Ex Parte Goldman et al

Patent Trial and Appeal Board

Aug 4, 2016

13947787 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/947,787 07/22/2013 Amber I. Goldman
30764 7590 08/08/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
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.
0100-092067 8561
EXAMINER
DUNN, DAVID R
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
DOCKETING@SHEPPARDMULLIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMBER I. GOLDMAN, ANDREA SOTO-CAMACHO, and
KAREN G. STASH
Appeal2014-006300
Application 13/947,787
Technology Center 3600
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Amber I. Goldman et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 1--4, 6-17, and 19 in
this application. 2 The Board has jurisdiction over the appeal under 35
U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Appellants as the real parties in interest. Br. 1.
2 There is no rejection of claims 5 and 18 for us to review. See Final Act.,
Form PTOL-326 ("Office Action Summary") Item #8, and pg. 9.
Appeal2014-006300
Application 13/947 ,787
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1 illustrates the subject
matter on appeal, and it recites:
1. A bean bag chair comprising:
an upper flexible bag forming an upper compartment;
an adaptable filler material disposed within the upper
compartment; and
a lower flexible bag secured to the upper flexible bag and
forming a lower compartment;
wherein the upper compartment extends over substantially
all of the lower compartment;
wherein the lower compartment is sized and configured to
receive and store a plurality of articles of varying size, shape, and
hardness;
wherein the lower flexible bag defines a closable opening
for allowing the plurality of articles to be inserted into, and
removed from, the lower compartment;
and wherein the bean bag chair is sized and configured to
conformably support a person's seat and back, simultaneously,
in a -variet}' of seated positions.
Appeal Br. 12 (Claims App.) (emphasis added).
REJECTIONS ON APPEAL
Claims 1-3, 7, and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Smith (US 4,914,765, iss. Apr. 10, 1990).
Claims 4 and 8-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith and Frey (US 4,096,929, iss. June 27, 1978).
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Smith and Ariizumi (US 6,899,387 B2, iss. May 31, 2005).
Claims 13, 14, 16, 17, and 19 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Frey.
2
Appeal2014-006300
Application 13/947 ,787
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Frey and Ariizumi.
ANALYSIS
A. Anticipation by Smith
In rejecting claim 1, the Examiner finds, inter alia, Smith "discloses a
bean bag chair" via Smith's pillow P. Final Act. 4; Smith, Figs. 1-3. The
Examiner finds Smith's pillow Pis "sized and configured to conformably
support a person's seat and back, simultaneously, in a variety of seated
positions (the disclosed bag is capable of supporting a person in said
configuration)." Final Act. 4. The Examiner determines claim 1 is "silent
with regards to the size of the person," and Smith's pillow Pis capable of
supporting a small child's or infant's seat and back, simultaneously, in a
variety of seated positions. Ans. 2. Further according to the Examiner,
Smith's pillow P "could be propped up against a wall or simply laid on the
ground and still meet'; the size and configuration limitation of claim 1. Final
Act. 2. The Examiner finds Smith, in stating pillow P "may be used as a
head support" (Smith, 1: 10 (emphasis added)), indicates pillow P may be
used in manners other than as a head support. Id.
Appellants contend the Examiner errs in finding Smith's pillow P
satisfies the size and configuration limitation of claim 1. Br. 4---6.
Appellants assert a person could "sit" on pillow P to support the
person's "seat," or the person could "lie supine" on pillow P to support the
person's "back," but the person could not do both simultaneously. Id. at 5
(emphases removed). Appellants assert Smith discloses pillow P being used
solely to support only a person's head. Id. In particular, according to
Appellants, Smith's pillow Pis sized to support a person's head and to allow
3
Appeal2014-006300
Application 13/947 ,787
compact, easy transport. Id. at 4--5 (citing Smith, Abstract, 1:5-11, 1:63---67,
4: 1-3, 4:9-11 ). Appellants argue such a size is "substantially smaller than
what is called for by claim 1." Id.
We are persuaded a preponderance of evidence does not support the
Examiner's finding that Smith's pillow Pis sized and configured to
conformably support a person's seat and back, simultaneously, in a variety
of seated positions. The Examiner has not cited any disclosure in Smith that
would suggest pillow Pis so sized and configured. Smith's statement that
pillow P "may be used as a head support" (Smith, 1: 10), while allowing for
using pillow P for other purposes, is not sufficient evidence to support the
Examiner's finding that pillow Pis sized and configured as recited in
claim 1. The evidence indicates the only body part that Smith expressly
discloses may be supported by pillow Pis a person's head. Smith, Abstract,
1:5-11, 1:50-57, 1:67.
We appreciate claim 1 does not specify the size of the person whose
seat and back are to be supported simultaneously by the claimed bean bag
chair. Nonetheless, the Examiner's finding that Smith's pillow P satisfies
the size and configuration limitation of claim 1 is speculation that is not
supported by Smith's express disclosure that pillow Pis sized and
configured to support a person's head. "A reference may anticipate
