Ex Parte 7507468 et alDownload PDFPatent Trial and Appeal BoardFeb 2, 201595000494 (P.T.A.B. Feb. 2, 2015) Copy Citation 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. 95/000,494 10/21/2009 7507468 070163-9005-06 1141 23409 7590 02/03/2015 MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN AVENUE Suite 3300 MILWAUKEE, WI 53202 EXAMINER TILL, TERRENCE R ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 02/03/2015 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 ____________ SIMMONS BEDDING COMPANY, INC. Requester and Appellant v. Patent of TEMPUR-PEDIC MANAGEMENT, INC. Patent Owner1 ____________ Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL 1 Patent Owner did not file a Respondent Brief or otherwise participate in this appeal. See Examiner’s Answer, mailed July 3, 2013 (“Ans.”) 3. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 2 Third Party Requester, Simmons Bedding Company, Inc. (“Requester”), appeals under 35 U.S.C. §§ 134(c) and 315(b) (pre-AIA) the Examiner’s decision not to adopt Requester’s proposed rejections of claims 1–5, 7–10, 20–26, and 28–30.2 We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). We REVERSE and enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.77(b). STATEMENT OF THE CASE United States Patent 7,507,468 (hereinafter the “’468 Patent”), which is the subject of the current inter partes reexamination, issued to Dag Landvik, et al. on March 24, 2009. As noted, Patent Owner did not file a Respondent Brief or otherwise participate in this appeal. The ’468 Patent relates to mattresses made of visco-elastic material that provide improved pressure-relief. ’468 patent, col. 1, ll. 20–27 and 55– 61. Claims 1 and 20, which are illustrative of the appealed subject matter, read as follows (with underlining showing added text and bracketing showing deleted text relative to the original patent claims): 1. A layered bed mattress for pressure-relief of a user, the bed mattress comprising: a first foam layer having a generally planar first support surface adapted to substantially face the user resting upon the bed mattress and having length and width dimensions sufficient to support a reclining body of an adult user, and a generally planar second surface opposite the first support surface, the first and second surfaces defining therebetween a substantially 2 See Requester’s Appeal Brief 1, filed March 22, 2013 (hereinafter “App. Br.”) 2; Ans. 7. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 3 uniform undeflected thickness, the first foam layer comprising visco-elastic foam having a density of no less than 50 kg/m3 and no greater than 120 kg/m3; and a second foam layer having a generally planar third surface adjacent and substantially facing the second surface of the first foam layer, the second foam layer having a substantially uniform undeflected thickness greater than that of the first foam layer; wherein the second foam layer comprises visco-elastic foam. 20. A layered bed mattress for pressure-relief of a user, the bed mattress comprising: a first foam layer having a generally planar first support surface adapted to substantially face the user resting upon the bed mattress and having length and width dimensions sufficient to support a reclining body of an adult user, and a generally planar second surface opposite the first support surface, the first and second surfaces defining therebetween a substantially uniform undeflected thickness, the first foam layer comprising visco-elastic foam having a density of no less than 50 kg/m3 and no greater than 120 kg/m3; [and] a second foam layer having a generally planar third surface adjacent and substantially facing the second surface of the first foam layer, the second foam layer having a fourth surface opposite the third surface, the second foam layer having [a density less than that of the first foam layer and] a hardness greater than that of the first foam layer, wherein the second foam layer comprises visco-elastic foam; and a third foam layer having a fifth surface adjacent and substantially facing the fourth surface of the second foam layer, the third layer having a density less than the first foam layer and less than the second foam layer. App. Br. 31–33, Claims App’x; Ans. 4–5. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 4 Requester appeals the Examiner’s decision not to adopt the following rejections: I. Claims 1–5 and 7–10 under 35 U.S.C. § 103(a) as obvious over Bosch,3 ARC-11089,4 and Singer5 (Ground 1, App Br. 5–12; Ans. 7–9); II. Claims 1–5 and 7–10 under 35 U.S.C. § 103(a) as obvious over Hall6 in view of ARC-11089, and Singer (Ground 5, App. Br. 12–18; Ans. 9–10); III. Claims 1–5, 7–10, 20–247 and 28–30 under 35 U.S.C. § 103(a) as obvious over AliMed8 in view of Fenner9 (Ground 28, App. Br. 18–22; Ans. 11–14); and IV. Claims 1–5, 7–10, 20–26 and 28–30 under 35 U.S.C. § 103(a) as obvious over DE ’81810 in view of AliMed and Ludman11 (Ground 29, App. Br. 22–29; Ans. 14–16). 