Ex Parte Todd

Board of Patent Appeals and Interferences

Feb 28, 2007

10178845 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ROBERT M. TODD
___________

Appeal 2006-3291
Application 10/178,845
Technology Center 3600
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Decided: February 28, 2007
___________

Before ROBERT E. NAPPI, LINDA E. HORNER and ANTON W. FETTING,
Administrative Patent Judges.
ANTON W. FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
This appeal involves claims 1, 2, 4-13 and 21-241, the only claims pending and
remaining under consideration in this application. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 134.

We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

Appeal Number: 2006-3291
Application Number: 10/178,845

The appellant invented a seat or seat attachment which neutralizes the injurious
effect of a law enforcement officer’s duty belt on the lower back (Specification 1).
An understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. A duty belt seat accessory for use with a bench vehicle seat having
a seat back and a seat bottom, the seat accessory comprising:
a bottom edge portion;
a thoracic2 upper back portion having a substantial thickness;
a lumber [sic. lumbar3] lower back portion disposed between
the bottom edge portion and the thoracic upper back portion and
having a thickness less than the thickness of the thoracic upper back
portion, thereby creating a concavity adjacent the bottom edge portion
and positioned so as to be behind the lumber [sic. lumbar] spine of a
user seated on the seat bottom and against the seat accessory, to
accommodate an equipped duty belt and to relieve pressure on the
lumber [sic. lumbar] back caused by equipped duty belt, the concavity
extending laterally across the lumbar lower back portion such that no
portion of the concavity between the thoracic upper back portion and
the bottom edge portion presses against a part of the user below the
belt when the user is wearing the duty belt and sitting against the seat
accessory in a normal seating position; and,
a support device configured to support the seat accessory such
that the bottom edge portion is maintained against the seat back and
adjacent to the seat bottom of the vehicle seat.

1 Claim 3 is cancelled and claims 14-20 have been withdrawn from consideration.
2 Thoracic – Related to the chest (Merriam Webster)
3 Lumbar – Related to the lower back (Merriam Webster)
2

Appeal Number: 2006-3291
Application Number: 10/178,845

This appeal arises from the examiner’s final rejection, mailed July 21, 2005.
The appellant filed a brief in support of the appeal on October 24, 2005, and the
examiner mailed an answer to the appeal brief on January 6, 2006. The appellant
requested an oral hearing, and the case was heard on February 13, 2007.
PRIOR ART4
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Izumida US 4,883,320 Nov. 28, 1989
Vento US 5,441,331 Aug. 15, 1995
Davis US 5,456,519 Oct. 10, 1995
MacKenzie US 5,868,463 Feb. 09, 1999
Riach, Jr. US 2002/0068847 Jun. 6, 2002
(Dec. 5, 2000)

REJECTIONS5
Claims 1, 4 and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Davis.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over Davis and
MacKenzie6.

4 The examiner failed to list these references as required (MPEP § 1207.02(A)(8))
in the Evidence Relied Upon section (Answer 3), but did refer to Davis in the
Grounds of Rejection (Answer 4-5). The examiner referred to all of these
references in the Final Rejection pp. 3-8.
5 The examiner withdrew a rejection against claims 1, 2 and 4-13 under 35 U.S.C.
§ 112, first paragraph (Answer 2).
3

Appeal Number: 2006-3291
Application Number: 10/178,845

Claims 5-8 and 11-13 stand rejected under 35 U.S.C. § 103(a) as obvious over
Davis and Vento.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over Davis, Vento
and Izumida.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over Davis,
Vento and Riach.
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as obvious over Davis.

ISSUES
The issues pertinent to this appeal are
• Whether Davis shows a seat having a concavity extending laterally across
the lumbar lower back portion such that no portion of the concavity between
the thoracic upper back portion and the bottom edge portion presses against
a part of the user below the belt when the user is wearing a duty belt and
sitting against the seat in a normal seating position.
• Whether Davis shows or suggests a concavity about 10 inches high.
• Whether Davis shows or suggests a concavity about 4 inches deep.
In particular, the appellant contends that Davis’s sacral counter pressure pad
(Fig. 2, Ref. 24), located in Davis’s lumbar concavity, would press against the

6 Not argued in the Brief or Answer.
4

Appeal Number: 2006-3291
Application Number: 10/178,845

user’s sacrum7 below the belt (Br. 11-12), and that Davis has no showing of
concavity dimensions of about 10 inches high or 4 inches deep (Br. 14).

