (B) (as shown in Figures 1-3 & 5 and as described on page
2, in paragraphs 0030, 0032 & 0033 and on page 3, in paragraph 0033), wherein the foot support (60, 70) is configured to move (via elements 160, 170 & 180) between a first position (i.e., secured to element 100 as shown in 1, 2, 4A & 5) and a second position (i.e., detached from element 100) (also as shown in Figure 3 and as described on page 3, in paragraph 0034), and wherein the head portion (95) defines a first height and the tail portion (100) defines a second height that is less than the first height (as shown in Figures 1, 2, 4A & 5 and as described on page 2, in paragraphs 0030-0033).
With respect to claims 2 and 3 and with further respect to claim 14, the reference further discloses conditions wherein the foot support (60, 70) defines a curved shape (as shown in Figures 1, 2, 4A & 5); and wherein the foot support comprises a first end (60) coupled to the tail portion (100) and a second end (70) located opposite the first end, wherein the first end is configured to at least partially surround the tail portion (as shown in Figures 3 & 5).
With respect to claims 10-12 and 20, the reference further discloses a condition wherein the foot support (60, 70) is configured to provide a surface (i.e., a top surface thereof) for the at least one foot of the baby (B) to press against, thereby providing pressure against the at least one foot of the baby; a middle portion located between the head portion (95) and the tail portion (100), the middle portion configured to support a torso of the baby (B) (as shown in Figures 1, 2, 4A & 5); wherein the middle portion defines a third height that is less than the first height and greater than the second height (also as shown in Figures 1, 2 4A & 5); and wherein the foot support (60, 70) is fixedly coupled to the tail portion (100) (via elements 160, 170 & 180) (as shown in Figures 1, 2, 3, 4A & 5 and as described on page 3, in paragraph 0034).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Foster ‘031. With respect to claims 17 and 18, Foster discloses wherein the foot support (60, 70) comprises a filler material (as described on page 3, in paragraph 0033), but does not specifically disclose conditions wherein the foot support (60, 70) comprises a plurality of segments which are filled with the filler material and extend from a first end of the foot support to a second end of the foot support (60, 70), wherein the first end is coupled to the tail portion (100) and wherein the second end is located opposite the first end. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the breastfeeding pillow of Foster with a foot support comprising a plurality of
segments, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Sells ‘977 and Sells ‘585.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin C Mikowski can be reached at 571-272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673
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