Ex Parte Lamstein

Patent Trial and Appeal Board

Jul 3, 2013

10801240 (P.T.A.B. Jul. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/801,240 03/15/2004 Aaron M. Lamstein 545.41 2033
85444 7590 07/05/2013
Bay Area Technolgy Law Group PC
4089 Emery Street
Emeryville, CA 94608
EXAMINER
VALENTI, ANDREA M
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
07/05/2013 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 AARON M. LAMSTEIN
____________

Appeal 2011-000535
Application 10/801,240
Technology Center 3600
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Aaron M. Lamstein (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-9 under 35 U.S.C.
§ 103(a) as unpatentable over Ford (US 6,305,318 B1; iss. Oct. 23, 2001)
and Wayne (US 6,435,133 B1; iss. Aug. 20, 2002). We have jurisdiction
under 35 U.S.C. § 6(b).
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We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to “a pet bed for use by cats.”
Spec. 1, ll. 7-8. Claim 1, the sole independent claim, is reproduced below
and is illustrative of the subject matter on appeal.
1. A pet bed for use by cats, said pet bed comprising a
resilient, compressible fill material, and an outer shell fabric
defining the geometry of the pet bed as having a bottom and
sides and a top, the later comprising a plush and gas permeable
fabric, a closable opening in said outer shell fabric allowing for
selective access to the interior of said outer shell fabric, a gas
permeable pouch containing catnip located beneath said top
fabric and within said closeable opening such that scent from
said catnip is caused to permeate through the said gas
permeable pouch and gas permeable top fabric[.]
ANALYSIS
Appellant offers arguments pertaining to all the claims subject to this
rejection (claims 1-9) and offers additional arguments for dependent claims
2, 3, and 5-9. Br. 5-8. For the arguments pertaining to all of the claims, we
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We separately consider the additional arguments pertaining to claims 2, 3,
and 5-9.
Claim 1
The Examiner found that Ford teaches the pet bed of claim 1 except
for the catnip pouch being located “within said closeable opening” and the
top outer shell fabric comprising a “plush” fabric. Ans. 3-4. The Examiner
found that Wayne discloses a pet bed that has a plush fabric surface and that
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it is known to substitute a plush fabric for a canvas-like fabric, and
determined that it would have been obvious to modify Ford’s pet bed to use
a plush fabric top covering “to create a more comfortable bed for the
animal.” Id. at 4. Appellant does not contest the Examiner’s findings as to
the teaching of Wayne or the proposed combination with Ford. As to the
claimed location of the catnip pouch “within said closeable opening,” the
Examiner stated, “merely shifting the location of a known element
performing the same intended function of providing a removable scent that
attracts cats, shifted for the motivation to prevent easy access by the animal,
does not present a patentably distinct limitation over the prior art of record.”
Id.; see also id. at 7 (describing the pouch in Ford as being beneath the gas
permeable fabric because it is in the pocket and the modification as merely
moving the catnip from one pocket opening to another pocket opening as
merely an obvious rearrangement of known parts performing the same
intended function).
Appellant argues:
there is not a single suggestion in Ford to place a pouch
containing catnip beneath a gas permeable fabric or to provide a
closable opening in an outer shell fabric allowing for selective
access to the interior of the outer shell fabric for placement of a
gas permeable pouch containing catnip.
Br. 5. We disagree with Appellant’s argument on both points. First, as
admitted by Appellant, “the pouch of scented material [in Ford] is placed
between two layers of outer shell material.” Id. at 6. In order to be between
two layers of outer shell material, the pouch must be located beneath one of
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the layers of material, i.e., the pocket material. Thus, we agree with the
Examiner’s finding that Ford explicitly teaches “a gas permeable pouch
containing catnip located beneath said top fabric” as called for in claim 1.
Second, to the extent Appellant argues that Ford does not teach providing a
closable opening in an outer shell fabric allowing for selective access to the
interior of the outer shell fabric, we agree with the Examiner’s finding that
Ford’s reclosable access opening 8 having hook-and-loop fasteners 9
provides a closable opening in the outer shell fabric 2 and allows for
selective access to the interior of the outer shell fabric. Ans. 3-4; Ford,
col. 2, ll. 36-38 and col. 2, l. 66 – col. 3, l. 3 (describing the reclosable
access opening as permitting easy removal of cushion 11 so outer covering 2
can be laundered and easily re-assembled); Spec. 5, ll. 4-5 (describing a
closable opening provided by a hook and loop closure within the top fabric).
Appellant’s argument amounts to an assertion that the rejection should
be reversed because Ford does not suggest locating the catnip pouch within
the closeable opening. Appellant’s argument is unpersuasive for two
reasons. First, Appellant’s argument urges us to apply a strict teaching-
suggestion-motivation (TSM) test for obviousness. Rigid application of the
TSM test was explicitly disavowed by the Supreme Court in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415, 419 (2007). Second, Appellant’s argument
does not address the Examiner’s articulated reason for obviousness based on
a mere rearrangement of parts. Instead, Appellant mischaracterizes the
Examiner’s rejection as “simply ignor[ing] the limitation . . . that the gas
permeable pouch containing catnip is retained within a closable opening in
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the outer shell fabric . . . .” Br. 7. The Examiner acknowledged, however,
the difference between Ford’s pet bed and this claim limitation, and
articulated adequate reasoning based on rational underpinnings as to why it
would have been obvious to one of ordinary skill in the art to modify Ford to
