Ex Parte Post

Board of Patent Appeals and Interferences

Jan 13, 2009

10649152 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARALD POST
____________

Appeal 2008-4439
Application 10/649,152
Technology Center 3600
____________

Decided: January 13, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Harald Post (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 16-18 and 20-45. Claim 19 has been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appeal 2008-4439
Application 10/649,152

THE INVENTION
The Appellant’s claimed invention is directed towards a rescue
underlay mat 4 that is disposed underneath a mattress 1 and has
approximately the dimensions of the mattress 1 (Spec. 4, ll. 13-15 and 17-18
and fig. 1). The rescue underlay mat 4 is made from a plastic material
having a high tensile strength such as a spacer woven fabric or a spacer
knitted fabric (Spec. 4, l. 16; Spec. 5, ll. 28-31; fig. 4b). A spacer woven
fabric is a material that has two fabric cover layers which are held at a
spacing of a few millimeters by distance maintaining bridge threads (Spec.
2, ll. 34-36).

Claim 16 is illustrative of the claimed invention and reads as follows:
16. A rescue underlay for a mattress comprising:

a. a substantially flat material comprising spacer woven
fabric having at least two layers spaced apart by bridge
threads and providing spring travel, wherein the material
is substantially the size of a mattress;

b. at least one pull member; and

c. at least one patient securing belt.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hemphill US 5,150,487 Sep. 29, 1992
Böttger US 5,582,893 Dec. 10, 1996
Failor US 5,860,174 Jan. 19, 1999

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The following rejections are before us for review:
The Examiner rejected claims 16-18 and 20-45 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.1
The Examiner rejected claims 16-18, 20-24, 26-28, 30, 31, and 33-45
under 35 U.S.C. § 103(a) as unpatentable over Hemphill in view of Böttger.
The Examiner rejected claim 25 under 35 U.S.C. 103(a) as
unpatentable over Hemphill in view of Böttger and in further view of Failor.

THE ISSUES
1. Has the Appellant shown that the Examiner erred in finding the
limitation of “wherein the material is substantially the size of a
mattress,”2 as recited in independent claims 16, 43, 44 and 45,
renders the claims indefinite under 35 U.S.C. § 112, second
paragraph?
2. Has the Appellant shown that the Examiner erred in combining
the teachings of Hemphill and Böttger to arrive at the claimed

1 This is a New Ground of Rejection presented by the Examiner in the
Examiner’s Answer, mailed December 13, 2007. Although on page 3 of the
Examiner’s Answer it is stated that “Claims 16 through 45 are rejected under
35 U.S.C. 112, second paragraph,” claim 19 was canceled in the
Amendment filed October 8, 2004. The Examiner’s statement is considered
a typographical error and for the purpose of this appeal we shall consider
that the Examiner rejected claims 16-18 and 20-45 under 35 U.S.C. § 112,
second paragraph.
2 The Examiner erred when reciting the alleged indefinite limitation.
Specifically, the Examiner writes on page 3 of the Answer that the indefinite
limitation of claims 16, 43, 44, and 45 is, “wherein the mattress is
substantially the same size of a mattress” (underlining added). It appears
that the Examiner substituted the term “mattress” for the term “material.”
We consider this to be a typographical error on the part of the Examiner.
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invention? The issue turns on whether the Examiner has
established a prima facie case that it would have been obvious
for one of ordinary skill in the art to modify the evacuation
restraint of Hemphill with the spacing fabric of Böttger?
3. Has the Appellant shown that the Examiner erred in combining
the teachings of the Hemphill, Böttger, and Failor to arrive at
the claimed invention?

SUMMARY OF DECISION
We AFFIRM-IN-PART.

