Ex Parte Wilkinson

Patent Trial and Appeal Board

Apr 18, 2017

11041758 (P.T.A.B. Apr. 18, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/041,758 01/24/2005 John Wilkinson MPL.4173-NY 4968
5409 7590 04/20/2017
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
04/20/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
AZ5409@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN WILKINSON
Appeal 2015-001469
Application 11/041,758
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Wilkinson (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—20 and 22—25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is M.P.L. Limited, a
Belize corporation. Appeal Br. 2.
Appeal 2015-001469
Application 11/041,758
THE CLAIMED SUBJECT MATTER
Claim 4, reproduced below, is illustrative of the claimed subject
matter.
4. A self-inflating fluid cell and system for use in a mattress or
cushion comprising:
resilient material formed in a helical pattern, said helix
being formed without a coiled metal spring, and adapted to
contain a fluid, the resilient material having a spring bias; and
a pressure control system, operatively connected to the
resilient material, capable of adjusting the fluid pressure within
said fluid cell such that said fluid cell is capable of
collapsing when loaded with a load of a body weight having a
force which is greater than the sum of the forces within the fluid
cell, including the pressure of the fluid inside the fluid cell
multiplied by the area of the fluid cell supporting the load of the
body weight, plus the reforming force of the fluid cell, and said
fluid cell is capable of reforming when said load of the body
weight is reduced to a load having a force which is less than the
sum of the forces within the fluid cell and the reforming force of
the fluid cell.
REJECTIONS
I. Claims 1—14 and 22—25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schulman (US 4,852,195, iss. Aug. 1, 1989),
Gronsman (US 6,367,106 Bl, iss. Apr. 9, 2002), and Chilcoate
(US 3,826,409, iss. July 30, 1974).
II. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schulman, Gronsman, Chilcoate, and Smith
(US 5,029,939, iss. July 9, 1991).
III. Claims 17—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gronsman and Schulman.
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Appeal 2015-001469
Application 11/041,758
DISCUSSION
Rejection I
Appellant argues for patentability of claims 1—14 and 22—25 subject to
this ground of rejection as a group. Appeal Br. 17—21. We select claim 4 as
representative of this group, and claims 1—3, 5—14, and 22—25 stand or fall
with claim 4. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Schulman discloses a fluid cell and system as
recited in claim 4, with the exception of “a spring bias in the fluid cell” and
“the bellows having a shape of a helix and formed without a coiled metal
spring.” Ans. 2, 3 (underlining omitted). The Examiner relies on Gronsman
for a teaching to employ a spring bias in the fluid cell, in order to reduce the
likelihood of decubitus ulcer formation, and on Chilcoate for a teaching to
employ a bellows in the shape of a helix “to yield predictable results that
provide a memory to urge the bellows in an expanded or collapsed
condition.” Id. at 2—3 (underlining omitted).
Claim 4 does not exclude a cell that is both a bellows and formed in a
helical pattern, or a helical pattern that is part of a bellows. See Appeal Br.
28 (Claims App.) (reciting “resilient material formed in a helical pattern”).
Appellant acknowledges that Chilcoate discloses a “self-inflating helix style
envelope,” but contends that “the Examiner is improperly dismissing the
structural differences between a bellows shape and a helix shape.” Appeal
Br. 17—19. Chilcoate discloses a container “of an accordion or bellows type
generally helical configuration” which preferably is “generally rectangular,”
but could also be “circular” as viewed from top or bottom. Chilcoate 3:3—
12; Fig. 2. Chilcoate also discloses that the container is made of a material
“preferably having some inherent resilience or ‘memory.’” Id. 2:50—53.
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Application 11/041,758
Thus, Chilcoate discloses a container (i.e., cell) comprising “resilient
material formed in a helical pattern,” as recited in claim 4. Appeal Br. 28
(Claims App.).
Appellant also argues that Chilcoate “is not analogous to the field of
support surfaces and one skilled in the art would not have thought to apply
[its] teachings to support surfaces.” Appeal Br. 19.
Our reviewing court has explained that “[t]he analogous art inquiry is
a factual one, requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill.”
Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir.
2014).
Criteria for determining whether prior art is analogous may be
summarized as “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”
Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992)).
According to Appellant, “Chilcoate teaches a glorified accordion
juicebox.” Appeal Br. 19. Appellant contends that the field of endeavor of
Appellant’s invention is “the mattress or support surface field,” and
Chilcoate’s “juicebox-like liquid dispenser is not in the same field of
endeavor.” Reply Br. 5. Appellant also asserts that “[t]he problem that
Appellant is trying to solve is, inter alia, relief of suffering due to effects of
pressure exerted on the patient’s skin which causes blood carrying
capillaries to close, which may result in soft tissue degeneration,” and
submits that “Chilcoate is silent as to the advantages of using a helix for
pressure relief on skin.” Id.
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Appeal 2015-001469
Application 11/041,758
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). “Under 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.” Id. at 420.
