Ex Parte Hardy

Board of Patent Appeals and Interferences

Jan 29, 2009

10774895 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT D. HARDY
____________

Appeal 2008-6188
Application 10/774,895
Technology Center 3600
____________

Decided: January 29, 2009
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Scott D. Hardy (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 2-32, the only claims now pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2008-6188
Application 10/774,895

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is to a structure, nominally an inflatable
crib, having a base platform, a plurality of inflatable side panels extending
vertically from and surrounding the base platform to define an enclosure,
and a protective member sealing the inner, inflatable panels from a child
placed in the enclosure. (Appeal Br., Claims Appendix, claim 11).
Claims 11 and 30, reproduced below, are representative of the subject
matter on appeal.
11. A structure comprising:

a base platform configured to support a child;

a plurality of inflatable side panels extending
vertically from and surrounding the base platform,
the base platform and side panels defining an
enclosure for the child; and

a protective member sealing the inner, inflatable
panels from the child.

30. An inflatable crib comprising:

a base platform configured to support a child;

a plurality of inflatable side panels extending
vertically from and surrounding the base platform,
the base platform and side panels defining an
enclosure for the child; and

a protective member for obstructing the child’s
access to the inflatable panels of the crib, the

2
Appeal 2008-6188
Application 10/774,895

protective member sealing the inner, inflatable
panels from the child, thereby preventing the child
from squirming or rolling into corner regions of
the crib where the risk of suffocation is higher
should the side panels deflate.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Fink US 3,137,870 June 23, 1964
Szego US 3,763,506 Oct. 9, 1973
Kohus US 4,739,527 Apr. 26, 1988
Bleser US 4,815,153 Mar. 28, 1989
Artz US 5,291,623 Mar. 8, 1994
Bashista US 5,881,408 Mar. 16, 1999

The Examiner has rejected:
(1) claims 11-14, 19-22, 24-26, and 30-32 under 35 U.S.C. § 103(a) as
being unpatentable over Szego in view of Bashista;
(2) claim 15 under 35 U.S.C. § 103(a) as being unpatentable over
Szego, Bashista, and Kohus;
(3) claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Szego, Bashista, Kohus, and Fink;
(4) claims 2-6, 8-10, 18, and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Szego, Bashista, and Artz;
(5) claims 23, 28, and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Szego, Bashista, and Bleser; and
(6) claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Szego, Bashista, Artz, and Bleser.

3
Appeal 2008-6188
Application 10/774,895

ISSUE
The Examiner found that the combined teachings of Szego and
Bashista render obvious an inflatable structure/crib having a protective
member that seals the inner inflatable panels from a child placed in the crib,
wherein the protective member is positioned in a corner region of the crib,
and wherein the protective member obstructs a child’s access to the
inflatable panels of the crib.
Appellant urges that the references do not render obvious the
provision of a protective member in a corner region of a crib to obstruct a
child’s access to the inflatable panels of the crib.
The issue joined in this appeal is: has Appellant established that the
combined teachings of Szego and Bashista fail to render obvious a
structure/crib having a protective member as claimed?

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The crib liner in the Bashista patent functions as a physical
barrier between the crib or portions of the crib and a crib occupant, to
prevent the occupant from extending his or her limbs out of the crib between
the slats. (Bashista, Figs. 1, 2; col. 1. ll. 53-55; col. 2, ll. 1-4).
FF 2. Appellant’s protective member functions as a physical barrier
between the crib or portions of the crib and the crib occupant.
(Specification, p. 5, ll. 26-27; p. 5, l. 31-p. 6, l. 1; Fig. 7).

4
Appeal 2008-6188
Application 10/774,895

FF 3. Appellant does not contest that, in a crib of the type disclosed
in Szego, as modified to include a liner as disclosed in Bashista, the liner in
the modified crib will achieve the predictable result of containing, within the
crib interior, the limbs of a child placed in the crib. Appellant instead
responds to the Examiner’s determination that Bashista in combination with
Szego yields a predictable result of containing a child’s limbs within the crib
interior by arguing that “the crib liner in Bashista does not perform the same
function as the appellant’s protective member”. (Reply Br. 4).
FF 4. The crib liner in the Bashista patent includes side panels and
end panels that extend up the interior of the side and end members of the
crib, with the adjoining edges of the side and end panels being fastened to
one another at the interior of the corners of the crib, presenting a physical
barrier or obstruction to the panels and the corner regions of the crib.
(Bashista, Figs. 1, 2; col. 4, ll. 5-6).
FF 5. The Specification describes that webbing 31 is “attached at
corner regions of the crib.” (Specification, p. 5, ll. 27-28). Fig. 7 shows the
webbing 31 attached at the regions where and at which two vertically
extending side panels 12 are joined. The webbing 31 obstructs access to the
juncture of the two panels. (Specification, p. 5, l. 26-p. 6, l. 1).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on

5
Appeal 2008-6188
Application 10/774,895

the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. 398 at ___, 127 S. Ct. at
1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
ANALYSIS
Appellant argues claims 11-14, 19-22, and 24-26 as a single group, all
claims standing or falling with independent claim 11. (Appeal Br. 5).
Appellant argues separately for the patentability of claim 30, and of claim
31, with claim 32 standing or falling with claim 31. (Appeal Br. 7-8).
Appellant presents the remaining claims under separate headings (iv)-
(viii), corresponding to the separate grounds of rejection lodged against
those claims (see (2)-(6) under the heading “THE REJECTION” above).
For these claims, Appellant expressly relies on the arguments presented for
the patentability of claim 11, and includes a statement that the reference or
references cited in addition to the Szego and Bashista patents do not cure the
alleged deficiencies in the initial combination of the teachings of those two
patents. (Appeal Br. 8-9).

