Ex Parte Levinsohn

Board of Patent Appeals and Interferences

Nov 23, 2010

11394283 (B.P.A.I. Nov. 23, 2010)

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.
11/394,283 03/30/2006 Adam Levinsohn 554.1002 9182
23280 7590 11/23/2010
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
11/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ADAM LEVINSOHN
____________________

Appeal 2009-008632
Application 11/394,283
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D. A.
MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Adam Levinsohn (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1-15 and 17-
20 as being unpatentable over Morten (US 5,075,910, iss. Dec. 31, 1991)
and Gill (US 2,641,779, iss. Jun. 16, 1953); and claim 16 as being
unpatentable over Morten, Gill, and Cohen (US 4,821,349, iss. Apr. 18,
1989). We have jurisdiction under 35 U.S.C. § 6(b).

THE INVENTION
The claims are directed to an inflatable headboard system. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An inflatable headboard system comprising a plastic bladder
capable of being inflated and having a port for inflation and a
fastener for detachably mounting the plastic bladder to a wall,
and a cover having openings positioned to coincide with the
positioning of the fastener.

SUMMARY OF DECISION
We AFFIRM- IN-PART.

ISSUES
The issues presented in this appeal are:
1. Would it have been obvious to a person of ordinary skill in the art to
combine the inflatable headboard of Morten with a headboard cover as
taught by Gill?
2. Does the combination of Morten and Gill render obvious an inflatable
headboard and a cover having openings positioned to coincide with the
positioning of the fastener, as required in claim 1?
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3. Did the Examiner properly rely on Official Notice in addressing the
limitations of claims 5, 6, and 12; and, if so, has Appellant adequately
and seasonably challenged the Examiner’s taking of Official Notice?
4. Has the Examiner established a prima facie case that an inflatable
headboard system comprising “a cover having a fastener for detachabl[y]
mounting the headboard to the wall,” as called for in claim 19, would
have been obvious?

