Ex Parte Chapman et al

Patent Trial and Appeal Board

Oct 25, 2017

12644311 (P.T.A.B. Oct. 25, 2017)

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.
12/644,311 12/22/2009 Linda J. Chapman 0621.1490C 6132
27896 7590 10/27/2017
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
ABRAHAM, TANIA
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
10/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAN-CHUNG WU and KUO-HUA TUNG
Appeal 2016-002516
Application 12/644,311
Technology Center 3600
Before JEAN R. HOMERE, JASON V. MORGAN, and
JON M. JURGOVAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—4, 6—8, 10-16, and 18—20, which constitute all claims pending in
this application. Claims 5 and 17 have been canceled. Claims App’x.
Claim 9 has been objected to for its dependence upon a rejected base claim,
but would otherwise be allowable if rewritten in independent form to include
the limitations of the base claim and any intervening claims. Final Act. 15.
We have jurisdiction under 35 U.S.C. § 6(b).1
We affirm.
1 Appellants identify the real party in interest as Mattel, Inc. App. Br. 3.
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Application 12/644,311
Introduction
According to Appellants, the claimed subject matter is directed to a
portable and collapsible rocking infant support (100) including a frame
assembly (110) supporting an infant seat assembly (120). Spec. 2, 28,
Fig. 1. Specifically, the frame assembly (110) includes a first frame member
(210) pivotally coupled to a second frame member (215) via a pair of hub
assemblies (250, 255). Id., Figs. 2, 4A—C. The footers (235A, 235B) of
each frame member are curved to permit the frame assembly (120) to rock
longitudinally along a supporting surface. Id. Tflf 29—31, Figs. 2. The seat
assembly (120) includes angled portions that form an offset support. Id. 14.
The seat assembly (120) further includes a substantially rigid or resilient
support brace (800) or insert member to maintain its side walls (710, 715) in
spaced relation when an infant is positioned on the seat thereby providing
adequate support to the infant’s back and neck. Id. Tflf 55—59, Figs. 7A, 8A,
and 8B.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. An infant support stmcture, comprising:
a frame assembly including:
a first frame member, and
a second frame member pivotally coupled to the
first frame member, each of the first frame member and
the second frame member including a footer configured
to rock on a support surf ace;
an infant support portion coupled to the frame, the
support portion defining a receptacle in which an infant may be
placed, the support portion comprising a first end, a second end
opposite to the first end, a first side, and a second side opposite
to the first side, the first side being coupled to the first frame
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Application 12/644,311
portion, the second side being coupled to the second frame
portion, the support portion having a lowermost point, the
lowermost point being located closer to the second end than to
the first end; and
an insert member, the insert member disposed proximate
to the infant support portion, the insert being configured to
maintain the first side and the second side spaced apart when an
infant is placed in the receptacle.
Rejections on Appeal
Claims 1—4, 6, 16, and 18—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Cunningham (US 5,269,587;
Dec. 14, 1993), May (US 2,916,744; Dec. 15, 1959), and Tam (US
5,662,380; Sept. 2, 1997). Final Act. 3-6, 12-15.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cunningham, May, Tam, and Shepler
(US 5,694,655; Dec. 9, 1997). Final Act. 6-8.
Claims 8 and 10-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of May and Tam. Final Act. 8—11.
ANALYSIS
We consider Appellants’ arguments seriatim, as they are presented in
the Appeal Brief, pages 16—37, and the Reply Brief, pages 1—14.2 We are
unpersuaded by Appellants’ contentions. Except, as otherwise indicated
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed April 27, 2015) (“App. Br.”), the Reply Brief
(filed December 22, 2015), the Final Rejection (mailed August 26, 2014)
(“Final Act.”), and the Answer (mailed October 22, 2015) (“Ans.”) for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
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hereinbelow, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellants’ Appeal
Brief. Final Act. 3—16; Ans. 2—8. However, we highlight and address
specific arguments and findings for emphasis as follows.
Appellants argue that the disclosure of an infant seat with a flexible
cradle attached to a collapsible frame in both Cunningham and May fails to
provide the proper support needed for the infant’s back and neck. App. Br.
17—20. Therefore, Appellants argue that Cunningham and May teach away
from “adding any sort of rigid support to the fabric cradle, much less one
that maintains the width of the seating area.” Id. at 25. According to
Appellants, “adding such a support would destroy the essence of those
inventions because, e.g., the cradle would no longer be able to constantly
flex and adapt to the infant, and would not allow the folded fabric cradle to
collapse into the same plane as the support frame when folded.” Id.
