Ex Parte Landvik

Board of Patent Appeals and Interferences

Apr 22, 2010

11080739 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAG LANDVIK
__________

Appeal 2009-013099
Application 11/080,739
Technology Center 1700
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Decided: April 22, 2010
____________

Before MICHAEL P. COLAIANNI, Administrative Patent Judge,
FRED E. McKELVEY, Senior Administrative Patent Judge, and
JEFFREY B. ROBERTSON, Administrative Patent Judge.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of
claims 21-35 and 37-40. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellant discloses a support cushion having an underlying layer 2
with truncated cones 4 and an overlying layer 6 supported upon the
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truncated cones of the underlying layer (Spec. 2, ll. 10-15; 5, l. 10 – 6, l. 7;
Figs. 1 and 2).
Claim 21 is illustrative:
21. A support cushion, comprising:

an underlying layer comprising flexible foam, at least a part of a side
of the underlying layer comprising a plurality of truncated cones, each of
which is separate, discrete, and free from contact with adjacent truncated
cones in an undeflected state of the truncated cones; and

an overlying layer comprising visco-elastic foam, the overlying layer
supported upon the underlying layer, wherein the plurality of truncated
cones extend in a direction toward the overlying layer.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Mitchell 4,262,048 Apr. 14, 1981
Lassiter 4,690,847 Sep. 1, 1987
Sasaki 5,331,750 Jul. 26, 1994
Swanson 5,669,094 Sep. 23, 1997
Kohnle 6,052,851 Apr. 25, 2000
Fogel 6,192,538 B1 Feb. 27, 2001
Ward 6,202,239 B1 Mar. 20, 2001
Romano 6,269,504 B1 Aug. 7, 2001

Appellant appeals the following rejections:
1. Claims 21-27, 35, and 37-40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Romano in view of any one of Kohnle, Fogel,
Ward, or Swanson.
2. Claims 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over any of Kohnle, Fogel, or Ward in view of Sasaki.
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3. Claims 35 and 37-40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over any of Kohnle, Fogel, or Ward in view of Sasaki
and further in view of Swanson.
4. Claims 28-34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over any of Kohnle, Fogel, or Ward in view of Mitchell
or Lassiter.

Rejection (1)
ISSUE
Did the Examiner err in finding that Romano teaches a cushion having
an underlying flexible foam layer with at least a part of a side of the
underlying foam layer comprising truncated cones and a foam layer
overlying the underlying flexible foam as required by claims 21 and 35? We
decide this issue in the affirmative.

PRINCIPLE OF LAW
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

FACTUAL FINDINGS (FF)
1. Romano discloses in the Figure 1 embodiment that foam layers 12,
14, 16, and 18 may be adhered together to form a foam base (e.g.,
reference number 50 in Figure 2) (col. 3, ll. 18-58). Romano discloses
that the foam base may also be made from a single piece of foam (col.
3, ll. 53-58). Romano does not disclose at least a part of a side of the
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foam base (i.e., underlying layer) comprises a plurality of truncated
cones.
2. Romano further discloses that the invention includes placing
“indented fiber layers or other such three dimensional engineered
material layers [i.e., 60] having a plurality of resilient members 76
over the [foam] base 10, 50” (col. 3, ll. 59-62; Figure 2). The resilient
members 76 may also be placed within a cutout or recessed section 74
of the base 70 (Figure 3; col. 4, ll. 1-6).
3. With regard to the Figure 7 embodiment, Romano discloses that
layers 112, 114, 116, and 118 are indented fiber layers made of
SPACENET® material, which is a three dimensional textile fabric
having projections and depressions (Romano, col. 1, ll. 32-50).
Romano describes the three dimensional engineered material as
having a spring rate in the X and Y axes, which may include materials
such as Model 5875 from Müller Textile or “other suitable material”
(Romano, col. 1, ll. 50-57). Romano defines “three dimensional
engineered material" as “any of these types of materials” (e.g., three
dimensional textile materials) (Romano, col. 1, ll. 58-60). Romano
does not disclose that the layers placed atop the foam base are made
of foam.
4. Romano’s disclosure at column 5, lines 10-21 relates to forming
various foam layers to form the base of the cushion (i.e., 10, 50, or 70
in the figures), not foam layers overlying a truncated conical surface
(col. 4, ll. 54-62).
5.

