Ex Parte Turner et al

Patent Trial and Appeal Board

Oct 30, 2018

14718540 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/718,540 05/21/2015
63565 7590 10/30/2018
HILL-ROM SERVICES, INC.
Legal Dept., Mail Code K04
1069 State Road 46 East
BATESVILLE, IN 47006
FIRST NAMED INVENTOR
Jonathan D. Turner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Nl-38630 4818
EXAMINER
ADEBOYEJO, IFEOLU A
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
10/30/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN D. TURNER,
CHRISTOPHER R. O'KEEFE, ERIC R. MEYER,
RICHARD H. HEIMBROCK, DAVID W. HORNBACH, and
KIRILL ANDRIENKO
Appeal2017-000885
Application 14/718,540
Technology Center 3600
Before JILL D. HILL, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Office Action ("Non-Final Act.") rejecting claims 1-
10 and 12-16. We have jurisdiction under 35 U.S.C. § 6(b). 2
1 Appellant is the Applicant, Hill-Rom Services, Inc., identified by the
Appeal Brief as the real party in interest. Br. 1.
2 Although the Non-Final Office Action is the first rejection in this
application, the "twice rejected" requirement in 35 U.S.C. § 134(a) is not
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For the reasons explained below, we do not find error in the rejections
of claims 1 and 2, but we do not sustain the rejections of claims 3-10 and
12-16. Accordingly, we AFFIRM-IN-PART. We also enter a NEW
GROUND of rejection ofclaim 3 under 35 U.S.C. § 102(b) as anticipated by
Pupovic.
Claimed Subject Matter
Claims 1 and 12 are independent. These claims, reproduced below,
illustrate the claimed subject matter.
1. A bed frame comprising:
a calf section having a foot end and an upper end
longitudinally spaced from the foot end;
an upper body section having a head end and a lower end
longitudinally spaced from the head end;
a medial section longitudinally intermediate the calf and
upper body sections;
the bed frame being capable of assuming a chair state and
a chair egress state in both of which the foot end of the calf
section is at a lower elevation than the upper end of the calf
section, the head end of the upper body section is at a higher
elevation than the lower end of the upper body section, the upper
body section and medial section define a sacral comer, and the
calf section and medial section define a popliteal comer spaced
from the sacral comer by an intercomer distance;
the intercomer distance being smaller in the chair egress
state than in the chair state.
12. A mattress comprising:
restricted to a particular application. See Ex parte Lemoine, 46 USPQ2d
1420, 1423 (BPAI 1994) (precedential in relevant part) (interpreting
35 U.S.C. § 134 to mean that "so long as the applicant has twice been denied
a patent, an appeal may be filed"). Claims in the parent application, No.
12/890,024, were previously rejected.
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a calf segment having a foot end and an upper end
longitudinally spaced from the foot end;
an upper body segment having a head end and a lower end
longitudinally spaced from the head end, the lower end
cooperating with the upper end of the calf segment to define an
intersegment distance;
a medial segment;
the mattress having a chair state in which the intersegment
distance is a distance D1 and an egress state in which the
intersegment distance is a distance D2 which is less than D1;
the medial segment spanning the intersegment distance in
both the chair and egress states.
Rejections
I. Claims 1, 4, and 10 stand rejected under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Pupovic (US 4,847,929, issued July 18, 1989).
Non-Final Act. 2-3.
II. Claims 12-16 stand rejected under pre-AIA 35 U.S.C. § I02(b)
as anticipated by Rene (US 2004/0250349 Al, published Dec. 16, 2004).
Non-Final Act. 3--4.
III. Claims 2, 3, and 5-9 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Pupovic and Smiley (US 3,281,141, issued
Oct. 25, 1966). Non-Final Act. 5-6.
Claim 1
DISCUSSION
Rejection 1-35 US.C. § 102(b)
Claims 1, 4, 10
The Examiner finds Pupovic discloses all limitations of claim 1,
including that Figures 3 and 4 of Pupovic show the bed frame is capable of
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assuming a chair egress state and a chair state. Non-Final Act. 2. The
Examiner explains that, in both of these states, the foot end of the calf
section of Pupovic' s bed frame is at a lower elevation than the upper end of
the calf section, and the head end of the upper body section is at a higher
elevation than the lower end of the upper body section. Id. In addition, the
"intercomer distance" as defined in the claim is smaller in the chair egress
state than in the chair state. Id.