FINDINGS OF FACTS
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 848 F. 2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Hemphill discloses an evacuation restraint that is positioned under the
mattress M of a bed including a rectangular base sheet 1 of flexible
fabric (polyester) and a relatively rigid support 2 that is secured
centrally to the base sheet 1 (col. 1, ll. 8-11; col. 2, ll. 50-56; and fig.
1).
2. Hemphill further discloses that the rectangular base sheet 1 of flexible
fabric (polyester) is relatively friction free due to a Teflon coating
(col. 2, ll. 50-54).
3. The restraint of Hemphill further shows two straps 20 and 21 (patient
securing belts) (fig. 1).
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4. The rigid support 2 of Hemphill’s restraint includes a central
rectangular sheet 3 of corrugated board to the ends of which small
rectangular pieces 4 and 5 are flexibly attached (col. 2, ll. 57-61 and
figs. 1-2).
5. The rectangular base sheet 1 of flexible fabric (polyester) in the
restraint of Hemphill is “substantially” the size of the mattress M (fig.
1).
6. The purpose of the rigid support 2 of Hemphill is to provide a
relatively rigid flat surface to allow the evacuation restraint to slide
over floors, stairs, and obstructions (col. 4, ll. 24-26).
7. The evacuation restraint of Hemphill is suitable for positioning under
the mattress of a bed in a hospital or other institution housing bed-
confined persons (col. 1, ll. 8-11).
8. The loops 16 and 19 of Hemphill’s restraint connect the mattress to
the base sheet 1 (underlay) when the loops 16 and 19 engage straps 22
and 23 to envelope the patient and the mattress (col. 3, ll. 21-27 and
fig. 3).
9. Hemphill does not disclose any mechanism for securing the belts 20
and 21 when not in use.
10. Böttger discloses a woven spacing fabric 3 with woven layers 4, 5
attached to one another by fusible threads 6 that is used to reinforce
sheet metal plates and other structural components (col. 1, ll. 44-47;
col. 2, ll. 20-23; col. 4, ll. 34-37 and ll. 44-46; figs. 1, 1a, and 2).
Böttger characterizes the spacing fabric as having “rigidity” (col. 2, l.
30).
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11. Böttger further discloses using spacing fabric to reinforce structural
components and “in particular, where only sections of a sheet metal
plate or the like is to be reinforced” (col. 1, ll. 30-33).
12. In the Appellant’s invention the “underlay mat 4 has approximately
the dimensions of the mattress 1” (Spec. 4, ll. 17-18 and fig. 1) and
the underlay mat is secured to the mattress (Spec. 5, ll. 9-13).
13. Ease of sliding is an objective/problem addressed by the Appellant
(Spec. 1, ll. 15-16 and Spec. 7, ll. 1-3).
14. In the Appellant’s invention the “mattress retaining band” is merely
“connecting” the underlay mat to the mattress (Spec. 5, ll. 9-10).
15. The Appellant’s disclosure makes a distinction between the structure
of a spacer "woven" fabric and a spacer "knitted" fabric, i.e., the
knitted fabric has a textile outer surface of greater width of stitch link
(Spec. 3, ll. 1-3).

PRINCIPLES OF LAW
Claim construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
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may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
Specification without unnecessarily importing limitations from the
Specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
The transitional term “comprising”, which is synonymous with
“including,” “containing,” or “characterized by,” is inclusive or open-ended
and does not exclude additional, unrecited elements or method steps. Mars
Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004).

Indefiniteness
A specification must conclude with claims "particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his
invention." 35 U.S.C. § 112, ¶ 2 (2000). The essence of the requirement
under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is
that the language of the claims must make it clear what subject matter the
claims encompass. In re Hammack, 427 F.2d 1378 (CCPA 1970).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
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extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods'., 309 F.3d 774, 779-80 (Fed. Cir. 2002).

Non-Analogous Art
“‘A reference is reasonably pertinent if, even though it may be in
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.’ In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). In other words, ‘familiar items may have obvious
uses beyond their primary purposes.’ KSR Int’l. Co. v. Teleflex, Inc., 550
U.S. 398, __, 127 S. Ct. 1727, 1742, 167 L.Ed.2d 705 (2007).” In re Icon
Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
Hindsight
It must be recognized that any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight 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. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).

