Ex Parte Schmidt

Patent Trial and Appeal Board

Jul 9, 2013

11294898 (P.T.A.B. Jul. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HANS ERIK SCHMIDT
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Appeal 2011-007395
Application 11/294,898
Technology Center 3600
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Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/294,898

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention “relates to a sleeping device, such as a
mattress, pillow or quilt.” Spec. 1, ll. 5-6. Claim 1, reproduced below, is the
sole independent claim and illustrative of the claimed subject matter.
1. A sleeping device comprising a core
element, said core element is covered by a first
layer of a material having temperature regulating
properties by absorbing and releasing heat and a
second layer of mesh spacer material through
which air circulates positioned intermediate the
core element and the first layer, where said second
layer of mesh spacer material enhances air
circulation between the first layer and the core
element when a human body is positioned on the
sleeping device.
REFERENCES
The Examiner relies upon the following prior art references:
Buonocore
Blumer
Lachenbruch
US 5,459,894
US 6,668,409 B1
US 6,699,266 B2
Oct. 24, 1995
Dec. 30, 2003
Mar. 2, 2004
REJECTIONS
The following rejections are before us on appeal:
Claims 1, 2 and 6-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blumer and Lachenbruch.
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Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blumer, Lachenbruch, and Buonocore.
ANALYSIS
Rejection of claims 1, 2, and 6-9 based on Blumer and Lachenbruch
The Examiner finds that Blumer discloses the sleeping device of claim
1 (including a layer of mesh spacer material 24) except for the first layer of a
material having temperature regulating properties. Ans. 3. The Examiner
finds that “Lachenbruch discloses a layer of a material 14 having
temperature regulating properties by absorbing and releasing heat
comprising a phase change material 15” and concludes “[i]t would have
been obvious for one having ordinary skill in the art at the time of the
invention to employ a material as taught by Lachenbruch in order to reduce
the incidence and promote the healing of bedsores.” Ans. 4 (citing
Lachenbruch, col. 4, ll. 33-36).
Appellant argues that the proposed modification to Blumer of
removing the fiber batting and replacing it with Lachenbruch’s phase change
material does not support a prima facie case of obviousness. App. Br. 9.
Appellant further asserts that “substituting Blumer’s supportive fiber batting
with a phase change material would entirely prevent Blumer’s separating
layer from being utilized for its only intended purpose: for preventing the
migration of batting material into the convolutions of the eggshell foam
pad.” App. Br. 10.
However, we agree with the Examiner that this line of argument
mischaracterizes the proposed modification in that the Examiner does not
propose replacing Blumer’s fiber batting with Lachenbruch’s phase change
material, “but merely [proposes providing] an upper surface layer 14 having
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a phase change material as taught by Lachenbruch to the first layer of
material 22 of Blumer.” Ans. 5-6; see also Ans. 4 (the Examiner determines
that it would have been obvious “to employ” Lachenbruch’s phase change
material). We accordingly do not find this line of argument persuasive.
Appellant also argues that the mesh separation layer 24 of Blumer
does not “anticipate” the layer of mesh spacer material recited in claim 1
because there is no indication that the mesh separation layer 24 can function
to enhance air circulation as required by claim 1. App. Br. 10-11. This
argument is not persuasive. The Examiner finds that the mesh separation
layer 24 has holes that “are inherently capable of allowing air to circulate”
and thus enhances air circulation between the first layer and the core
element. Ans. 7 (citing Blumer, col. 3, ll. 32-40). We agree that, because it
is a mesh material having openings, Blumer’s separation layer 24 will
naturally “enhance” air circulation between the adjacent layers 22 and 26.
Furthermore, even though the stated function of the separation layer 24 is to
maintain the integrity of the adjacent layers (Blumer, col. 3, ll. 32-37), we
disagree with Appellant’s assertion that the proposed modification changes
“the function of Blumer’s separation layer to an air circulation layer.” App.
Br. 11. The Examiner’s rejection only recognizes that the mesh separation
layer 24 can additionally function to enhance air circulation and does not
change the separation functionality.
We also disagree with Appellant’s contention that there is no teaching
and suggestion of including temperature regulating material in a futon
mattress. App. Br. 11. Appellant argues that “Blumer and Lachenbruch
teach an entirely disparate configuration [having] an entirely disparate
purpose,” asserting that “[w]hile Lachenbruch is appropriate for hospital and
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ambulatory care,” Blumer involves a futon, which is “directed to ‘urban
dwellers and college students.’” App. Br. 12 (citing Buonocore, col. 1, ll.
23-31). However, as the Examiner correctly points out, Lachenbruch is not
limited to hospital beds and discloses use of phase change materials in a
variety of support surfaces. Ans. 8 (citing Lachenbruch, col. 2, ll. 43-55).
Furthermore, both the futon mattress of Blumer and the mattress of
Lachenbruch are “sleeping devices,” as recited by Appellant. We determine
that the differences in the types of sleeping devices disclosed by Blumer and
Lachenbruch are not significant and would not prevent one of ordinary skill
in art from considering combining the teachings of the two references.
Appellant also argues that the proposed modification would provide a
four-layer mattress in which the mesh spacer layer would be the third layer,
not the second layer as claimed. Reply Br. 6. This argument is not
persuasive because Appellant’s claims employ the open-ended language
“comprising,” and thus are not limited to only the claimed number of layers.
In addition, the terms “first” and “second” do not provide any particular
arrangement of the claimed layers, meaning that the mesh spacer layer of the
Blumer-Lachenbruch combination does not necessarily have to be the third
layer rather than the second layer.
Appellant argues that the combination of Blumer and Lachenbruch
does not render Appellant’s claims unpatentable because it “hinders the
transition and release of moisture.” Reply Br. 6. Because this argument is
not commensurate in scope with the Appellant’s claims, which do not recite
the transition and release of moisture, it is not persuasive.
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In view of the above, Appellant’s arguments do not apprise us of
error, and we sustain the rejection of claim 1 and of claims 2 and 6-9, which
depend from claim 1 and are not argued separately.
Rejection of claims 3-5 based on Blumer, Lachenbruch, and Buonocore
Appellant advances no additional arguments in connection with
claims 3-5, instead merely stating that Buonocore fails to overcome the
deficiencies in the combination of Blumer and Lachenbruch. App. Br. 4. As
we find no deficiency in the Examiner’s rejection of claim 1 as being
obvious over the combination of Blumer and Lachenbruch for the reasons
discussed supra, we also sustain the rejection of dependent claims 3-5 for
the same reasons.
DECISION
We affirm the decision of the Examiner rejecting claims 1-9.
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).

AFFIRMED

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