Appellant does not challenge the Examiner's finding that Pupovic' s
bed frame meets claim 1 's limitations about the relative positions of the foot
end and upper end of the calf section, and the head end and lower end of the
upper body section. Appellant also does not dispute that Pupovic' s
intercomer distance as defined in the claim is smaller in Figure 3 than in
Figure 4. Appellant argues, instead, that Pupovic's Figures 3 and 4 "do not
qualify as disclosures of chair and chair egress states merely because they
show configurations that happen to conform to selected claim limitations
(the relative elevations of the ends of the calf section and the relative
elevations of the ends of the upper body section)." Br. 9-10.
Regarding the claimed "chair state," Appellant argues this term means
suitable for use as a chair, based on the Specification. Br. 8-10 ( citing Spec.
1 :24--2:6 (i-f 2)). Appellant argues Pupovic does not expressly describe the
profile of Figure 4 as a chair state, and "[i]nstead the reference expressly
describes the profile of FIG. 4 as one suitable for the patient's use of
excrement scoop 35 (col. 1 lines 55-60 and col 4 lines 2-8)." Br. 10.
Appellant contends the void formed between supports 7 and 11 in Pupovic' s
bed frame "would not be satisfactory for long term support of the patient in a
sitting posture," as a person would not be able to resist the pull of gravity
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indefinitely, and "a person positioned over the void and therefore required to
continuously resist the pull of gravity could hardly be considered to be
sitting or seated." Br. 10-11.
Appellant acknowledges that Figure 1 lA of the Specification shows
receiving space 48, Br. 12, which is a gap in the support structure of the bed
frame, see Spec. Fig. 11 A. Appellant argues that Pupovic' s figures and
those in the Specification "must be considered in the context of the written
disclosure." Br. 12. Appellant contends the Specification explains that the
mattress has sufficient bending resistance to span across the receiving space,
unlike Pupovic' s Figure 4 showing the void extends through both the
mattress and the frame. Id. (citing Spec. 14:30-15:1 (i-f 23)). "Although
[Appellant's] claim is directed to a frame, not to a combination of a frame
and a mattress," argues Appellant, "the fact that the frame is intended to be
used with a sufficiently supportive mattress, rather than standing alone,
qualifies the configuration of [Appellant's] FIG. 11 as a 'chair state' despite
the presence of receiving space 148." Id.
We agree with the Examiner that Pupovic' s bed frame is capable of
assuming a "chair state" under the broadest reasonable interpretation of that
term, consistent with the Specification. The portion of the Specification
relied on by Appellant provides:
Some articulable beds are versatile enough that they can be
placed in a chair mode in which the bed profile mimics that of a
chair. Such beds are referred to as chair beds. The chair mode
is not necessarily intended to enable occupant egress or ingress
at the foot end of the bed. However some chair beds feature, in
addition to a chair mode, a chair egress mode which is designed
to enable occupant egress and ingress at the foot end of the bed.
The chair egress mode, in comparison to the chair mode,
typically features a lower overall height of the frame sections
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relative to the floor, and frame section angular orientations more
favorable for egress. In addition, if the mattress is an air mattress,
the portion of the mattress underneath the occupant's buttocks
and thighs and behind the occupant's calves may be deflated to
facilitate egress.
Spec. ,r 2; see Br. 8. This background passage indicates that some prior art
beds have a chair mode in which the profile of the bed mimics that of a
chair, but is not necessarily intended to enable egress or ingress at the foot
end of the bed. The Specification also expressly provides that a chair state
of the disclosed bed frame is "a state in which its profile is similar to that of
a chair." Spec. ,r 13. In what we will refer to as the "relative location
limitations," claim 1 specifies that in both the chair state and the chair egress
state, the foot end must be lower than the upper end of the calf section, and
the head end must be higher than the upper end of the body section. The
relative location limitations exclude a bed with a horizontal calf section or
upper body section. Although it is perhaps possible for a bed frame to meet
the recited relative location limitations and not be in a "chair state," we
determine that a frame that meets these limitations generally will result in a
frame with a profile similar to that of a chair. We do not discern an adequate
basis to conclude that a bed frame in chair mode must have a continuous
support surface or provide long term support for all portions of a user's
body, as suggested by Appellant's arguments. A bed frame in a chair state
is, however, reasonably construed to require that it be capable of use as a
chair when provided with a mattress, which would support the user in a
sitting position.