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ANALYSIS
The Examiner finds that Romano discloses using multiple layers of
foam and cites to Figure 3, reference numeral 60 and Figure 7, reference
numerals 112, 114, 116, and 118 (Ans. 4 and 11). The Examiner further
finds that Romano discloses a base 70 comprising a plurality of separate and
discrete truncated cones 76 as shown in Figure 3 (Ans. 4). The Examiner
finds that Romano teaches at column 5, lines 10-21 that foam layers may be
stacked upon one another (Ans. 4).
The Examiner states that “it would have been obvious . . . to place a
top layer of a visco-elastic foam, as is taught by all the secondary references,
in order to provide a cushion with the properties of a top layer visco-elastic
cushion motivated by the fact that all the secondary references teach to use
visco-elastic foam as a top layer in multilayered foam cushions and Romano
teaches multiple layered foam cushions are known.” (Ans. 4). In other
words, the Examiner’s stated case is based on both Romano and the
secondary references teaching multi-layered foams as suggesting to place a
visco-elastic foam as the top layer of a multilayer foam.
Appellant argues that the Examiner erred in finding that Romano
teaches overlying layers made of foam and an underlying foam layer having
at least part of a side of the underlying layer comprising truncated cones
(App. Br. 6; Reply Br. 2). Appellant contends that these factual errors
undermine the Examiner’s basis for concluding that it would have been
obvious to place a visco-elastic foam layer as Romano’s top layer of foam as
taught by Ward, Fogel, Swanson, or Kohnle (App. Br. 6; Reply Br. 2). We
agree.

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The Examiner erred in finding that Romano’s feature 60 in Figure 3
shows foam layers overlying a base layer of foam (e.g., 70). Romano
discloses that the layers 60 are indented fiber layers or three dimensional
engineered materials (e.g., SPACENET®), which is a textile material and
not foam.
The Examiner further refers to Romano’s Figures 7, 9, and 12 as
showing overlying layers of foam 110, 112, 116, 120, and 124 (Ans. 11). As
correctly argued by Appellant (Reply Br. 2), Romano identifies these layers
as made of the SPACENET® textile material, not foam.
Romano’s column 5 disclosure the Examiner relies upon as showing
multilayer foams in fact discloses forming multilayer foams for the base
(i.e., 10, 50 or 70 in the figures). In other words, the Examiner failed to
establish that Romano teaches or would have suggested a foam layer
overlying a truncated conical surface of an underlying layer of foam.
The Examiner relies on Ward, Fogel, Swanson, or Kohnle to teach
using a visco-elastic foam layer as a top layer of a multilayer foam. The
Examiner does not rely on the secondary references to teach truncated
conical surfaces on a foam base.
The Examiner relies on these erroneous factual findings regarding
Romano as a basis for concluding that it would have been obvious to place a
visco-elastic foam layer as the top foam layer of Romano’s overlying foam
layers as taught by Kohnle, Fogel, Swanson, or Ward (Ans. 4). However,
the only multilayer foam in Romano is the base layer foam upon which the
three dimensional engineered material with the truncated conical surfaces is
placed. Therefore, the Examiner’s proffered combination would have
resulted in the top layer of the multilayer base foam being underneath the
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layer of three dimensional engineered material layers (i.e., non-foam) having
the truncated cones, which does not meet to the subject matter of claims 21
and 35.
Accordingly, the Examiner’s stated case is based on erroneous
findings of fact and thus fails to satisfy the burden of establishing an initial
prima facie case. We reverse the § 103 rejection over Romano in view of
any of Swanson, Kohnle, Fogel, or Ward.

Rejections (2) and (3)
Appellant argues the claims under rejection (2) as a group, of which
we select claim 21 as representative. 37 C.F.R. § 47.31(c)(1)(vii).
Because Appellant advances the arguments made regarding rejection
(2) with regard to rejection (3), the rejection of claims 35, and 37-40 will
stand or fall with rejection (2).
ISSUE
Did the Examiner err in concluding that it would have been obvious to
modify the textured surface of Kohnle’s, Fogel’s or Ward’s foam layer to
include Sasaki’s truncated cones? We decide this issue in the negative.

PRINCIPLES OF LAW
A reference may be said to teach away “when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “The degree of teaching away will of course depend on
the particular facts; in general, a reference will teach away if it suggests that
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the line of development flowing from the reference's disclosure is unlikely to
be productive of the result sought by the applicant.” Id.
Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance. Id. A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use. Id.
When assessing the obviousness of claimed subject matter, a court
must ask whether the improvement is more than the predictable use of prior
art elements according to their established function. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).

ADDITIONAL FACTUAL FINDINGS
6. Sasaki discloses a shock absorbing structure that may be used, inter
alia, in chair cushions, mattresses, or shoes (Sasaki, col. 1, ll. 12-19).
7. Sasaski discloses that in the context of exercising or walking shoes,
conventional materials such as foams have shortcomings because the
materials are not durable and the “change rate” of the foam material is
“not good” (Sasaki, col. 1, ll. 20-66).
8. Sasaki discloses using a rubber-like elastic material to address the
durability and change rate problems with conventional shock
absorbing materials (Sasaki, col. 2, ll. 59-64). Sasaki further discloses
that the shock absorbing structure may include a series of projections
spaced apart and in parallel on the base (col. 2, ll. 62-64). The
projections may be a variety of shapes which include pyramidal
truncated cones (Sasaki, col. 5, ll. 63-68). Sasaki discloses that the
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projections aid in absorbing shock (Sasaki, col. 3, ll. 6-9; col. 5, ll.
65-67).