FACTS PERTINENT TO THE ISSUES
Claim 1 is directed to a seat device. Therefore, it is defined by its structure.
The structural elements of claim 1 include:
• A bottom edge portion.
• An upper portion having a substantial thickness. This portion is intended for
the upper back and therefore must be capable of touching the upper back.
• A portion between the bottom edge portion and the upper portion having a
thickness less than the thickness of the upper portion
• The lower portion must be structurally positioned to create a concavity so
that no portion of the concavity between the upper back portion and the
bottom edge portion presses against a part of a user below a duty belt when
the user is wearing the duty belt and sitting against the seat accessory in a
normal seating position.
A concavity is a concave line, surface or hollow (Merriam Webster).
The structure of the lower portion is defined relative to where a user positions a
belt, in particular, where the lower edge of the belt is on the user’s back, when the
user sits against the claimed seat device in a normal seating position.

7 The triangular segment of the spinal column that forms part of the pelvis and
closes in the pelvic girdle posteriorly, is formed between the ages of 16 and 25 by
the fusion of five originally separate sacral vertebrae, and articulates with the last
lumbar vertebra, the coccyx, and the hipbone on either side. (Stedman’s Medical)
5

Appeal Number: 2006-3291
Application Number: 10/178,845

This structure is defined, therefore, by the anatomical structure of a seat device
user, and by where that user positions a worn belt, in particular, where the lower
edge of the belt is on the user’s back. Both the user’s position with respect to the
seat and the belt position are variable by user.
The difference in height between where a large person with substantial hip
width and buttocks would position the lower edge of a belt and where a petite
person with diminutive hip width and buttocks would so position a belt is at least
several inches.
A duty belt rests on the user’s hips and buttocks so that its lower edge would
generally be worn at a height relatively close to where the wearer’s sacrum begins.
The height along the seat at which a large person’s sacrum would begin would
therefore be above the position at which a petite person’s sacrum would begin, and
thus the position at which a petite person would position the lower edge of a belt.
Davis shows a seat device whose back has an upper portion with substantial
thickness that forms a pillow (fig. 4, ref. 44 and col. 4, l. 63 to col. 5, l. 12).
Davis indicates that the intended use of the pillow is lumbar support (col. 5, ll.
6-7). This statement of intended use does not alter the structural description of the
upper portion.
The upper portion of Davis’s seat would touch different users at different parts
of the back, and in particular, once Davis’s seat was positioned to support a large
person, even were that large person to position the pillow in the lumbar region, a
significantly smaller person would encounter that pillow in the thoracic region
instead, absent any further adjustment of the seat.
6

Appeal Number: 2006-3291
Application Number: 10/178,845

Davis shows a lower portion of the seat back having a thickness less than that
of the upper portion. In particular, Davis describes the upper pillow as being 2.5”
thick and the lower portion being ¾” thick (col. 6, ll. 24-27).
This lower portion surface, by virtue of being lower than the upper portion,
creates a concave, hollow surface, and so creates a concavity.
Davis’s lower portion has a sacral counter pressure pad, whose location is
fixed, but positioned based on anatomical average measurements. The pad is
trapezoidal in shape with an upper width of about 3.5” and a lower width of about
1.5” and is no more than ½” thicker than the remainder of the lower back portion
(col. 6, ll. 28-35).
Therefore, even the overall sacral counter pressure pad thickness of 1.25” is
less thick than Davis’s 2.5” thick upper portion pillow.
Davis does not indicate the height of the sacral counter pressure pad on the
lower portion, but Davis does show that the height of the seat back, and therefore
the pillow, sacral counter pressure pad, and concavity, are adjustable using hook
and loop fasteners (col. 6, ll. 14-18).
The sacrum on a substantially larger user would be substantially higher on
Davis’s seat back than the sacrum on a substantially smaller user.
Therefore, a substantially larger user would adjust Davis’s seat back higher
than would a substantially smaller user.
It is commonplace for one user to accept the existing position of a seat rather
than readjust the seat after a different user sat in the seat. Although Davis
describes adjusting the seat, implicit in the use of Davis’s seat is the reality that
some users simply will not make the adjustment.
7

