Ex Parte Leifermann et al

Patent Trial and Appeal Board

Apr 18, 2013

11407760 (P.T.A.B. Apr. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BENTE LEIFERMANN, TRINE THRANE,
KIRSTEN MAARBJERG, and TORBEN MIKKELSEN
____________________

Appeal 2011-000137
Application 11/407,760
Technology Center 3600
____________________

Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
BRETT C. MARTIN Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
9 and 19-31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter new grounds of rejection.

The claims are directed to a multi-component pillow and method of
manufacturing and assembling same. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A pillow, comprising:
an outer sleeve;
an inner sleeve located within the outer sleeve and
defining an internal cavity;
a plurality of loose pieces of filler material contained
within the internal cavity of the inner sleeve; and
a first unitary piece of foam retained in a first position
between the inner and outer sleeves and covering less than all
of the inner sleeve, wherein a portion of the inner sleeve of the
pillow is exposed to the outer sleeve.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Isogai US 5,809,594 Sep. 22, 1998
Chou
Wassilefky
US 2001/0003219 A1
US 2005/0076442 A1
Jun. 14, 2001
Apr. 14, 2005
Jessup US 3,287,750 Nov. 29, 1966

REJECTIONS
Claims 1-6 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Isogai. Ans. 3.
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Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Isogai in view of Wassilefky. Ans. 4.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Isogai in view of Jessup. Ans. 5.
Claims 19-31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wassilefky in view of Chou. Ans. 6.

OPINION
The rejection of claims 1-6 as anticipated under 35 U.S.C. § 102(b) is
reversed.
The Examiner found claims 1-6 are anticipated by Isogai. Ans. 3.
Appellants argue that Isogai fails to disclose, “a first unitary piece of foam.”
(Emphasis added). App. Br. 3-4. The Examiner found claim 4 of Isogai
discloses that element 18, which the Examiner identified as a unitary piece,
can be made from “foam.” Ans. 9 (determining that Isogai’s foam units
compose a unitary member 18). The claims on appeal make the distinction
between “loose pieces” and a “unitary piece.” Thus, it is unreasonable to
interpret the limitation “unitary” to encompass one unit of a collection of
individual pieces. Ans. 9. A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Isogai at most discloses that the
bulk material used in element 18 can be made of foam and does not disclose
whether that foam is a unitary piece. As the Isogai reference fails to disclose
the “unitary piece of foam” (emphasis added) as recited in the claim, the
Examiner’s rejection is reversed.