locate the catnip pouch within the closeable opening instead of the pocket.
Ans. 4, 7. As such, we disagree with the Appellant’s assertion that the
Examiner ignores the claim limitation.
Appellant also mischaracterizes Ford to support the non-obviousness
of the claimed subject matter. In particular, Appellant asserts that “it is not
the thrust of Ford to provide a bed generating a catnip response.” Br. 6. On
the contrary, Ford discloses providing the bed with a replaceable scented
pouch “to attract the pet to use of the bed” and specifically suggests the use
of catnip because it is “attractive” to cats. Ford, col. 1, ll. 59-60 and col. 2,
ll. 64-65. Further, Appellant asserts that a shortcoming of Ford’s pet bed is
that a cat can gain direct physical access to the catnip pouch via the pocket,
and that such access “could be quite detrimental to the health of a cat.”
Br. 6. We see no evidence in Appellant’s Specification or the prior art
before us to support Appellant’s assertion that direct access to a pouch
containing catnip is detrimental to the health of a cat. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence”) (citation omitted).
We agree with the Examiner (Ans. 4) that whether the pouch is
located in the pocket of Ford or within the recloseable access opening of the
outer covering, the pouch functions in the same manner to attract the cat to
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use the pet bed and thus the difference between the disclosed location of the
pouch in Ford and the claimed location is not a patentable distinction.
Further, whether the pouch is located in the pocket of Ford or within the
recloseable access opening of the outer covering, the pouch remains easy to
remove from the outer covering 2 so that the outer covering can be
laundered and allows for easy removal and replacement of the pouch when
the catnip scent diminishes due to age. Ford, col. 2, l. 66 – col. 3, l. 5. For
the reasons discussed supra, Appellant has not persuaded us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious in view of Ford and Wayne. Accordingly, we affirm the rejection of
claim 1. Claim 4 falls with claim 1.
Claims 2 and 3
Appellant argues:
[t]here is further not a single suggestion of placing the gas
permeable pouch containing catnip between the resilient
compressible fill material of the pet bed and the shell fabric
either at the top of the compressible fill material or beneath the
compressible fill material as suggested alternatively by claims 2
and 3.
Br. 5-6; see also id. at 7-8. To the extent Appellant’s argument calls again
for a rigid application of the TSM test, we are not persuaded of error in the
Examiner’s rejection for the reasons set forth above in our analysis of
claim 1. Ford, as modified as set forth in the Examiner’s rejection and
reiterated in the analysis of claim 1 above, renders obvious the subject
matter of claims 2 and 3. Further, as to claim 3, we agree with the
Examiner’s claim interpretation that because the claims do not claim the
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orientation of the bed, the subject matter of claim 3 is “merely a relative
limitation to the orientation of the pillow.” Ans. 5. Accordingly, we affirm
the rejection of claims 2 and 3.
Claims 5-7
Appellant argues claims 5-7 as a subgroup. Br. 8 (characterizing
these claims as “deal[ing] with retaining the gas permeable pouch in a
specific location within the pet bed”). We select claim 5 as representative of
the subgroup. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 5 calls for the pouch
to be “attached to an interior surface of said top fabric.” The Examiner
determined that Ford’s pet bed as modified includes the pouch within the
outer covering and that “merely making a known component[, i.e., the
pouch] integral [with the top fabric of the outer covering] to prevent
displacement does not present a patentably distinct limitation over the prior
art of record.” Ans. 5-6. Appellant does not contest the Examiner’s
characterization of this claim limitation as rendering known components
integral; rather, Appellant argues only that “Ford, in simply providing a
scented material within a pocket of a pair of shorts fails to disclose any of
this.” Br. 8. This argument fails to address the Examiner’s proposed
modification to Ford which would relocate the scented pouch within the
recloseable access opening of the outer covering of Ford, which proposed
modification we determined to be obvious in our analysis of claim 1. As
such, Appellant has not persuaded us of error in the rejection of claim 5. We
affirm the rejection of claim 5. Claims 6 and 7 fall with claim 5.
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Claims 8 and 9
Appellant argues claims 8 and 9 as a subgroup. Br. 7. We select
claim 8 as representative of the subgroup. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 8 calls for the top fabric and pouch materials to be “sufficiently
permeable such that as said top fabric is depressed by the weight of the cat
using said pet bed, scent from said catnip is caused to permeate through said
gas permeable pouch and gas permeable top surface.” As we found supra,
Ford discloses the catnip pouch 19 within a pocket and thus beneath a layer
of outer covering 2, and Ford also discloses that the purpose of the catnip
pouch is to attract cats to the pet bed. Based on these disclosures, we find by
a preponderance of the evidence that Ford’s outer covering fabric and pouch
material are sufficiently permeable to allow scent from the catnip to
permeate therethrough when depressed by the weight of a cat. Appellant’s
argument that Ford’s pocket does not close so that fragrance emanating from
the bed would pass from the open pocket rather than the outer shell materials
(Br. 7) is based on speculation and finds no support in the evidence of
record. As such, Appellant has not persuaded us of error in the rejection of
claim 8. We affirm the rejection of claim 8. Claim 9 falls with claim 8.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-9.
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).
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AFFIRMED

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