DISCUSSION
Issue 1 – combinability of Morten and Gill
Appellant argues that it would not have been obvious to a person of
ordinary skill in the art to combine the inflatable headboard of Morten with a
headboard cover as taught by Gill because:
(a) a reference describing an inflatable headboard (Morten) would not
have prompted one skilled in the art to look to a reference describing a cover
for a conventional non-inflatable headboard (Gill) (App. Br. 9);
(b) Morten states that one of the objects of the inflatable headboard
invention is to provide a headboard that can be easily and quickly replaced
with another headboard having a different color and/or design; thus, Morten
would have suggested disposing of the headboard, rather than putting a
cover on the old headboard (App. Br. 9-10); and
(c) a cover having, or providing for, a necessarily exposed fastener
would not be suitable as a cover of the Gill patent, which teaches a cover
that completely encloses the fastenings (App. Br. 10-11).
These arguments are not convincing. As pointed out by the Supreme
Court,
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[c]ommon sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle. . . . A person
of ordinary skill is also a person of ordinary creativity, not an
automaton.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
With respect to argument (a), Appellant’s characterization of Gill as
describing a cover for a conventional non-inflatable headboard is somewhat
misleading. While Gill does describe a particular application of the cover
with a “conventional type of head-board” (col. 1, l. 33), the cover is disposed
over a conventional head-board 5 having a cushion 6 secured thereto with
tapes 7, 8 (col. 1, ll. 33-35; fig. 3), not over simply a “typical, hard, rigid,
wood headboard[]” of the type referred to by Morten (col. 2, ll. 11-12). In
any event, Gill gives no indication that the teachings of a cover are limited in
applicability to conventional, non-inflatable headboards. A person of
ordinary skill in the art, being a person of ordinary creativity, and not an
automaton, would have appreciated that Gill’s cover would have
applicability to headboards generally, and particularly to other headboard
assemblies that, like the cushioned headboard of Gill, are “comfortable to
lean against” (Morten, col. 2, ll. 10-11), such as the inflatable headboard of
Morten.
To the extent that Appellant is arguing that neither Morten nor Gill
provides a teaching, suggestion, or motivation to combine the references
(App. Br. 9), such a line of argument is not persuasive of nonobviousness.
The Supreme Court has stated that a rigid insistence on teaching, suggestion,
or motivation is incompatible with its precedent concerning obviousness.
KSR, 550 U.S. at 419.
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Further, Morten’s teaching that an object of the inflatable headboard
invention is to “provide a headboard that can be easily and quickly replaced
with another headboard of the same general construction but having a
different color and/or design to allow the decor of the bedroom to be easily
and quickly changed” (col. 2, ll. 12-17) does not suggest that this is the only
manner in which the decor of the bedroom can be easily and quickly
changed, and would not have dissuaded a person of ordinary skill in the art
from providing Morten’s inflatable headboard with a decorative cover as
taught by Gill (col. 1, ll. 1-2; col. 2, ll. 12-13). Accordingly, the Examiner’s
articulated reason for the modification has rational underpinning which is
not undercut by Morten’s teaching that the inflatable headboard itself can be
quickly and easily replaced. Moreover, Gill expressly teaches that the
headboard cover has other functions, i.e., protection of the headboard and
easy removability for laundering (col. 1, ll. 2-5), in addition to its function as
a decorative cover, that would be equally applicable to an inflatable
headboard.
Finally, Gill’s description of the cover as “completely enclos[ing]” the
headboard, cushion, and fastenings thereof (col. 1, ll. 11-13) in no way
suggests that such a cover would be unsuitable for the inflatable headboard
of Morten, which has fasteners for attachment either to the bed or the wall
(col. 3, ll. 22-37), or that openings could not be provided for access to those
fasteners. In fact, Gill illustrates that the fasteners (the legs and bracket
detents) for fastening the headboard to the bed are not completely enclosed
by the cover; rather, they are accessible (figs. 1-3). Indeed, provision in the
cover of openings aligned with or coinciding with the fasteners on the
inflatable headboard of Morten would be an obvious exercise of ordinary
creativity and common sense, not a product of innovation.
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Issue 2 – alleged missing feature
(cover having openings positioned to coincide with fasteners)
Appellant additionally argues that the combination of Morten and Gill
does not teach or suggest a cover having openings positioned to coincide
with the positioning of the fastener, as required in claim 1. App. Br. 13. For
the reasons discussed above regarding Issue 1, we do not find this argument
convincing.
Issue 3 – Official Notice
Appellant also argues that in rejecting claims 5, 6, and 12, the
Examiner has disregarded USPTO procedures for taking Official Notice.
App. Br. 7-8.
We find that, in addressing the limitations of claims 5 and 6, the
Examiner first took Official Notice that hook and loop fasteners, suction
cups, tape, and brackets are known functional equivalents for securing
objects to a wall in the Non-Final Rejection mailed April 19, 2007 (p. 6).
We also find that, in addressing the limitations of claim 12, the Examiner
first took Official Notice of “the use of gussets for imparting expansion to
cover members” in that same Non-Final Rejection (p. 7).
The facts of which the Examiner took Official Notice do not concern
“specific ‘knowledge’ of the prior art, which might be peculiar to a
particular art.” Compare In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970)
(allegations concerning specific knowledge which might be peculiar to a
particular art should be supported by citation to some reference work
recognized as standard in the pertinent art). Indeed, Appellant’s nominal
reference in the Specification to the various fasteners recited in claims 5 and
6 (Spec. 6) and to a gusset (C) in the cover (Spec. 9), without any further
structural description or explanation as to how these fasteners could be used
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to attach the headboard to a wall or how the gusset is formed in the cover,
suggests that Appellant appreciated, at the time the present application was
filed, that the enumerated fasteners and gussets were well known in the art
for the uses noted in the Examiner’s Official Notice. Based on the record
before us, the facts of which the Examiner took Official Notice reasonably
appear to be of the type that are, if not generally notorious, “capable of such
instant and unquestionable demonstration as to defy dispute.” See Ahlert,
424 F.2d at 1091. Moreover, the Examiner was very explicit in articulating
both that Official Notice was taken, and in stating the facts of which Official
Notice was taken. Thus, the Examiner’s taking of Official Notice appears to
have been proper.
Appellant did not challenge the Examiner’s taking of Official Notice
in response to the Non-Final Rejection. At that point, the facts of which the
Examiner took Official Notice were taken to be admitted prior art.2 See In
re Chevenard, 139 F.2d 711, 713 (CCPA 1943) (if an applicant does not
seasonably traverse the taking of official notice, then the object of the
official notice is taken to be admitted prior art); Ahlert, 424 F.2d at 1091
(where an applicant for a patent has failed to challenge a fact officially
noticed by the Examiner, and it is clear that the applicant has been amply
apprised of such finding so as to have the opportunity to make such
challenge, the Examiner’s finding shall be considered conclusive).
Appellant first addressed the Examiner’s taking of Official Notice in
the Reply (filed Jan. 22, 2008) to the Final Rejection. Reply 13. In that
Reply, Appellant did not challenge the facts of which the Examiner took