inherently if a claim limitation that is not expressly disclosed 'is necessarily
present, or inherent, in the single anticipating reference."' In re
Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) (quoting Verizon
Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010)
and Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003)). "[I]nherency ... may not be established by probabilities or
4
Appeal2014-006300
Application 13/947 ,787
possibilities." Id. at 1380 (quoting Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661F.3d629, 639 (Fed. Cir. 2011) andin re Oelrich, 666 F.2d 578, 581
(CCPA 1981)). It does not necessarily follow from Smith's disclosure that
pillow Pis sized and configured to support a person's head, that pillow Pis
also sized and configured to conformably support a person's seat and back,
simultaneously, in a variety of seated positions, even if the person is a small
child or infant. For example, the Examiner makes no findings regarding the
size of a person's head, as disclosed by Smith, in relation to the size of an
infant's "seat" and "back" as claimed, to support a finding of inherency.
For the foregoing reasons, we do not sustain the rejection of claim 1,
and of claims 2, 3, 7, and 12 depending therefrom, as anticipated by Smith.
B. Obviousness based on Smith and either Frey or Ariizumi
The Examiner's consideration of claims 4 and 8-11, each of which
depends from independent claim 1, in light of Smith and Frey, does not
correct the deficiency of Smith in relation to claim 1 noted above. Final
Act. 6-7. We, therefore, do not sustain the rejection of claims 4 and 8-11 as
unpatentable over Smith and Frey.
The Examiner's consideration of claim 6, which depends from
independent claim 1, in light of Smith and Ariizumi, does not correct the
deficiency of Smith in relation to claim 1 noted above. Final Act. 8. We,
therefore, do not sustain the rejection of claim 6 as unpatentable over Smith
and Ariizumi.
C. Anticipation by Frey
Independent claim 13 recites a "bean bag chair" that, among other
things, "is sized and configured to conformably support a person's seat and
5
Appeal2014-006300
Application 13/947 ,787
back, simultaneously, in a variety of seated positions." Appeal Br. 13-14
(Claims App.).
In rejecting claim 13, the Examiner finds, inter alia, Frey "discloses a
bean bag chair" via Frey's multipurpose bag 11. Final Act. 5; Frey, Figs. 1-
5. The Examiner finds Frey's bag 11 is "sized and configured to
conformably support a person's seat and back, simultaneously, in a variety
of seated positions (the disclosed device is capable of supporting a person in
said configuration)." Final Act. 5. The Examiner reasons "people come in
all different sizes, and Frey is capable of performing" the supporting recited
in claim 13. Id. at 3. The Examiner particularly points to Frey's statement
that bag section 13 of bag 11 "is adapted to function as a seat cushion and is
preferably sized accordingly." Ans. 3 (quoting Frey, 2:62---63). According
to the Examiner: "Simply setting a child or baby on the cushion [in bag
section 13] would provide support for both the seat and back of that person."
Final Act. 3.
Appellants contend the Examiner errs in finding Frey's bag 11 is, as
recited in claim 13, a "chair" that is "sized and configured to conformably
support a person's seat and back, simultaneously, in a variety of seated
positions." Br. 7-8. According to Appellants: "At best, Frey's bag
section 13 can serve as a seat cushion, supporting a person's seat." Id. at 7.
Appellants further assert "Frey's multipurpose bag is intended to be portable
and handheld," which "necessitates that the bag not be sized or configured
for a very different use as a chair, conformably supporting both the seat and
the back of a person, simultaneously." Id. at 8.
We are persuaded a preponderance of evidence does not support the
Examiner's finding that Frey's bag section 13 is, as recited in claim 13, sized
6
Appeal2014-006300
Application 13/947 ,787
and configured to confonnably support a person's seat and back,
simultaneously, in a variety of seated positions. In the Answer (page 3), the
Examiner cites Frey, column 2, lines 62-63, which states bag section 13 "is
adapted to function as a seat cushion and is preferably sized accordingly."
Frey goes on to indicate "bag section 13 is made resilient by a resilient,
flexible pad 37 [that] may be constructed of various seat cushion type
materials, including foam rubber, resilient foam plastic, etc." Frey, 2:63-68.
These disclosures expressly indicate bag section 13 is sized and configured
to support a person's seat. These disclosures do not expressly indicate bag
section 13 is sized and configured, simultaneously with conformably
supporting the person's seat, additionally conformably supporting the
person's back, in a variety of seated positions. Further, it is does not
necessarily follow from these disclosures that Frey's bag section 13 is sized
and configured as set forth in claim 13.
For the foregoing reasons, we do not sustain the rejection of claim 13,
and of claims 14, 16, 17, and 19 depending therefrom, as anticipated by
Frey.
D. Obviousness based on Frey and Ariizumi
The Examiner's consideration of claim 15, which depends from
independent claim 13, in light of Frey and Ariizumi, does not correct the
deficiency of Frey in relation to claim 13 noted above. Final Act. 8. We,
therefore, do not sustain the rejection of claim 15 as unpatentable over Frey
and Ariizumi.
7
Appeal2014-006300
Application 13/947 ,787
DECISION
The Examiner's decision to reject claims 1--4, 6-17, and 19 is not
sustained.
REVERSED
8