3 U.S. Patent 3,837,020, issued Sept. 24, 1974 to Samuel Bosch. 4 Charles C. Kubokawa, “Viscoelastic Foam Cushion,” Technical Support Package ARC-11089, NASA – Ames Research Center (December 1976). 5 Angela Singer, “Beds Should be Firm But Kind: National Back Pain Week October 11-16,” PR Newswire Europe (September 29, 1993). 6 U.S. Patent 3,939,508, issued Feb. 24, 1976 to Ervin T. Hall, et al. 7 The Examiner adopted the Ground 28 rejection of claim 20, 25 and 26 as unpatentable under 35 U.S.C. § 103(a) as obvious over AliMed in view of Fenner. Ans. 11 and 14; Right of Appeal Notice, mailed Dec. 19, 2012 (“RAN”) 35. 8 Physical Rehabilitation and Orthopedics, Catalog#1039, AliMed, Inc. (1990). 9 U.S. Patent 5,031,261, issued Jul. 16, 1991 to William G. Fenner, Sr. 10 DE 2235818, published January 31, 1974, naming Monika Steffen, et al. as inventor. Reference is made to the English language computer translation of record. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 5 The Requester further relies on the Declaration of Rick Gladney, executed May 5, 2010 (Ex. App’x, App. Br.; hereinafter “Gladney Decl.”). GROUND 5 Hall, ARC-11089, and Singer Claim 1 Claim 1 is directed to a mattress having first and second visco-elastic foam layers, in which the first visco-elastic foam layer (facing the user) has a density of 50 to 120 kg/m3 and a uniform undeflected thickness less than that of the second visco-elastic foam layer. Hall teaches a foam mattress having first and second polyurethane foam layers 10 and 15, respectively, bonded together. Ans. 10; App. Br. 12; see Hall, col. 1, ll. 46–49; col. 2, ll. 49–54 and Figs. 1–2. Hall teaches that first foam layer 10 is softer and thinner than second foam layer 15. Ans. 10; App. Br. 12–13; see Hall, col. 1, ll. 51–62; col. 2, ll. 49–54 and 63–68; col. 3, ll. 5–10. However, Hall does not teach that the polyurethane foam layers may be visco-elastic foam of the recited density as recited in the claim. To meet this deficiency, Requester further cited ARC-11089 and Singer. Appeal Br. 14–16. ARC-11089 teaches the use of visco-elastic urethane foams for mattress and seat cushions for wheel chair and bed ridden patients “to eliminate decubitus ulcers of the patients.” Ans. 8 and 10; App Br. 13; ARC-11089, p. 3. ARC-11089 describes at least two types of visco-elastic foam used for mattresses, namely Temper Foam T-36 and T-38, described as 11 U.S. Patent 4,580,301, issued Apr. 8, 1986 to Walter R. Ludman, et al. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 6 having “very soft” and “soft” texture, respectively. App. Br. 13; ARC- 11089, p. 4 and 8. T-36 is described as having a density of 79 kg/m3 (0.079 g/cm3) and T-38 is described as having a density of 72 kg/m3 (0.072 g/cm3). App. Br. 13; ARC-11089, p. 7. ARC-11089 further describes a wheelchair seat cushion using three 25mm sheets of Temper Foam of increasing stiffness that “so far has shown no particular advantage over using a uniform 75 mm thickness of a type with a stiffness similar to that average of the three.” App. Br. 13; ARC-11089, p. 9. Singer describes a “Temper mattress,” made of a visco-elastic structure, which demonstrated both significant prevention of pressure sores in hospitals and ease of back pain and arthritic joints due to “improved sleeping posture and better blood circulation.” App. Br. 14; Singer, p. 2, second ¶ and third ¶. The Examiner did not adopt the rejection proposed by Requester because it is not logical that “one skilled in the art would look at the teachings of ARC-11089 and modify Hall to construct a multi-layer mattress of visco-elastic material, despite no advantage over a monolithic sheet of foam, of average density of the three layers.” Ans. 23. Requester contends that ARC-11089 cures the deficiencies of Hall despite the lack of advantage because alternative designs, such as the ARC- 11089 layered seat cushion, can teach a claimed invention “even if the designs or methods have been expressly deemed to have no benefit over those known in the art” and because ARC-11089 does not teach away from the use of multiple visco-elastic layers. App. Br. 15. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 7 “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We agree with Requester that ACR-11089 merely discloses alternative seat cushion structures and does not teach away from a seat cushion structure with multiple layers. However, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The mere fact that ARC-11089 describes a layered visco-elastic seat cushion is not a reason why a skilled artisan would have incorporated such technology into the mattress of Hall. