Ex Parte Howell et al

Patent Trial and Appeal Board

Mar 18, 2016

12694543 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/694,543 01127/2010
63565 7590 03/18/2016
HILL-ROM SERVICES, INC
Legal Dept., Mail Code K04
1069 State Road 46 East
BATESVILLE, IN 47006
FIRST NAMED INVENTOR
Charles A. Howell
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.
Nl-22326 6220
EXAMINER
KURILLA, ERIC J
ART UNIT PAPER NUMBER
3673
MAILDATE DELIVERY MODE
03/18/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES A. HOWELL and SCOTT PEER
Appeal2013-010597
Application 12/694,543
Technology Center 3600
Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to a modular fluidizable occupant support and
compact fluidizable modules. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An occupant support comprising:
at least one non-fluidizable module having a support for
supporting the non-fluidizable module on a ground surface;
Appeal2013-010597
Application 12/694,543
at least one fluidizable module also having a support for
supporting the fluidizable module on the ground surface;
the fluidizable module and the non-fluidizable module
being cooperable with each other to support an occupant; and
the support for the non-fluidizable module bearing less
than all of the weight of the fluidizable module.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Paul
Tominaga
Kramer
us 4,483,029
us 4,599,755
US 2006/0085919 Al
REJECTIONS 1
Nov. 20, 1984
July 15, 1986
Apr. 27, 2006
Claims 1-9 and 11-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kramer. Final Act. 5. 2
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kramer in view of Paul. Final Act. 11.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tominaga. Final Act. 12.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tominaga in view of Kramer. Final Act. 13.
1 The Examiner withdrew a rejection of claims 12-15, 18, and 20 under 35
U.S.C. § 101. Ans. 3.
2 The Examiner included claim 21 in the heading of the rejection based on
Kramer alone, however claim 21 was only rejected as being unpatentable
over Tominaga in view of Kramer. Final Act. 13.
2
Appeal2013-010597
Application 12/694,543
OPINION
Regarding claim 1, the Examiner determined Kramer taught an
occupant support in Figure 7 having at least one non-fluidizable module 7 4
and at least one fluidizable module 72. Final Act. 5. Appellants argue the
term "fluidizable module" should be interpreted in light of the structure
disclosed in Figure 7 of Appellants' disclosure. Br. 9.
The Specification contains no explicit definition of the term and to
import the structure from the embodiment of Figure 7 into the claims would
amount to improperly narrowing the scope of the claims. If Appellants
desired to limit a fluidizable module to comprise a stream of fluidizing
medium flowing through a containment vessel that holds a fluidizable
material, then Appellants could recite these structural components, as was
recited in claim 20. Br. 9. Where Appellants chose to omit in the claim
language elements of a particular structure as described in the Specification,
it is not our place to now introduce limitations corresponding to those
omitted details into the claims. To read a claim in light of the specification,
one must interpret limitations explicitly recited in the claim, without reading
limitations from the specification into the claim, to thereby narrow the scope
of the claim by implicitly adding disclosed limitations that are not recited in
the claim. In re Prater, 415 F.2d 1393, 1404---05 (CCPA 1969); see also
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) ("Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment."). We therefore conclude that the Examiner's interpretation of
3
Appeal2013-010597
Application 12/694,543
a fluidizable module as a module that "allows pressurized air to flow
through" is reasonable. Ans. 12. As found by the Examiner, under this
interpretation, the limitation is met by Kramer's disclosure of seat section
72, which is reasonably a "module" that is "fluidizable" by virtue of air flow
through holes 82. Final Act. 3, Kramer, para. 66. The rejection of claim 1 is
therefore affirmed.
Regarding claim 7, the Examiner determined Kramer taught at least
two stations, head and foot sections of 74, and at least one of the stations
being capable of receiving a fluidizable cushion. Final Act. 7 (citing
Kramer, para. 67).
Appellants argue there is no disclosure of fluidizable cushions
essentially for the reasons discussed above. Br. 12. Appellants do not
appear to raise any issues concerning the distinction between a module and a
cushion. Appellants' argument is therefore unpersuasive for the same
reasons provided above with respect to the interpretation of "fluidizable"
module. Appellants additionally argue plenum 78 is not a station capable of
receiving a fluidizable cushion. Br. 12. However, Kramer expressly
contemplates an embodiment where platform 7 4 includes at least two
