Ex Parte Wilkinson et al

Patent Trial and Appeal Board

Jan 8, 2018

14479636 (P.T.A.B. Jan. 8, 2018)

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.
14/479,636 09/08/2014 John W. Wilkinson MPL.50611-NY 1068
5409 7590 01/10/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
THROOP, MYLES A
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
01/10/2018 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 W. WILKINSON and JOHN C. WILKINSON
Appeal 2017-011539
Application 14/479,636
Technology Center 3600
Before KEVIN F. TURNER, MICHELLE R. OSINSKI, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejections2 under 35 U.S.C. § 103(a): of claims 1—6, 8—10, 12—16, and 18—
23 as unpatentable over Holliday (US 4,042,988, issued Aug. 23, 1977) and
Pirzada (US 2002/0129448 Al, pub. Sept. 19, 2002); and of claims 24—26 as
1 Appellant is the Applicant, WCW, Inc., which, according to the Brief, is
the real party in interest. Appeal Br. 1.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated August 15, 2016 (“Final Act.”).
Appeal 2017-011539
Application 14/479,636
unpatentable over Holliday, Pirzada, and Takeda (US 9,114,048 B2, issued
Aug. 25, 2015).3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1,10, 20, and 22 are independent. Claim 22, reproduced
below, illustrates the claimed subject matter.
22. A cushioning device comprising:
a plurality of support fluid cells located in each of the
plurality of first channels between a head end and a foot end of
a support surface and disposed perpendicular to a length of the
cushioning device, the plurality of support fluid cells
configured for supporting a load of a person, wherein each of
the plurality of support fluid cells include a reforming element;
and
a counterbalance system including a structure configured
to transfer fluid from a first of the plurality of support fluid
cells, located at a first location along the length, to a
counterbalance fluid cell, located at a second location along the
length, wherein the counterbalance fluid cell is located under
the plurality of support fluid cells, and wherein the
counterbalance fluid cell is not located directly under the first
fluid cell;
wherein the support fluid cells create a support surface
configured to support a load of a person when the person is
extended along the length of the cushioning device.
3 Claim 11 has been canceled. Appeal Br. 1. In the Answer, the Examiner
withdrew the rejections of claim 7 as unpatentable over Holliday, Pirzada,
and Kopfstein (US 5,685,036, issued Nov. 11, 1997) and claim 17 as
unpatentable over Holliday and Pirzada, stating that claims 7 and 17 are
objected to as depending from a rejected claim, and that independent claims
1 and 10 would be allowable if amended to include the subject matter of
claims 7 or 17. Ans. 2.
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ANALYSIS
Obviousness of Claims 1—6, 8—10, 12—16, and 18—23 over Holliday
and Pirzada
Claims 1—6, 8, 9, 12—16, 18, 19, and 21—23
Appellant argues claims 1—6, 8, 9, 12—16, 18, 19, and 21—23 together
in contesting the rejection of these claims as obvious over Holliday and
Pirzada. See Appeal Br. 10-16; Reply Br. 4. We select claim 22 as the
representative claim for this group, and the remaining claims stand or fall
with claim 22. See 37 C.F.R. § 41.37(c)(l)(iv). In re McDaniel, 293 F.3d
1379, 1383 (Fed. Cir. 2002); see also In re Watts, 354 F.3d 1362, 1368 (Fed.
Cir. 2004). Appellant also presents separate arguments for claims 10 and 20
(Appeal Br. 17—18; Reply Br. 4—6), which we address infra.
Independent claim 22 recites a cushioning device with a plurality of
support fluid cells in each of a plurality of first channels disposed
perpendicular to a length of the cushioning device and a counterbalance
system including a counterbalance fluid cell having a specific location
relative to the first of the plurality of support fluid cells.
The Examiner finds that Holliday teaches a cushioning device having,
inter alia, “a plurality of support fluid cell[s] located in each of the plurality
of first channels (Holliday, Fig. 4, #26) between a head end and a foot end of
a support surface and disposed perpendicular to a length of the cushioning
device,” and that Pirzada “further teaches a mattress with two layers
including a counterbalance system,” so that it would have been obvious “to
duplicate the one layer of Holliday and provide a second layer, as shown in
Pirzada, since it has been held that mere duplication of essential working
parts of a device involve only routine skill in the art.” Final Act. 2-4.
