Ex Parte 8511314 et alDownload PDFPatent Trial and Appeal BoardDec 27, 201690013087 (P.T.A.B. Dec. 27, 2016) 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. 77382.91 5453 EXAMINER JASTRZAB, JEFFREY R ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 90/013,087 12/06/2013 28289 7590 12/27/2016 THE WEBB LAW FIRM, P.C. ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD, SUITE 1200 PITTSBURGH, PA 15222 8511314 12/27/2016 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 ALESSIO PIGAZZI and GLENN KEILAR, Appellants, Patent Owners Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B21 Technology Center 3900 Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON and DANIEL S. SONG, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE 2 The Appellant/Patent Owner appeals under 35 U.S.C. § 134(b) and 3 35 U.S.C. § 306 from a final rejection of unamended claims 1—26; and 4 newly-added claims 27—29, 33, 35—39 and 42^45. (See “Notice of Appeal,” 5 dated Nov. 10, 2014; “Advisory Action,” mailed October 24, 2014, cover 1 Patent No. US 8,511,314 B2 (the “’314 patent”), issued August 20, 2013 to the Appellants. The ’314 patent is assigned to KHS GmbH and exclusively licensed to Xodus Medical, Inc., the latter of whom is the real party in interest. The ’314 patent issued from Appl. 13/773,290, filed February 21, 2013. 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 page). Claims 30—32, 34, 40, 41, 46 and 47 are cancelled. We have jurisdiction under 35 U.S.C. § 134(b) and 35 U.S.C. § 306. We REVERSE the Examiner’s decision to reject claims 1—29, 33, 35— 39 and 42-45, which claim a patient support apparatus, under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Klauschie et al., Use of Anti-Skid Material and Patient-Positioning to Prevent Patient Shifting during Robotic- Assisted Gynecologic Procedures, 17 J. Minimally Invasive Gynecology 504—07 (July—Aug. 2010) (“Klauschie”), and VanSteenburg (US 6,701,558 B2, issued Mar. 9, 2004). We also REVERSE the Examiner’s decision alternatively rejecting claims 15—18 under § 103(a) as being unpatentable over Klauschie, VanSteenburg and Tursi (US 6,653,363 Bl, issued Nov. 25, 2003). (See Final Off. Act. 2). THE ’314 PATENT One example of a tiltable medical procedure table is a surgical table designed to tilt so as to orient a patient in the “Trendelenburg position.” The Trendelenburg position is a position in which the operating table is inclined so that the patient’s head and upper torso are lower than the patient’s upper legs. (’314 patent, col. 1,11. 46—53 and Fig. 6). One problem associated with tilting a surgical patient at an angle with respect to horizontal is that the patient may slide or otherwise move during the surgery due to the effects of gravity. Another problem associated with tilting a surgical patient at an angle with respect to horizontal is that the patient may suffer neuropathy or vascular damage due to an uneven distribution of pressure forces imposed by the support surface on the patient. (See ’314 patent, col. 1,1. 65 — col. 2, 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 1. 13). The ’314 patent addresses these problems by laying the patient on a pad of viscoelastic foam material of suitable thickness and mechanical properties. The patient may lie either directly on the viscoelastic pad or on a lifting sheet covering the viscoelastic pad. (Id.) Claim 1 is illustrative: 1. A patient support arrangement comprising: a pad configured to be placed on a tiltable medical procedure table; said pad having a length sufficient to extend from about at least the thighs of a patient to about at least the shoulders of a patient to support the torso of a patient placed on said pad; said pad comprising a deformable material; said deformable material being configured to be deformable by the torso of a patient to form a depression in said pad, which depression provides a substantial portion of the holding forces which hold a patient generally in a desired position on said pad upon the medical procedure table being tilted at an angle and thus the torso of a patient being tilted at an angle with respect to the horizontal, such that: a) the head of the patient is disposed lower than the torso of the patient, or b) the head of the patient is disposed higher than the torso of the patient, or c) the right side of the patient is disposed higher than the left side of the patient, or d) the left side of the patient is disposed higher than the right side of the patient, or e) a combination of any of a), b), c), and d); said deformable material has a rate of recovery sufficiently slow to maintain a depression in said pad for a desired period of 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 time upon a change in a depression-generating force on said pad; and said pad is configured to distribute pressure forces across a substantial portion of the torso of a patient in contact with said pad to minimize injuries generated by concentration of pressure forces on at least one portion of the torso of the patient in contact with said pad during a medical procedure. THE RECORD The Examiner’s position