Appl. No. 15/850,700
`Attorney Docket No. GRPET-1147302
`Response to Notice of Non-Compliant Amendment
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`Status of the Claims
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`REMARKS
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`Claims 1-20 are pending. Claims 1-20 have been canceled. Claims 21 to 45 are new.
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`Support for the new claims can be found throughoutthe specification, claims, and figures as
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`filed. No new matter has been added. After entry of the forgoing amendments, Claims 21-45 are
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`pending and submitted for consideration.
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`New claims 21-40 are claims 1-20 asfiled and claims 1-20 as amendedin the Preliminary
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`Amendmentfiled on March 22, 2018. The claim numbering changes betweenthe claims as
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`filed, as amendedin the Preliminary Amendment, and as in this Response are summarized in the
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`chart below. New claims 21-40 incorporate the claim amendments from the Preliminary
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`Amendmentas well as correct the claim dependenciesto reflect the new claim numbering.
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`As Filed Prelim. Amend.|This Response
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`1
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`2
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`3
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`4
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`Canceled
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`19
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`20
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`Canceled
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`29
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`30
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`31
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`32
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`33
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`34
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`35
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`36
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`37
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`38
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`39
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`40
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`Appl. No. 15/850,700
`Attorney Docket No. GRPET-1147302
`Response to Notice of Non-Compliant Amendment
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`Claim 41 is new and depends from claim 1. Support for the new claim can be foundin at
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`least paragraphs 23, 30, 32, and 46, and in Figures 2, 3, and 4.
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`Claim 42 is new and depends from new claim 41. Support for the new claim can be
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`foundin at least paragraph 32.
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`Claim 43 is new and depends from new claim 41. Support for the new claim can be
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`foundin at least paragraph 32.
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`Claim 44 is new and depends from new claim 41. Support for the new claim can be
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`foundin at least paragraphs 27, 29, 37 and 45.
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`Claim 45 is new andrecites the features of claims 2, 9, 10, 11, and 12, as filed, rewritten
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`in independent form. Support for the new claim can be found in claims 2, 9, 10, 11, and 12 as
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`filed.
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`Interview
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`Applicant thanks the Examinerfor the telephone interview on September 17, 2019.
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`During the interview, the parties discussed the claim numbering issue. Due to the multiple
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`numberingerrors, it was decided that it would be best to renumberthe claims starting with claim
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`number21.
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`Rejections Under 35 USC § 103
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`Applicant respectfully disagrees with the Examiner’s assessmentofthe priorart.
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`However, prior to responding to the Examiner’s rejection, it should be notedthat the Office
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`Action contains language that is not part of the pending claim set. Specifically, at least the
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`current claim set does not use the term “sealed perimeter.” In fact, upon review the quoted
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`language seems to be based on prior continuation applications of Applicant. As such, to avoid
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`confusion, Applicant requests an amendedoffice action using the current pending claim set.
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`The abovesaid, while Applicant agrees with the Examiner that Rabenbauer does not
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`disclose angled segments, wherein angled segments within a [sealed perimeter] of the
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`Appl. No. 15/850,700
`Attorney Docket No. GRPET-1147302
`Response to Notice of Non-Compliant Amendment
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`temperature regulation layer are formed by a top side and a bottom side at a predefined distance,
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`and channels, wherein the channels substantially form sides by contacting the top side with the
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`bottom side, there is no evidence of record that Rabenbauer teaches an endothermically activated
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`and exothermically deactivated cooling platform. Rabenbauer doesindicate that the invention
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`contemplates pre-frozen,artificial, ice packs. See Col. 2; Ln. 1 —- 4. However, ice packs are not
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`the sameas the cooling platform in Applicant’s invention, which is endothermically activated
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`and exothermically deactivated.
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`The Examinercites Gatten as teaching a cooling mattress for sunbathing comprising a
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`plurality of angled segments, wherein angled segments within a [sealed perimeter] of the
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`temperature regulation layer are formed by a top side and a bottom side at predefined distance,
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`and channels wherein the channels substantially form sides by contacting the top side with the
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`bottom side in order to enable the portions of the liner carrying the cavities to be folded to place
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`the mattress in a compact configuration. Applicant disagrees with this assessment and takes issue
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`with the motivation supplied by the Examiner.
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`First, Gatten does not supply the missing features of “channels” that “substantially form
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`sides by contacting the top side with the bottom side.” The Examiner appears to argue that the
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`liner partitions 318 of the mattress 316 of Gatten read on the claimed “channels.” Respectfully,
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`this position is misplaced. As shownin Figure 8, for example, the v-shaped liner partitions 318
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`of Gatten terminate prior to reaching the opposite side. Therefore, these partitions do not form
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`sides by contacting the top side with the bottom side. Accordingly, even if the proposed
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`modification could be made,the result is still not what is claimed by independent claims 1-2.
