Ex Parte Mantzis

Patent Trial and Appeal Board

Oct 27, 2017

12792836 (P.T.A.B. Oct. 27, 2017)

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.
12/792,836 06/03/2010 George MANTZIS 021058-0387016 5473
909 7590 10/31/2017
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
THROOP, MYLES A
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
10/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE MANTZIS
Appeal 2016-007460
Application 12/792,836
Technology Center 3600
Before LISA M. GUIJT, ERIC C. JESCHKE, and BRENT M. DOUGAL,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’
decision2 rejecting claims 1-7 and 11—133 under 35 U.S.C. § 103(a) as
unpatentable over Pollock (US 3,210,781; issued Oct. 12, 1965), May (US
1 Appellant identifies the real party in interest as MANTZIS HOLDING
PTY, LTD. Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated September 4, 2015
(“Final Act.”).
3 Claims 8—10 and 14—17 have been cancelled. Appeal Br. 2.
Appeal 2016-007460
Application 12/792,836
5,701,623; issued Dec. 30, 1997), and Rensink (US 2008/0092302 Al;
published April 24, 2008). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claim 1, reproduced below as the sole independent claim on appeal, is
illustrative of the subject matter on appeal, with disputed limitation italicized
for emphasis.
1. A mattress core arranged to be resiliently
compressed for storage in a shipping container, the mattress core
comprising:
(a) an inner spring section;
(b) a crush section coupled to and overlying side
sections and end sections of the inner spring section, a thickness
of the crush section being 15% to 20% of an end to end length of
the mattress core, and
(c) top and bottom covering sections attached to the
crush section and shaped to overlie respective top and bottom
sides of the inner spring section, wherein the portions of the top
and bottom covering sections that overlie respective top and
bottom sides of the inner spring section comprise outer
peripheral edge sections;
wherein the crush section includes top and bottom inner
peripheral ledges that are shaped to receive outer peripheral
edge sections of respective ones of the top and bottom covering
sections',
wherein the outer peripheral edge sections are coupled to
respective ledges by fasteners; and
wherein the crush section is resiliently compressible so as
to reduce the end- to end length of the mattress core and side to
side width of the mattress core when compressed so that more
mattress cores can be stored in a shipping container.
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Application 12/792,836
ANALYSIS
Regarding independent claim 1 and with reference to Pollock’s Figure
7, the Examiner finds, inter alia, that Pollock’s foamed rubber center portion
33 corresponds to the claimed inner spring section and that Pollock’s
portions 32 correspond to the claimed crush section. Final Act. 2. The
Examiner also finds that Pollock’s tongue and groove joints, as depicted in
Figure 4, disclose Pollack’s crush section (i.e., portion 32) having top and
bottom inner peripheral ledges shaped to receive outer peripheral edge
sections of top and bottom covering sections. Id. (citing Pollock, Figs. 3 or
4). The Examiner determines that Pollock does not teach top and bottom
covering sections, as claimed, and relies on Rensink’s layers (i.e., layers
124, 126) for such a disclosure. Id. (citing Rensink, Fig. 9). The Examiner
reasons that it would have been obvious “to provide a layer, as taught by
Rensink, on both the top and bottom of the mattress of Pollock, as is shown
by Rensink in Fig. 9 . . . for . . . improving the comfort level of the mattress
of Pollock.” Final Act. 3 (citing Rensink 14).4
Appellant correctly argues that Pollock does not suggest top and
bottom covering sections, as claimed. Appeal Br. 6. However, as set forth
supra, Examiner relies on Rensink, not Pollock, for disclosing top and
bottom covering sections. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
4 The Examiner relies on May for teaching the claimed range of thickness of
the crush section. Final Act. 3.
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Application 12/792,836
Appellant also argues that Pollock’s tongue and groove joints are
disclosed as located at the interface between Pollack’s foamed rubber center
portion 33 (i.e., inner spring section or middle section) and Pollack’s portion
32 (i.e., crush section or foot portion), such that Pollack’s tongue and groove
joints are not in a position to provide the claimed interface (i.e., top and
bottom inner peripheral ledges on the crush section shaped to receive outer
peripheral edge sections of the top and bottom covering sections). Appeal
Br. 7—8; see also id. at 8 (arguing that because Pollock’s tongue and groove
joint is disclosed as providing “mutual attachment between the respective
interior facing surfaces of the foot and middle mattress portions,” Pollock’s
tongue and groove joint is “incapable of being shaped to receive the outer
peripheral edge sections of the top and bottom covering sections, as required
by the claims.”). Appellant further argues that Rensink does not disclose the
claimed interface, because Rensink’s layers (i.e., 124, 126) “are shown to be
successively stacked directly on top of each other in a manner that maintains
the outer edges of the layers flush.” Id. at 11 (citing Rensink, Fig. 9).