Consistent with the Examiner's finding, we find Figure 4 of Pupovic
teaches that the frame is capable of assuming a profile similar to that of a
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chair and that such a profile would support a user in a sitting position. Each
of Appellant's arguments to the contrary relate to the level of comfort of the
user and effort that must be expended to remain in a sitting position for an
indefinite time when Pupovic's seat area is expanded as shown in Figure 4.
See Br. 10-14. We agree with the Examiner that such potential refinements
to a "chair state" are not recited in claim 1. Ans. 7. Appellant contends such
features need not be recited because the "argument is that the presence of the
void in [Pupovic's] FIG. 4 dissuades the reader from interpreting FIG. 4 as a
chair or chair state," consistent with the argument that the level of effort
required for long term support would have been understood to be part of the
term "chair state." Br. 13. We do not agree with Appellant's argument.
Although the purpose of the configuration in Figure 4 is to provide an
aperture for excrement scoop 35 for a patient that is immobile, see Pupovic
col. 1, 11. 55---62, and one of skill in the art would have recognized this to be
a temporary configuration, the patient would nonetheless be supported
generally in a reclined seating position. As can be seen in Figure 4, at least
the thighs of the patient would be supported, as well as the back in a reclined
position, and both of these supports would tend to hold the patient in a
reclined seating position. Because Pupovic' s bed is designed to help care for
even an immobile patient, one of ordinary skill in the art would understand
that it does not necessarily require significant effort on the part of the patient
to remain in a reclined seating position.
In addition, although Figure 4 is exemplary of a particular
configuration of Pupovic' s bed frame, the frame is adjustable, and is
therefore capable of being used with a small or large opening in the seat of
the frame. See Pupovic Abstract. Appellant argues "the test of anticipation
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is what is expressly or inherently disclosed, not what something is capable
of." Br. 14. We need not address the extent to which Appellant's statement
of law is correct, however, as claim 1 in this case expressly recites "the bed
frame being capable of assuming a chair state" ( emphasis added). Claim 1
recites a bed frame, and the structure of Pupovic' s frame is capable of
assuming the chair state as claimed. Thus, we are not informed of error in
the Examiner's finding that Pupovic teaches the claim limitations relating to
the term "chair state."
For similar reasons, we are not informed of error in the Examiner's
finding that Pupovic teaches a frame capable of assuming a "chair egress
state." Appellant argues Pupovic "teaches that the excrement scoop and the
aperture above it are provided because of the immobility of the patient, and
therefore leads the reader away from interpreting FIG. 3 as being related to
patient egress." Br. 14 ( citation omitted). Appellant also argues Figure 3
would not have been interpreted as being related to egress because the
angular orientations of the frame shown in Figure 3 of Pupovic would make
it difficult to get up out of the chair, and Pupovic' s footboard is illustrated as
being in place, which is not favorable for egress. Br. 14--15.
Appellant's Specification describes that, in the chair egress state, "the
occupant's center of gravity is more favorably positioned relative to his feet
for egress" because of the shorter "intercomer distance" relative to the chair
state. Spec. ,r 14. The shorter intercomer distance is explicitly recited in the
claim, and Appellant does not argue that the frame configuration in Figure 3
of Pupovic has a shorter intercomer distance than that shown in Figure 4.
Because we agree with the Examiner that Pupovic teaches both a chair state
and a state in which the intercomer distance is shorter, which Appellant's
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Specification describes as positioning the occupant's center of gravity more
favorably relative to the feet for egress, we also agree with the Examiner that
Pupovic' s chair frame is capable of assuming a chair egress state as recited
in claim 1.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of claim 1 under
35 U.S.C. § 102(b) as anticipated by Pupovic, and we sustain the rejection.
Claim 4
Claim 4 depends from claim 1 and recites that "the difference in
intercomer distance is a function of relative longitudinal movement of the
calf section and medial section." Appellant argues Figures 3 and 4 of
Pupovic "do not show relative translation between the calf and medial
sections" because Pupovic shows translation of the medial support 11
together with calf support 13 relative to upper body support 7. Br. 16.
Appellant contends that if claim 4 were intended to mean the calf and medial
sections moved as a unit relative to some other component, that other
component would be recited in the claim. Id. Appellant argues this
conclusion is supported by Figure 5 and paragraph 17 of the Specification.
Br. 16-17.
We agree with Appellant that claim 4 requires relative movement
between the calf section and medial section. The Specification describes
Figure 5 as showing "relative longitudinal movement of the calf section and
the medial section." Spec. ,r 7. In the more detailed description, the
Specification states that "[i]n FIG. 5 the difference in intercomer distance
depends on relative longitudinal movement between calf section 72 and
medial section 66. Specifically, calf section 72 translates headwardly by a
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travel distance T relative to medial section 66 and upper body section 54."
