Ex Parte Losio

Board of Patent Appeals and Interferences

May 31, 2012

11365473 (B.P.A.I. May. 31, 2012)

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.
11/365,473 03/01/2006 Massimo Losio 374-34 7118
24336 7590 05/31/2012
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASSIMO LOSIO
____________

Appeal 2010-010707
Application 11/365,473
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 3-19, 21-33, 36-40, 43, and 54-58. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Representative claim 1 reads as follows:
An apparatus for supporting at least a portion of the body
thereon, said apparatus comprising a gel layer overlying one or more
additional support layers, wherein said gel layer is dimensioned and
configured to permit tri-dimensional deflection of the gel responsive
to the portion of the body including a direction perpendicular to a
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plane of the gel layer, the gel layer comprises a gel having a hardness
in the range of about 0.5 kPa to about 50 kPa and exhibiting a
hysteresis of about 15% to about 80%, wherein the hardness and
hysteresis provide a cushioning effect while maintaining a degree of
structured stability and support such that a pressure is evenly exerted
against all parts of the portion of the body in contact with the gel
layer.

Independent claim 26 is similarly drawn to a body support comprising
a filled gel layer overlying support layer(s), independent claim 40 is drawn
to a mattress comprising a gel layer overlying a foam layer, and independent
claim 54 is drawn to a body support comprising a gel layer. Each of these
independent claims recite the same hardness range and hysteresis range as
recited in claim 1 (see, Br., Claims Appendix).

The rejections maintained by the Examiner on appeal are:
1) Claims 6, 7, 37, 38, 43, and 56 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement;
2) Claims 1, 3-5, 8-15, 21-33, 36, 39, 40, 54, 55, 57, and 58 under 35
U.S.C. § 103(a) as unpatentable over Gansen1 in view of
Applicant’s Disclosure2;
3) Claims 6, 7, 37, 38, 43, and 56 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Gansen, Applicant’s
Disclosure, and Flam3; and

1 US 2004/0058163 A1, pub. Mar. 25, 2004.
2 Appellant’s Specification, filed Mar. 01, 2006, at 6:14-18, 9:26-31, 10:6-8
(Ans. 5).
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4) Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over
the combined prior art of Gansen, Applicant’s Disclosure, and
Sama4;
5) Claims 14 and 18 under 35 U.S.C. § 103(a) as unpatentable over
the combined prior art of Gansen, Applicant’s Disclosure, and
Bigolin5; and,
6) Claims 19 under 35 U.S.C. § 103(a) as unpatentable over the
combined prior art of Gansen, Applicant’s Disclosure, and
Boussaroque6; and
7) Claims 21-25, 27-33, 36, and 58 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Gansen, Applicant’s
Disclosure, and Allen7.

The §112, first paragraph, Rejection for lack of Written Description
The fundamental factual inquiry in determining whether a claimed
invention satisfies the written description requirement of 35 U.S.C. § 112,
first paragraph, is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The claimed subject matter need
not be described in haec verba in the specification in order for the

