11163690 (B.P.A.I. Feb. 27, 2012)

Ex Parte Apperson et al

Board of Patent Appeals and InterferencesFeb 27, 2012

11163690 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/163,690 10/27/2005 Edmund Apperson 00124-01140-US 4689 23416 7590 02/27/2012 CONNOLLY BOVE LODGE & HUTZ, LLP P O BOX 2207 WILMINGTON, DE 19899 EXAMINER CONLEY, FREDRICK C ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 02/27/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte EDMUND APPERSON, AARON LEE, VISHAL MALHOTRA, and BEAT B. NIEDEROEST ____________________ Appeal 2010-001036 Application 11/163,690 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A. MCCARTHY, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001036 Application 11/163,690 2 STATEMENT OF THE CASE Edmund Apperson et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over Schwartz (US 5,513,402, iss. May 7, 1996), Yamada (US 4,276,666, iss. Jul. 7, 1981), and Landvik (US 6,541,094 B1, iss. Apr. 1, 2003). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The claims are directed to a mattress topper system (claims 1-8) and a method for varying the cushioning support level of a mattress with a mattress topper system (claims 9-14). Claims 1 and 9, reproduced below, are illustrative of the claimed subject matter. 1. A mattress topper system, comprising: a first foam layer of viscoelastic foam having a top surface and a bottom surface, wherein said top surface is shaped with one or more projections; and a second foam layer having a top surface and a bottom surface, wherein said second foam layer has a density less than said first foam layer, wherein said first and second foam layers are provided together to a consumer as separately unadhered layers that may be variously oriented one atop the other by the consumer as the mattress topper system over a separate bedding mattress. 9. A method for varying cushioning support level of a mattress with a mattress topper system positioned atop the mattress, comprising: providing a first foam layer of viscoelastic foam having a top surface and a bottom surface, wherein said top surface is shaped with one or more projections; Appeal 2010-001036 Application 11/163,690 3 providing a second foam layer having a top surface and a bottom surface, wherein said second foam layer has a density less than said first foam layer and is separate and unadhered to said first foam layer so that it may be variously oriented above or below said first foam layer by a consumer; and instructing the consumer to vary cushioning support level by positioning said first foam layer and second foam layer over a top surface of the mattress by specifying alternate foam layer configurations to increase cushioning support level. OPINION Claims 1-8 Claim 1 is directed to a “mattress topper system.” An issue presented in the appeal of the rejection of claims 1-8 is whether the Examiner erred in finding that the mattress system of Schwartz is a “mattress topper system.” See Ans. 3, 6; App. Br. 8-10; Reply Br. 7-8. When claim terminology is construed in the United States Patent and Trademark Office, claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As explained in Appellants’ Specification, a mattress topper is a cushioning system comprised of one or more layers of cushioning that is installed by a consumer over the top surface of a mattress to alter the firmness or air circulation of a mattress “without investing in a new mattress.” Spec. 1, paras. [0003], [0005], and [0006]. This description Appeal 2010-001036 Application 11/163,690 4 makes clear that a mattress topper (or mattress topper system) is not a full mattress, but, rather, a structure designed to be placed on top of a mattress to alter the cushioning support without having to invest in a new mattress. Further, Landvik characterizes the support B as “well-suited for use as an overlay which can be placed on top of an existing mattress to provide extra comfort and pressure-relief” (col. 2, ll. 45-47) and characterizes the support C as “well-suited for use as a mattress” (col. 2, ll. 58-59). Landvik’s separate and distinct references to an overlay and to a mattress suggest that (1) Landvik’s use of the term “overlay” is synonymous with Appellants’ use of the term “mattress topper,” and (2) the terminology “mattress topper” or “overlay” has a different meaning in the art than the term “mattress.” Moreover, the reference in claim 1 to orientation of the layers of the mattress topper system “as the mattress topper system over a separate bedding mattress” further substantiates the distinction between a mattress topper system and a mattress. See Reply Br. 8. Schwartz discloses a mattress system comprising at least two foam mattress elements, at least one of which has a different hardness from the others, and separation means for permitting each mattress element to compress and flex separately when stacked one above the other. Col. 2, ll. 52-57. Preferably, Schwartz’s elements also include one rigid core element, one torso board, or both. Col. 3, ll. 66-67; col. 5, ll. 36-40, col. 6, ll. 42-43. Like the foam layers of Appellants’ mattress topper system, Schwartz’s elements are provided to the consumer unadhered to one another so that they “can be rearranged in order to alter the hardness of the sleeping surface.” Col. 5, ll. 23-26. However, Schwartz clearly discloses a mattress system, Appeal 2010-001036 Application 11/163,690 5 not a mattress topper system for placement over a separate mattress. See, e.g., Abstr.; col. 5, ll. 18-32; col. 8, ll. 58-65. On the basis of the record before us, the known capability of mattresses to be stacked on top of one another is not sufficient to support the Examiner’s apparent position that Schwartz’s mattress system (and indeed every mattress system) necessarily is a “mattress topper system,” as that terminology would be understood by a person of ordinary skill in the art in light of Appellants’ Specification. See Ans. 6. Inasmuch as the Examiner’s rejection is premised on the Examiner’s unsupported finding that Schwartz’s mattress system is a “mattress topper system,” and relies on Yamada and Landvik only to support the proposed modification of the foam elements of Schwartz’s mattress system to provide surfaces shaped with projections and different densities, we cannot sustain the rejection of claim 1 and its dependent claims 2-8. Claims 9-14 Claim 9 and its dependent claims 10-14 are directed to a method “for varying cushioning support level of a mattress with a mattress topper system positioned atop the mattress.” As discussed above, Schwartz discloses a mattress system, and a method of varying the cushioning support level of the mattress system by rearranging the mattress elements. Schwartz does not teach varying the cushioning support level of the mattress with a mattress topper system positioned atop the mattress, as called for in claim 9. The Examiner’s rejection does not articulate any reason why it might have been obvious to modify Schwartz’s system and method by positioning a mattress Appeal 2010-001036 Application 11/163,690 6 topper system atop Schwartz’s mattress system. See App. Br. 15.1 Therefore, the Examiner has not established a prima facie case that the subject matter of claims 9-14 would have been obvious. We do not sustain the rejection. DECISION For the above reasons, the Examiner’s decision is reversed. REVERSED hh 1 While the Examiner’s Answer corrected an obvious typographical omission in the rejection (Fin. Rej. 2, last sentence) to clarify how Landvik was applied in the rejection of claim 9 (Ans. 4), the rejection does not propose any modification to Schwartz to position a mattress topper system atop a mattress.