Appeal Number: 2006-3291
Application Number: 10/178,845

Davis’s sacral counter pressure pad would thus be at different heights for
different users, and in particular, once Davis’s seat was positioned to support a
large person, even were that large person to position the pad in the sacrum region,
a significantly smaller person would encounter that pad above that region instead,
absent any further adjustment of the seat.
Davis describes the height of the seat back as 17”, the height of the upper
portion as 4”, the depth of the upper portion as 2.5” and the depth of the lower
portion as .75”. (col. 6, ll. 19-27).

ANALYSIS
Claims 1, 4 and 24 rejected under 35 U.S.C. § 102(b) as anticipated by Davis.
We note that the appellant argues these claims as a group8. Accordingly, we
select claim 1 as representative of the group.
The examiner found that the claim limitation describing the structure of the
lower portion of the seat in claim 1 contains a limitation of intended use because
the size of the lower portion is described in terms of the user and where the user
locates a worn belt (Answer 6). That is, the claimed concavity is positioned so as
to fulfill an intention of not touching a particular user, not in an objectively
specified location.
As the above facts demonstrate, the height of Davis’s back portion, below the
sacral counter pressure pad will be substantially higher for a larger user than a
smaller user. The height at which the sacrum of a large person with substantial hip

8 Although the appellant states that claim 4 defines over Davis on its own merits
(Br. 13), the appellant does not present any argument supporting this statement.
8

Appeal Number: 2006-3291
Application Number: 10/178,845

width and buttocks would begin would be above the height at which the sacrum of
a petite person with diminutive hip width and buttocks would begin, and thus
above the height of the position the lower edge of a belt on a petite person.
Therefore, a smaller user, such as a law enforcement officer, absent any
adjustment, such as might occur when joining a chase in hot pursuit, would find
that no portion of Davis’s lower portion touched the officer below the belt.
Therefore, the limitations of the seat device in claim 1 would be met by a
foreseeable user, thus anticipating claim 1.
We note that a similar conclusion would follow an analysis based on the
overlap of ranges of foreseeable user sizes with the range of potential heights of
Davis’s lower back portion.
Accordingly, we sustain the examiner's rejection of claims 1, 4 and 24 under
35 U.S.C. § 102(b) as anticipated by Davis.

Claim 2 rejected under 35 U.S.C. § 103(a) as obvious over Davis and MacKenzie.
This claim depends from claim 1 and is not separately argued, nor even
referred to in the Grounds Of Rejection To Be Reviewed On Appeal (Br. 8).
Accordingly, we summarily sustain the examiner's rejection of claim 2 under 35
U.S.C. § 103(a) as obvious over Davis and MacKenzie.

Claims 5-8 and 11-13 rejected under 35 U.S.C. § 103(a) as obvious over Davis
and Vento.
These claims depend from claims 1 and 6 and are not separately argued, nor
even referred to in the Grounds Of Rejection To Be Reviewed On Appeal (Br. 8).
9

Appeal Number: 2006-3291
Application Number: 10/178,845

Accordingly, we summarily sustain the examiner's rejection of claims 5-8 and 11-
13 under 35 U.S.C. § 103(a) as obvious over Davis and Vento.
Claim 9 rejected under 35 U.S.C. § 103(a) as obvious over Davis, Vento and
Izumida.
This claim depends from claim 6 and is not separately argued, nor even
referred to in the Grounds Of Rejection To Be Reviewed On Appeal (Br. 8).
Accordingly, we summarily sustain the examiner's rejection of claim 9 under 35
U.S.C. § 103(a) as obvious over Davis, Vento and Izumida.

Claim 10 rejected under 35 U.S.C. § 103(a) as obvious over Davis, Vento and
Riach.
This claim depends from claim 6 and is not separately argued, nor even
referred to in the Grounds Of Rejection To Be Reviewed On Appeal (Br. 8).
Accordingly, we summarily sustain the examiner's rejection of claim 10 under 35
U.S.C. § 103(a) as obvious over Davis, Vento and Riach.