Appellant’s invention is directed toward supporting a patient in a
manner to reduce pressure on the patient’s body to thereby reduce tissue
trauma. Spec. 2—3. However, other prior art systems already addressed that
problem. See Spec. 3 (discussion of typical pressure relief support systems).
Appellant’s invention really seeks to address problems, or disadvantages, of
those prior art systems. One such problem or disadvantage exhibited by the
prior art systems is that “during power outages, these mattresses lose
pressure leaving a patient on a hard surface to develop pressure sores if
action is not taken.” Id. Consequently, a problem addressed by Appellant is
how to provide a self-inflating fluid cell having a reforming element
providing a reforming force to cause the cell to return to its expanded
configuration when an external load is removed from the cell. Spec. 3—4, 9—
10, 11, 15.
The problem encountered by Appellant is not unique to body supports
and mattresses for supporting patients in a manner to reduce tissue trauma.
The problem concerns how to provide a self-inflating fluid cell having a
reforming element to cause the cell to return to its expanded configuration.
Chilcoate also addresses the problem of how to provide a self-expanding
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Application 11/041,758
fluid container that will return on its own to its extended position, albeit in
the environment of fluid cells (containers) for dispensing liquid dosages.
Chilcoate 1:6—10, 3:15—20, 4:53—59 (teaching using the built-in spring wire
effect to create suction to draw fluid into the container).2 In this regard,
Chilcoate is much like the prior art cited by the examiner in the application
involved in In re Paulsen, 30 F.3d 1475, 1481—82 (Fed. Cir. 1994) (finding
the problems encountered by inventors of a patent directed to portable
computers were not unique to portable computers and the prior art references
cited by the examiner disclosed various means of solving that problem in
other devices, thereby rendering the cited references “reasonably pertinent,”
and, thus, analogous). For the above reasons, Chilcoate is reasonably
pertinent to the problem with which Appellant was involved and, thus, is
analogous art. See Ans. 9—10 (pointing out that Chilcoate’s teaching of
applying the recognized engineering principle that a helical bellows
configuration exhibits the particular advantages of providing a memory to
urge the bellows into an expanded condition “is reasonably pertinent to . . .
Appellant’s invention, and is analogous art”).
Appellant also contends that nothing in Schulman “teaches or
suggests using a bellows shape to create a self-expanding force,” and, thus,
2 The fact that Chilcoate’s fluid container is used for a different purpose (i.e.,
liquid dose dispensing) than that of Appellant’s fluid cell (i.e., support of a
patient) does not inherently disqualify Chilcoate as analogous art. As our
reviewing court has recognized repeatedly, the Supreme Court, in KSR, 550
U.S. at 420, “directs us to construe the scope of analogous art broadly,
stating that ‘familiar items may have obvious uses beyond their primary
purposes, and a person of ordinary skill often will be able to fit the teachings
of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock
Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
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“it cannot be said that modifying the bellows shape from Schulman would
have been obvious because no one had ever thought to use a bellows shape
as a form of self-expansion.” Reply Br. 5—6. This line of argument is not
persuasive because it attacks Schulman individually, and fails to take into
account the teachings of Gronsman and Chilcoate relied on by the Examiner.
See Ans. 2—3 (discussing Gronsman and Chilcoate); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”). In particular, Gronsman evidences that it was
known in the art, in a body support of the type disclosed by Schulman in
which fluid cells are alternately pressurized and depressurized to reduce the
likelihood of ulcers and tissue degradation, to provide each of the fluid cells
with a resilient reforming element to return the cell to its uncompressed or
relaxed state. See Schulman 1:5—19, 2:16—31, 3:22—34; Gronsman 1:51—53,
4:42—66. Chilcoate teaches the use of a bellows of helical configuration to
provide inherent memory for self-expansion of the bellows. Chilcoate 3:3—
20.
Appellant also argues that a person having ordinary skill in the art
would not have been prompted, in view of: A) the teachings by Gronsman of
a support surface that reforms with foam; B) the teachings by Schulman of a
support surface having a cell that is “non-helical shaped,” “non-self­
expanding,” and “not formed in the same way” as Appellant’s fluid cell; and
C) the teachings by Chilcoate of “an accordion juicebox,” to apply the
concept of a self-expanding helix to a cell of a support surface as claimed.
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Application 11/041,758
Appeal Br. 20. This argument is predicated, at least in part, on Appellant’s
position that Chilcoate is “in non-analogous art.” Id. at 21.
The modification of Schulman to employ a bellows in the shape of a
helix to yield the predictable result of providing a memory to urge the
bellows into the expanded condition as proposed by the Examiner is nothing
more than the predictable use of a prior art element (i.e., “the engineering
principles relating to a helical bellows as taught by [Chilcoate]”) according
to its established function. Ans. 10. An improvement that is nothing more
than the predictable use of prior art elements according to their established
functions is likely to be obvious. KSR, 550 U.S. at 417. Further, the reason
to do so is provided in Gronsman, which, as discussed above, teaches the use
of a reforming element to return the fluid cell to its uncompressed
configuration in a body support of the type disclosed by Schulman. The
modification proposed by the Examiner simply substitutes one known
reforming element (i.e., a helical bellows configuration, as taught by
Chilcoate) for another (i.e., a resilient foam core, as taught by Gronsman)
known in the field.