Obviousness
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, _, 127
S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 ("While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.")
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to" determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 1740-41. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections 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")).

DISCUSSION
Issue (1)
Independent claims 16, 43, 44, and 45 recite “…a substantially flat
material…wherein the material is substantially the size of a mattress”
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(underlining added). The Examiner’s basis for the rejection, as articulated
on page 3 of the Answer3, is that it is improper “to compare the features of
the claimed invention to elements that are not part of the claimed invention.”
We fully appreciate the Examiner’s criticism of the claim language
alluded to in the rejection. However, independent claims 16, 43, 44, and 45
are drawn to a “rescue underlay for a mattress” that requires a “substantially
flat material…[that] is substantially the size of a mattress.” We agree with
the Examiner that claims 16, 43, 44, and 45 do not positively include a
mattress as part of the claimed invention. Moreover, neither the claims nor
the Appellant’s Specification specify the dimensions of the mattress referred
to in the claims. Further, as acknowledged by both the Examiner (Ans. 10)
and the Appellant (Reply Br. 6), mattresses come in a variety of standard
sizes, including crib, twin, full, queen, and king. In all of these respects, the
Appellant’s claim is very similar to the claim at issue in Orthokinetics.
Claim 1 in Orthokinetics was directed to a wheel chair and recited that the
front leg portion of the chair “is so dimensioned as to be insertable through
the space between the doorframe of an automobile and one of the seats
thereof.” Id. at 1568. The Federal Circuit held the “so dimensioned”
limitation is definite. The court appreciated that the claims in that case
require “that one desiring to build and use a travel chair must measure the
space between the selected automobile’s doorframe and its seat and then
dimension the front legs of the travel chair so they will fit in that particular
space in that particular automobile.” Id. at 1576. Nevertheless, the court
noted the fact that “a particular chair on which the claims read may fit within

3 We refer herein to the Appeal Brief (“App. Br.”), filed June 26, 2007,
the Reply Brief (“Reply Br.”), filed February 11, 2008, and the Examiner’s
Answer (“Ans.”), mailed December 13, 2007.
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some automobiles and not others is of no moment.” Id. The court stated
that:
As long as those of ordinary skill in the art realized
that the dimensions could be easily obtained, §
112, 2d ¶ requires nothing more. The patent law
does not require that all possible lengths
corresponding to the spaces in hundreds of
different automobiles be listed in the patent, let
alone that they be listed in the claims.
Id.
The definiteness of claim language, however, must be analyzed, not in
a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art. In re Johnson, 558 F.2d 1008,
1015 (CCPA 1977). When read in light of the Appellant’s Specification,
which teaches that the “underlay mat 4 has approximately the dimensions of
the mattress 1” and the underlay mat is secured to the mattress (FF 7), a
person of ordinary skill in the art would appreciate that the claimed “flat
material” of the rescue underlay is approximately the size of the mattress
(substantially the size of a mattress) to which it is to be secured. Such a
person would further appreciate that mattresses are manufactured in a finite
number of known standard sizes (crib, twin, full, queen, king). Therefore, as
the size of the mattress is known, from among a finite number of standard
sizes, a person of ordinary skill in the art would know what is the size of the
“flat material” because, it is “substantially the same size” (approximately) as
the size of the mattress. That the claims encompass “flat materials” of
approximately the size of a number of standard mattress sizes does not
render the claims indefinite.
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In light of the above, we conclude that claims 16, 43, 44, and 45 are
not indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point and distinctly claim the subject matter which the Appellant
regard as the invention. Therefore, the rejection of claims 16, 43, 44, and
45, and claims 17-18 and 20-42 that depend from claim 16, cannot be
sustained.

