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 3: The phrase --now U.S. Patent No. 12,419,435,-- should be inserted after the first instance of the phrase “2024,”, and the phrase --now U.S. Patent No. 12,070,130,-- should be inserted after the last instance of the phrase “2024,”.
Appropriate correction is required.
Claim Objections
Claims 9 and 13 are objected to because of the following informalities:
1) In claim 9, line 6: The term “receive” should be changed to the phrase --attach to an internal surface of--; please refer to page 34, paragraph 00129, lines 13 & 14 of the specification.
2) In claim 9, line 8: The phrase --the gel-- should be inserted before the first instance of the term “beads”, the phrase --at least one of-- should be inserted after the term “surrounding”, and the phrase “gel beads” should be changed to
the phrase --internal foam support structures--; please refer to page 34, paragraph 00129, lines 9 & 10 of the specification.
3) In claim 13, line 2: The term “article” should be changed to --bladder--.
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 1-20 of U.S. Patent No. 12,419,435. 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 1-20 of U.S. Patent No. 12,419,435. In other words, claims 1-20 of U.S. Patent No. 12,419,435 fully encompass the subject matter of claims 1-20 and therefore anticipate claims 1-20. Since claims 1-20 are anticipated by claims 1-20 of the patent, they are not patentably distinct from claims 1-20 of the patent. Thus the invention of claims 1-20 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 1-20 of the patent, claims 1-20 are not patentably distinct from claims 1-20 of the patent, regardless of any additional subject matter present in claims 1-20 of the patent.
Claim 19 is further rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,070,130. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 is generic to all that is recited in claim 11 of U.S. Patent No. 12,070,130. In other words, claim 11 of U.S. Patent No. 12,070,130 fully encompasses the subject matter of claim 19 and therefore anticipates claim 19. Since claim 19 is anticipated by claim 11 of the patent, it is not patentably distinct from claim 11. Thus the invention of claim 11 of the patent is in effect a “species” of the “generic” invention of claim 19. It has been held that the generic invention is anticipated by the species,
see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 19 is anticipated (fully encompassed) by claim 11 of the patent, claim 19 is not patentably distinct from claim 11, regardless of any additional subject matter present in claim 11.
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.
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 4,982,465 to Nagata et al. Nagata et al. show the claimed limitations of a method of creating an article which provides for pressure release and thermal transfer, comprising: filling a bladder (any one of elements B1 through B12) with gel beads (15) (as shown in Figures 1-7B and as described in column 3, lines 38-62; column 4, lines 9-32; column 6, lines 10-35 and in column
8, lines 35-39), delivering fluid (W) into the bladder (via elements 5 and 6) (as shown in Figures 1-5 and as described in column 4, lines 66-68 in column 5, line 1); and the gel beads (15) absorbing the fluid (W) and expanding (as described in column 4, lines 43-49 and in column 5, lines 2-4).
Allowable Subject Matter
The examiner respectfully asserts that none of the limitations of the article as currently recited in claims 1-18 can be rejected under 35 U.S.C. §§§ 102, 103 and 112; accordingly, claims 1-18 are considered as being allowable if the claim objections and the double patenting rejections indicated above were fully overcome.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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