is set forth in a Final Office Action, mailed July 10, 2014 (“Final Off. Act.”), and an Answer, mailed June 11, 2015 (“Answer” or “Ans.”). The Patent Owner relies on an “Appeal Brief,” dated January 9, 2015 (“Appeal Brief’ or “App. Br.”), to which are attached declarations of Dr. Maheswari Senthil, Dr. Gustavo Plasencia, Mr. Craig Kaforey, Dr. Alessio Pigazzi, Dr. Michael L. Madigan, Dr. Glenn E. Beltz, Mr. Paul Lloyd and Dr. Thomas Ljungman. The Patent Owner also relies on a Reply Brief dated August 10, 2015. ISSUES The Patent Owner argues the rejections of claims 1—14, 19-29, 33, 35—39 and 42^45 as a group. (See App. Br. 12—22, 24 & 25; Reply Br. 2—8 & 10). We address the “patient support arrangement” of claim 1 and method claim 23 as representative of the claims rejected over Klauschie and VanSteenburg. The patentability of these claims turns on whether the Examiner erred in concluding that one of ordinary skill in the art would have had reason to modify the teachings of the primary reference, Klauschie, in a fashion satisfying the limitations of claim 1; and whether the teachings of 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 the secondary reference, VanSteenburg, taught away from such modification. We need not address the Patent Owner’s arguments regarding the patentability of claims 15 and 16 separately. (See App. Br. 22—24; Reply Br. 8 & 9). It suffices for us to conclude that the teachings of Tursi do not remedy the deficiencies in the combined teachings of Klauschie and VanSteenburg. FINDINGS OF FACT We find the following by a preponderance of the evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Klauschie Klauschie describes a study to estimate the effect of what the article describes as an “antiskid” material to prevent the shifting of a patient placed in a steep Trendelenburg position during robotic gynecological surgery. (Klauschie 504). During the study, patients were positioned as follows: A 3- x 5-foot piece of blue blanket was placed horizontally on the operating table, on top of which was placed a 2- x 3-foot antiskid material (pink egg-crate foam:2 Tyco Healthcare/Kendall, Mansfield, MA), and a second piece was 2 “Egg crate foam” is a “popular term for a foam mattress with a chicken wire-like pattern of elevations and depressions, likened to that of an egg carton, most useful for [patients] with recalcitrant decubitus ulcers.” (The Free Dictionary, http://medical-dictionary.thefreedictionary.com /egg+crate (last visited December 2, 2016), citing McGraw-Hill Concise Dictionary of Modern Medicine (The McGraw-Hill Cos. 2002)). 5 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 1 placed over the initial piece with the flat sides of the foam 2 opposing each other. The pink foam was secured at 2 points with 3 broad strips of cloth tape .... All patients, positioned in a 4 modified dorsal lithotomy position with legs padded and secured 5 in stirrups (Welch Allyn, Inc., Acton, MA), laid directly on the 6 pink foam on their bare back. Both arms, cradled in soft arm 7 pads (David Scott Co., Framingham, MA) were then tucked to 8 the sides using the blue blanket. No shoulder blocks, straps, or 9 braces were used. 10 (Klauschie 505). According to Klauschie, the study “demonstrate[d] that 11 antiskid material [was] a safe alternative to prevent patient sliding and 12 subsequent consequences such as pain, neuropathic injuries, and potential 13 hernias.” (Id.) Klauschie teaches that: 14 The Trendelenburg position and the techniques used to 15 prevent cephalad slippage of the patient in this position 16 contribute to nerve injury .... With increasing reports of 17 neuropathic injury as a result of shoulder braces and straps used 18 to prevent shifting, all members of our practice have 19 implemented the use of antiskid material and patient positioning 20 as described herein, avoiding the use of braces and other devices 21 for at least 5 years previous to this study. 22 (Id. at 506). 23 24 Tursi 25 Tursi describes a class of polyurethane foams that are viscoelastic 26 near room temperature; and that experience significant changes in firmness 27 with small changes in temperature while in a viscoelastic state. (See Tursi, 28 col. 3,11. 13—17 & 21—27; see also id., col. 8,11. 53—60 & Fig. 1). Tursi 29 teaches the use of these foams in bedding. (See, e.g., Tursi, col. 1,11. 5 & 6; 30 & col. 3,11. 62—67). In its discussion of the background art, Tursi explains 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 that “[vjiscoelastic polyurethane foams are typically characterized by high vibration damping, body conformance and slow recovery from compression.” (Tursi, col. 1,11.51—54). Tursi teaches that “[vjiscoelastic foams have gained popularity for bedding applications because such foams are advertised as reducing pressure points, which are believed to cause tossing and turning during sleep.” (Tursi, col. 2,11. 22—25). VanSteenburg VanSteenburg teaches that, during surgery, “[pjortions of the patient’s skin may be subjected to very high pressures and shear forces exerted by the material underlining skin[,j resulting in tissue loads that restrict blood flow to a particular area of the skin[,j resulting in tissue damage or necrosis. This is a major cause of pressure ulcers.” (VanSteenburg, col. 1,11. 