Issue (2)
The Appellant argues the rejection under 35 U.S.C. § 103(a) of claims
16, 18, 22-24, 26-27, 33, 34, and 42-45 together as a group. Therefore, in
accordance with 37 C.F.R. 41.37(c)(1)(vii)(2008), we have selected claim 16
as the representative claim to decide the appeal, with claims 18, 22-24, 26-
27, 33, 34, and 42-45 standing or falling with claim 16. In view of
Appellant’s arguments, we will address the rejection of claims 17, 20, 21,
28, 30-31, and 35-41 separately.

Claims 16, 18, 22-24, 26-27, 33, 34, and 42-45
Claim 16 recites the limitation of “a substantially flat material
comprising spacer woven fabric…wherein the material is substantially the
size of a mattress” (underlining added). The Appellant argues that the
combination of Hemphill and Böttger, as proposed by the Examiner, does
not specifically teach an underlay that (1) provides spring travel and (2) is
substantially the size of the mattress (App. Br. 16).
With respect to the Appellant’s first point, the Examiner takes the
position that the corrugations 3 of Hemphill provide spring travel (Ans. 4).
The Appellant contends that the corrugations of Hemphill do not provide
spring travel (App. Br. 18). However, the Appellant does not provide any
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evidence that the corrugations 3 of Hemphill do not provide spring travel.
An attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In any event, the Appellant’s
argument appears to be directed to the teachings of Hemphill alone, and not
to the combination of Hemphill and Böttger relied upon by the Examiner.
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. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The Appellant has not alleged, much less shown, that the substitution
of a spacing fabric as taught Böttger for the support member 2 of Hemphill
as proposed by the Examiner would not provide the characteristic of spring
travel called for in the claim.
Regarding the Appellant’s second point, pointing to Figure 1 of
Hemphill, the Appellant notes Hemphill discloses “a mattress (M), a
rectangular base sheet (1) that is substantially the size of the mattress, and a
support member (2) that is substantially smaller than the mattress” (App. Br.
16). As such, according to the Appellant, “Hemphill does not teach a rescue
underlay that provides spring travel and is substantially the size of the
mattress” (App. Br. 18) (italics in original). In other words, in the
Appellant’s view, the support member (2) of Hemphill satisfies the
“substantially flat material” limitation of claim 16. However, in contrast to
the Appellant’s view, the Examiner contends that the limitation of a
“substantially flat material,” as recited in claim 16, reads on the rectangular
base sheet 1 together with the relatively rigid support 2 of Hemphill (Ans.
4). The Appellant and the Examiner disagree as to which structure of
Hemphill constitutes “a substantially flat material.” The confusion appears
to stem from the Appellant’s use of the open-ended transitional phrase
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“comprising” immediately after positively reciting the limitation of a
“substantially flat material.” By using the transitional phrase “comprising”
immediately after the limitation of a “substantially flat material,” the breadth
of claim 16 is not as limiting as the Appellant would have us believe.
Specifically, the claim language is broad enough such that the claimed
“substantially flat material” may include other elements in addition to the
“spacer woven fabric.” Hence, we find that a person of ordinary skill in the
art would reasonably construe the claimed “substantially flat material” to
read on the rectangular base sheet 1 together with the relatively rigid support
2 of Hemphill. Under such a construction, we find that Hemphill discloses
an evacuation restraint having a rectangular base sheet 1 with a relatively
rigid support 2 (substantially flat material) and a central rectangular sheet 3
of corrugated board (FF 1 and 4). Moreover, the rectangular base sheet 1
with the relatively rigid support 2 (substantially flat material) is
“substantially the size of the mattress” (FF 5). In conclusion, we agree with
the Examiner that Hemphill discloses a “substantially flat material (1, 2)
wherein the material is substantially the size of a mattress”(Ans. 4).
The Appellant further argues that the teachings of Hemphill are not
combinable with the teachings of Böttger because: (1) Hemphill and Böttger
teach away from the Appellant’s claimed invention (App. Br. 19-20); (2) the
teachings of Hemphill and Böttger are non-analogous art (App. Br. 23); and
(3) the Examiner’s motivation to combine the teachings of Hemphill and
Böttger uses hindsight (App. Br. 24).
With respect to the Appellant’s first point, the Appellant contends that
because Hemphill discloses a “rigid flat surface,” the teachings of Hemphill
are “contrary to the purpose of the present invention which is a rescue
underlay that provides spring travel” (App. Br. 20). However, as noted
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above, the Appellant has not shown that the substitution of a spacing fabric
