Ex Parte Jones et al

Patent Trial and Appeal Board

Oct 31, 2012

11018772 (P.T.A.B. Oct. 31, 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.
11/018,772 12/21/2004 Walter Gomer Jones 9305-30 9325
20792 7590 11/01/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
JOHNSON, JENNA LEIGH
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
11/01/2012 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte WALTER GOMER JONES,
James Douglas Small Jr., John H. Walton,
Alfred Frank Baldwin Jr., and Zareh Mikaelian
________________

Appeal 2011-002599
Application 11/018,772
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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A. Introduction1
Walter Gomer Jones, James Douglas Small Jr., John H. Walton,
Alfred Frank Baldwin Jr., and Zareh Mikaelian (“Jones”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection2 of claims 10, 11, 13-16,
19-23, and 32-35, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to mattresses that are flame- and
heat-resistant to open flames.3 Smoldering ignition of mattresses (usually
caused by cigarettes) declined following standards set in 1973
(16 C.F.R. §1632) by the Consumer Product Safety Commission (“CPSC”).
Reg. 51886, 51886 (2001).4 In the mid-1990s, however, the CPSC and other
groups conducted investigations that revealed that open flames (children
playing with matches, lighters, etc.) were a significant cause of mattress
fires, and that bedding (bedclothes, sheets, blankets, etc.) was often the first
item to ignite, so often a fire of considerable size had developed before the

1 Application 11/018,772, Upholstery Panels with Fire Resistant Backing
Layer, filed 21 December 2004, claiming the benefit of a provisional
application filed 2 September 2004. The specification is referred to as the
“772 Specification,” and is cited as “Spec.” The real party in interest is
listed as Precision Fabrics Group, Inc. (Appeal Brief, filed 10 June 2010
(“Br.”), 3.)
2 Office action mailed 10 December 2009 (“Final Rejection”; cited
as “FR”).
3 The 772 Specification provides precise definitions of the terms “flame
resistant material” and “heat resistant material (Spec. 7, ll. 8-10 and
ll. 11-13, respectively), although they are not needed to resolve this appeal.
4 Standard to Address Open Flame Ignition of Mattresses/Bedding: Advance
Notice of Proposed Rulemaking
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mattress became involved. (Id.) Mattresses are sufficiently large and
typically are made from flammable materials that “flashover,” which occurs
when surfaces exposed to radiant heat from the burning mattress ignite
nearly instantaneously, is a major concern. (Id. at 51887, 2d col., 2d para.)
The CPSC, industry, and the California Bureau of Home Furnishings and
Thermal Insulation worked with the National Institute of Standards and
Technology (“NIST”) to develop a test method to address the problem.
71 Fed. Reg. 13472, 13472 (2006).5 The State of California issued
Technical Bulletin 603 (“TB-603,” effective 1 January 2005), which uses the
same basic test method (the federal standard sets a stricter limit on the total
energy released in the first ten minutes of the test). (Id.) The test, which
runs for 30 minutes, exposes a mattress to a pair of flames from specified
propane-fueled burners positioned at specified distances from the top
(70 seconds burn) and one side (50 seconds burn) of the mattress under
specified conditions, and monitors the rate and total magnitude of heat
released as the mattress burns. (Burns 1 [0005]-[0007].)6
In the claimed mattress, the top and sides are covered with a three-
layer composite upholstery panel, no single layer of which passes the flame
resistance test set forth in TB-603. The three-layer composite panel,
however, is required to “synergistically maintain[] flame and heat resistant
integrity when impinged at any location with a gas flame in accordance with
testing protocol set forth in TB-603.”

