Ex Parte Gansen et al

Board of Patent Appeals and Interferences

Jan 26, 2009

09726075 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER GANSEN
and MASSIMO LOSIO
____________

Appeal 2008-5758
Application 09/726,075
Technology Center 1700
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Decided: January 26, 2009
____________

Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 70-74. We have jurisdiction under 35 U.S.C. § 6.
The Appeal was heard on January 15, 2009.
We REVERSE.

Appeal 2008-5758
Application 09/726,075

STATEMENT OF THE CASE

Appellants claim a seat cushion comprising a covering material that is
impermeable to polyurethane gel, and a multilayered polyurethane molding
comprising a polyurethane gel layer and a polyurethane foam layer which
layers are different from and bonded to one another.
A copy of representative independent claim 70, taken from the Claims
Appendix of Appellants' Appeal Brief, is set forth below:
70. A seat cushion, comprising:

a covering material that is impermeable to polyurethane gel and which
is selected from the group consisting of leathers, films, and textiles;

a multilayered polyurethane molding positioned under the covering
material, said multilayered polyurethane molding comprising

at least one polyurethane gel layer;

at least one polyurethane foam layer, said at least one polyurethane
gel layer and said at least one polyurethane foam layer being different from
one another; and

a bond between said at least one polyurethane gel and said at least one
polyurethane foam which is formed only from said at least one polyurethane
gel and said at least one polyurethane foam.

The Examiner rejects all appealed claims under 35 U.S.C. § 102(e) as
being anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
obvious over, Kenndoff (US Patent 5,844,013 issued Dec. 1, 1998).
ISSUE
Have Appellants established error in the Examiner's determination
that Kenndoff teaches or would have suggested an article satisfying the
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Application 09/726,075

claim 70 requirement of a covering material that is impermeable to
polyurethane gel and a multilayered polyurethane molding comprising a
polyurethane gel layer and a polyurethane foam layer different from and
bonded to the gel layer?
FINDINGS OF FACT
It is undisputed that Kenndoff discloses wound dressings comprising
hydrophilic polyurethane gel foams (Abstract) which can be applied to
backing materials (col. 10, ll. 6-14) ", for example, plastic and metal sheets,
mats, nonwoven, knitted or woven fabrics of organic or inorganic fiber
material, paper and foams sheets or also combinations of these backing
materials" (col. 10, ll. 15-18). As such backing materials, "[p]olyurethane
sheets are particularly preferred" (col. 10, l. 23).

PRINCIPLES OF LAW
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Brothers, Inc. v. Union Oil Co., 814 F.23d 628,
631 (Fed. Cir. 1987).
For a § 102 rejection to be proper, the applied reference must clearly
and unequivocally disclose the claimed invention or direct those skilled in
the art to the invention without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the reference. In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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Application 09/726,075

obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR v. Teleflex, 127 S. Ct. 1727, 1741 (2007).
ANALYSIS
Concerning the § 102 rejection, Appellants argue, inter alia, that
Kenndoff does not disclose the claim 70 requirement of a covering material
which is impermeable to polyurethane gel and a multilayered polyurethane
molding comprising a polyurethane gel layer and a polyurethane foam layer
which is different from the gel layer (Br. 13). We agree.
Apparently, the Examiner finds these limitations to be satisfied by
Kenndoff's disclosure of polyurethane gel foam (i.e., the here-claimed
polyurethane gel layer) applied to a combination of backing materials
comprising polyurethane sheets (i.e., the here-claimed covering material)
including foam sheets (i.e., the here-claimed polyurethane foam layer) (Ans.
3-4; cf., 5-6). However, the Examiner has not explained on this record why
the Kenndoff reference is thought to clearly and unequivocally disclose this
combination of claim limitations without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of Kenndoff. For this reason, the Examiner’s finding of
anticipation is erroneous.
In rejecting the appealed claims under § 103, the Examiner concludes
that "it would have been obvious for one having ordinary skill in the art to
have employed combinations of the backing materials of Kenndoff . . .
within the teachings of Kenndoff . . . for the purpose of imparting their
structural effects in order to arrive at the products of [A]ppellants' claims
with the expectation of success in the absence of a showing of new or
unexpected results" (Ans. 6). Apparently, the Examiner believes that
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Application 09/726,075

Kenndoff's disclosure at lines 10-24 in column 10 would have suggested a
combination of backing materials including polyurethane sheets and foams
(Ans. 5) which would satisfy the covering material and polyurethane foam
layer limitations of claim 70. However, we agree with Appellants that the
Examiner has erred in determining Kenndoff would have suggested these
claim 70 limitations (Br. 17-19).
The Examiner has failed to provide the record before us with
articulated reasoning with rational underpinning to support the legal
conclusion that the subject matter defined by claim 70 would have been
obvious to one with ordinary skill in this art. In this regard, we observe that
the Examiner has not even addressed the argued claim 70 requirement of a
covering material which is "impermeable to polyurethane gel," much less
articulated any reasoning with rational support for concluding that it would
have been obvious to provide the dressing of Kenndoff with a covering
material having the claimed impermeability characteristic. Similarly, while
it is true that Kenndoff teaches the use of foam sheets as backing materials,
the Examiner has not specifically and rationally explained why an artisan
would have not only selected foam sheets as backing material, but also
would have formed this foam sheet from polyurethane and bonded the
resulting polyurethane foam sheet to patentee's polyurethane gel foam. In
the absence of such explanation, no basis exists for an obviousness
conclusion concerning the claim 70 requirement of a polyurethane gel layer
bonded to a polyurethane foam layer.
CONCLUSIONS OF LAW
Appellant has established error in the Examiner's determination that
Kenndoff teaches or would have suggested an article satisfying the claim 70
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requirement of a covering material that is impermeable to polyurethane gel
and a multilayered polyurethane molding comprising a polyurethane gel
layer and a polyurethane foam layer different from and bonded to the
polyurethane gel layer.
Accordingly, we cannot sustain the Examiner's §§ 102/103 rejections
of claims 70-74 over Kenndoff.
ORDER
The decision of the Examiner is reversed.
REVERSED

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