sections (head and foot sections) and may also include a plenum 78.
Kramer, para. 67. Additionally, we note that the "fluidizable cushion" is not
actually a component of the combination defined by claim 7. We are
unapprised as to precisely what structural distinction from Kramer
Appellants intend to attribute to a station "capable of receiving a fluidizable
cushion." Final Act. 7. This would seem to depend heavily on the
properties of some undefined cushion. Kramer's head and foot stations,
particularly those of the paragraph 67 embodiment, clearly satisfy this
recitation. The rejection of claim 7 is therefore affirmed.
4
Appeal2013-010597
Application 12/694,543
Regarding claims 18 and 20, the Examiner concluded it would have
been obvious to size the fluidizable module to no more than about 30 percent
of the length of an adult human body as it involves a mere change in the size
of a component. Final Act. 10, 12 (citing In re Rose, 220 F .3d 459 (CCP A
1955)). The Examiner additionally reasons one could deduce from Kramer
and Tominaga a fluidizable module no more than about 30 percent of the
length of a human body. Ans. 14--15. Appellants argue sizing involves
accommodating conflicting requirements and competing interests of
therapeutic efficacy, cost, weight, and maintenance requirements. Br. 15.
However, it is unclear why a person of skill in the art would not consider
therapeutic efficacy, cost, weight, and maintenance requirements when
sizing seat section 72 of Kramer or the apparatus in Figure 2 of Tominaga.
The fact that judgment and mechanical skill may be required to arrive at a
particular combination does not necessarily mean that particular
combination constitutes a nonobvious invention. Graham v. John Deere Co.
of Kansas City, 383 US 1, 10-12 (discussing Hotchkiss v. Greenwood, 11
How. 248 (1851)).
Additionally, we note that Kramer supports the sizing modification
proposed by the Examiner. The Examiner relied upon Figure 12 of Kramer
for providing a patient transfer mobility function to the occupant support.
Final Act. 6 (citing Kramer, para. 76). Sizing the module to a smaller
dimension, as suggested by the modification, facilitates this goal. We also
note that Kramer actually illustrates a cart 122 within the recited range.
(See, e.g., Fig. 12 (showing 4 cells 10 located within cart 122 and 14 cells
located on platform 111)). "[A] drawing in a utility patent can be cited
against the claims of a utility patent application even though the feature
5
Appeal2013-010597
Application 12/694,543
shown in the drawing was unintended or unexplained in the specification of
the reference patent." In re Aslanian, 590 F. 2d 911, 914 (CCPA 1979).
T ominaga also supports the sizing modification suggested by the
Examiner. Figure 3 depicts a patient in the sitting position. Tominaga, col.
3, 11. 15-16. When used as a seat, a person of skill in the art would have
reasonably considered reducing the size of the bed to accommodate a seated
individual. The rejection of claim 20 is therefore affirmed.
Regarding claim 19, the Examiner relies upon frames 114 and 124 of
Figure 11 to disclose a common support system. Final Act. 11, Ans. 14.
Appellants argue there is not a common support system because element 124
bears none of the weight of element 114 and vice versa. Br. 15. Appellants'
argument is not supported by Kramer's disclosure, which, when describing
Figure 11, indicates platform 111 is coupled to cart 122 by a suitable
mechanism, such as one or more latches, locks, or dockers. Kramer, para.
7 6. The disclosed coupling mechanism provides a common support system
between platform 111 and cart 122. The rejection of claim 19 is therefore
affirmed.
Regarding claim 10, the Examiner determined Paul taught a cover 264
for occupying an opening 262. Final Act. 12. The Examiner then concluded
it would have been obvious to modify Kramer with the cover of Paul to
control fluid flow. Final Act. 12 (discussing Paul, Fig. 6). The Examiner's
modification locates covers 264 of Paul on holes 82 of Kramer for
controlling fluid flow. Final Act. 4.
Claim 10 requires the opening be capable of accommodating a
fluidizable module. To be capable of accommodating the fluidizable
module, there should be some cooperation capability between the opening
and the fluidizable module. In the Examiner's proposed modification, no
6
Appeal2013-010597
Application 12/694,543
such cooperation would exist as the holes are provided for allowing air flow
therethrough (Kramer, para. 66) not for "accommodating" some structure,
such as the fluidizable module. Holes 82 cannot be fairly characterized as
accommodating seat section 72. The rejection of claim 10 is therefore
reversed.
DECISION
The Examiner's rejections of claims 1-9 and 11-21 are affirmed.
The Examiner's rejection of claim 10 is reversed.
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)(l )(iv).
AFFIRMED-IN-PART
7