Claims 21-23 rejected under 35 U.S.C. § 103(a) as obvious over Davis.
Davis’s concavity of 2.5” - .75” = 1.25” is less than one third of the claimed 4”
and Davis’s lower portion height of 17” – 4” = 13” is 30% more than the claimed
10”. These differences are more than that which is reasonably conveyed by the
limitation of “about” in claims 21-23.
Accordingly, we do not sustain the examiner's rejection of claims 21-23 under
35 U.S.C. § 103(a) as obvious over Davis.
10

Appeal Number: 2006-3291
Application Number: 10/178,845

NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(B)
Pursuant to 37 CFR § 41.50(b), we enter the following new grounds of
rejection:
Claims 1, 2, 4-13, 22 and 24 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which the applicant regards as his invention.
More particularly, independent claim 1 has a limitation that no portion of the
concavity between the thoracic upper back portion and the bottom edge portion of
the claimed seat device presses against a part of the user below the belt when the
user is wearing a duty belt and sitting against the seat accessory in a normal seating
position. The height of this concavity is totally subjective to each individual
obviating any possibility of pointing out the scope of the claims with any degree of
particularity.
This being the case, whether [a seat] was covered by the claim would
be determined not on the basis of the structural elements and their
interrelationships, as set forth in the claim . . . . This would give rise to
an uncertainty in the interpretation of the claims, which we believe to
be exactly what the requirements of 35 USC 112, second paragraph,
seek to avoid.
Ex parte Brummer, 12 USPQ2d 1653, 1655 (Bd. Pat. App. & Inter. 1989)
(affirming a rejection under § 112, second paragraph, for a claim directed to a
bicycle designed for a rider because no evidence was made of record that a known
standard exists in the field of bicycle manufacturing for sizing a bicycle to a rider).
Also, reference to undefined standards, regardless of whose views might
influence the formation of those standards, fails to provide any direction to one
skilled in the art attempting to determine the scope of the claimed invention.
11

Appeal Number: 2006-3291
Application Number: 10/178,845

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed.
Cir. 2005).
The remaining claims under this rejection depend from claim 1 and therefore
incorporate the same indefiniteness. Claims 21 and 23 provide an objective
measurement for the height, and therefore do not share this indefiniteness.
REMARKS
If prosecution continues, the examiner should consider whether the open ended
transition “comprising” in claim 1, admits of a construction in which Davis’s lower
back portion, excluding the sacral counter pressure pad, reads on the claimed
concavity, with the sacral counter pressure pad being an additional feature of Davis
mounted within the concavity. Under such a construction, no part of such a
concavity would touch the user because the sacral counter pressure pad would not
be part of the concavity.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1, 4 and 24 under 35 U.S.C. § 102(b) as anticipated
by Davis is sustained.
• The rejection of claim 2 under 35 U.S.C. § 103(a) as obvious over Davis and
MacKenzie is sustained.
• The rejection of claims 5-8 and 11-13 under 35 U.S.C. § 103(a) as obvious
over Davis and Vento is sustained.
• The rejection of claim 9 under 35 U.S.C. § 103(a) as obvious over Davis,
Vento and Izumida is sustained.
12

Appeal Number: 2006-3291
Application Number: 10/178,845

• The rejection of claim 10 under 35 U.S.C. § 103(a) as obvious over Davis,
Vento and Riach is sustained.
• The rejection of claims 21-23 under 35 U.S.C. § 103(a) as obvious over
Davis is not sustained.
• A new ground of rejection of claims 1, 2, 4-13, 22 and 24 under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly claim
the subject matter which the applicant regards as his invention is made under
37 CFR § 41.50(b).
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from the
date of the original decision of the Board."
In addition to affirming the examiner's rejection(s) of one or more claims,
this decision contains new grounds of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner . . . .
13

Appeal Number: 2006-3291
Application Number: 10/178,845

(2) Request rehearing. Request that the proceeding be reheard under § 41.52
by the Board upon the same record . . . .
Should the appellant elect to prosecute further before the examiner pursuant to
37 CFR § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before the examiner
unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elect prosecution before the examiner and this does not
result in allowance of the application, abandonment or a second appeal, this case
should be returned to the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART

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