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Furthermore, the Examiner reasons that “because of the motivation
given by Pirzada in paragraph [0002],” it would have been obvious “to
provide the apparatus of Holliday with a second layer in order to more
evenly [distribute] a user’s weight, thus improving comfort and reducing bed
sores.” Id. at 4. The Examiner also explains, “[Regarding ‘a counterbalance
fluid cell located at a second location along the length,’ [that] Pirzada, Figs.
1-2 teaches . . . connections between cells that are not vertically oriented (the
lower cell is not directly beneath the upper cell), such as #12B and 12G,” so
that “[i]t would have been obvious ... to make fluid connections . . .
between an upper cell that is not directly above the connected lower cell, as
a matter of design choice to optimize the aesthetic feel and user comfort
while using the mattress,” and “to have fluid connections between non-
adjacent cells in order to improve fluid circulation throughout the mattress.”
Id.
In taking issue with the analysis and conclusions presented in the
Final Office Action, Appellant first contends that “Pirzada teaches a series
of chambers disposed parallel to the length of the support, [] which is
contrary to Appellant’s device which claims that the channels and fluid cells
are disposed perpendicular to the length of the support.” Appeal Br. 10.
However, Appellant is simply attacking Pirzada in isolation for lacking
support for the teachings for which it was not cited. Nonobviousness cannot
be established by attacking references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the Examiner explains,
“Pirzada is not cited for any teaching of the orientation of air cells,” again
pointing out that “Holliday teaches air cells that are disposed in the same
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Application 14/479,636
manner as those of Appellant’s invention, as can be seen by comparing
Holliday, Fig. 4 and Appellant’s Fig. 2.” Ans. 2. Appellant has not disputed
these findings.
Appellant rephrases this same contention, by also arguing that “the
structure and arrangement of Pirzada’s support fluid cells are not the same as
those claimed by Appellant... as the fluid cells of the reference all extend
through the full length of the support, i.e., they all exist at the same locations
along the length.” Appeal Br. 11. However, we agree with the Examiner
that
[i]n the proposed combination of Holliday and Pirzada, in
which the mattress of Holliday is provided with two layers of
air cells and the air tubing configuration between those air cells,
[both] as taught by Pirzada, then the combined apparatus in fact
does contain “both that the counterbalance cell not be located
directly under the first fluid cell and that the counterbalance cell
be located at a second location along the length of the support.”
Ans. 4. Again, Appellant has not disputed these findings.
Appellant next contends that “Appellant’s device is directed to
counterbalancing, thereby preventing patient slippage and providing
additional support for the patient during articulation of the device; [] merely
improving circulation throughout the support would not accomplish this
result.” Appeal Br. 12. However, this contention is without merit. As the
Examiner correctly points out, “this functionality appears only in
Appellant’s claims 24—26, and not in independent claims 1, 10, or 22.” Ans.
4.
Appellant also contends that “[t]he cells [of Pirzada] are not arranged
in a manner which would allow the head region to be elevated as shown in
Fig. 12 of the Specification.” Appeal Br. 13,16 (where it is alleged that
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“Appellant’s invention is concerned with providing an effective
counterbalance cell, i.e., one which can provide increased support in a head
and thigh region when the bed is articulated.”). However, Appellant’s
contention is unavailing as it is not commensurate with the scope of the
independent claim 22, which is not limited to “providing additional support
for the patient during articulation of the device.” See id. at 27—28, Claims
App. As we are instructed by our reviewing court, “limitations are not to be
read into the claims from the [Specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citing InreZletz, 893 F.2d319, 321 (Fed. Cir.
1989)); see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore,
we agree with the Examiner that “both the functionality of the claimed
invention is found in the prior art, as well as motivation to combine the two
prior art references.” Ans. 4.
Appellant further submits that neither reference “teach[es] or
suggests] the use of both a first plurality of channels located in the top foam
layer and a second channel located in the bottom foam layer.” Appeal Br.
13. More, specifically, Appellant contends that “Pirzada only teaches the
use of two layers of chambers, without any foam layer supporting the
chambers at all,” while “Appellant’s invention not only includes two foam
layers, but also has channels for cells and the placement of cells in each
layer.” Id. at 13—15 (emphasis added). However, Appellant’s contention is
unavailing as it is again not commensurate with the scope of the independent
claim 22, which does not recite any foam layers, or even layers. See Appeal
Br. 27—28, Claims App. As we are instructed by our reviewing court,
“limitations are not to be read into the claims from the [Specification.” See
In re Van Geuns, 988 F.2d at 1184.