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`Second, with respect to motivation, the Examinerstates that “it would have been obvious
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`to one having ordinary skill in the art at the time the invention was made to modify the system of
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`Rabenbauer,to include a plurality of angled segments wherein angled segments within a sealed
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`perimeter of the temperature regulation layer are formed by a top side and a bottom side at a
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`predefined distance, and channels, wherein the channels substantially form sides by contacting
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`the top side with the bottom side, as taught by Gatten, in order to enable the portionsof the liner
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`carrying the cavities to be folded to place the mattress in a compact configuration.” The proposed
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`Appl. No. 15/850,700
`Attorney Docket No. GRPET-1147302
`Response to Notice of Non-Compliant Amendment
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`modification would not result in making the pet bed of Rabenbauer foldable. The Examiner
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`refers to the insulation 2 of Rabenbaueras reading on the claimed “temperature regulation
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`layer.” Even if one were to modify the insulation 2 to include the alleged angled segments of
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`Gatten, the result would be to renderthe insulation 2 more foldable. However, since the
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`insulation 2 is housedinside the rigid lower portion 1 and top 4 ofthe pet bed, the pet bed as a
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`whole would not be made foldable by implementing the proposed modification. This highlights
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`why the Examiner’s reasoning lacks any rational underpinning.
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`Furthermore, Applicant respectfully submits that modifying the system Rabenbauerwith
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`Gatten would render the system inoperable as Rabenbauer cannot be folded because it only
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`contemplates “wood or plastic, and is of sufficient strength to support the weight of a pet.” See
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`Col. 1; Ln: 29-35. Thus, even if the area surrounding the ice packs in Rabenbauer were
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`foldable; the surrounding structure is not — this notwithstanding the fact that ice-packs or ice
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`cannot be folded themselves. Given that Rabenbaueris the primary reference, the claimed
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`combination cannot changetheprinciple of operation of the primary reference or render the
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`reference inoperable for its intended purpose; which it does. See MPEP § 2143.01. Lastly, the
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`Examiner seems to suggest that Rabenbauer would be folded “to place the mattress in a compact
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`configuration.” However, the Examiner has not made a showing that Rabenbauer would be
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`modified to even use a mattress, or even contemplate folding. As stated above, Rabenbauer uses
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`reusable ice packs and hard woodorplastic to provide support. There is no support for the
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`notion to combine the tworeferences to achieve the result the Examinerargues.
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`The Examiner uses Lachenbruch to teach (another feature lacking in Rabenbauer) that the
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`support layer comprises an elastic material that deforms and reforms upon the application and
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`release of pressure to that of Rabenbauer. Specifically, the Examinerstates it would be “obvious
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`to one having ordinary skill in the art at the time the invention was made to modify the system of
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`Rabenbauer, to include an elastic material that deforms and reforms upon the application and
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`release of pressure, respectively, within the support layer, as taught by Lachenbruch,in order to
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`provide comfort to the user when applying cooling.” This cited motivation is inapposite and also
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`renders Rabenbauerinoperable becausethe use of elastic material underneath or around the ice
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`Appl. No. 15/850,700
`Attorney Docket No. GRPET-1147302
`Response to Notice of Non-Compliant Amendment
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`packs in Rabenbauer would provide no such comfort given the degree of hardness in and of the
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`packs themselves.
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`Under Ex Parte Ligh, if a claim is allowed,all proper dependent claims are also allowed.
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`(See Ex Parte Ligh, 159 USPQ (BNA) 61, 62 (BPAI 1967).) Because the references cited do not
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`meetthe limitations set forth in Claims 1 or 2, Claims 3 — 20 are also allowable. Furthermore,
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`new Claims 23 to 27 depend from or incorporate the limitations of Claims 1 or 2 and are also
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`allowable.
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`Conclusion
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`Applicants believe that the claim amendments, new figures, specification amendments,
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`and remarks madeherein fully addressall issues raised in the Office Action. Silence with regard
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`to any of the Examiner’s rejections is not an acquiescence to such rejections. Specifically,
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`silence with regard to Examiner’s rejection of a dependent claim, when such claim depends from
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`an independent claim that Applicant considers allowable for reasons provided herein, is not an
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`acquiescenceto such rejection of the dependentclaim(s), but rather a recognition by Applicant
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`that such previously lodged rejection is moot based on Applicant remarks and/or amendments
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`relative to the independent claim (that Applicant considers allowable) from which the dependent
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`claim(s) depends.
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`In view of the foregoing remarks, Applicant respectfully submit that the claims are
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`patentable and in condition for allowance. The undersigned has made a good-faith effort to
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`address all the points raised in the outstanding Office Action and seek allowance.
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`Appl. No. 15/850,700
`Attorney Docket No. GRPET-1147302
`Response to Notice of Non-Compliant Amendment
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`SUMMARY
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`Applicant respectfully requests that the Examiner contact the undersigned attorney at
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`(213) 576-5065, or at rdaramann@egordonrees.com, if itis believed that such contact will
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`expedite prosecution.
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`Please charge any fee deficiency or credit any overpayment to Deposit Account No. 50-
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`1990 and reference GRPET-1147302. However, the Commissioner for Patents is not authorized
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`to charge the cost of the issue fee to the Deposit Account.
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`Respectfully submitted,
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`By:
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`_/Reid E. Dammann/
`Reid E. Dammann
`Registration No. 57,227
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`Please recognize our Customer Number 27111 as
`our correspondence address.
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`Dated:_ October 18, 2019
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`GORDON & REES LLP
`101 West Broadway, Suite 1600
`San Diego, CA 92101
`Phone (main): (619) 696-6700
`Facsimile:
`(619) 696-7124
`
`Email:
`ipdocketigordonrees com
`Attorney Docket No.: GRPET-1147302
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