Further, Appellants argue even if Cunningham, and May were combined
with Tam, the proposed combination would not overcome the noted
deficiencies because the seats of Tam’s stroller do not provide the support
needed for the infant’s back and neck. Id. at 25—26. Accordingly,
Appellants submit that the proposed combination of references does not
teach or suggest an “insert member disposed proximate to the infant support
portion, the insert being configured to maintain the first side and the second
side spaced apart when an infant is placed in the receptacle” as recited in
independent claim 1. Id. at 26—29. These arguments are not persuasive.
At the outset, we note that although the claim recites an infant support
defining a receptacle in which an infant may be placed, it does not recite that
the infant support is configured to provide adequate to support to the infant’s
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back and neck, as argued by Appellants. Likewise, while the claim recites
an insert member configured to maintain the first side and the second side
(of the infant seat) spaced apart when an infant is placed in the receptacle, it
does not require that the insert member maintain the width of the seating
area, as argued by Appellants. Therefore, Appellants’ arguments with
respect the alleged functionality of the infant support, and insert member are
not commensurate with the scope of the claim. Further, we agree with the
Examiner that the disclosure of a flexible fabric cradle in Cunningham and
May does not teach away from adding any sort of rigid support to the fabric
cradle. Ans. 2—3. As correctly noted by the Examiner, Appellants have not
proffered any portion of Cunningham or May that discourages, criticizes or
otherwise discredits the insertion of such a rigid support into the flexible
cradle.3 Id. Likewise, we do not agree with the Appellants that adding such
a support to the fabric cradle would destroy the essence of Cunningham and
May. The argument that the proposed combination of references would
render one of the references unsuitable for its intended purpose, or would
change its principle of operation, is a teaching away argument. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in
effect, “French teaches away from the board’s proposed modification”
because “if the French apparatus were turned upside down, it would be
3 The Federal Circuit has held “‘[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. ’” In
re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994))
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rendered inoperable for its intended purpose”).4 We, thus, echo the
Examiner’s finding that the flexibility of the cradle disclosed in both
Cunningham and May would not be negated by encasing the rigid battens in
the fabric, as suggested by Tam, because the ordinarily-skilled artisan would
appreciate that the proposed combination would predictably result in a
cradle, which is both flexible and capable of providing sufficient support
when an infant is placed therein. Ans. 3. Additionally, we agree with the
Examiner that the disclosure in Cunningham and May of the first side and
the second side of the infant seat being fastened to the spaced apart first
support member and second support member, respectively, teaches or
suggests that the two sides of the seat supported by the encased rigid battens
would remain spaced apart along the defined width thereof, which is
maintained when an infant is placed therein. Id. at 3^4. For at least the
aforementioned reasons, we are not persuaded or error in the Examiner’s
rejection of claim 1.
Regarding the rejection of claims 2—4, 6—8, 10-16, and 18—20, to the
extent Appellants have either not presented separate patentability arguments
or have reiterated substantially the same arguments as those previously
discussed for patentability of claim 1 above, those claims fall therewith. See
4 “If references taken in combination would produce a ‘seemingly
inoperative device, ’ . . . such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness.”
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)
(citation omitted); see also In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007) (“a reference teaches away from a combination
when using it in that combination would produce an inoperative result,” but
the obviousness analysis must account for “modifications that one skilled in
the art would make to a device borrowed from the prior art”).
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37 C.F.R. § 41.37(c)(l)(iv) (2014). Further, to the extent Appellants have
raised additional arguments for patentability of these claims, we find that the
Examiner has rebutted in the Answer each and every one of those arguments
by a preponderance of the evidence. Ans. 4—8. We adopt the Examiner’s
findings and underlying reasoning, which we incorporate herein by
reference. Because Appellants have failed to persuasively rebut the
Examiner’s findings regarding the rejections of claims 2—4, 6—8, 10-16, and
18—20, Appellants have failed to show error in the Examiner’s rejection of
these claims.
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1^1, 6-8, 10-16, and 18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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