Claims 11-14, 19-22, and 24-26
Independent claim 11 will be taken as the representative claim for this
group. Appellant initially argued that the rejection of claim 11 was in error,
in that the Examiner allegedly failed to identify the motivation necessary to

6
Appeal 2008-6188
Application 10/774,895

combine the teachings of Szego and Bashista, and thus the reasoning that
was set forth amounted to the use of impermissible hindsight reconstruction
of the claimed invention. (Appeal Br. 6). The Examiner responded that the
modification to the inflatable crib of Szego to include the crib liner of
Bashista is a combination that unites those known elements to yield a
predictable result, namely, the containment of a child’s limbs within the crib
interior. (Answer 12). Noting that this rationale presented by the Examiner
had its genesis in the then recently-decided KSR case, Appellant countered
that the claimed invention is more than a predictable use of prior art
elements (Reply Br. 3), and that the Examiner failed to meet the burden
imposed in the post-KSR Examination Guidelines of establishing that, in the
combination, each element merely would have performed the same function
as it did separately. (Reply Br. 4).
Appellant, in an effort to establish this latter contention (i.e., that the
Examiner’s burden was not met), contrasts the purpose or function of the
Bashista crib liner to the alleged purpose or function of the Appellant’s
claimed protective member, asserting that the functions performed by the
two are different. (Id.). That is not the proper inquiry in assessing the
propriety of the rejection; rather, the proper inquiry is whether the Bashista
crib liner will perform the same function in the Szego crib as it does in the
Bashista crib. Moreover, even if such a contrasting or comparison were
relevant, the liner disclosed in Bashista and the claimed protective member
both function as physical barriers between the crib or portions thereof and
the crib occupant (FF 1, 2), and Appellant’s assertions are unavailing.
The Examiner states that the predictable result in the combination is
that the limbs of a child placed in the Szego crib (modified to include the

7
Appeal 2008-6188
Application 10/774,895

Bashista liner) will be contained by the liner or barrier within the crib
interior (Answer 12), a point not contested by Appellant. (FF 3). That is the
same function provided by the Bashista crib liner in the Bashista crib. (FF
1). Further, as noted above, the claimed protective member operates, in the
same manner, as a physical barrier. Appellant has not established that the
Examiner failed to meet his burden of establishing a prima facie case of
obviousness. Appellant further points to no evidence or reasoning in support
of the assertion that the claimed invention involves more than the predictable
use of prior art elements. No other persuasive arguments are presented that
that attempt to establish error in the Examiner’s rejection. The rejection of
claims 11-14, 19-22 and 24-26 under 35 U.S.C. § 103(a) over Szego in view
of Bashista will be sustained.

Claim 30
Appellant contends that, in addition to the reasons advanced for the
patentability of claim 11, the Szego and Bashista references fail to disclose a
protective member that “prevent[s] the child from squirming or rolling into
the corner regions of the crib where the risk of suffocation is higher should
the side panels deflate”. (Appeal Br. 7, Claims Appendix, claim 30; Reply
Br. 4-6). The Examiner takes the position that the crib liner of Bashista as
used in the crib structure of Szego is capable of performing that function,
and that the claim does not otherwise structurally distinguish the invention
over the prior art. (Answer 12).
Appellant twice advances the argument that the Examiner has
conceded that Szego fails to teach the provision of a protective member, and
that Bashista does not contemplate the possibility of collapse of a portable

8
Appeal 2008-6188
Application 10/774,895

crib. (Appeal Br. 7; Reply Br. 5). This is nothing more than an attack on the
references individually, and is not germane to the issue of the patentability
of the claims over the combined teachings of the references. See In re
Keller, 642 F.2d 413 (CCPA 1981)(nonobviousness can not be shown by
attacking references individually where rejection is based on combination of
references).
Appellant further contends that Bashista, relied on by the Examiner as
meeting the claim elements directed to the claimed protective member, does
not disclose any structure which prevents a child from squirming or rolling
into corner regions of the crib. (Reply Br. 5). This function, according to
the language employed in claim 30, is obtained by providing a protective
member for obstructing a child’s access to the inflatable panels of the crib
and sealing the inflatable panels from the child. (Appeal Br., Claims
Appendix, claim 30). The Bashista protective liner has side panels and end
panels that extend up the interior of the side and end members of the crib,
and the adjoining edges are joined by zippers at the interior of the corners of
the crib. (FF 4). The Bashista liner thus obstructs a child’s access to the
panels of the crib at the corner regions, and seals the panels from the child.
(Id.).
Appellant points out that, in the Bashista crib, the mattress is placed
inside the liner, and that a space would exist between the crib liner and the
mattress. (Reply Br. 6). Appellant argues that this evidences that the crib
liner would not prevent the child from squirming or rolling into the corner
regions of the crib. (Id.). This appears to be an attempt by Appellant to
have an overly restrictive meaning attached to the term “corner region[s] of
the crib”. While Appellant does not provide a specific definition of “corner”