Spec. ,r 17 ( emphasis added). Thus, the phrase "relative movement of the
calf section and medial section" is used interchangeably with "relative
longitudinal movement between calf section 72 and medial section 66."
Accordingly, although the Examiner is correct that claim 4 does not use the
phrasing "relative movement between the calf section and the medial
section," this is the only reasonable interpretation of claim 4 in light of the
description and use of these terms in the Specification.
Because the Examiner's rejection of claim 4 is based on an
unreasonably broad interpretation of the claim, we do not sustain the
rejection of claim 4 under 35 U.S.C. § 102(b) as anticipated by Pupovic.
Claim 10
Claim 2 depends from claim 1 and recites in part that the medial
section comprises a thigh section and a seat section. Claim 10 depends from
claim 2 and recites that ( 1) one of the seat section and the thigh section
includes a "deck panel," (2) the other of these sections comprises a deck
section frame without a corresponding deck panel, and (3) the deck section
frame defines "a receiving space which receives the deck section panel when
the bed frame is in the egress state but not when the bed frame is in the chair
state."
The Examiner finds Pupovic teaches a deck panel because there is a
"supporting surface running between the frame sections 7, 11 and 13 which
supports the mattress 29." Non-Final Act. 3 (citing Pupovic col. 2, 11. 14--
15, col. 3, 11. 20-26). The Examiner also finds Pupovic's Figure 4 shows a
deck section frame defining a receiving space that receives the deck section
panel when the bed frame is in the egress state. Id.
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Appellant argues Pupovic does not describe or show a "deck panel" as
recited in claim 10. Br. 18-20. Appellant contends the panels illustrated in
the Specification are "relatively thin, flat (i.e. planar) components with a
large support surface," and cites as additional support a dictionary defining
"panel" as:
a separate or distinct part of a surface: as
b (1): a thin usually rectangular board set in a frame ( as in a door)
(2): a usually sunken or raised section of a surface set off by a
margin (3) : a flat usually rectangular piece of construction
material ( as plywood or precast masonry) made to form part of a
surface.
Br. 19 ( citing http://www.merriam-webster.com/dictionary/panel).
Appellant notes that column 2, lines 14--15, of Pupovic state only that the
supporting part of the mattress and the mattress are not shown in Figure 10.
See id.; Pupovic col. 2, 11. 14--15 ("FIG. 10 is a view from above, with the
supporting part of the mattress and the mattress 29 removed."). Appellant
argues that the other passage of Pupovic relied on by the Examiner describes
"a support placed between supports 7, 11 and 13 for preventing [ the
mattress] from sinking," Pupovic col. 3, 11. 23-25 (emphasis added), and
argues that Pupovic does not describe this support as a "panel" or specify a
structure that would fit a reasonable interpretation of the term "panel." Br.
20. Appellant contends the "support" for Pupovic's mattress "could as
easily be a set of rods or rails rather than a panel." Id.
We agree with Appellant that the portions of Pupovic relied on by the
Examiner do not disclose sufficient detail about the nature of the "support"
to sustain an anticipation rejection of claim 10. We agree with Appellant
that a "panel" ordinarily includes a planar surface, consistent with the
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depiction in Appellant's Specification. See, e.g., Spec. Fig. 1 lA (panel 146).
The Examiner has not explained how Pupovic' s use of the term "support" to
describe a structure not shown in the drawings must necessarily be a deck
"panel" with a planar surface, as opposed to, for example, support rods.
Although it may be that one of skill in the art would have understood that a
deck panel could be used for Pupovic' s support, this possibility is not
sufficient to sustain the rejection. 3
We also agree with Appellant's contention that the anticipation
rejection of claim 10 is inconsistent with the rejection of claim 2, from
which claim 10 depends. See Br. 25. In rejecting claim 2, the Examiner
finds Pupovic does not disclose the limitations of that claim, and relies on
Smiley's teaching of a thigh section and seat section. Non-Final Act. 5. It is
unclear how this deficiency is overcome in rejecting claim 10 as anticipated
by Pupovic.
In view of the foregoing, we do not sustain the rejection of claim 10
under 35 U.S.C. § 102(b) as anticipated by Pupovic.
Rejection 11-35 USC§ 102(b)
Claims 12-16
The Examiner finds Rene discloses all limitations of claim 12. Non-
Final Act. 3. The Examiner relies on an annotated version of Rene's Figures
4---6, which is reproduced below.