5 16 C.F.R. § 1633 Final Rule: Standard for the Flammability (Open
Flame) of Mattress Sets.
6 Full cite at 5 n.9, infra; cf. 16 C.F.R. § 1633.7, Mattress Test Procedures.
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Representative Claim 32 reads:
32. A mattress, comprising:
a mattress core having opposite upper and lower portions;
an upper composite upholstery panel overlying the mattress
core upper portion; and
a side composite upholstery panel extending around a
periphery of the mattress core,
wherein the side composite upholstery panel is attached along
an edge portion to the upper composite upholstery panel;
wherein the upper and side composite upholstery panels each
comprise a three layer composite:
a layer of ticking fabric that comprises a knit or woven
textile
and that fails to maintain flame and heat resistant
integrity when impinged individually with a gas
flame in accordance with testing protocol set forth
in Technical Bulletin 603 of the State of California
Department of Consumer Affairs (TB-603);
a layer of backing fabric, wherein the backing layer has a
thickness of less than 0.20 inches and comprises
spunlaced, wet-laid or needlepunched fabric comprising
at least 50% cellulosic fiber, wherein the spunlaced, wet-
laid or needlepunched fabric is treated with a flame
retardant comprising borates, sulfamates, phosphates,
organic phosphorous compounds, halogenated
compounds and antimony compounds, and
wherein the layer of backing fabric fails to
maintain flame and heat resistant integrity when
impinged individually with a gas flame in
accordance with testing protocol set forth in
TB-603; and
a layer of resilient cushioning material comprising a
fibrous material or a foam material sandwiched between
the layer of ticking fabric and the layer of backing fabric,
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wherein the cushioning material fails to maintain
flame and heat resistant integrity when impinged
individually with a gas flame in accordance with
testing protocol set forth in TB-603;
wherein the combination of the ticking layer, backing layer
and cushioning layer in the composite upholstery panel
synergistically maintains flame and heat resistant integrity
when impinged at any location with a gas flame in
accordance with testing protocol set forth in TB-603.
(Claims App., Br. 16-17, indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:7
A. Claims 10, 11, 13-16, 19-23, and 32-35 stand rejected under
35 U.S.C. §112( 1) for lack of enablement for lack of
enablement of embodiments in which the critical limitation that
the cushioning layer be flame retardant is absent.
B. Claims 10, 11, 13-16, 19-23, and 32-35 stand rejected under
35 U.S.C. §112(1) for lack of enablement for the synergetic
flame and heat resistance integrity requirement).
C. Claims 10, 11, 13-16, 19, 20, and 32-35 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Piana 8
and Burns.9
D. Claims 21-23 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Piana, Burns, and Murphy.10

7 Examiner’s Answer mailed 19 August 2010 (“Ans.”).
8 Andrea Piana and James L. Gaston, Methods, Systems and Compositions
for Fire Retarding Substrates, U.S. Patent Application Publication
2004/0121114 A1 (24 June 2004), based on an application
filed 26 November 2003.
9 John Burns et al., Articles of Enhanced Flam[m]ability Resistance, U.S.
Patent Application Publication 2005/0287894 A1 (29 December 2005),
based on an application filed 2 July 2004.
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
We need consider only independent claim 32, as no other claims are
argued separately. All claims thus stand or fall with claim 32.
37 C.F.R. § 41.37(c)(1)(vii) (2011).
The feature of the claimed invention that is key to resolving both the
prior art and the enablement rejections in this appeal is the requirement that
while each of the three layers that comprise the cover, i.e., the ticking layer,
the resilient cushioning material, and the backing layer, fails to pass the
TB-603 testing protocol, the combination of the ticking layer, cushioning
layer, and the backing layer “synergistically maintains flame and heat
resistant integrity when impinged at any location with a gas flame in
accordance with testing protocol set forth in TB-603.” (Claims App., Br. 17,
ll. 12-15; emphasis added.)
prior art rejections
The Examiner finds that Burns teaches “a fire resistant layer between
the ticking layer and interior fiber, spring, or foam cushion materials,” and
concludes that it would have been obvious to combine “the known mattress
structures as taught by Burns et al., with the fire retardant barrier layer