as taught Böttger for the support member 2 of Hemphill as proposed by the
Examiner would not provide the characteristic of spring travel called for in
the claim. In any event, the characteristic of rigidity does not appear to be at
odds with the type of spring travel characteristic afforded by a spacing fabric
of the type discussed by Böttger, which Böttger characterizes as having
“rigidity” (FF 10).
The Appellant further argues that the spacer fabric described in
Böttger also teaches away from the claimed invention because its mode of
operation, which requires expansion under heat, would not be suitable in an
emergency environment where people need to be rescued (App. Br. 21-22).
The Appellant’s argument is not persuasive because obviousness does not
require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981). We agree with the Examiner that a person of ordinary skill in
the art would readily appreciate that the heat expansion of the spacer fabric
of Böttger would be performed prior to its mounting to the evacuation
restraint of Hemphill (Ans. 11). After all, "[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, _, 127 S. Ct. 1727, 1742 (2007).
In conclusion, we find no disclosure in Hemphill, and the Appellant
has not pointed to any such disclosure, which would discourage a person of
ordinary skill in the art from using the spacing fabric of Böttger to form the
rigid support 2 of Hemphill. Moreover, we note that the evacuation restraint
of Hemphill is designed to have a partial (central) reinforcement, ostensibly
making it a suitable application for the sectional reinforcement mode
suggested by the spacer fabric of Böttger (FF 11). Therefore, we find that
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the disclosures of Hemphill and Böttger do not teach away from the
Appellant’s claimed invention.
Regarding the Appellant’s second point, the Appellant contends that
Böttger is not in the field of the Appellant’s endeavor. First, we note that
Hemphill is in the same field of endeavor as Appellant's invention of
providing an evacuation restraint for positioning under the mattress of a
patient in a hospital or other institution housing bed-confined persons (FF 7).
Second, although we agree with the Appellant that Böttger is not in the
Appellant’s field of endeavor. Nonetheless, Böttger addresses the problem
of providing rigidity to structural components (FF 10), a need or problem
known in the Appellant’s field of endeavor, particularly, in the form of
providing rigidity over a portion of the underlay to permit sliding (FF 6).
We note that ease of sliding is also an objective/problem addressed by the
Appellant (FF 13). Hence, the teachings of Böttger would have commended
themselves to an inventor’s attention in considering this problem. The
question is not whether the combination was obvious to Appellant but
whether it was obvious to a person with ordinary skill in the art. Thus,
“[u]nder the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR, 127 S. Ct.
at 1742. In this case, Hemphill teaches that the rigid support 2 helps the
restraint slide over floors (FF 6). Böttger teaches using spacing fabric to
reinforce structural components of many types, and “in particular, where
only sections of a sheet metal plate or the like is to be reinforced” (FF 11).
This is exactly the type of use Hemphill describes, that is, reinforcing only
the central portion of the base sheet 1 of flexible fabric. As such, we find
that Hemphill and Böttger are analogous art to the Appellant's invention.
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Regarding the Appellant’s third point, Hemphill discloses an
evacuation restraint having a rectangular base sheet 1 reinforced with a
central, relatively rigid support 2 (FF 1). The objective of the rigid support 2
of Hemphill is to provide a relatively rigid flat surface to allow the
evacuation restraint to slide over floors, stairs, and obstructions (FF 6).
Böttger teaches using spacing fabric to reinforce structural components of
many types, and “in particular, where only sections of a sheet metal plate or
the like is to be reinforced” (FF 11). Hence, we agree with the Examiner
that it would have been obvious for a person of ordinary skill in the art to
substitute the rigid support of Hemphill with the spacer fabric of Böttger
(Ans. 6), because it is no more than “the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement.” KSR at 1740. Therefore, the
substitution appears to be the product not of innovation but of ordinary skill
and common sense. Moreover, the Appellant does not provide any evidence
to show that modification of Hemphill to provide the spacer fabric of
Böttger would have been beyond the technical grasp of a person of ordinary
skill in the art.
For the foregoing reasons, the Appellant’s arguments do not persuade
us the Examiner erred in rejecting claim 16, and claims 18, 22-24, 26-27, 33,
34, and 42-45 standing or falling with claim 16, as unpatentable over
Hemphill in view of Böttger. Therefore, the rejection of claim 16, and
claims 18, 22-24, 26-27, 33, 34, and 42-45 standing or falling with claim 16,
is sustained.