3 Although the Board is authorized to reject claims under 37 C.F.R.
§ 4I.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Non-Final Act. 4. Rene's "FIG. 4 is a perspective view showing the
mattress sections incorporating the mattress leg rest section of [Rene's]
invention," "FIG. 5 is a side view showing the mattress sections of FIG. 4
secured to articulable support frames," and "FIG. 6 is a side view showing
the articulable bed disposed in a chair position." Rene ,r,r 12-14. The
Examiner annotates Figure 5 of Rene to show an upper body segment, calf
segment, and the intersegment distance between them as recited in claim 12.
Non-Final Act. 4.
Appellant argues "the part of Rene's leg rest 25 to the right of the
compressible foam in FIG. 5 cannot be equated to applicants' calf segment
... because that part of the leg rest is substantially out of proportion to
anatomical reality." Br. 28. Appellant contends paragraph 9 of the
Specification "assigns names to the mattress segments and deck sections
(upper body, seat, thigh, calf) that correspond to a patient's anatomy (torso,
buttocks, thighs, calves, and feet)." Id. In a similar fashion, "[t]he lengths
of Rene's sections 23, 24 and 25 appear to be realistically proportioned both
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relative to each other and relative to their disclosed human anatomical
counterparts (23 is the back rest (torso excluding buttocks), 24 is the seat
rest (buttocks and thigh), and 25 is the leg rest (calves))." Id.
We agree with Appellant that one of ordinary skill in the art would
have understood the segments recited in claim 12 to correspond to their
anatomical counterparts as taught in the Specification (for example,
paragraph 9). Rene discloses each of these segments, as shown in Figures 5
and 6, but teaches adjusting the distance between the ends of the calf section,
rather than the distance between the lower end of the upper body segment
and the upper end of the calf segment. See Rene ,r 21; Figs. 5---6.
Accordingly, we do not sustain the rejection of claim 12 under 35 U.S.C.
§ 102(b) as anticipated by Rene. For the same reasons, we do not sustain the
rejection of dependent claims 13-16, which are rejected on the same basis.
Claim 2
Rejection 111-35 USC§ 103(a)
Claims 2, 3, 5-9
Claim 2 depends from claim 1 and recites that "the medial section
comprises a thigh section longitudinally headward of the calf section and
seat section longitudinally head ward of the thigh section." The Examiner
finds Pupovic does not teach the limitations of claim 2, but finds Smiley
teaches these limitations are "old and well known." Non-Final Act. 5. The
Examiner finds one of ordinary skill in the art would have included a thigh
section and seat section in the bed frame of Pupovic "[ f]or the purpose of
providing the medial section with a greater degree of motion," and thus
concludes the subject matter of claim 2 is obvious. Id.
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Appellant argues "the rejection does not offer a well-founded
conclusion supported by articulated reasoning with a rational underpinning"
and relies on impermissible hindsight. Br. 32. Appellant's arguments,
however, focus on the degree to which Pupovic and Smiley are concerned
with egress. See Br. 32-33. This argument does not inform us of error
because the Federal Circuit has "repeatedly held that the motivation to
modify a prior art reference to arrive at the claimed invention need not be
the same motivation that the patentee had." Alcon Research, Ltd. v. Apotex
Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (collecting cases). Appellant
contends more generally that adding a section to Pupovic' s frame "would do
nothing but add cost and complexity without returning any value or securing
any advantage." Br. 33. But Appellant does not address the Examiner's
explanation that one of ordinary skill in the art would have included a thigh
section and seat section "[ fJor the purpose of providing the medial section
with a greater degree of motion." Non-Final Act. 5. Without
acknowledging and addressing this reasoning, we are not informed of error
in the rejection.
Accordingly, for the reasons discussed above and by the Examiner,
we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Pupovic and Smiley.
Claim 3
Appellant argues claims 3 and 5-9 as a group. Br. 34--35. We
address claim 3 separately from claims 5-9 for the reasons discussed below.
Claim 3 depends from claim 1 and recites that "the difference in
intercorner distance is a function of relative longitudinal movement of the
upper body section and medial section." The Examiner finds Pupovic does
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not teach the limitations of claim 3, but finds Appellant "has not disclosed
that changing which section moves solves any stated problems or is for any
particular purpose and it appears that the invention would perform equally
well with any section moving longitudinally." Non-Final Act. 5---6. The
"Examiner notes this would have been an obvious variation of the claimed
invention being that the variation solves the same problem." Id. at 6.