10 Harrison Robert Murphy and Juraj Michal Daniel Slavik II, Composite
Fire Barrier and Thermal Insulation Fabric for Mattresses and Mattress
Foundations, U.S. Patent Application Publication 2004/0060120 A1
(1 April 2004), based on an application filed 12 September 2003.
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taught by Piana.” (Ans. 8, 2d para.) The Examiner finds further that “using
a known mattress construction with a fire retardant layer which can be used
in mattresses would have produced predictable results.” (Id.)
The difficulty with the rejection over the applied prior art, as Jones
points out (Br. 13), is that the Examiner has not directed our attention to a
teaching or suggestion that each of the three layers described by Burns fails
the TB-603 testing protocol, and that the three layers together provide a
synergistic flame and heat resistant integrity. According to Burns, the
“barrier fabric construction has substantial flame resistance when subjected
to the flame conditions corresponding to those as set forth in Technical
Bulletin 603” (Burns 1 [0009]) and “the flame retardant construction will act
as a flame barrier against burn through into the interior of the mattress and
box spring” (Id. at 3 [0030]; cited at Br. 13, 2d full para.) Thus, it appears
that a single layer of the mattress cover described by Burns is responsible for
passing the TB-603 protocol. The Examiner does not rely on Piana or
Murphy as evidence of any factor that cures this fundamental defect.
Accordingly, we REVERSE the prior art rejections.
enablement rejections
The ultimate question of enablement and the intermediate question of
whether the amount of experimentation is undue, are legal conclusions
“reached by weighing many factual considerations.” In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988). Among the factors that may be considered are
“the quantity of experimentation necessary, the amount of direction or
guidance presented, the presence or absence of working examples, the nature
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of the invention, the state of the prior art, the relative skill of those in the art,
the predictability or unpredictability of the art and the breadth of the claims.”
Id., citing with approval Ex parte Forman, 230 USPQ 526, 547
(BPAI 1986). Which factors are relevant depends on the facts of each case.
Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1213 (Fed. Cir.
1991).
The Examiner has advanced two distinct theories for lack of
enablement. The first is based on the Examiner’s finding that cushioning
material made from fire resistant fibers is critical or essential to the practice
of the invention. (Ans. 3, citing Spec. 8, ll. 5-16.) Because claim 32 does
not limit the cushioning layer to fire-retardant fibers, the Examiner holds
that the claims are not enabled.
The passage cited does not support the Examiner’s finding.
According to the 772 Specification,
[t]he cushioning layer 16 may be formed from various flame
resistant lofty materials . . . the cushioning layer 16 may
include non-thermoplastic fibers (e.g., cellulose, wool, etc.)
that are chemically treated for flame resistance. According to
embodiments of the present invention, the cushioning
layer 16 may include cotton fibers that are treated with flame
retardant material. When formed from flame resistant foam,
the cushioning layer 16 may contain intumescent material,[11]
such as graphite.
(Spec. 8 ll. 5-16; italics added.) The use of the term “may” indicates that
what follows is optional. Although claims are read in light of the

11 The 772 provides a definition of the term “intumescent material” as well
as other examples. (Spec. 8, ll. 22-31.)
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specification, particular embodiments are not to be read as limitations into
the claims. The Examiner has not explained adequately why it is critical that
the cushioning layer be fire retardant, despite the permissive language
quoted supra.
We therefore REVERSE the rejection for lack of enablement based on
the omission of a critical element as lacking an adequate factual foundation.
The second theory advanced by the Examiner for lack of an enabling
disclosure is based on the determination that the disclosure lacks adequate
guidance to the artisan for obtaining a “composite upholstery panel [that]
synergistically maintains flame and heat resistant integrity” under TB-603,
as required by claim 32 (emphasis added). The term “synergism,” as the
Examiner points out, “implies that the result is not just a purely additive
result of the fire resistance of the individual layers combined together, but
instead an interaction such that the total effect is greater than the sum of the
individual effects.” (Ans. 5, ll. 8-10.)
The Examiner finds, however, that “the disclosure fails to teach how
one of ordinary skill would go about designing the layers or choosing the
materials such that the individual layers will not pass the TB-603 test,” but
the layers, when combined, will provide synergistic resistance.
(Id. at ll. 3-5.) Moreover, the Examiner finds that the only examples are of
two-layered composites, and that there are no working examples of three-
layered cover layers according to the invention. (Id. at ll. 11-16.)
As a result, the Examiner concludes, a person having “ordinary skill
in the art would have to pick and choose between multiple well known fire
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retardant materials and countless known fabric constructions to make”
various single layers, and then to make and test various combinations “in
hopes that the materials will have the desired synergistic effect.” (FR 4,
ll. 1-8; Ans. 6, ll. 3-10.) The Examiner holds that, in the absence of
guidance, that effort would be undue. (FR 4, ll. 14-16; Ans. 6, ll. 18-19.)
Jones does not dispute the Examiner’s finding that no working
examples of the claimed invention are provided. Rather, Jones argues that
“the Specification discloses seven examples that clearly provide the type of
synergistic protection contemplated by the claimed invention [0044]-[0054].
‘In each case, the combination of the backing layer and the lesser amount of
fibrous barrier . . . gave better results than the control [panels] [0054].[12]”
(Br. 09, ll. 3-6.) The amount of experimentation in this case, Jones appears
to argue, may be large, but because it is merely routine, and because
the 772 Specification does provide a reasonable amount of guidance, the
amount of experimentation should not be considered undue. (Id.) Notably,
however, Jones does not explain the conclusion that the “better results” are
evidence of “synergistic protection.”
Nor does Jones address directly the Examiner’s argument that the
synergistic limitation requires an effect that is greater than the sum of the
individual effects. Critically, Jones does not direct our attention to any
definition in the 772 Specification of the term “synergistically.” We note,
however, that the originally filed claims do not require synergism amongst