9
Appeal 2008-6188
Application 10/774,895

as it pertains to the crib, the Specification and drawings clearly convey that
the corner region of the crib is the region where two vertical side panels 11
are joined. (FF 5). As the Bashista protective liner joins the side and end
panels of the liner at the interior of the vertical corner regions of the crib, the
liner will prevent a child from accessing the corner regions of the crib.
The rejection of claim 30 as being unpatentable over Szego and
Bashista will be sustained.

Claims 31 and 32
Claim 31 depends from claim 11, and explicitly recites that the
protective member is positioned at a corner region of the structure (crib).
Appellant urges that the protective liner disclosed in Bashista “is not located
in a corner region of the crib, but is instead disposed beneath the mattress
and extends upwardly along the sides of the mattress.” (Reply Br. 7).
Appellant further asserts that persons of ordinary skill in the art would
understand, without need for a specific definition, what constitutes the
claimed “corner region” of the claimed structure. (Id.).
As noted in the preceding section, we agree with Appellant’s latter
contention that persons of ordinary skill in the art would appreciate and
understand the meaning of the term, “corner region”. Appellant’s
Specification and drawings evidence that the corner regions of the structure
are the junctures of the vertically extending side panels 12, with the
protective members 31 joined to those side panels and obstructing access to
the junctures. (FF 5). The Bashista protective liner extends along the
vertical juncture of the sides and ends of the crib, and the side and end
panels of the liner are fastened together by zippers along their edges. The

10
Appeal 2008-6188
Application 10/774,895

Bashista liner is thus indeed located at the corner regions of the crib.
Appellant’s attempt to distinguish the Bashista reference by providing a less-
than-complete description of the position and construction of the protective
liner of Bashista is unpersuasive.
The rejection of claims 31 and 32 will be sustained.

Claim 15
Claim 15 is rejected as being unpatentable over a combination of the
teachings of Szego, Bashista, and Kohus. Appellant argues that Kohus does
not cure the deficiencies alleged to be present in the combination of the
teachings of Szego and Bashista. We do not find the Szego/Bashista
combination to be deficient in rendering obvious claim 11, thus we are not
persuaded that the Examiner erred in rejecting claim 15.

Claims 16 and 17
Claims 16 and 17 are rejected as being unpatentable over Szego,
Bashista, Kohus, and Fink. Appellant argues that Kohus and Fink do not
cure the deficiencies alleged to be present in the combination of the
teachings of Szego and Bashista. We do not find the Szego/Bashista
combination to be deficient in rendering obvious claim 11, thus we are not
persuaded that the Examiner erred in rejecting claims 16 and 17.

Claims 2-6, 8-10, 18 and 27
Claims 2-6, 8-10, 18, and 27 are rejected as being unpatentable over
Szego, Bashista, and Artz. Appellant argues that Artz does not cure the
deficiencies alleged to be present in the combination of the teachings of

11
Appeal 2008-6188
Application 10/774,895

Szego and Bashista. We do not find the Szego/Bashista combination to be
deficient in rendering obvious claim 11, thus we are not persuaded that the
Examiner erred in rejecting claims 2-6, 8-10, 18, and 27.

Claims 23, 28 and 29
Claims 23, 28, and 29 are rejected as being unpatentable over Szego,
Bashista, and Bleser. Appellant argues that Bleser does not cure the
deficiencies alleged to be present in the combination of the teachings of
Szego and Bashista. We do not find the Szego/Bashista combination to be
deficient in rendering obvious claim 11, thus we are not persuaded that the
Examiner erred in rejecting claims 23, 28 and 29.

Claim 7
Claim 7 is rejected as being unpatentable over Szego, Bashista,
Artz, and Bleser. Appellant argues that Artz and Bleser do not cure the
deficiencies alleged to be present in the combination of the teachings of
Szego and Bashista. We do not find the Szego/Bashista combination to be
deficient in rendering obvious claim 11, thus we are not persuaded that the
Examiner erred in rejecting claim 7.

CONCLUSION
Appellant has not established that reversible error exists in the
rejections of claims 2-32 under 35 U.S.C. § 103(a).
ORDER
The Examiner’s decision to reject claims 2-32 is affirmed.

12
Appeal 2008-6188
Application 10/774,895

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

JRG

OCCHIUTI, ROHLICEK & TSAO, LLP
10 FAWCETT STREET
CAMBRIDGE, MASSACHUSETTS 02138

13