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Nonetheless, Hall discloses that The cushion materials used may be any of the resilient cellular materials, such as urethane foam or other foams known to those skilled in the art. These materials are available in a variety of textures from high to low density and from very low to very high degrees of firmness. Hall, col. 1, ll. 63–68. Accordingly, Requester reasons that “the viscoelastic foam disclosed in ARC-11089, being a type of polyurethane foam and, more generally a suitable, known foamed material, falls within Hall’s prescription.” App. Br. 16. The Examiner responds that Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 8 Though visco-elastic foam is a polyurethane foam, the details of claim 1 are not limited to a simple substitution of one kind of polyurethane foam for another. As Third Party Requestor recognizes, the additional details of claim 1 also need to be addressed. Those being a viscoelastic mattress of multi- layer construction with each layer being of a different thickness. The critical feature of patentability never rested on the obviousness of substituting one known material for another, but the multi-layer, differing thickness construction, combined with the composition of the material (visco-elastic). To argue that one skilled in the art, at the time the invention was made, needed to only substitute the type of material to construct the claimed mattress is over simplified. Ans. 23–24. The Examiner has not explained or presented evidence as to why, if Hall describes all aspects of the invention, except for the use of a visco- elastic foam of the particular density recited, the issue is more than whether one of ordinary skill in the art would have used a visco-elastic foam of the recited density as the polyurethane foam in the structure described in Hall. The Examiner has not explained where the oversimplification in this analysis exists. For example, the Examiner did not challenge the Requester’s evidence that Hall describes “the second foam layer having a substantially uniform undeflected thickness greater than that of the first foam layer.” Appeal Br. 13. Moreover, ARC-11089’s temper foams T-36 and T-38 have a density within the claimed range and were known in the art for use as foam mattress materials to help eliminate decubitus ulcers in patients. Hall teaches that any known mattress foam materials of various textures, densities, and firmness may be used for the mattress foam layers. T-36 and T-38 temper foams described in ARC-11089 are just such known materials that have the added advantage of being known to reduce pressure Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 9 sores in bed ridden patients. Singer likewise evinces that visco-elastic foam materials of the type described in ARC-11089 were known in the art for use in mattresses with established benefits. We need not even reach the multilayered seat cushion of ARC-11089, because Hall describes that foam mattresses with layers of different thickness and hardness to achieve the combination of comfort and firmness and ARC-11089 and Singer teach predictable uses for temper foams in mattresses with established functions of reducing pressure sores and back pain. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”); see also KSR, 550 US at 420 (“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.”). Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with Requester that the Examiner appears to be seeking an anticipatory reference, when the proposed rejection is based on the combined teachings of a mattress having layers of different thicknesses and the use of visco-elastic foams of the recited density in mattresses. Requester’s Rebuttal Brief, filed August 5, 2013 (“Reb. Br.”) 4. Accordingly, we reverse the Examiner’s decision not to reject claim 1 under 35 U.S.C. § 103(a) as obvious over Hall in view of ARC-11089 and Singer. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 10 Dependent claims 2–5 and 7, 8, and 10 With respect to dependent claims 2–5 and 7–10, the additional features recited therein are either described with respect to the multi-layered mattress of Hall, such as adhered layers and harder second layer, or are properties of the T-36 and T-38 temper foams described in ARC-11089 as used for mattresses, such as being responsive to body heat. See e.g., App. Br. 17. For the reasons discussed above, these features would have been met by the obvious combination discussed with respect to claim 1. Accordingly, for the same reasons as discussed above with respect to claim 1, we reverse the Examiner’s decision not to reject dependent claims 2–5, 7, 8, and 10 under 35 U.S.C. § 103(a) as obvious over Hall in view of ARC-11089 and Singer. Claim 9 In light of the amendment to claim 1, claim 9 is duplicative of the subject matter of claim 7. Accordingly, claim 9 should be cancelled. Nonetheless, the subject matter of claim 9 is subject to the same rejection as claim 7. Accordingly, for the same reasons as discussed above with respect to claim 7, we reverse the Examiner’s decision not to reject dependent claim 9 under 35 U.S.C. § 103(a) as obvious over Hall in view of ARC-11089 and Singer. We enter a new ground of rejection as follows: claims 1–5 and 7–10 are rejected under 35 U.S.C. § 103(a) as obvious over Hall in view of ARC- 11089 and Singer. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 11 GROUND 25 DE ’818, AliMed, and Ludman Claim 1 Claim 1 is directed to a mattress having first and second visco-elastic foam layers, in which the first visco-elastic foam layer (facing the user) has a density of 50 to 120 kg/m3 and a uniform undeflected thickness less than that of the second visco-elastic foam layer. DE ’818 teaches a multilayer mattress, which increases in thickness and hardness between a first layer 4 and a second foam layer 3, and between second foam layer 3 and a lower third layer 2. App. Br. 23; Translation, p. 1, fifth ¶. DE ’818 also teaches that such a structure provides “the most favorable suspension effect.” Id. DE ’818 teaches that the foam is “foam material, such as polyurethane composite.” App. Br. 23–24; DE ’818, ¶ 7. DE ’818 does not teach that the first and second foam layers are visco-elastic foam, with the first foam layer having the recited density, and the third foam layer having density lower than the first two foam layers. AliMed teaches that it was known in the art to use soft or extra soft T- foam in mattresses for six benefits, namely elimination of pressure points (for unimpeded blood flow, tissue nourishment, and oxygenization), absorption of shock and vibration, the materials complete recovery, and for its air circulation, fire retardant, and light weight properties. App. Br. 18, AliMed, C81, C161, and C164. AliMed teaches that T-foam materials, T- 36, T-38, T-41, and T-47, have increasing hardness, respectively, and a density generally in the range of 91–96 kg/m3. App. Br. 18–19 and 24; AliMed, C81. AliMed also teaches a laminated multilayer wheelchair seat Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 12 cushion comprising a 1 inch first layer of soft T-foam, a 1 inch second layer of “medium grade” T-foam, and a “base layer of High Density foam,” which provides “sitting stability, decubitus protection, and economy.” AliMed C165. Ludman teaches a multilayer mattress made of polyurethane foams “of the polyether type” of several different densities. See Ludman, col. 1, ll. 65–68; col. 3, ll. 49–64; Table. Ludman teaches that “a softer mattress, with greater extensibility in the upper layers, can be advantageous in reducing the incidence of bed sores.” App. Br. 24; Ludman, col. 3, ll. 44–47. Ludman, also teaches that the hardness of the layers generally increases from the user surface downward and the density of cover layer 26 and piece 23 are more compressible (i.e., softer) and generally have a lower density than lower elements of the mattress (blocks 22, 19, and 5). Ludman, col. 3, ll. 49–60, col. 3, l. 65 to col. 4, l. 8. Requester contends that it would have been obvious for one of ordinary skill in the art to have replaced the first and second layers of DE ’818’s mattress with a visco-elastic foam material because visco-elastic foam is a type of polyurethane foam which has improved benefits in reducing pressure sores and because Ludman discloses the advantage of having softer upper layers of a mattress. App. Br. 25–27. According to Requester, such a combination does no more than yields predictable results. Id. at 26–27. The Examiner does not adopt the rejection of claim 1 because “the type of foam used plays a major part of designing the thickness and densities of the pads/mattresses.” Ans. 29. The Examiner reasons that because Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 13 AliMed uses layers of equal thicknesses, one skilled in the art would not have substituted the polyurethane composite material of DE ’818 with the visco-elastic foam of AliMed and keep the same ratio of thickness between the top layer and middle layer of DE ’818 “because AliMed 1039 teaches a thicker middle layer isn’t necessary to achieve the desired effect with a visco-elastic material.” Id. We disagree with the Examiner’s reasoning. As pointed out by the Requester (App. Br. 27; Reb. Br. 6), AliMed does not teach a specific benefit to having equally thick layers in a cushion, nor does the disclosure as a whole teach away or discourage the use of a visco-elastic foam mattress wherein the foam layers are of different thicknesses. Accordingly, the Examiner has directed us to no credible basis for finding that the type of foam “plays a major part of designing the thickness” of a mattress. DE ’818 is directed to a mattress having “favourable elasticity characteristics” and “favorable suspension effect” to avoid an unpleasant sinking feeling and giving away of the middle flat zones. DE ’818, p. 1, second ¶, third ¶, and fifth ¶. As such, one of ordinary skill in the art would have combined a mattress having layers of the thickness and hardness described in DE ’818 for the suspension benefits and would have use a visco-elastic foam for any of the six benefits to mattresses described in AliMed. To do so would have been no more than the predictable use of known elements according to their established functions. KSR, 550 US at 417. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 14 Accordingly, we reverse the Examiner’s decision not to reject claim 1 under 35 U.S.C. § 103(a) as obvious over DE ’18 in view of AliMed and Ludman. Dependent claims 2–5 and 7, 8, and 10 With respect to dependent claims 2–5 and 7–10, the additional features recited therein are either described with respect to the multi-layered mattress of DE ’818, such as adhered layers (see DE ’818, p. 1, third ¶, which teaches the use of conventional fabric coatings, bandages or other securing agents) and harder second layer, or are properties of the T-36 and T-38 temper foams described in AliMed as used for mattresses, such as being responsive to body heat. See e.g., App. Br. 27–28. For the reasons discussed above, these features would have been met by the obvious combination discussed with respect to claim 1. Accordingly, for the same reasons as discussed above with respect to claim 1, we reverse the Examiner’s decision not to reject dependent claims 2–5, 7, 8, and 10 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Claim 9 In light of the amendment to claim 1, claim 9 is duplicative of the subject matter of claim 7. Accordingly, claim 9 should be cancelled. Nonetheless, the subject matter of claim 9 is subject to the same rejection as claim 7. Accordingly, for the same reasons as discussed above with respect to claim 7, we reverse the Examiner’s decision not to reject dependent claim 9 Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 15 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Claims 20, 25, and 26 The Examiner did not adopt the rejection of any of claims 20–26 over DE ’818, Alimed, and Ludman (Ground 29). RAN 38–40. Yet, the Examiner did adopt a rejection of claims 20, 25, and 26 over AliMed alone (Ground 27) and, using similar reasoning, over AliMed in view of Fenner (Ground 28). RAN 33–38. Because of the apparent inconsistency with respect to the Examiner’s application of AliMed and Requester’s addition of claims 20–26 (including claims 21–24, which depend from claim 20) in the rejection based on DE ’818, AliMed and Fenner, we have reviewed the non- adopted obviousness rejection of rejected claims 20, 25, and 26 over DE ’818 in view of AliMed and Ludman considering the Examiner’s reasoning with respect to AliMed alone. Claim 20 is directed to a three layer mattress in which the first layer is a visco-elastic foam having a density of 50–120 kg/m3, the second layer is a visco-elastic foam having a hardness greater than the first layer, and the third layer has a density less than the first and second layers. The third layer is not limited to a visco-elastic foam layer. In the Examiner’s adoption of the rejection of claim 20 based on AliMed alone (see RAN 33), the Examiner found that the multilayered seat cushion of AliMed teaches a cushion having a first visco-elastic foam layer (soft) having the recited density, a second visco-elastic foam layer having a hardness greater than the first layer (medium grade), and a third foam layer having a density less than the first foam layer. RAN 33–34. The Examiner Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 16 found that the third “high density foam” layer to be “non-viscoelastic polyurethane foam, which typically has a density of up to about 2.5 lb. density,” which is less than the typical density of T-foams of 91–96 kg/m3. Id. at 33–34. The Examiner’s finding is supported by Requester’s Declaration of Rick F. Gladney. See Gladney Declaration ¶ 6 (‘“Conventional foam rubber,’ including ‘High Density Foam,’ has referred since prior to 1993 to a foam rubber having a density up to about 2.5 lb/ft3 [about 40 kg/m3].”); App. Br. 24, n. 3. The Examiner also determined that “it would have been obvious to a person of ordinary skill in the art at the time the invention was made to employ the three layer seat cushion technology in the form of a bed mattress in order to gain the same advantages displayed by the seat cushion.” RAN 34. The Examiner’s determination is also supported by the testimony of Mr. Gladney. See Gladney Declaration, ¶ 3–5 (discussing generally that seat cushion technology would have been considered “related and relevant” by one of ordinary skill in the art to mattresses technology, namely