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Claim 17
The Appellant argues that Hemphill does not disclose a “mattress
retaining band,” as required by claim 17 (App. Br. 26-27). The Examiner
takes the position that the loops 16 and 19 of Hemphill constitute a “mattress
retaining band” (Ans. 4). We agree with the Examiner. The Appellant
describes the “mattress retaining band” as merely “connecting” the underlay
mat to the mattress (FF 14). In Hemphill, loops 16 and 19 connect the
mattress to the base sheet 1 (underlay) when the loops 16 and 19 engage
straps 22 and 23 to envelope the patient and the mattress (FF 8). Therefore,
we find that the loops 16 and 19 of Hemphill constitute a “mattress retaining
band,” as required by claim 17. As such, the rejection of claim 17 is
sustained.

Claim 20
The Examiner contends that the limitation of a “knitted fabric” does
not carry patentable weight because it is drawn to the process of forming the
spacer fabric (Ans. 6). In response, the Appellant argues that "knitted
fabrics" have structural characteristics that need to be taken into
consideration (App. Br. 27-28). We find the Appellant’s argument
persuasive. The Appellant’s invention specifically differentiates between
the structure of a spacer "woven" fabric and a spacer "knitted" fabric in that
the knitted fabric has a greater width of stitch link (FF 15). Furthermore, the
ordinary and customary meaning of “knit” is “1. to make (cloth or a piece of
clothing) by looping yarn or thread together with special needles 2. to form
into cloth in this way instead of by weaving." Webster's New World
Dictionary 780 (David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster,
Inc. 1984). Hence, the structure of a “woven” fabric is different than the
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structure of a “knitted” fabric. Böttger discloses a woven spacing fabric (FF
10). In conclusion, we agree with the Appellant that the teachings of
Hemphill and Böttger do not show a “knitted spacer fabric.” As such, the
rejection of claim 20 as unpatentable over Hemphill in view of Böttger
cannot be sustained.