23—27). Figure 5 of VanSteenburg depicts a combination of a cushion 132 and anti shear layers 130 for supporting a patient. The combination is designed to reduce skin shear and distribute the patient’s weight more evenly across the surface. (See VanSteenburg, col. 6,1. 66 — col. 7,1. 2; see also VanSteenburg, col. 1,11. 28—36). The cushion 132 is divided into a head pad 72, a torso pad 74 and a foot pad 76. Each of the pads 72, 74, 76 includes a layer of “slow recovery foam” 100, 108, 140 atop foam layers having different support characteristics. (See VanSteenburg, col. 8,1. 25 — col. 9,1. 22). VanSteenburg describes “slow recovery foam” as “foam material that easily conforms to the contour of the patient when weight is applied and slowly returns to its uncompressed state after the weight is removed.” (VanSteenburg, col. 7,11. 27—31). The Examiner correctly characterizes “slow recovery foam” as viscoelastic. (See Ans. 14 & 15). 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 VanSteenburg describes each of the head pad 72, the torso pad 74 and the foot pad 76 as being received in a cover 28 and a bottom coverlet 24. VanSteenburg also teaches positioning an anti-shear layer 130 underneath each cover 28, between the layer of “slow recovery foam” 100,108,140 and the surface that supports the patient. (See VanSteenburg, col. 8,1. 25 — col. 9,1. 22). The anti-shear layers 130 comprise a material such as polyethylene disposed between the cushion and the cover. The anti-shear layers 130 permit the cover to slide freely with respect to the cushion and also permit the cover to stretch without being inhibited by the surface of the cushion. (See VanSteenburg, col. 5,11. 3—9). VanSteenburg teaches that the presence of the anti-shear layer beneath the cover reduces skin shear. (See VanSteenburg, col. 2,11. 13—22; col. 3,1. 67—col. 4,1. 4). ANALYSIS “Patient Support Arrangement” Claims 1—22, 27—29, 33, 35—39 and 42—45 Claim construction is the first step in analyzing whether the subject matter of claim 1 would have been obvious. See, e.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001). Claim 1 recites a “patient support arrangement comprising: a pad configured to be placed on a tiltable medical procedure table.” The remainder of claim 1 recites limitations on the pad, either in terms of intrinsic properties or in terms of the pad’s capacity to react in particular ways when a patient is laid on the table. With the exception of claims 8, 13, 42 and 43, the claims depending directly or indirectly from claim 1 further limit the intrinsic and functional characteristics of the pad. Claims 42 and 43 recite the pad in combination with straps. Claims 8 and 13 recite the pad in combination with 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 “a retaining arrangement,” that is, securing straps, “configured to at least assist in the retention of said pad on a medical procedure table.” (See, e.g., ’314 patent, col. 11,11. 47—52). Claim 1 recites that the patient support apparatus “compris[es]” the pad. Claim 1 further recites that the pad “compris[es] a deformable material.” The verb “comprises,” as used in its patent law sense, denotes that the claimed apparatus “may contain elements in addition to those explicitly mentioned in the claim,” at least to the extent that such additional elements do not conflict with the express limitations of the claim. In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009). Thus, for example, the broadest reasonable interpretation of claim 1 might encompass a pad including other materials, such as high density or low density foams in addition to the recited deformable material. The patient support apparatus as a whole might include additional structures, such as a cover, lift sheet or anti-shear layer in addition to the recited pad. That said, our role is to review the final rejection entered by the Examiner. See 35 U.S.C. § 134(b). The Examiner finds that Klauschie describes the subject matter of independent claim 1, except for: the egg-crate foam being of the viscoelastic variety (i.e. having “a rate of recovery sufficiently slow to maintain a depression in said pad for a desired period of time upon a change in a depression-generating force”). VanSteenburg teaches, in the same field of endeavor, i.e. patient support surfaces, the use of “slow recovery foam” and defines such slow recovery foam as “<2 foam material that easily conforms to the contour of the patient when weight is applied and slowly returns to its uncompressed state after the weight is removed’, col. 7, lines 26—35, for decreasing tissue load. (Ans. 14 & 15). The Examiner concludes that it would have been obvious: 9 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 given the desire to prevent patient shifting and “subsequent consequences such as pain, neuropathic injuries, and potential hernias’ ([Klaushie] 505), to have incorporated viscoelastic foam in [Klaushie’s patient] support