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Claim 10
In addition to the contentions that we did not find persuasive for claim
22, Appellant also contends that “the combination logically cannot teach the
element wherein the counterbalance fluid cell is located in the second
channel located in the second top surface of the second foam layer.” Appeal
Br. 16.
In response, the Examiner explains that
[w]ith respect to a foam layer with a channel that hold an air cell,
this structure was noted on page 2 of the Final Rejection dated
8/15/16, which states that this structure is found in Holliday, Fig.
2, #18, which teaches a foam rubber support with channels; the
channels can be clearly seen at Fig. 2, #20.
Ans. 6. Again, Appellant has not disputed these findings.
Claim 20
Appellant argues that “the Examiner’s alleged prior art device could
not undertake the method steps of creating its structure by cutting, placing,
and attaching, even the method steps that relate to the use of the device are
not operable with the device created by the proposed modification of
Holliday with Pirzada.” Appeal Br. 17. While acknowledging that “the
modified device would be capable of supporting a load of a person,”
Appellant also contends that “there is nothing in either reference to suggest
that the structure is amenable to articulation.” Id. In particular, Appellant
contends that “the Examiner has not shown that articulation of the prior art
device would result in a targeted increase in firmness in the thigh region as
required by the claim.” Reply Br. 5.
However, the Examiner finds that “Holliday teaches a foam layer . . .
in which grooves #20 are seen, therefore some process step[s] must
inherently have already been performed in order for . . . these grooves to
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exist,” and that “[t]he structures of Holliday, namely a foam mattress that
contains air cells, [is] inherently capable of also [being] bent as is shown in
Appellant’s Fig. 12.” Ans. 7—8. We agree with the Examiner that “the
combined structures of the art of Holliday and Pirzada are inherently capable
of performing Appellant’s recited method steps.” Id. at 8.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1—6, 8—10, 12—16, and 18—23 over Holliday and Pirzada.
Obviousness of Claims 24—26 over Holliday, Pirzada, and Takeda
While acknowledging that Holliday and Pirzada do not teach “air cells
in the thigh region increasing in pressure when the bed is articulated, in
order to prevent a person from sliding down to the foo[t] end of the device,”
the Examiner finds that “Takeda, column 14, lines 40-50, teaches, ‘the
pressure within the air cell group lOd corresponding to the buttock area
increases as the angle to which the back frame is raised increases.’” Final
Act. 8. Based on the foregoing, the Examiner determines that it would be
obvious “to configure the apparatus of Holliday as modified by Pirzada to be
inflated in the manner of Takeda in order to allow the mattress of Holliday
as modified by Pirzada to prevent a patient from sliding, and thus to allow
the mattress to be used on an articulating bed frame.” Id.
Appellant submits that “Takeda teaches articulating an air mattress,
but does not teach or even suggest a counterbalance fluid cell.” Appeal Br.
20. However, Appellant is simply attacking Takeda in isolation for lacking
support for the teachings for which it was not cited. Nonobviousness cannot
be established by attacking references individually when the rejection is
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predicated upon a combination of prior art disclosures. See In re Merck, 800
F.2d at 1097. As the Examiner again explains,
Takeda was introduced for the narrow teaching that when using
a mattress of inflatable cells on an articulating bed, that it is
known to increase the pressure at the buttocks region when the
back of the bed is tilted up, thereby preventing a user from
sliding down into the mattress.
Ans. 8 (citing Takeda, 14:40-50).
Appellant responds that “by the Examiner’s admission, Takeda adds
nothing structural to the combination of references that would permit the
structure to perform the counterbalancing step.” Reply Br. 7. Therefore,
Appellant concludes “that the structure of Holliday and Pirzada would not be
capable of achieving the claimed subject matter with respect to claims
24 — 26, just as it is not capable of achieving the claimed subject matter with
respect to claim [22],”4 Id.
However, we have previously not found persuasive Appellant’s
contentions regarding the rejection of claim 22 over Holliday and Pirzada.
Thus, for similar reasons, we sustain the Examiner’s rejection of claims 24—
26 over Holliday, Pirzada, and Takeda.
DECISION
We AFFIRM the Examiner’s rejections.
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
4 Claims 24—26 depend, either directly or indirectly from claim 22, not claim
20.
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