Ex Parte Hoffman et al

Board of Patent Appeals and Interferences

Jan 30, 2012

11291662 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/291,662 12/01/2005 D. Stephen Hoffman 4362-125 2312
20792 7590 01/31/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
NELSON JR, MILTON
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
01/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte D. STEPHEN HOFFMAN and MARCUS L. MURPHY
____________

Appeal 2010-000909
Application 11/291,662
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-5 and 7-14. Claim 6 has been cancelled.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 11/291,662

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CLAIMED SUBJECT MATTER
Claims 1, 13, and 14 are independent claims. Claim 1 is
representative of the subject matter on appeal. Claim 1 recites:
1. A reclining seating unit, comprising:
a base;
a seat;
a backrest with a skeletal backrest frame and a fabric
support deck that envelopes the backrest frame;
a reclining mechanism attached to the base, seat and
backrest; the reclining mechanism comprising a plurality of
pivotally interconnected links and being configured to move the
seat and backrest relative to the base between a fully upright
position, in which the seat is generally horizontally disposed
above the base and the backrest is generally vertically disposed
at a first angle to an underlying surface above a rear portion of
the backrest, and one or more reclined positions, in which the
backrest is disposed at a second angle to the underlying surface,
the second angle being less than the first angle.

REJECTIONS
The following Examiner’s rejections are before us for review:
claim 14 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
claims 1-5, 7-11, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Rogers I1 and Simpson2;
claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Rogers I, Simpson, and Schefthaler3; and

1 US 3,400,975, iss. Sept. 10, 1968.
2 US 7,055,911 B2, iss. Jun. 6, 2006.
3 US 3,492,045, iss. Jan. 27, 1970.
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claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Rogers II4 and Simpson.

OPINION
Rejection of claim 14 as indefinite
The Appellants do not appeal the rejection of claim 14 as being
indefinite, and are willing to amend claim 14 as suggested in the Final
Office Action. Br. 4. Thus, the rejection of claim 14 as indefinite is
summarily sustained.
Rejection of claims 1-5, 7-11, and 14 over Rogers I and Simpson
Claim 1
The Examiner finds Rogers I discloses a reclining seating unit
including a base 14, seat 16, backrest 18, and a series of links depicted in
Figure 2, that correspond to the base, seat, backrest, and reclining
mechanism, as recited in claim 1, save the fabric support deck that envelopes
the backrest frame. Ans. 4, Rogers I, col. 2, ll. 22-26, Fig. 2. The Examiner
finds that Simpson’s cover 100, 101 corresponds to the “fabric support deck
that envelopes the backrest frame” as recited in claim 1. Ans. 4, 9, 11, 12,
Simpson, col. 6, ll. 37-65. The Examiner concludes it would have been
obvious to one of ordinary skill in the art at the time of the invention to
provide Simpson’s fabric support deck 101, which envelopes a backrest
frame, on Rogers I’s chair, because “[s]ubstituting the fabric support deck
enhances user comfort while providing an aesthetically pleasing assembly
that is selectively removable for cleaning or replacement.” Ans. 5.

