Ex Parte Hornbach et al

Board of Patent Appeals and Interferences

Aug 22, 2012

11194347 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID W. HORNBACH, SCOTT A. SCHULTZ, and
VIRGIL J. NIESE
____________

Appeal 2010-008246
Application 11/194,347
Technology Center 3600
____________

Before LINDA E. HORNER, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David W. Hornbach et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-9 and 23-42.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
Appellants’ claimed invention “relates to adjustable-length deck
sections of patient supports such as chairs, wheelchairs, and hospital beds.”
Spec. 1, ll. 22-23. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A patient support, comprising:
a back section,
a thigh section coupled to the back section,
an adjustment member coupled to the thigh section, the
adjustment member being movable to lengthen the thigh
section, and
a foot section pivotably coupled to the adjustment
member, the foot section being pivotable relative to the thigh
section between a first position substantially parallel to the
thigh section and a second position substantially perpendicular
to the thigh section.
THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1-9 under 35 U.S.C. § 103(a) as
unpatentable over Tekulve (US 6,826,793 B2; iss. Dec. 7, 2004) and
Allen (US 2001/0001163 A1; pub. May 17, 2001).
2. The Examiner rejected claims 23-25 and 32 under 35 U.S.C. § 103(a)
as unpatentable over Tekulve, Allen, and Adams (US 6,357,065 B1;
iss. Mar. 19, 2002).
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3. The Examiner rejected claims 26-31 and 33-42 under 35 U.S.C.
§ 103(a) as unpatentable over Tekulve, Allen, and Lyon
(US 3,754,749; iss. Aug. 28, 1973).
ISSUE
The issue presented by this appeal is whether the Examiner has
articulated adequate reasoning based on rational underpinnings to explain
how the teachings of Tekulve and Allen would have led one of ordinary skill
in the art to modify the patient support of Tekulve to add an adjustment
member coupled to the thigh section and movable to lengthen the thigh
section and a foot section pivotably coupled to the adjustment member.
ANALYSIS
Rejection of claims 1-9 under 35 U.S.C. § 103(a) as unpatentable over
Tekulve and Allen
It is undisputed that neither Tekulve nor Allen teaches an adjustment
member coupled to the thigh section of a patient support and movable to
lengthen the thigh section and a foot section pivotably coupled to the
adjustment member as called for in independent claim 1. Ans. 3; Ans. 11
(“Appellant correctly notes that Allen is directed solely to an improved
adjustable foot section.”) The Examiner has failed to adequately articulate
why one of ordinary skill in the art, in light of the teaching in Allen to adjust
the foot section of a patient support, would have been led to apply that
teaching to adjust the thigh section of a patient support. The Examiner
determined that “[o]ne of ordinary skill in the art would have recognized that
a system such as Allen’s could be used to increase the length of any section
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Application 11/194,347

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in Tekulve to provide Tekulve with the predictable established function of
Allen’s length adjustment system (which is to increase the length of a
portion of a patient support).” Ans. 3. The Examiner’s explanation is
incomplete because it fails to provide an apparent reason why one of
ordinary skill in the art would have been led, absent hindsight, to consider
applying Allen’s adjustable foot section system to other sections of a patient
support. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007)
(when the claimed subject matter is more than the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, then the conclusion of
obviousness must be based on a determination that there was an apparent
reason to combine the known elements in the fashion claimed).
The Examiner further explained in response to Appellants’ arguments
that the proposed combination “takes into account the inferences and
creative steps that a person of ordinary skill in the art would employ
(thinking how else an extendable section could be used in an articulating
bed)” and the Examiner noted some of the benefits that would come from
such an extendable section include permitting adjustment in the overall
length of the bed, saving space, and adjusting the bed to conform to the
height of the patient. Ans. 12. The enumerated benefits, however, can all be
achieved by adjusting the foot section of Tekulve’s patient support in
accordance with the teaching of Allen. Allen, paras. [0003]-[0004]; Reply
Br. 3. As such, the Examiner does not provide reasoning based on a rational
underpinning for the proposed modification to the thigh section of Tekulve.
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For these reasons, we cannot sustain the rejection of independent claim 1 or
its dependent claims 2-9 under 35 U.S.C. § 103(a) as unpatentable over
Tekulve and Allen.
Rejections of claims 23-42 under 35 U.S.C. § 103(a)
Independent claims 23, 26, and 29 call for a length adjuster coupled to
the thigh section of a patient support for adjusting the length of the thigh
section. The rejections of these claims rely on the same proposed
modification to the patient support of Tekulve to add a length adjuster to the
thigh section based on the teaching in Allen as discussed supra in the
analysis of claim 1. Ans. 4-5 (relying on Adams in the rejection of claim 23
for the teaching of a bed that can increase and decrease in width); Ans. 7
(relying on Lyon in the rejection of claims 26 and 29 for the teaching of
vertical adjustment of a patient support). These rejections suffer from the
same deficiency as the rejection of claim 1 discussed supra. Accordingly,
we cannot sustain the rejection of independent claims 23, 26, and 29 or their
dependent claims 24, 25, 27, 28, and 30-42 under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner has not articulated adequate reasoning based on
rational underpinnings to explain how the teachings of Tekulve and Allen
would have led one of ordinary skill in the art to modify the patient support
of Tekulve to add an adjustment member coupled to the thigh section and
movable to lengthen the thigh section and a foot section pivotably coupled to
the adjustment member.
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DECISION
We REVERSE the decision of the Examiner to reject claims 1-9 and
23-42.

REVERSED

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