The Examiner responds that Pollack’s tongue and groove joint “is
equivalent to” the coupling between the disclosed end sections 24a, 24b of
each end member 22a, 22b of crush section 14 and the end sections 26a, 26b
of each side member 20a, 20b of crush section 14. Ans. 2—3; see, e.g.,
Appeal Br. 16, Claims App. (claim 4). However, the Examiner has not
provided sufficient (or any) reasoning for modifying Pollock’s portion 32
(i.e., crush section) to have inner peripheral ledges that are shaped to receive
outer peripheral edge sections of Rensink’s top and bottom covering sections
(i.e., layers 124, 126), in view of Pollock’s teaching that tongue and groove
joints are known for attaching mattress portions. Moreover, claim 1 further
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Application 12/792,836
requires the outer peripheral edge sections of the top and bottom covering
sections to be coupled to the top and bottom inner peripheral ledges of the
crush section—not merely that the inner peripheral ledges of the crush
section are shaped to receive them.
Next, the Examiner proposes two alternative modifications of Pollock
to result in the claimed subject matter. Ans. 3—6. First, the Examiner
proposes dividing Pollock’s middle portion 11" into three layers, according
to the Examiner’s annotated Figure 4 of Pollock, reproduced below. Id.
The Examiner’s annotated Figure 4 of Pollock depicts a cross-sectional,
elevation view of a mattress, with middle portion 11" divided into three
layers 1, 2, 3. See Pollock 1:57—58. The Examiner finds that layers 1 and 3
correspond to the claimed top and bottom covering sections and “interact
with [foot portion 12"] in that the ledges of [foot portion 12"] are ‘shaped to
receive’ the [top and bottom layers 1,3]. Id. 3^4. The Examiner also finds
that Pollock teaches “the use of adhesives,” and therefore, Pollock discloses
that “the outer peripheral edges sections [of the top and bottom covering
sections] are coupled to respective [top and bottom inner peripheral] ledges
[of the crush section] by fasteners,” as claimed. Id. at 3.
Appellant argues that Pollock teaches away from dividing Pollock’s
middle layer 11" into three layers by disclosing that “in all embodiments of
this invention, a mattress ... of uniform composition from top to bottom at
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Application 12/792,836
any particular section is provided for securing the most desirable
combination of properties in the article.” Reply Br. 2 (citing Pollock 3:68 to
4:7). Appellant also argues that the Examiner fails to provide rationale for
modifying Pollock’s mattress as proposed by the Examiner. Id. at 3.
We are persuaded by Appellant’s argument, in that the Examiner fails
to provide sufficient (or any) reasoning for modifying Pollock’s middle layer
11" to include three distinct layers, especially in view of Pollock’s teaching
to maintain the uniformity of middle layer 11".
The Examiner also finds that “May teaches a similar mattress
structure, which includes an inner mattress section, and outer perimeter
sections,” with a top covering section “consisting of [topper 40 and fabric
cover 54].” Ans. 4. Figure 5 of May is reproduced below.
Figure 5 of May depicts a sectional view of mattress topper 40 and mattress
52 assembled together with fabric cover 54. See May 3:5—6, 4:25—31. The
Examiner reasons that although May only depicts a top covering section on
the top side of the mattress, “Rensink teaches a mattress with topper layers
on both sides of the mattress,” and thus, it would have been obvious “to
provide the mattress of May with topper layers on both sides of the mattress,
at least for the motivation of being able to flip the mattress to use both sides
and thereby extend the useful life of the mattress.” Ans. 4. The Examiner
concludes that the combined teachings of Pollock, Rensink, and May “would
have suggested to one of ordinary skill in the art that a spring mattress of
three layers (a central spring coil layer and a topper layer on each face),
40 54
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Application 12/792,836
when combined with an exterior edge as taught by Pollock, could have that
edge attached with the tongue and groove joint taught by Pollock.” Id.