For the above reasons, Appellant’s arguments do not apprise us of
error in the rejection of claim 4 as unpatentable over Schulman, Gronsman,
and Chilcoate. Accordingly, we sustain the rejection of claim 4, as well as
claims 1—3, 5—14, and 22—25, which fall with claim 4, under 35 U.S.C.
§ 103(a) as unpatentable over Schulman. Gronsman, and Chilcoate.
Rejection II
Appellant does not present any arguments specifically contesting the
rejection of claims 15 and 16 as unpatentable over Schulman, Gronsman,
Chilcoate, and Smith. See Appeal Br. 16 (raising as issues only the
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Application 11/041,758
propriety of the rejection of claims 1—14 and 22—25, and the rejection of
claims 17—20); id. at 17—25 (presenting arguments only against the rejection
of claims 1—14 and 22—25, and the rejection of claims 17—20). We
understand Appellant to be relying on the arguments presented for
patentability of claims 1—14 and 22—25 in contesting the rejection of claims
15 and 16. See id. at 26 (requesting reversal of the rejections of claims 1—20
and 22—25). Inasmuch as these arguments do not apprise us of error in the
rejection of claims 1—14 and 22—25, for the reasons discussed above, these
arguments likewise fail to apprise us of error in the rejection of claims 15
and 16. Accordingly, we sustain the rejection of claims 15 and 16 under 35
U.S.C. § 103(a) as unpatentable over Schulman, Gronsman, Chilcoate, and
Smith.
Rejection III
Claim 17 requires, in pertinent part:
a sound control device in line with said port and operatively
attached for reducing the sound of fluid during intake and
exhaust of the self-inflating fluid cell, said sound control device
having a variegated surface which allows fluid to flow through
the variegated surface to slow the air flow down and thereby
reduce sound.
Appeal Br. 31, Claims App. (emphasis added).
The Examiner finds that Gronsman lacks a sound control device in
line with the port, but relies on Schulman for this feature. Ans. 7. In
particular, the Examiner finds that Schulman’s rubber plug 17 has “a
variegated opening 19 defined by angled surfaces of V-shaped notches in the
upper and lower portions of [plug] 17 each extending to planar surfaces into
the opening . . . that is inherently capable of reducing the sound of fluid
during intake and exhaust of the self-inflating fluid cell.” Id. at 7, 11
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(underlining omitted). The Examiner provides an annotated reproduction of
Schulman’s Figure 3 A to illustrate the angled and planar surfaces. Id. at 11.
The Examiner finds that “the varied sloped and planar surfaces of the
opening of [Schulman’s plug] are capable of allowing the fluid to flow
slowing the air flow down and thereby reduce the sound as claimed.” Id. at
11-12.
The Examiner’s finding regarding the operation of the angled and
planar surfaces of Schulman’s opening 19 is in error. As Appellant points
out, Schulman’s plug 17 “is designed either to be open or closed.” Appeal
Br. 24. Schulman discloses air supply valve 15 comprising “rubber plug 17
having a self-sealing opening 19 which is normally closed but which during
use is adapted to receive a hollow needle 21 connected to a fluid supply tube
23.” Schulman 5:64—68 (emphasis added, boldface omitted). When
Schulman’s valve 15 is open, by receipt of needle 21 in opening 19, air
passes through opening 19 in plug 17 without any influence from the angled
or planar surfaces alluded to by the Examiner. On the other hand, when no
needle is received in opening 19, Schulman’s valve 15 is closed, and no air
flows through opening 19. Thus, Schulman’s plug 17 is not operative, in
either the open state or the closed state, for reducing the sound of fluid
during intake and exhaust of the fluid cell. Further, the angled and planar
surfaces of Schulman’s plug 17 alluded to the by Examiner do not allow
fluid (air) to flow through the angled and planar surfaces to slow the air flow
down and thereby reduce sound, in either the open or closed state.
Accordingly, we do not sustain the rejection of claim 17 or its
dependent claims 18—20, under 35 U.S.C. § 103(a) as unpatentable over
Gronsman and Schulman because it is predicated on an incorrect finding.
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DECISION
The Examiner’s decision rejecting claims 1—14 and 22—25 under 35
U.S.C. § 103(a) as unpatentable over Schulman, Gronsman, and Chilcoate is
AFFIRMED.
The Examiner’s decision rejecting claims 15 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Schulman, Gronsman, Chilcoate, and Smith is
AFFIRMED.
The Examiner’s decision rejecting claims 17—20, under 35 U.S.C.
§ 103(a) as unpatentable over Gronsman and Schulman is REVERSED.
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
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