Ex parte Mccarthy et al.

Board of Patent Appeals and Interferences

Jul 27, 1998

08550895 (B.P.A.I. Jul. 27, 1998)

Application for patent filed October 31, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KEVIN McCARTHY
and
ROBERT BROOKS
_____________
Appeal No. 97-3289
Application 08/550,8951
______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge, and ABRAMS
and MEISTER, Administrative Patent Judges.
Appeal No. 97-3289
Application 08/550,895
2
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 9-23, which constitute all of the
claims remaining of record in the application.
The appellants’ invention is directed to an air
mattress. The subject matter before us on appeal is illus-
trated by reference to claims 9 and 18, which have been repro-
duced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to sup-
port the final rejection are:
Nail 3,705,429 Dec. 12,
1972
Fraige 3,957,557 May 18,
1976
Brock 4,038,447 July 26,
1977
Walker 4,644,597 Feb. 24,
1987
Appeal No. 97-3289
Application 08/550,895
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THE REJECTION
Claims 9-23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nail in view of Walker, Brock and
Fraige.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set
forth in the Brief.
OPINION
The rejection before us is under 35 U.S.C. § 103,
and therefore the examiner bears the initial burden of pre-
senting a prima facie case of obviousness (see In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993)), which is established when the teachings of the prior
art itself would
appear to have suggested the claimed subject matter to one of
Appeal No. 97-3289
Application 08/550,895
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ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). This is not to say
that the claimed invention must expressly be suggested in any
one or all of the references, however, for the test for
obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art (see
Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985)), considering that
a conclusion of obviousness may be made from common knowledge
and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular
reference (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545,
549 (CCPA 1969)), with skill being presumed on the part of the
artisan, rather than the lack thereof (see In re Sovish, 769
F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985)).
The objective of the appellants’ invention is to
provide a number of improvements over prior art air
mattresses, such as the one disclosed in Nail, which was
mentioned in the appellants’ specification and was applied by
the examiner as the primary reference. The invention is
Appeal No. 97-3289
Application 08/550,895
5
manifested in three independent claims, the broadest of which
is claim 18. This claim is directed to an inflatable air
mattress comprising a woven textile top sheet, an inner
plastic sheet laminated to the top sheet and made with
plasticizers, a bottom plastic sheet, and a plurality of
beams, wherein the inner plastic sheet and the bottom plastic
sheet are bonded by lap seams. The examiner finds the basic
structure in Nail, and looks to Walker, Brock and Fraige for
the remaining features, concluding that it would have been
obvious to one of ordinary skill in the art to modify Nail in
such a manner as to meet the terms of the claim.
Nail discloses an inflatable air mattress comprising
a top plastic sheet 2, a bottom plastic sheet 3, and a
plurality of beams 11. The top and bottom plastic sheets are
sealed together along edges 6 and 7, and the beams are sealed
to the top and bottom sheets (column 2, lines 16-19 and 38-
41). Nail does not disclose or teach a woven textile top
sheet laminated to the top plastic sheet, or that the top
plastic sheet is made with plasticizers and is bonded by lap
Appeal No. 97-3289
Application 08/550,895
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seams to the bottom plastic sheet, all of which are required
by claim 18.
The Walker patent also is directed to an air
mattress. In the embodiment shown in Figure 8, Walker
discloses walls made of an inner layer of plastic sheet 113
and an outer layer of “a soft fabric, such as cotton or a
synthetic fabric, bonded to the outside surface of layer 113"
(column 7, lines 21-30). We share the examiner’s view that
one of ordinary skill in the art would have found it obvious
to bond a woven textile top sheet to the upper surface of the
Nail top plastic sheet, in view of the teaching of Walker.
Suggestion for such a modification is found in the self-
evident advantage of making the upper surface of a mattress
more comfortable for the user to rest upon than the bare
plastic of Nail, a feature which would have been known to the
artisan, as confirmed by the explicit teaching of Walker that
the fabric be “soft.”
Neither Nail nor Walker explicitly teaches that the
plastic sheets utilized should be “made with plasticizers,” as
is required by claim 18. However, the use of plasticizers in
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Application 08/550,895
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air-filled items is taught by Brock, in which certain
properties of the polyvinyl chloride plastic sheeting are
improved by the addition of plasticizers (column 4, lines 33-
35). According to Brock, this improves the flame resistance
of the plastic sheet,
and it is our view that this improvement in safety would have
served as motivation for one of ordinary skill in the art to
so modify the plastic of the Nail mattress. In this regard,
the prior art teachings relied upon need not disclose the same
advantage that the appellants allege, for all that is required
is that there is a reasonable suggestion to combine the
references. See In re Kronig, 539 F.2d 1300, 1304, 190 USPQ
425, 427-428 (CCPA 1976) and Ex parte Obiaya, 227 USPQ 58, 60
(Bd. Pat. App. & Int. 1985). We further note that it was
known at the time of the appellants’ invention to add
plasticizer to natural and synthetic rubber and resins for the
same reason as did the appellants, that is, to impart
Appeal No. 97-3289
Application 08/550,895