ANALYSIS
Appellant does not contest the Examiner’s finding that Swanson
teaches adhesives for bonding foam layers or the Examiner’s conclusion that
it would have been obvious to combine Swanson’s adhesive with Kohnle,
Ward, Fogel, and Sasaki (App. Br. 10-11).
Appellant argues that Sasaki teaches away from using the truncated
cones in a foam material (App. Br. 8). Appellant contends that Sasaki uses a
rubber-like elastic material, not a foam material having the projections (App.
Br. 8). Appellant does not contest the Examiner’s findings on pages 5-6,
and 7 of the Answer regarding Kohnle, Fogel, Ward, or Swanson (App. Br.
8-11).
The nature of Sasaki’s teaching does not constitute a teaching away.
To the contrary, Sasaki teaches that in the context of exercise footwear, the
durability and change rate of conventional foam may not be adequate for use
in such a context. However, Sasaki does not disclose that the durability and
change rate issues with foam that affect shock absorbing in exercise
footwear would necessarily have the same affect in a chair cushion, for
example.
Accordingly, one of ordinary skill in the art would have recognized
from Sasaki’s disclosure that conventional foams may be used as shock
absorbers in cushions with possibly some attendant durability and change
rate shortcomings. Fogel, Kohnle, or Ward teaches foam with raised areas
for cushioning (i.e., shock absorbing).
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Accordingly, the teachings of the references as a whole would have
suggested that raised areas, such as Sasaki’s truncated cones, on foam may
be used for shock absorption. The use of Sasaki’s truncated cones for the
raised portions in Fogel’s, Kohnle’s, or Ward’s foam cushioning material
would have been nothing more than the predictable use of a prior element
(i.e., foam with a projections) according to its established function (i.e.,
cushioning or shock absorption). KSR, 550 U.S. at 417.
For the above reasons, we affirm the Examiner’s § 103 rejections of
claims 21-27 over Kohnle, Fogel, or Ward in view of Sasaki, and claims 35
and 37-40 over Kohnle, Fogel, or Ward in view of Sasaki and further in
view of Swanson.

Rejection (4)
Appellant argues the claims as a group of which we select claim 28 as
representative (App. Br. 12-13). 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in determining that the teachings of the
references as a whole would have suggested forming the foam projections of
Fogel, Kohnle, or Ward into truncated conical shapes as taught by Mitchell
or Lassiter? We decide this issue in the negative.

PRINCIPLE OF LAW
In determining whether art is analogous, we must find: (1) whether the
prior art is in the same field of Appellant's field of endeavor and (2) if not,
whether the prior art is reasonably pertinent to the particular problem
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Appellant is trying to solve. See In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992).
FACTUAL FINDINGS
9. The record shows that the Examiner’s prior art combination is based
on modifying the textured foam layer of Fogel, Ward, or Kohnle to
have the truncated conical surfaces as taught by Mitchell or Lassiter
(Ans. 10).
10. Mitchell discloses a heel protector having an underlying foam
cushioning layer 19 having a convoluted surface and an overlying
plastic film 29 (Figures 1-3; col. 2, ll. 15-33, 53-60).

ANALYSIS
Appellant argues that Mitchell teaches away from using foam material
in such projections and instead describes using a strip of thin, flexible plastic
film 29 (App. Br. 12). However, Appellant’s argument fails to address the
Examiner’s stated obviousness case, which is based upon Mitchell’s
teaching that the foam layer 19 has truncated cones (Ans. 10). As noted by
the Examiner, Mitchell’s Figure 3, plainly shows a foam layer having a
convoluted surface. Appellant’s argument does not address this finding.
Rather, Appellant’s “teaching away” argument is contradicted by Mitchell’s
disclosure that teaches the convoluted surface is made of foam.
Appellant argues that Lassiter fails to teach a second layer of foam
overlying the first layer (App. Br. 13). However, this argument fails to
address the Examiner’s stated rejection which relies on the combination of
Fogel, Ward or Kohnle with Lassiter to meet all the claimed features.
Appellant has improperly argued the references separately.
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Appellant further contends that one of ordinary skill would not look to
jackets or garments as described by Lassiter for a solution to a problem in
mattress design (i.e., Lassiter is in a different field of endeavor) (App. Br.
13). This argument is not persuasive because Appellant has not argued or
shown that Lassiter’s disclosure is not reasonably pertinent to the problem
Appellant is trying to solve (i.e., the second prong of the analogous art test).
For these reasons, we affirm the Examiner’s § 103 rejection of claims
28-34 over Fogel, Ward, or Kohnle in view of Mitchell or Lassiter.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(2009).

ORDER
AFFIRMED

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TIMOTHY M. KELLY
MICHAEL BEST & FRIEDRICH, LLP
100 EAST WISCONSIN AVENUE
MILWAUKEE WI 53202-4108