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Application 11/407,760
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we denominate
our affirmance of claims 7-9 as a “New Ground of Rejection” and enter a
New Ground of Rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Isogai in view of Wassilefky or Jessup
Appellants argue that the combination of Isogai and Wassilefky is
insufficient because the rejection of the independent claim from which
claims 7 and 9 depend was erroneous. App. Br. 4. In this instance, the
Examiner correctly concluded that the subject matter of claims 7 and 9
would have been obvious. As discussed supra, the Examiner’s rejection of
claim 1 was not proper under 35 U.S.C. § 102(b) because the Examiner
failed to establish that Isogai discloses a “unitary” piece of foam. However,
Isogai does disclose all the limitations of claim 1 except for the unitary piece
of foam, including foam retained in a first position between the inner and
outer sleeves. Wassilefky not only teaches the use of a piece of viscoelastic
foam and a pillow case, Wassilefky teaches that the piece of viscoelastic
foam is a unitary piece of foam. See Ans. 4-5 and fig. 2. Wassilefky teaches
that the use of a unitary piece of viscoelastic foam has the advantage of
having thermally-responsive properties. See Para. [0026]. Further, a unitary
piece of foam and loose pieces of foam are used for the same purpose of
maintaining the firmness of the pillow. It would have been obvious to one of
ordinary skill in the art to use the unitary piece of foam as taught by
Wassilefky in the pillow of Isogai as a matter of simple substitution of
known materials with the predictable result of maintaining the firmness of
the pillow. The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). A prima
facie conclusion of obviousness may be supported by a showing that the
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claims are directed to a process, machine, manufacture, or composition of
matter already known in the prior art that is altered by the mere substitution
of one element for another known in the field, and such modification yields
a predictable result. Id.
Therefore, it would have been obvious to one of ordinary skill in the
art to use the unitary piece of foam taught by Wassilefky in the pillow of
Isogai. We therefore adopt the rejection of claims 7 and 9 for independent
claim 1. The subject matter of a broader independent claim cannot be non-
obvious where the subject matter of a dependent claim would have been
obvious under 35 U.S.C. § 103(a). See Callaway Golf Co. v. Acushnet Co.,
576 F.3d 1331, 1344 (Fed. Cir. 2009) (citing Ormco Corp. v. Align Tech.,
Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)); see also Comaper Corp. v.
Antec, Inc., 596 F.3d 1343, 1349-50 (Fed. Cir. 2010). As dependent claims 7
and 9 were properly rejected under 35 U.S.C. § 103(a), the obviousness
rejection cures the deficiency of the anticipation rejection over Isogai. Thus,
claims 1, 7, and 9 are unpatentable under 35 U.S.C. § 103(a).
Appellants additionally argue that the rejection of claim 8, under 35
U.S.C. § 103(a) as unpatentable over Isogai in view of Jessup, should be
reversed as it depends from claim 1, which was not properly rejected under
35 U.S.C. § 102(b). App. Br. 5. As with claims 7 and 9, the Examiner
correctly rejected claim 8 under 35 U.S.C. § 103(a). As the subject matter of
claim 8 is obvious, the subject matter of claim 1 cannot be non-obvious. See
Ormco Corp. v. Align Tech., Inc., 498 F.3d at 1319. The Examiner found
that while Isogai fails to disclose “a plurality of vent holes extend through
the first unitary piece of foam,” Jessup teaches the use of a unitary piece of
foam having a plurality of vent holes. Ans. 5-6. Here, as was the case with
Wassilefky, Jessup teaches not only a plurality of vent holes, but also a
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unitary piece of foam 11. See fig. 2. It would have been obvious to one of
ordinary skill in the art to use the unitary piece of foam with the plurality of
vent holes, as taught by Jessup, in place of the foam disclosed by Isogai.
Jessup teaches the use of the unitary piece of foam with vent holes, which is
commercially available, to “provide for more free circulation of air
. . . [which tends] to make the composite cushion structure less retentive of
odors.” See col. 1, ll. 67-72 and col. 2, ll. 4-7. Additionally, as discussed
above, it would have been obvious to one of ordinary skill in the art to use a
single unitary piece of foam, in place of a plurality of loose pieces of foam,
for the same purpose of maintaining the firmness of the pillow. As claim 8
was properly rejected under 35 U.S.C. § 103(a) over Isogai in view of
Jessup, claim 1 is therefore rejected under 35 U.S.C. § 103(a) as well.

The rejection of claims 19-31 as obvious under 35 U.S.C. § 103(a) is
affirmed
Appellants generally argue that the Examiner erred in the rejection of
claims 19-31 as unpatentable over Wassilefky in view of Chou. App. Br. 5-
6. The Examiner found Wassilefky discloses the invention of claim 19
except for the inner sleeve with a cavity to surround the filler material. Ans.
6. The Examiner additionally found that Chou discloses an inner sleeve
containing filler material in order “to maintain the filler material together as
a collective unit,” and that it would have been obvious to one of ordinary
skill in the art to use the inner sleeve as taught by Chou in the pillow
disclosed by Wassilefky. Ans. 6-7. Appellants do not argue that the
proposed combination lacks rational underpinnings; rather, Appellants argue
that the combination would not result in “a unitary piece of foam covering
the sleeve only along a side of the pillow.” App. Br. 6 (emphasis added).
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The Examiner argues that Wassilefky discloses a unitary piece of foam, 18,
which covers the filler material 14, which, when combined with Chou,
would include a sleeve, only along a “top” side of the pillow. Ans. 10.
Appellants have not apprised us of any reason why the claim limitation
“side” does encompass a “top” side or a “bottom” side, as the Examiner
concludes. As such, the combination of Wassilefky in view of Chou renders
claims 19-31 non-patentable as obvious.

DECISION
The Examiner’s rejection of claims 1-6 as anticipated under 35 U.S.C.
§ 102(b) is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we denominate
our affirmance of claims 7-9 as a “New Ground of Rejection” and enter New
Grounds of Rejection for claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Isogai in view of Wassilefky or Jessup.
The Examiner’s rejection of claims 19-31 as unpatentable under 35
U.S.C. § 103(a) is affirmed.

Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.” In addition to affirming the
Examiner’s rejection(s) of one or more claims, this decision contains new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection(s), the effective date of the affirmance is deferred until conclusion
of the prosecution before the Examiner unless, as a mere incident to the
limited prosecution, the affirmed rejection(s) is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection(s), including any timely request for rehearing
thereof.
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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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