the teachings of “avoiding pressure sores and decubitus ulcers was particularly relevant to designing hospital mattresses”). Mr. Gladney testifies to having experience in the mattress manufacturing business since 1973, including experience with “composition, characteristics, and uses of conventional foam rubbers and visco-elastic foams for mattresses, as well as mattress structures and manufacturing techniques.” Gladney Declaration, ¶ 2. Mr. Gladney’s testimony is consistent with Ludman’s teachings of conventional polyurethane foams having a density in the range of 32–51 kg/m3 (excluding the “hard Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 17 chipfoam” of blocks 6 and 7 and side walls 24 and 25). See Ludman, col. 3, ll. 49–60, Table. Mr. Gladney’s testimony is also consistent with teachings of wheelchair technology or NASA flight seat cushions in combination with mattress technology in documents such as AliMed (see C81), ARC-11089 (Summary and p. 3), and Singer (p. 2, first ¶) and the disclosure of “pad bodies . . . for beds and other couch furniture” in DE ’818 (p. 1, first ¶). Accordingly, we agree with the Examiner’s reasoning as supported by the testimony of Mr. Gladney. The Examiner found that AliMed teaches that viscoelastic foam is responsive to body heat as recited in claim 25. RAN 34; AliMed C164. The Examiner also found that AliMed did not teach the first foam layer “adhered to” the second foam layer, as recited in claim 26, but determined this feature was nonetheless obvious because “it has been quite well established in the foam mattress/cushion industry.” RAN 34. The Examiner provides no evidence in support of position that this feature is “well established.” However, we need not reach the Examiner’s rationale because we disagree with the Examiner’s finding that AliMed did not teach the first foam layer “adhered to” the second foam layer. AliMed teaches that the multilayered seat cushion is a “Tri-laminate construction,” i.e., the three layers are adhered, meeting the requirements of claim 26. AliMed, C165. We apply the teachings of AliMed in the same manner discussed above, for the same reasons discussed above with respect to the teachings of AliMed alone, and reverse the Examiner decision not to adopt the rejection of claims 20, 25 and 26 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 18 Claims 21–23, 29, and 30 The Requester did not include claims 21 or claims 28–30 in the rejection under 35 U.S.C. § 103(a) based on AliMed alone (Ground 27). RAN 33–34. The Examiner was unable to adopt the rejection of claims 22– 24 because they depended from claim 21, which was not included in the proposed rejection. See RAN 34. With respect to dependent claims 21–23, 29, and 30, the additional features recited therein are either described with respect to a multi-layered mattress of DE ’818, such as adhered layers (see DE ’818, p. 1, third ¶, which teaches the use of conventional fabric coatings, bandages or other securing agents) and thicker second or third layer, or are properties of the T- 36 and T-38 temper foams described in AliMed as used for mattresses, such as being responsive to body heat. Requester contends that it would have been obvious for one of ordinary skill in the art to have replaced the first and second layers of DE ’818’s mattress with a visco-elastic foam material because visco-elastic foam is a type of polyurethane foam which has improved benefits in reducing pressure sores and because Ludman discloses the advantage of having softer upper layers of a mattress. App. Br. 25–27. According to Requester, such a combination does no more than yields predictable results. Id. at 26–27. Thus, these features would have been met by combining the mattress taught by DE ’818 and replacing the first two layers with the Temper foam described in AliMed, as argued by Requester. The Examiner uses the same reasoning for not adopting the rejection of claims 20–26, 29, and 30 as he did for claim 1. Namely, the Examiner does not adopt the rejection because “the type of foam used plays a major Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 19 part of designing the thickness and densities of the pads/mattresses.” Ans. 29. The Examiner reasons that because AliMed uses layers of equal thicknesses, one skilled in the art would not have substituted the polyurethane composite material of DE ’818 with the visco-elastic foam of AliMed and keep the same ratio of thickness between the top layer and middle layer of DE ’818 “because AliMed 1039 teaches a thicker middle layer isn’t necessary to achieve the desired effect with a visco-elastic material.” Id. We disagree with the Examiner’s reasoning. As pointed out by the Requester (App. Br. 27; Reb. Br. 6), AliMed does not teach a specific benefit to having equally thick layers in a cushion, nor does the disclosure