Based on our interpretation of "relative longitudinal movement" of
two sections as discussed above for claim 4, we find Pupovic discloses
relative longitudinal movement of the upper body section and medial section
recited in claim 3. Pupovic col. 1, 11. 55-59; compare Pupovic Fig. 3, with
Pupovic Fig. 4. This relative movement changes the intercomer distance as
defined in claim 1. We did not sustain the Examiner's rejection of claim 4
as anticipated by Pupovic because Pupovic's calf section and medial section
moved as a unit relative to the upper body section. Such movement,
however, satisfies the limitations of claim 3. For the reasons given by the
Examiner, see Non-Final Act. 2, and discussed above in sustaining the
rejection of claim 1, Pupovic also discloses all limitations of claim 1, from
which claim 3 depends. Accordingly, we enter a NEW GROUND of
rejection and reject claim 3 under 35 U.S.C. § 102(b) as anticipated by
Pupovic. We do not sustain the Examiner's rejection of claim 3 under 35
U.S.C. § 103(a) as unpatentable over Pupovic and Smiley. 4
4 Although anticipation is the epitome of obviousness, here our findings in
the new ground of rejection of claim 3 as anticipated by Pupovic conflict
with the Examiner's findings in rejecting claim 3 under 35 U.S.C. § 103(a).
See Non-Final Act. 5---6.
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Claims 5-9
Claim 5 depends from claim 2 and recites that "the difference in
intercomer distance is a function of relative longitudinal movement of the
upper body section and the seat section." Claims 6-9 recite relative
longitudinal movement of other combinations of sections. The Examiner
finds Pupovic does not teach the additional limitations of claims 5-9. Non-
Final Act. 6. The Examiner determines, however, that
[i]t would have been [an] obvious matter of design to vary which
section moves in order to change the [intercomer] distance, since
[Appellant] has not disclosed that changing which section moves
solves any stated problems or is for any particular purpose and it
appears that the invention would perform equally well with any
section moving longitudinally.
Id. The "Examiner notes this would have been an obvious variation of the
claimed invention being that the variation solves the same problem." Id.
Appellant argues the standard for obviousness "is to provide an
explicit analysis accompanied by articulated reasoning with some rational
underpinning to explain why each selection of pairs of sections [ recited in
claims 5-9] would have been obvious from the references of record." Br.
34. Appellant contends "[t]he required analysis has not been made and
therefore the rejection should not stand." Id.
Although we agree with the Examiner's reasoning to some degree, we
determine that in this case it is insufficient to explain why one of skill in the
art would have modified Pupovic to achieve the relative longitudinal
movement recited in claims 5-9. Pupovic provides structure (including
hydraulic piston 21) that provides for longitudinal movement only between
the upper body and medial section. Thus, additional structure ( such as
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additional hydraulic pistons and guides that allow longitudinal movement)
would be needed to provide for relative movement between other sections.
Some of this structure would presumably be in place of joints between
sections that Pupovic illustrates as pivot points (to allow, for example,
relative longitudinal movement between the thigh and calf sections as
required by claim 7). Other structural modifications may be required to
allow movement of the seat and/or thigh sections that the Examiner finds are
taught in Smiley (to allow relative movement as recited in claims 5, 6, 8, and
9). Even if one of skill in the art could have made these modifications, we
agree with Appellant that the Examiner's general explanation is insufficient
to show whether one of skill in the art would have determined that the
modifications required to allow relative longitudinal movement between the
particular sections recited in claims 5-9 would have been worth the benefit
obtained.
In view of the foregoing, we do not sustain the rejection of claims 5-9
under 35 U.S.C. § 103(a) as unpatentable over Pupovic and Smiley.
DECISION
We affirm the Examiner's decision to reject: claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Pupovic; claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Pupovic and Smiley. We reverse the Examiner's decision
to reject: claims 4 and 10 under 35 U.S.C. § 102(b) as anticipated by
Pupovic; claims 12-16 as anticipated by Rene; claims 3 and 5-9 under
35 U.S.C. § 103(a) as unpatentable over Pupovic and Smiley.
We enter a new ground of rejection of claim 3 under 35 U.S.C.
§ 102(b) as anticipated by Pupovic, as set forth above.
18
Appeal2017-000885
Application 14/718,540
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). "A new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b).
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.
(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.
19
Appeal2017-000885
Application 14/718,540
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)(l )(iv).
AFFIRMED-IN-PART;
37 C.F.R. § 4I.50(b)
20