However, the Examiner’s reliance on Rensink and May for disclosing
layers or toppers does not cure the deficiency in the Examiner’s reasoning
for modifying Pollock’s portion 32 (i.e., crush section) to include top and
bottom inner peripheral ledges shaped to receive outer peripheral edge
sections of Rensink’s layers or May’s topper. “[Rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (quoted in KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007)).
As the second alternative modification proposed by the Examiner, the
Examiner finds that “the topper layers of Rensink may be placed above and
below . . . the mattress structure of Pollock,” as depicted in the Examiner’s
annotated Figure 4 of Pollock, reproduced below. Ans. 5.
The Examiner’s annotated Figure 4 of Pollock depicts a cross-sectional,
elevation view of a mattress, with top and bottom covering sections (or
layers) applied on the top and bottom surfaces of Pollock’s mattress.
Appellant argues that Pollock’s crush section (i.e., portion 12"), as
depicted in the Examiner’s annotated Figure 4 of Pollock, lacks top and
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Application 12/792,836
bottom inner peripheral ledges that are shaped to receive outer peripheral
edges sections of respective ones of the top and bottom covering sections,
which are added by the Examiner to the mattress of Pollock. Reply Br. 4.
We determine that although we agree with the Examiner’s finding that
Pollock discloses that a tongue and groove joint provides inner peripheral
ledges shaped to receive outer peripheral edge sections of another portion of
the mattress, claim 1 further requires “the outer peripheral edge sections [of
the top and bottom covering sections]” to be “coupled to respective [top and
bottom inner] ledges of the crush section by fasteners.” We are persuaded
by Appellant’s argument that the Examiner’s proposed modification does
not provide any rationale for modifying Pollock’s foot portion 12, as
modified in view of Rensink, to be coupled to an outer peripheral edge
section of a top or bottom covering section (i.e., top or bottom layer).
Accordingly, we cannot sustain the Examiner’s rejection of
independent claim 1, and claims 2—7 and 11—13 depending therefrom.
NEW GROUND OF REJECTION
We agree with the Examiner’s interpretation of limitation (c) of claim
1, which requires top and bottom covering sections to be “shaped to overlie
respective top and bottom sides of the inner spring section.” Appeal Br. 15
(Claims App.); see Ans. 6. Specifically, we determine that the claim
language “top side of the inner spring section” means the horizontal surface
that is the top side of the inner spring section, and “bottom side of the inner
spring section” means the horizontal surface that is the bottom side of the
inner spring section, as depicted in Figure 2, and not the lateral side surfaces
of the inner spring section, which are separately referred to in the claim as
side sections (i.e., 16a, 16b). Thus, the language of claim 1 that requires top
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Application 12/792,836
and bottom covering sections to be “shaped to overlie respective top and
bottom sides of the inner spring section” means that the top covering section
is shaped to overlie the top side (or horizontal, top surface) of the inner
spring section, and the bottom covering section is shaped to overlie the
bottom side (or horizontal, bottom surface) of the inner spring section.
However, claim 1 also requires that “the portions of the top and
bottom covering sections that overlie respective top and bottom sides of the
inner spring section comprise outer peripheral edge sections” and that the
“outer peripheral edge sections of respective ones of the top and bottom
covering sections” be received in top and bottom inner peripheral ledges of
the crush section. Appeal Br. 15 (Claims App.) (emphasis added). The
problem with the claim, as written, is that although Appellant argues that the
claim language means that the outer peripheral edge sections of the covering
section are portions of the covering sections that extend beyond the
periphery of the inner spring section, the claim requires that such outer
peripheral edges sections are comprised in portions of the covering sections
that must overlie the top and bottom sides of the inner spring section. See id.
at 9-10 (citing Spec. 4:3—15, Fig. 2). Thus, it is unclear how the claimed
portions of the covering sections comprising outer peripheral edge sections
can both overlie the top side and bottom side of the inner spring section and
be received in the top and bottom inner peripheral ledges of the crush
section, which is coupled to and overlying side sections of the inner spring
section.
35 U.S.C. § 112, second paragraph, requires the claims to particularly
point out and distinctly claim the subject matter which the applicant regards
as his invention. Here, we determine that claim 1 is indefinite for the
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Application 12/792,836
reasons stated supra and enter a new grounds of rejection of rejection of
claim 1, and claims 2—7 and 11—13 depending therefrom, under 35 U.S.C.
§112, second paragraph.
DECISION
We reverse the Examiner’s rejection of claims 1-7 and 11—13.
We enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph, of claims 1—7 and 11—13 as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
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Application 12/792,836
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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