12 Jones appears to cite paragraphs from the publication of
the 772 Specification. We refer only to the originally filed Specification in
the record.
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the three layers of the upholstery panels. Rather, they merely require that
“the composite upholstery panel maintains flame and heat resistant integrity
when impinged at any location with a gas flame” according to TB-603.
(Spec. 15, ll. 6-7 (claim 1); 18, ll. 7-9 (claim 24); ll. 21-22 (claim 25); 30,
ll. 5-8 (Abstract).) In this regard, we find further that the Specification
directs that, “[u]nless otherwise defined, all technical and scientific terms
used herein have the same meaning as commonly understood by one of
ordinary skill in the art to which this invention belongs.” (Spec. 6,
ll. 31-33.) As the Examiner finds, a standard definition of “synergism” is a
“cooperative action of discrete agencies (as drugs or muscles) such that the
total effect is greater than the sum of the two or more effects taken
independently.” (Webster’s Third New Int’l Dictionary (1993).)
We do not accept Jones’s characterization of the nature of the
invention and the state of the art as merely “constructing upholstery panels
and testing their flame and heat-resistance” (Br. 9, 3d full para.) While such
a characterization might be reasonably accurate if the claimed invention
“merely” involved an additive effect, the critical limitation in the claimed
invention is the synergistic flame- and heat-resistance integrity of the three
layers as a unit. Although mattresses may appear to be mundane at first
glance, as the development of the TB-603 and the corresponding federal
standard indicates, the flammability of mattresses is in fact a complicated
matter requiring individual tests. Regarding the appealed subject matter, the
report (Spec. 2, ll. 5-7) that “many industry analysts are skeptical that
conventional upholstered furniture and bedding products (e.g., mattresses,
etc.) will be able to pass TB-603” supports this conclusion. Particularly
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given the common use and the potential for harm, the record indicates that
the predictability of mattress flammability is relatively low. We note that
even selecting three single layers that individually almost pass the TB-603
protocol would not guarantee that the three-layer panel would provide
synergistic flame and heat resistance.
On this record, we conclude that some further guidance is required to
provide sufficient disclosure to avoid undue experimentation. In exchange
for the right to exclude the public from making, using, or selling an
invention, Congress has required adequate teachings such that the full scope
of the claimed subject matter can be practiced without undue
experimentation. 35 U.S.C. § 112(1). Such disclosure promotes the public
good by insuring that each practitioner need not “reinvent the wheel,” but
rather, can benefit from the work of the first inventor and, perhaps,
contribute to further progress by devoting resources and efforts to
improvements.
In the absence of guidance, whether general, by disclosure of an
organizing principle, or specific, by way of examples illustrating features
allowing reasonable extrapolation to other materials, the artisan is left only
with the disclosure of a desired goal. As our reviewing court has explained,
“[t]ossing out the mere germ of an idea does not constitute enabling
disclosure.” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed.
Cir. 1997). Jones, however, who surely knows the invention better than
anyone, has not directed our attention to disclosure in the 772 Specification
or in the prior art of record that would have assisted the artisan to select
three materials for the layers that would provide a single embodiment of the
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invention. There is not even a working example, with TB-603 data on the
individual components and on the three-layer panel, to provide a starting
place for later reductions to practice of synergistic panels.
We conclude that Jones has not shown harmful error in the
Examiner’s rejection for lack of enablement based on the need for undue
experimentation.
C. Order
We REVERSE the rejection of claims 10, 11, 13-16, 19-23, and 32-35
stand rejected under 35 U.S.C. §112(1) for lack of enablement of
embodiments in which the “critical limitation” that the cushioning layer be
flame retardant is absent.
We AFFIRM the rejection of claims 10, 11, 13-16, 19-23, and 32-35
stand rejected under 35 U.S.C. §112(1) for lack of enablement of the
required synergistic combinations.
We REVERSE the rejection of claims 10, 11, 13-16, 19, 20,
and 32-35 stand rejected under 35 U.S.C. § 103(a) in view of the combined
teachings of Piana and Burns.
We REVERSE the rejection of claims 21-23 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Piana, Burns, and
Murphy.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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