4 US 4,418,957, iss. Dec. 6, 1983.
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The Appellants contend that the combination of references is based on
impermissible hindsight (Br. 9), and specifically contend:
[i]t would be virtually impossible for a fabric deck
to "envelope" the wings and the rails 56 of the
backrest frame of the Rogers I chair in an
aesthetically pleasing manner while also being
"selectively removable" for cleaning and
replacement; for the Rogers I chair, these
characteristics would be mutually exclusive
because of the shape of the backrest (and in
particular the presence of the wings) of the Rogers
I chair.
Br. 8. The Appellants support this conclusion with various assertions that
the combination of Rogers I and Simpson relies on incorrect presumptions.
Br. 9.
First, the Appellants assert that Rogers I has a bulky wooden-framed
backrest 18 with wings of considerable depth. See Br. 6, 9, Rogers I, fig. 1.
However this assertion does not cogently articulate why it would be virtually
impossible for a cover of the type disclosed in Simpson to "envelope" the
wings and the rails 56 of the backrest frame of the Rogers I chair.
Second, the Appellants incorrectly assert Rogers I’s backrest requires
cushioning (Br. 7), when in fact Rogers I discloses any suitable backrest may
include cushioning fixed to the backrest frame to support the back of the
occupant. Rogers I, col. 3, ll. 9-11. The term “may” evidences the use of
cushioning is optional, not a requirement. Ans. 8; contra Br. 7-9 (The
Appellants contend that the Examiner’s substitution reasoning is flawed
because cushioning is required).
Third, regarding Simpson’s disclosure, the Appellants assert that
Simpson’s chair is a typical office chair that does not recline and can have
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different backrest shapes. Br. 7-8. The Examiner correctly finds that
Simpson’s chair tilts5, which implies that Simpson’s chair reclines6 (see Ans.
9-10); and the Examiner reasonably determines Simpsons’ use of different
backrest shapes suggests Simpsons’ fabric support deck 100 is useable with
various backrest frame members. See Ans. 9-10.
The Examiner reasons that modifying the backrest of Rogers I’s chair
with Simpson’s fabric support deck 100 is merely a simple substitution
having predictable results. See Ans. 5, 11, 13-14. “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int'l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007). The Appellants’ above assertions and contentions
are not persuasive because they do not explain persuasively why the
substitution would have been beyond the level of ordinary skill in the art or
that the result of the substitution might have been unpredictable. Thus, the
rejection of claim 1 as unpatentable over Rogers I and Simpson is sustained.
Claims 2-5 and 7-11
The Appellants do not offer separate arguments regarding the
rejection of dependent claims 2-5 and 7-11, but rely on the arguments

5 Simpson discloses that “seat assembly 19 includes a tilt control mechanism
20 which controls rearward tilting of the back assembly 12 relative to the
seat assembly 19.” Simpson, col. 3, ll. 30-32.
6 The definition of tilt is “to cause to lean, incline, slope, or slant.”
(DICTIONARY.COM UNABRIDGED, http://dictionary.reference.com
/browse/tilt (last visited Jan. 20, 2012)(“tilt,” def. 1)). The definition of
recline is “to lean or lie back; rest in a recumbent position.”
(DICTIONARY.COM UNABRIDGED, http://dictionary.reference.com
browse/recline (last visited Jan. 20, 2012)(“recline,” def. 1)).
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provided for claim 1. Br. 10. For the reasons as provided above for claim 1,
the rejection of claims 2-5 and 7-11 is sustained.
Claim 14
The Appellants do not offer separate arguments regarding the
rejection of independent claim 14, but rely on the arguments provided for
claim 1 because “claim 14 includes similar recitations to those of [c]laim 1.”
Br. 11. For the reasons as provided above for claim 1, the rejection of claim
14 is sustained.
Rejection of claim 12 over Rogers I, Simpson, and Schefthaler
The Appellants do not offer separate arguments regarding the
obviousness rejection of claim 12, but rely on the arguments provided for
claim 1. Br. 10. For the reasons as provided for claim 1, the rejection of
claim 12 is sustained.
Rejection of claim 13 over Rogers II and Simpson
The Examiner’s rejection of claim 13 as unpatentable over Rogers II
and Simpson is substantially the same as the Examiner’s rejection of claim 1
as unpatentable over Rogers I and Simpson. See Ans. 4, 6. The Appellants
assert that Rogers II discloses a bulky frame backrest 14 similar to Rogers I,
and that Rogers II offers no suggestion that that the Rogers II backrest,
including cross pieces 37 and vertical pieces 38, are to be used with a fabric
support deck. Br. 10-11, Rogers II, col. 5, ll. 32-38. The Examiner finds
that Rogers II discloses “[f]or purposes of clarity, the upholstery has not
been shown, however, any suitable upholstery may, of course, be fabricated
on the frame” (Rogers II, col. 5, ll. 39-41), and that Simpson’s cover
member 100, 101 is an obvious substitute for the Rogers II upholstery. Ans.
6; see also Ans. 13-14. The Appellants contend “[c]laim 13 is patentable
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over Rogers II and Simpson for the same reasons set forth above with
respect to Claim 1.” Br. 11. The Appellants’ contention is not persuasive
for substantially the same reasons as provided above. Thus, the rejection of
claim 13 as unpatentable over Rogers II and Simpson is sustained.

DECISION
We AFFIRM the rejections of claims 1-5 and 7-14.
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).

AFFIRMED

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