as a whole teach away or discourage the use of a visco-elastic foam mattress wherein the foam layers are of different thicknesses. Accordingly, the Examiner has not directed us to a credible basis for finding that the type of foam “plays a major part of designing the thickness” of a mattress. DE ’818 is directed to a mattress having increasing thickness and hardness to provide “favourable elasticity characteristics” and “favorable suspension effect” to avoid an unpleasant sinking feeling and giving away of the middle flat zones. DE ’818, p. 1, second ¶, third ¶, and fifth ¶. As such, one of ordinary skill in the art would have combined the thickness and hardness ratios described in DE ’818 for the suspension benefits and would have used a visco-elastic foam for any of the six benefits to mattresses described in AliMed, such as pressure sore relief. To do so would have been no more than the predictable use of known elements according to their established functions. KSR, 550 US at 417. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 20 Accordingly, we reverse the Examiner’s decision not to reject claims 21–23 and 29–30 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Claim 24 In light of the amendment to claim 20, claim 24 is duplicative of the subject matter of claim 21. Accordingly, claim 24 should be cancelled. Nonetheless, the subject matter of claim 24 is subject to the same rejection as claim 21. Accordingly, for the same reasons as discussed above with respect to claim 21, we reverse the Examiner’s decision not to reject dependent claim 24 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Claims 12 and 28 Claim 12 is directed to a mattress having two visco-elastic foam layers, in which the first layer has a density of 50–120 kg/m3. As noted by the Requester, claim 12 is broader than claim 1 and 20 and both claim 1 and claim 20 include all the features of claim 12. Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over AliMed in view of Fenner. RAN 46–47. Claim 12 does not stand rejected under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. However, for the same reasons as discussed above with respect to claims 1 and 20, we further enter a new ground of rejection of claim 12 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 21 Claim 28 is substantially identical in scope to claim 1, with the exception that claim 28 does not require that the thickness of the second foam layer is a “substantially uniform undeflected thickness.” As with claim 1, claim 28 recites that the second foam layer is thicker than the first foam layer, which is also similar to the additional limitation discussed above with respect to claim 21. Accordingly, for the same reasons as discussed above with respect to claims 1 and 21, we reverse the Examiner’s decision not to reject dependent claim 28 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. We enter a new ground of rejection as follows: 1–5, 7–10, 12, 20–26 and 28–30 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. REMAINING GROUNDS OF REJECTION Because our decision is dispositive regarding the unpatentability of all the claims on appeal, we need not reach the merits of the cumulative obviousness rejections based on other references. Cf. Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having decided a single dispositive issue, the ITC was not required to review other matters decided by the presiding officer). DECISION In sum, we reverse the Examiner’s decision not to adopt the following rejections and enter new grounds as follows: Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 22 Claims 1–5 and 7–10 under 35 U.S.C. § 103(a) as obvious over Hall in view of ARC-11089, and Singer; and Claims 1–5, 7–10, 12, 20–26 and 28–30 under 35 U.S.C. § 103(a) as obvious over DE ’818 in view of AliMed and Ludman. Since we enter new grounds of rejections of each claim on appeal, we decline to address the merits of the additional grounds of rejection appealed by the Requester. NEW GROUND OF REJECTION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 23 (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. … Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board’s opinion reflecting its decision to reject the claims and the patent owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Appeal 2014-001730 Reexamination Control 95/000,494 Patent 7,507,468 B2 24 Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The examiner, after the Board’s entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board’s rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). REVERSED; NEW GROUND OF REJECTION PATENT OWNER: MICHAEL BEST & FRIEDRICH LLP (Mke) 100 E WISCONSIN A VENUE Suite 3300 MILWAUKEE, WI 53202 THIRD-PARTY REQUESTER: ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 Copy with citationCopy as parenthetical citation