Claim 21
The Appellant argues that neither Hemphill nor Böttger disclose that
the thickness of the spacer fabric is from about 4 mm to about 20 mm (App.
Br. 28). In response, the Examiner takes the position that the thickness of
the spacer fabric is optimizable (Ans. 7). One with ordinary skill in the art
does not need to be told specifically of an exact "thickness" before he or she
can proceed with the design and construction of the spacer fabric of Böttger
for reinforcing the restraint of Hemphill. The choice of a desirable thickness
is within the basic skill and ordinary creativity possessed by one with
ordinary skill in the art. At a minimum, Böttger would appear to suggest
that one with ordinary skill in the art can choose any desirable thickness as
Böttger does not specifically disclose any particular dimensions.
A person of ordinary skill in the art of reinforcing structural layers
would have known that the thickness of spacer fabric is based on a variety of
ordinary design and construction considerations, e.g, the desired mechanical
strength of the spacer fabric (for example a higher strength requires a thicker
spacer fabric), the type of material (material characteristics), the surface area
of the spacer fabric (a higher surface area may require a smaller thickness).
Similarly, a person of ordinary skill in the art of reinforcing structural layers
would have also known that the thickness of the spacer fabric is also
determined by the characteristics of the material being reinforced. The
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Appellant argues that neither Hemphill nor Böttger teaches a specific
numerical value for the thickness of the reinforcing spacer fabric. However,
as discussed above, a person of ordinary skill in the art must take into
account a variety of considerations when constructing a reinforcing spacer
fabric. The Examiner reasonably determined that in light of the teachings of
Hemphill and Böttger, a person of ordinary skill and creativity in the art of
reinforcing structural layers would have known to construct a spacer fabric
having a thickness that satisfies the Appellant’s claimed invention. Lastly,
we note that the prosecution record does not provide us with any indication
as to the criticality of the claimed thickness range from about 4 mm to about
20 mm. In conclusion, the rejection of claim 21 as unpatentable over
Hemphill in view of Böttger is sustained

Claims 28 and 30
The Appellant argues that Hemphill does not disclose that the
underside of the restraint (underlay) is washable and readily disinfected
(App. Br. 29-30). Hemphill discloses a Teflon coating (FF 2). Teflon is
"washable" (capable of being washed) and can be disinfected, for example
when washed with antibacterial soap. Furthermore, we note that the
invention of Hemphill is used in a hospital setting (FF 7), hence it is not
unreasonable to assume that it is routinely disinfected. As such, the
rejection of claims 28 and 30 as unpatentable over Hemphill in view of
Böttger is sustained.

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Claim 31
Regarding claim 31, the Examiner relies on common knowledge to
assert that it would have been obvious for a person of ordinary skill in the art
to modify the restraint of Hemphill and Böttger and provide a braking
surface in order “to restrict the mobility of the mattress on the underlay”
(Ans. 9). However, the Examiner has not provided any factual basis to show
that a person of ordinary skill in the art would readily understand that the
restraint of Hemphill and Böttger would include a braking surface.
Hemphill discloses that the purpose of the rigid support 2 is to provide a
relatively rigid flat surface to allow the evacuation restraint to slide over
floors, stairs, and obstructions when in use (FF 6). Neither Hemphill nor
Böttger discloses or suggests a sliding surface having a braking surface.
Moreover, Hemphill appears to teach away from providing a breaking
surface because the rigid support 2 includes a low friction Teflon coating
(FF 2). We do not find that the Examiner has established a factual basis to
show a braking surface in the restraint of Hemphill and Böttger and a person
of ordinary skill would not readily understand this to be the case.
Accordingly, the modification proposed by the Examiner of providing a
braking surface in the structure of Hemphill or Böttger would not have been
obvious to the person of ordinary skill in the art. For the above stated
reasons, we conclude that the Examiner has not discharged the initial burden
of establishing a prima facie case of obviousness of the subject matter of
claim 31. The rejection of claim 31 as unpatentable over Hemphill in view
of Böttger is reversed.