2 That the Examiner did not explicitly state that these facts were taken to be
admitted prior art until the Advisory Action, mailed March 4, 2008, does not
alter this result.
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Official Notice. Rather, Appellant merely objected that the Examiner had
not provided supporting documentary evidence to support the “conclusions,”
and stated that Appellant disagrees with the Examiner’s “conclusions.” Id.
We do not find in this record any challenge by Appellant of the facts
of which the Examiner took Official Notice. Appellant contends in the
Appeal Brief that the Examiner has not followed proper procedure in taking
Official Notice, and reiterates the statement that the Examiner must provide
documentary evidence to support the finding (App. Br. 7-8). Appellant has
not, however, come forth with any information or argument that, on its face,
casts reasonable doubt regarding the justification of the Official Notice. See
In re Boon, 439 F.2d 724, 728 (CCPA 1971) (an applicant has the right to
challenge the official notice and demand production of evidence in support
thereof, provided such challenge is accompanied by adequate information or
argument that, on its face, creates a reasonable doubt regarding the
circumstances justifying the official notice).3 Thus, we agree with the
Examiner that Appellant has not adequately traversed the Examiner’s taking
of Official Notice, so as to require the Examiner to produce documentary
evidence in support thereof.
Issue 4 – claim 19
Appellant argues that the combination of Morten and Gill does not
render obvious an inflatable headboard system comprising “a cover having a
fastener for detachabl[y] mounting the headboard to the wall,” as called for
in claim 19. App. Br. 14-16. In particular, Appellant contends that the

3 Appellant has not specifically disputed, even by way of argument, that the
enumerated fasteners and gussets were well known in the art for the uses
noted in the Examiner’s Official Notice.
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fasteners 11 taught by Gill are not for detachably mounting the headboard to
the wall. App. Br. 16.
The only finding made by the Examiner on the record with respect to
a cover having a fastener appears in the Advisory Action, mailed March 4,
2008 (p. 3), wherein the Examiner found that “the cover [of Gill] includes
fasteners (11) which are capable of attaching the cover to a wall.” This
finding does not address the argued limitation of claim 19, which calls for “a
cover having a fastener for detachabl[y] mounting the headboard to the
wall.” Emphasis added. Moreover, the fasteners 11 referred to by the
Examiner are “snap fasteners 11 or equivalent securing devices” for securing
the edges at the bottom opening together to secure the cover to the
headboard assembly (Gill, col. 1, ll. 37-39; figs. 1-3). Gill does not disclose
use of these snap fasteners, or equivalent securing devices, for detachably
securing the headboard to the wall, and the Examiner does not allege, much
less explain how, they are capable of detachably mounting the headboard to
the wall.
For the above reasons, the Examiner has not established a prima facie
case that an inflatable headboard system comprising “a cover having a
fastener for detachabl[y] mounting the headboard to the wall,” as called for
in claim 19, would have been obvious.

CONCLUSIONS
1. It would have been obvious to a person of ordinary skill in the art to
combine the inflatable headboard of Morten with a headboard cover as
taught by Gill.
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2. The combination of Morten and Gill renders obvious an inflatable
headboard and a cover having openings positioned to coincide with the
positioning of the fasteners, as required in claim 1.
3. The Examiner properly relied on Official Notice in addressing the
limitations of claims 5, 6, and 12, and Appellant has not adequately or
seasonably challenged the Examiner’s taking of Official Notice.
4. The Examiner has not established a prima facie case that an inflatable
headboard system comprising “a cover having a fastener for detachabl[y]
mounting the headboard to the wall,” as called for in claim 19, would
have been obvious.
In light of our conclusions, we sustain the rejection of claim 1, and of
claims 2-4, 7-11, 13-15, 17, and 18, for which Appellant has not presented
any separate arguments (see 37 C.F.R. § 41.37(c)(1)(vii)). We also sustain
the rejection of claim 20, for which Appellant repeats essentially the same
arguments asserted for claim 1, which, for the reasons discussed above, are
not convincing. We also sustain the rejection of claims 5, 6, and 12.
In contesting the rejection of claim 16 as being unpatentable over
Morten, Gill, and Cohen, Appellant argues only that Cohen does not
overcome the deficiencies in the combination of Morten and Gill asserted
with respect to claim 1 (App. Br. 18-20). This argument is unpersuasive, for
the reasons discussed above. Thus, we sustain the rejection of claim 16.
We do not sustain the rejection of claim 19.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 1-18 and 20, and reversed as to claim 19.
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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)(iv).

AFFIRMED-IN-PART

hh

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