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 .
DETAILED ACTION
Acknowledgment of Applicant’s Response
The merits of this case have been carefully reviewed in light of applicant's response filed 14 August 2026. Applicant’s response has overcome the objections to the specification. To address the applicants’ response to the rejection under 35 USC § 103, further search was completed and new art has come to our attention which necessitated the new grounds of a rejection as presented in this office action.
Response to applicant’s remarks
Applicants’ remarks are presented below:
The applicants indicated that the claim of the present application is directed to a mattress as the article of manufacture and that one of ordinary skill in the art would understand that the Kelly’s article of manufacture to be a table, counter, tray, or possibly a rigid plaything for a child. The applicants note the article of Kelly showing a solid top face and perimeter sidewall defining an internal and open cavity. Applicants indicated that Kelly is a divisional of U.S. D350237 and considered not the same or analogous field of design endeavor as a mattress.
A common meaning of the term “pad” may include the following terms: mat, cushion, pillow and support. One of the classifications searched by the examiner is D6-Furnishings. Wherein the article directed to Kelly and the U.S. D350,237 as noted above, is titled “Multiple Use Activity Pad”, shown with a rectangular shape with one on end with tapered/angled corners with a flat top surface and within the D6 classification. A mattress, pad, pillow or cushion may be placed over or used as a cot, stretcher, gurney, counter/table (such as an operating table), and other various furnishings as support. All of which are similar articles of manufacture, including the claim of the present application. Obviousness, like anticipation, requires courts to consider the perspective of the ordinary observer. Comparing the claimed design with the examiner’s combination of references takes into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,” (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. (International Seaway Trading Corp. v. Walgreens Corp., 93 USPQ2d 1001 (Fed. Cir. 2009.). Furthermore, allowance of one claim by Patent Office to an applicant is not to be regarded as proper basis for determining allowability of another claim to another party, as seen in In re Allen 1940 C.D. 598; 521 O.G. 265; 46 USPQ 29 (1940).
The applicants indicated that one of the ordinary skill in the art would not combine the references to arrive at the claimed invention, in which the article is drawn to a mattress with opposing ends that are not identical to one another or mirror images. Applicants noted that the only teaching from Kelly that would be applied is to make both ends of an article identical. Applicants indicated there is no teaching, motivation, or suggestion in either the primary reference-Stretcher Mattress, and secondary reference-Kelly, to modify the second end of the Stretcher Mattress to also have angled cut corners that are not mirrored images of the existing angle cut corners of the first end. Additionally, the applicants indicated that the previous Office Action is silent to teach or arrive at the claimed mattress of Figs. 8-14.
The primary prior art reference is analyzed in terms of its visual similarity to the claimed design and the secondary prior art is a teaching reference to look for specific elements. The Stretcher Mattress shows an elongated mattress with non-identical ends, one end with tapered/angled cut corners with the opposing end with right angled corners. The Kelly, as a teaching reference to look for specific elements, shows smaller angled cut corners along the ends. However, it is not necessary that inventions of references be physically combinable to render invention under review obvious, In re Sneed 218 USPQ 385 (1983) and applicants cannot show nonobviousness by attacking references individually where rejection is based on combination of references, In re Young et al 159 USPQ 725 (1968). Furthermore, as stated on page 3 of the previous Office Action and in regard to the embodiment Figs. 8-14, “as the two embodiments are deemed to be obvious variations of each other, the references used to reject the claimed design would apply to all embodiments.” The practice of claiming a design embodied in less than the entire article was confirmed in the decision of In re Zahn, 204 USPQ 988 (CCPA 1980). This practice also opens to the examiner the liberty of relying upon the features of a reference embodied in less than the entire article. The examiner has done so in the following rejection below.
Applicants indicated that the Office Action has not established the Stretcher Mattress as being prior art in which the non-patent literature of the Stretcher Mattress points to a four digit number that may or may not correlate to a year in the designated URL and not evidence of an actual publication date.
