Ex Parte Piontek

Board of Patent Appeals and Interferences

Aug 17, 2012

10534837 (B.P.A.I. Aug. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MANFRED PIONTEK
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Appeal 2010-005306
Application 10/534,837
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
JOHN W. MORRISON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005306
Application 10/534,837
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 3, 4, and 6-9.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a headrest for a patient-bearing surface.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A headrest for a patient-bearing surface, comprising:
a rigid support shell, the support shell having an
approximately horseshoe-shaped form; and
a support cushion releasably connectable with the support
shell;
wherein the support shell includes a central section for
supporting the rear or forehead of a head of a patient and having
a support surface of approximately spherical shell shape, two
side sections spaced from one another, the side sections each
having a support surface of approximately a common
cylindrical shape whose axis runs parallel to a line of symmetry
of the support shell, and a cheekbone support on each of the
side sections, each cheekbone support projecting toward the
other side section.

REJECTION
Claims 1, 3, 4 and 6-9 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Mazzei (6,490,737 B1, Dec. 10, 2002) in view of
Bruckner (4,279,038, Jul. 21, 1981). Ans. 3.

1 The rejection of claim 5 as being obvious over Mazzei has been
withdrawn. Ans. 3.
Appeal 2010-005306
Application 10/534,837
3

OPINION
Claims 1 and 9, the only independent claims involved in this appeal,
each require a “support shell having an approximately horseshoe-shaped
form.” The Examiner contends “said horseshoe term is broadly interpreted
by the examiner to be as having u-shaped structure as shown in figures 9-11,
the shape is shown to have approximately horseshoe shape.” Ans. 3.
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although the PTO must
give claims their broadest reasonable interpretation, this interpretation must
be consistent with the one that those skilled in the art would reach. In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Appellant’s drawings2, like
the Specification, may be consulted to assist in interpreting the meaning of
claim terms. In re Miskinyar, 6 F.3d 787 (Fed. Cir. 1993) (nonprecedential)
(citing Autogiro Co. of Am. v. U.S., 384 F.2d 391(Ct. Cl. 1967)). Appellant’s
Figures 1 and 5 are exemplary of the type of structure one of ordinary skill
in the art would understand to be “approximately horseshoe-shaped” in light
of Appellant’s disclosure.

2 Appellant’s drawings do not appear to be properly indexed in the Image
File Wrapper (“IFW”). The only figures indexed as Appellant’s drawings are
those from WO 01 76403, Mazzei’s international application. We will make
reference to Appellant’s figures which are at least attached to WO
2004/045481 (PCT/EP2003/010719) in the IFW, from which Appellant
claims priority. Correction should be made in any further prosecution.
Appeal 2010-005306
Application 10/534,837
4
The Examiner makes reference to a U-shaped structure as shown in
figures 9-11 without any further indication as to what the Examiner regards
as “approximately horseshoe shaped.” Mazzei’s figure 9 depicts the cushion
and not the shell (col. 6, l. 54), so it is unclear how that figure is relevant.
Figure 10 is a cross section of the cushion and the shell (col. 6, ll. 56-60)
which appears to be U-shaped. However, the claim calls for the shell to have
an approximately horseshoe-shaped form. To the extent it is the Examiner’s
position, we cannot agree that one of ordinary skill in the art would consider
the shell to be approximately horseshoe-shaped simply because it has a
horseshoe shaped cross section at a particular location. Turning to Figure 11,
there appears to be a horseshoe-shaped aperture 29. But, again, to the extent
it is the Examiner’s position, we cannot agree that one of ordinary skill in
the art would consider the shell to have an approximately horseshoe-shaped
form simply by virtue of having a horseshoe-shaped opening. Our analysis is
unchanged by the presence of the term “approximately.” Contra Ans. 6-7.
While this term allows for some deviation from a horseshoe shape it does
not alleviate the requirement that the shell’s form bear some resemblance to
a horseshoe.
We will not further speculate as to the Examiner’s position and it is
not Appellant’s burden to do so either. In re Jung, 637 F. 3d 1356, 1365
(Fed. Cir. 2011)(citations omitted)(“It is well-established that the Board is
free to affirm an examiner’s rejection so long as appellants have had a fair
opportunity to react to the thrust of the rejection.” ); In re Oetiker, 977 F.2d
1443, 1444 (Fed. Cir. 1992)(The Examiner bears the initial burden of
establishing a prima facie case of obviousness.).
Since the Examiner has failed to establish that Mazzei discloses a
“support shell having an approximately horseshoe-shaped form” as alleged
Appeal 2010-005306
Application 10/534,837
5
in support of the Examiner’s conclusion of obviousness, we cannot sustain
the Examiner’s rejection.

DECISION
The Examiner’s rejection of claims 1, 3, 4, and 6-9 is reversed.

REVERSED

mls