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Claims 35-38
With respect to claims 35-38, the Examiner relies on common
knowledge to assert that it would have been obvious for a person of ordinary
skill in the art to modify the restraint of Hemphill and Böttger and provide
tunnel-like receptions for the patient securing belts in order “to protect the
[belts] against wear during use, and to permit movement and/or replacement
of the belts” (Ans. 9). However, the Examiner has not provided any factual
basis to show that a person of ordinary skill in the art would readily
understand that the restraint of Hemphill and Böttger would include tunnel-
like receptions for the patient securing belts. Hemphill does not disclose or
suggest any type of mechanism for securing the belts 20 and 21 when not in
use (FF 9). Furthermore, Hemphill appears to teach away from providing
tunnel-like receptions for the patient securing belts. Hemphill discloses an
evacuation restraint that includes a rectangular base sheet 1 of flexible fabric
(polyester) and a relatively rigid support 2 (FF 1). In other words, Hemphill
discloses a substantially flat restraint which would not allow for the presence
of tunnel-like receptions for the patient securing belts. As such, we do not
find that the Examiner has established a factual basis to show tunnel-like
receptions for the patient securing belts in the restraint of Hemphill and
Böttger and a person of ordinary skill would not readily understand this to be
the case. Accordingly, the modification proposed by the Examiner of
providing tunnel-like receptions for the patient securing belts in the structure
of Hemphill nor Böttger would not have been obvious to the person of
ordinary skill in the art. For the above stated reasons, we conclude that the
Examiner has not discharged the initial burden of establishing a prima facie
case of obviousness of the subject matter of claims 35-38. The rejection of
claims 35-38 as unpatentable over Hemphill in view of Böttger is reversed.
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Claim 39
With respect to claim 39, the Examiner asserts that it would have been
obvious for a person of ordinary skill in the art to modify the restraint of
Hemphill and Böttger and include an additional securing belt (Ans. 9).
Hemphill specifically discloses two patient-securing belts 20 and 21 (FF 3).
Providing an additional patient-securing belt would have been obvious to a
person of ordinary skill in the art in order to have a back-up in case one of
the two belts in the restraint of Hemphill and Böttger failed during an
emergency. Moreover, we agree with the Examiner that mere duplication of
parts has no patentable significance unless a new and unexpected result is
produced (Ans. 9). See e.g., In re Harza, 274 F.2d 669, 671 (CCPA 1960).
In conclusion, the rejection of claim 39 as unpatentable over Hemphill in
view of Böttger is sustained.

Claims 40 and 41
With respect to claims 40 and 41, the Examiner asserts that it would
have been obvious for a person of ordinary skill in the art to modify the
restraint of Hemphill and Böttger to unitarily integrate the restraint and the
mattress (Ans. 9). “The use of a one piece construction instead of the
structure disclosed in [the prior art] would be merely a matter of obvious
engineering choice.” In re Larson, 340 F.2d 965, 968 (CCPA 1965). In this
case, a person of ordinary skill in the art would readily recognize that
making the underlay integral with the mattress would have been
advantageous to avoid storage of the underlay and to enhance emergency
preparation. In conclusion, the rejection of claims 40 and 41 as unpatentable
over Hemphill in view of Böttger is sustained.
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Issue (3)
With respect to claim 25, which depends from independent claim 16,
the Appellant points out that Failor does not overcome the perceived
deficiencies of Hemphill and Böttger (App. Br. 30). However, for the
reasons discussed above with respect to claim 16, the Appellant’s arguments
regarding the deficiencies of Hemphill and Böttger are not persuasive.
Hence, the Appellant’s argument does not persuade us that the Examiner
erred in rejecting claim 25. Accordingly, the rejection of claim 25 under 35
U.S.C. § 103(a) as unpatentable over Hemphill in view of Böttger and
further in view of Failor is sustained.

SUMMARY
The decision of the Examiner to reject claims 16-18 and 20-45 under
35 U.S.C. § 112, second paragraph, as being indefinite is reversed.
The decision of the Examiner to reject claims 16-18, 20-24, 26-28, 30,
31, and 33-45 under 35 U.S.C. § 103(a) as unpatentable over Hemphill in
view of Böttger is affirmed as to claims 16-18, 21-24, 26-28, 30, 33-34, and
39-45 and reversed as to claims 20, 31, and 35-38.
The decision of the Examiner to reject claim 25 under 35 U.S.C.
103(a) as unpatentable over Hemphill in view of Böttger and in further view
of Failor is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2008).

AFFIRMED-IN-PART
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LV:

ECOLAB INC.
MAIL STOP ESC-F7, 655 LONE OAK DRIVE
EAGAN, MN 55121
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