A “view source” of a webpage is the raw HTML, CSS, and JavaScript code sent by a web server before the browser renders it into a visual page. When reviewing the “view source” of the webpage of the Stretcher Mattress (see "A"), the source code “datePublished”, which is a metadata tag that tells search engines and browsers the exact date and time when the content was first made available to the public, is listed as “2022-03-29" (see "C"). The photo URL of the Stretcher Mattress is mecp.ca/ wpcontent/ uploads/ 2022/ 03/ cbelmci29764te_01.jpg.webp (see "B"), wherein the date within the URL was noted and may be relied upon to provide evidence regarding the state of the art (see MPEP § 2128(B)). The publication date of 03/29/2022 found in the view source of the NPL webpage establishes and supports the four digit number that correlates to and the date of 03/2022.
PNG
media_image1.png
1184
862
media_image1.png
Greyscale
PNG
media_image2.png
1020
1296
media_image2.png
Greyscale
Rejection under 35 U.S.C. 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as clearly anticipated by the Pedigo Stretcher Mattress of Medtrica (NPL Reference "U") because 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.
The appearance of Pedigo Stretcher Mattress is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
PNG
media_image3.png
768
1055
media_image3.png
Greyscale
PNG
media_image4.png
211
446
media_image4.png
Greyscale
Claimed Design
Pedigo Stretcher Mattress
“Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F3d.1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871).
“The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as ‘minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,’ so too minor differences cannot prevent a finding of anticipation.” Int'l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
See MPEP 2152.06 for ways in which the rejection can be overcome.
As the claimed design is currently understood, the claim is also rejected under 35 USC§ 103.
Claim Rejection - 35 U.S.C. §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.
The claim is rejected under 35 U.S.C. 103 as being unpatentable over the Stretcher Mattress of mecp.ca (NPL Reference "V") in view of the prior art as demonstrated by U.S. Patent No. D366,380 to Ray G. Kelly ("Kelly"). Additionally, as the two embodiments are deemed to be obvious variations of each other, the reference used to reject the claimed design would apply to all embodiments.
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
Stretcher Mattress has an overall appearance with design characteristics that are visually similar to those of the claimed design, in showing a rectangular, elongated shaped mattress with a slim profile and one end has tapered/angled cut corners.
The claimed design differs from Stretcher Mattress in that one end has slightly angled cut corners.
Kelly shows slightly angled cut corners.
PNG
media_image5.png
195
303
media_image5.png
Greyscale
PNG
media_image6.png
156
333
media_image6.png
Greyscale
PNG
media_image7.png
186
276
media_image7.png
Greyscale
Claimed Design
Stretcher Mattress
Kelly
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the present claimed invention to modify Stretcher Mattress with Kelly by changing the shape of one end because such modification is no more than a simple substitution of one known design element for another. Moreover, such substitution of one known design element for another known design element in the same field would have been within the skill of an ordinarily skilled designer. The Kelly reference, along with the Pedigo Stretcher Mattress (NPL “U”), and Medtrica Mattress (NPL “W”) references, demonstrates that those ornamental features (a rectangular, elongated shaped article with slightly angled cut corners) are commonplace in the relevant field of mattresses/pads and therefore would have been an obvious design choice.
Obviousness, like anticipation, requires courts to consider the perspective of the ordinary observer. Comparing the claimed design with the examiner’s combination of references takes into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as “minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,” (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. (International Seaway Trading Corp. v. Walgreens Corp., 93 USPQ2d 1001 (Fed. Cir. 2009.)
Conclusion
In conclusion the claim stands rejected under 35 U.S.C. §102 and Rejection under 35 USC § 103 as set forth above.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE REEVES whose telephone number is (571)272-9509. The examiner can normally be reached on Mon-Fri from 6:30AM - 2:30PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Fox, can be reached at 571-272-4456. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats see MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/MICHELLE REEVES/Examiner, Art Unit 2931