See, for example, Webster’s Third New International 2
Dictionary, 1971, p. 891.
8
flexibility (specification, page 7), as is evidenced by the
common definition of this term. 2
Fraige is directed to improvements in water
mattresses, and discusses the need for strength in such
structures, since they are made of thin plastic films such as
polyvinyl chloride (column 1, line 21 et seq.). This
reference points out that lap seams have more strength than
butt seams (column 4, lines 3-19).
We agree with the examiner that one of ordinary skill in the
art would have found it obvious to utilize lap seams in the
bonding
of the plastic sheets to one another, in view of the explicit
teaching found in Fraige.
For the reasons set forth above, it is our
conclusion that the combined teachings of Nail, Walker, Brock
and Fraige establish a prima facie case of obviousness with
Appeal No. 97-3289
Application 08/550,895
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regard to the subject matter recited in claim 18. This being
the case, we shall sustain the rejection of claim 18.
Moreover, since the appellants have chosen not to challenge
with any reasonable specificity before this Board the
rejection of dependent claims 19-23, they will be grouped with
independent claim 18, from which they depend, and fall
therewith. See In re Nielson, 816 F.2d 1567, 1570, 2 USPQ2d
1525, 1526 (Fed. Cir. 1987).
Independent claims 9 and 15 are more detailed than
claim 18, in that among their limitations is the requirement
that “said bottom plastic sheet [be] smaller in area than
said woven textile top sheet and said inner plastic sheet.”
According to the appellants, this offers several advantages
(specification, page 8). None of the references disclose or
teach such a structural requirement, and the examiner has
taken the position that the relative sizes of the three sheets
“is a
matter of engineering design choice since this limitation does
not seem to materially affect the function of the claimed
Appeal No. 97-3289
Application 08/550,895
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invention” (Answer, page 3). This conclusion is not
supportable in fact or in law. The fact is that the
appellants have stated in the specification that this
limitation results in improved function, which contradicts the
examiner’s reasoning. The law is that in order to be obvious
such a modification must have been suggested to or within the
common knowledge of one of ordinary skill in the art, and
there is no evidence of record in support of that.
For the reasons set forth above, we will not sustain
the rejection of independent claims 9 and 15 or, it follows,
of dependent claims 10-14, 16 and 17.
We have, or course, carefully considered all of the
arguments set forth by the appellants as they bear upon the
claims the rejection of which we have sustained. However,
these arguments have not been persuasive. Our position with
regard to each of them should be apparent from the foregoing
discussions. In addition, with regard to the allegation of
hindsight, we wish to note that any judgment on obviousness is
in a sense necessarily a reconstruction based upon hindsight
Appeal No. 97-3289
Application 08/550,895
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reasoning, but so long as it takes into account only knowledge
which was within the
level of ordinary skill at the time the claimed invention was
made, and does not include knowledge gleaned only from the
applicant's disclosure, such a reconstruction is proper. See
In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA
1971). We believe that to be the case here, as we have
explained above.
The appellants also have argued that Brock is not
analogous art because “construction blankets are not related
and not analogous to the use of air beds in foam support
frames” (Brief, page 8). However, the test for analogous art,
which the appellants have not directly addressed, is first
whether the art is within the field of the inventor's endeavor
and, if not, whether it is reasonably pertinent to the problem
with which the inventor was involved. See In re Wood, 599
F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference
is reasonably pertinent if, even though it may be in a
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Application 08/550,895
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different field of endeavor, it logically would have commended
itself to an inventor's attention in considering his problem
because of the matter with which it deals. See In re Clay,
966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).
Brock is directed to a flame resistant blanket which, in
common with the appellants’ air mattress, comprises a
plurality of layers of plastic defining a core in which there
are a plurality of cell portions containing a gas such as air
(column 3, lines 4-15). As such, it is our view that Brock
would have commended itself to the attention of one working
with air mattresses, in that there is a commonality of
construction and the problems associated therewith, such as
flexibility and seam integrity. It therefore is our opinion
that Brock qualifies as analogous art under the second portion
of the Wood test.
Finally, the claims are directed to an inflatable
air mattress “for use in a foam support frame,” but the frame
is not claimed. Arguments based upon the failure of the
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Application 08/550,895
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references to mention using the disclosed mattresses in the
context of use in such a frame fail, for from our perspective
the mattresses disclosed by Nail, Walker and Fraige all are
capable of being so used.
SUMMARY
The rejection of claims 18-23 is sustained.
The rejection of claims 9-17 is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
BRUCE H. STONER, JR. )
Appeal No. 97-3289
Application 08/550,895
14
Chief Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JAMES M. MEISTER ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 97-3289
Application 08/550,895
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James R. Thein
Suite 108
2231 Crystal Drive
Arlington, VA 22202