Ex Parte Oh

Patent Trial and Appeal Board

Jan 30, 2019

13780100 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/780,100 02/28/2013 Suk Kan Oh
47713 7590 01/30/2019
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ZIN-028 9342
EXAMINER
KURILLA, ERIC J
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
01/30/2019 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 PATENT TRIAL AND APPEAL BOARD
Exparte SUK KAN OH 1
Appeal2017-011050
Application 13/780, 100
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the rejection
of claims 1-8 which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
1 According to Appellant, the real party in interest is Zinus, Inc. (App. Br. 1 ).
Appeal2017-011050
Application 13/780,100
THE INVENTION
The Appellant's claimed invention is directed to a zoned foam
mattress (Spec., para. 1 ). Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A mattress comprising:
an upper foam layer with a wavy lower side having a top
upside-down hill; and
a lower foam layer with a wavy upper side, a center plane, a top
and a bottom, wherein the wavy lower side of the upper foam layer is
adjacent to the wavy upper side of the lower foam layer, wherein the
lower foam layer has a top lateral valley, a middle lateral valley and a
bottom lateral valley, wherein the top upside-down hill of the upper
foam layer fits into and is adjacent to the top lateral valley of the
lower foam layer, wherein the top lateral valley has a minimum
located between twelve and eighteen inches from the top of the lower
foam layer, wherein the bottom lateral valley has a minimum located
within eighteen inches of the bottom of the lower foam layer, and
wherein the center plane intersects the lower foam layer at a minimum
of the middle lateral valley.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-5 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Persicke (US 3,026,544, issued Mar. 27, 1962).
2. Claims 1-8 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Apperson (US 2006/0260060 Al, published Nov. 23,
2006).
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Appeal2017-011050
Application 13/780,100
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
The Appellant argues that the rejection of claim 1 under Persicke is
improper because the cited prior art does not teach:
(i) a mattress whose upper foam layer has a wavy lower side that is
adjacent to a wavy upper side of a lower foam layer, or
(ii) a lower foam layer of a mattress with its top lateral valley located
within 12-18 inches of the top of the foam layer of the mattress
(App. Br. 5, Reply Br. 5). The Appellant argues that Persicke in Fig. 1 does
not teach a mattress but rather a method of making a structure and the
completed upholstery structure shown in Fig. 3 (App. Br. 6). The Appellant
also argues that Persicke does not teach the specifically claimed distance of
12-18 inches between the top of the foam layer and its top lateral valley
(App. Br. 10-15).
In contrast, the Examiner had determined that the rejection of record
is proper (Non-Final Act. 5-8, Ans. 2-6). The Examiner has determined
that there is "no criticality for using the claimed range of 12-18 inches" and
that this range does not provide any unexpected results or benefits (Ans. 4).
We agree with the Appellant that the disclosure of Persicke does not
show a mattress with its upper foam layer having a wavy lower side that is
adjacent to a wavy upper side of a lower foam layer. Persicke's disclosure
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2017-011050
Application 13/780,100
in Figure 1 is an intermediate production step but not the completed
upholstery product. Regardless, the Examiner has also determined that the
claimed dimension of 12-18 inches has "no criticality" and is a range where
the dimensions are obvious changes in size (Ans. 5). However, the
Specification at paragraph 27-30 sets forth reasons for the particular claimed
dimensions of the foam layers, and the limitation is given patentable weight.
Further, Persicke is directed to "upholstery structures" and not specifically a
mattress, and it is unclear that such a large distance of at least 12 inches
would be required for "upholstery". That is, it is unclear that there would be
a reason to modify "upholstery" (such as chairs and sofas) to have such a
large claimed distance within "12-18 inches" in the cited rejection. Here,
the rejection of record made under 35 U.S.C. § 103(a) as unpatentable over
Persicke lacks rational underpinnings with articulated reasoning without
impermissible hindsight, and the rejection of record is not sustained.
The Appellant makes similar arguments for the rejection of claim 1
made under the Apperson reference (App. Br. 18-21 ).
We have reviewed the rejection of record made using the Apperson
reference, and we agree with the Appellant's arguments in this regard as
well. We have fully considered the Examiner's rationale set forth in the
Answer at pages 6-8 but do not deem the rejection of record to be proper.
Apperson at Figure 3, for instance, does disclose an upper foam layer with a
wavy lower side that is adjacent to a wavy upper side of a lower foam layer.
The Specification at paragraph 27-30 as noted above does set forth reasons
for particular dimensions of the foam layers and the limitation is given
patentable weight. However, Apperson at paragraph 3 discloses it is related
to a "mattress topper system ... for customized installation over a sleeping
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Appeal2017-011050
Application 13/780,100
mattress," and it is unclear that such a large particular claimed depth of 12-
18 inches would be used in such a mattress topper. Here, the rejection of
record made under 35 U.S.C. § 103(a) as unpatentable over Apperson lacks
rational underpinnings with articulated reasoning without impermissible
hindsight, and this rejection of record is not sustained.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over Persicke.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over
Apperson.
DECISION
The Examiner's rejection of claims 1-8 is reversed.
REVERSED
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