3 US 3,828,378, issued Aug. 13, 1974.
4 US 4,532,662, issued Aug. 06, 1985.
5 US 5,441,676, issued Aug. 15, 1995.
6 US 4,365,371, issued Dec. 28, 1982.
7 US 5,766,704, issued Jun. 16, 1998.
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specification to satisfy the description requirement. In re Smith, 481 F.2d
910, 914 (CCPA 1973). The PTO has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims. In re
Wertheim, 541 F.2d 257, 263 (CCPA 1976).
Contrary to the Examiner’s position, we determine that a
preponderance of the evidence supports Appellant’s position that the
Specification conveys with reasonable clarity that the body support
apparatus claimed in independent claims 1, 26, 40 and 54 (e.g., a mattress as
recited in independent claim 40) may comprise a covering overlying “and in
contact with” the gel layer as recited in dependent claims 6, 37, 43, and 56
(e.g., Spec. 17, ll. 2-4; App. Br. 16). The Examiner’s position is apparently
de facto premised on the lack of literal support in the original disclosure for
the phrase “in contact with”. However, one of ordinary skill in the art would
have reasonably appreciated that a covering that is described as “a coating”
layer overlying a gel layer (Spec. 17, ll. 2-4) would be in contact with the gel
layer. Likewise, one of ordinary skill in the art would have reasonably
understood that “a padded mattress topper” (Spec. 16, l. 30) covering the gel
layer as described in the Specification (Spec. 16, ll. 25-30) would be in
contact with the gel layer.
We conclude that Appellant's Specification conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, Appellant
was in possession of the invention as now claimed. Vas-Cath Inc. v.
Mahurkar, 935 F.2d at 1563-64.
Accordingly, we reverse the Examiner's decision to reject claims 6, 7,
37, 38, 43, and 56 for failure to meet the written description requirement.
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The § 103 Rejections
At the outset, we note that Appellant states that all the claims stand or
fall with their respective independent claim (Br. 12, 13). While there are
later sections in the brief devoted to each rejection, there are no focused
separate arguments set out therein (Br. 25-37; see also Ans. 13, 14
(“appellant fails to separately argue the claims”); no Reply Brief has been
filed). Accordingly, we shall focus on claim 1 as representative of the main
issue on appeal.
Main Issue On Appeal
Claim 1 is representative of the main issue on appeal: Has Appellant
shown the Examiner erred because it would not have been prima facie
obvious to optimize the claimed hardness and hysteresis properties to the
ranges claimed in each independent claim, and if not, has Appellant shown
that the claimed ranges evidence unexpected results?
We answer both parts of this question in the negative.
Analysis
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claim 1 would have been obvious to
one of ordinary skill in the art within the meaning of § 103 in view of the
applied prior art. Accordingly, we will sustain the Examiner’s rejections for
this claim for essentially those reasons expressed in the Answer, including
the Examiner’s Response to Argument section, and we add the following
primarily for emphasis.
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Even assuming that the Examiner’s position that the claimed properties
are inherent in the gel of Gansen is incorrect as alleged by Appellant, we are
in complete agreement with the Examiner's determination that the ranges of
hardness and hysteresis properties as claimed, for, e.g., a mattress layer,
would have been an obvious optimization of known result effective variables
for an individual’s comfort in sleeping on such a mattress. Appellant’s
contention that Gansen does not recognize hysteresis as a result effective
variable is unavailing, as there is no dispute that hysteresis is a measure of
the elasticity of the gel. As pointed out by the Examiner, Appellant’s
Specification explicitly states that the polyurethane gel of Gansen is
“capable of use according to the invention” of this application (Spec. 6, ll.
14-16). There is no dispute that Gansen explicitly teaches the gel may be
used as a mattress layer (Gansen paras. [0012], [0029], [0031]).
Furthermore, both Gansen and Appellant adjust the properties of the body
support apparatus or mattress by varying the additives in the gel layer. A
preponderance of the evidence supports the Examiner’s determination that
one of ordinary skill in the art would have readily arrived at the claimed
ranges which are indicative of elasticity and hardness of a gel layer on a
mattress, given the level of skill of one of ordinary skill in the art and the
other teachings of the applied prior art as detailed by the Examiner (Ans. 4-
13).
The additional remarks presented by Appellant regarding the “tri-
dimensional deflection” property of the gel (Br. 23, 24) and the thermal
properties recited in claims 23, 24, 29, 31 (Br. 25, 26) are unavailing for the
reasons set forth above and by the Examiner (Ans. 13).
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For the foregoing reasons and those stated in the Answer, we agree
with the Examiner’s findings in support of prima facie obviousness for all of
the claims on appeal.
Unexpected Results
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that the Appellant must show that
the particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant has presented a Declaration of the inventor, Massimo Losio
(filed September 2, 2008), as evidence of non-obviousness of the invention.
(See Evidence Appx).
Appellant contends that the evidence submitted shows that there are
new and unexpected results from the claimed properties’ ranges (Br. 22).
“[A]ny superior property must be unexpected to be considered as evidence
of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed.
Cir. 2007). Significantly, Appellant has not persuasively rebutted the
Examiner's determination that the Declaration does not evince
nonobviousness because Appellant has failed to show how “subjective
comfort” (consumer preference) and “objective comfort” (by properly
distributing pressure) in a gel based mattress evince unexpected results
(Declaration para. 16; Ans. 12)). Indeed, Appellant admits that the results
may depend on the specific subject being tested (Declaration para. 13).
Under these circumstances, Appellant’s unexpected results argument lacks
persuasive merit.
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In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v.
Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009)
(“[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness”);
Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1372 (“[T]his secondary
consideration does not overcome the strong showing of obviousness in this
case. Although secondary considerations must be taken into account, they
do not necessarily control the obviousness conclusion.”).
Here, the case of obviousness established by the Examiner is so strong
that Appellant’s alleged unexpected results are ultimately insufficient.
As set forth previously, Appellants makes no separate arguments
against the Examiner’s grounds of rejections (3) to (7).
Accordingly, all of the § 103 rejections advanced by the Examiner in
this appeal is sustained.

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

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