table, either by replacing the egg-crate foam with viscoelastic foam, or by making the egg- crate foam out of viscoelastic material, in order to adopt intrinsic benefits of viscoelastic foam in a medical bed environment such as decreased tissue load. (Ans. 15). Although the Examiner incorporates pages 48—59 of the “Request for Ex parte Reexamination of U.S. Patent No. 8,511,314,” dated December 6, 2013 (see Ans. 3), the incorporated material does not appear to provide any reason for combining the teachings of the references independent of the reasons provided by the Examiner. The Examiner’s finding that one of ordinary skill in the art would have recognized “intrinsic benefits of viscoelastic foam in a medical bed environment such as decreased tissue load” is capable of such instant and unquestionable demonstration as to defy dispute. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). (See Ans. 21 (“[VJiscoelastic foam is notorious to the medical bed arts for such decreased pressure on a patient as reinforced numerous times by VanSteenburg.”); see also Randall Mfg. v. Rea, 733 F.3d 1355, 1362—63 (Fed. Cir. 2013) (instructing us to consider all evidence in the record bearing on the knowledge of one of ordinary skill in the art). Tursi, for example, teaches that, as of December 2002, “[vjiscoelastic foams ha[d] gained popularity for bedding applications because such foams [were] advertised as reducing pressure points, which [were] believed to cause tossing and turning.” (Tursi, col. 2,11. 22—25). This teaching regarding the reduction of “pressure points” reflects an understanding that viscoelastic material could reduce tissue load by dissipating or redistributing the reaction 10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 forces supporting a patient’s weight in areas of force concentration. The Patent Owner’s experts are in accord with the Examiner’s finding. (See, e.g., “Declaration,” executed by Dr. Gustavo Plasencia on Sept. 8, 2014 (“Second Plasencia Decl.”), at 11. 99-103 (“[T]he general knowledge of viscoelastic foam of persons in the medical field, in my opinion, is similar to that disclosed by VanSteenburg, and that is that some viscoelastic foams can be used as a cushion or patient support in order to minimize the occurrence of pressure injuries, such as pressure ulcers.”); see also “Declaration,” executed by Thomas N. Ljungman, M.D., on Sept. 8, 2014 (“Ljungman Deck”), at 11. 194—98). The Examiner lists on page 30 of the Answer additional patents found, without traverse by the Patent Owner, to teach the use of viscoelastic foam in medical beds for the purpose of relieving pressure on a patient. Nevertheless, Klauschie describes techniques in which a patient’s bare back is laid directly on an antiskid material, namely, pink egg-crate foam. (See Klaushie 505). The Examiner finds that one of ordinary skill in the art would have had reason either to replace the egg-crate foam used in the technique described in Klaushie with viscoelastic foam; or to make the egg- crate foam described by Klauschie out of viscoelastic material. (Ans. 15). The Examiner is silent as to any other proposed combination that one of ordinary skill in the art might have had reason to implement. Claim 1 is sufficiently broad to encompass a pad consisting of a deformable material such as viscoelastic foam combined with other compressible materials, as well as to encompass a pad combined with other structures such as a cover, a lift sheet or an anti-shear layer. The Examiner’s reasoning, on the other 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 hand, relies on a proposed substitution in which a patient’s bare back is laid directly on a viscoelastic pad. The Examiner relies on the “intrinsic benefits of viscoelastic foam in a medical bed environment such as decreased tissue load” (Ans. 15), as a reason one of ordinary skill in the art might have had to substitute a viscoelastic foam pad for the egg-crate foam described by Klauschie, but does not appear to consider any tendency of viscoelastic foam to increase skin shear (see Ans. 21). In this regard, the Examiner finds that a viscoelastic foam pad substituted for the egg-crate foam described by Klauschie would have retained a patient on a tilted medical procedure table in the same manner as the egg-crate foam, namely, by means of friction between the pad and the skin of the patient. (See Ans. 22). The Examiner finds that the frictional force between the substituted viscoelastic foam pad and the patient would have had multiple components, including a component due to a “speed bump effect” attributable to cradling of the patient by the viscoelastic pad. (See Ans. 22 & 23). There is no teaching in either VanSteenburg or Tursi that the viscoelasticity of viscoelastic foam would help to retain a patient on a tilted medical procedure table. VanSteenburg, for example, does not describe the use of its cushions to support a patient on a tilted surface. (See “Declaration,” executed by Dr. Maheswari Senthil on April 4, 2014 (“Senthil Deck”), at 11. 142 44). The only relevant teachings available in the prior art are Klauschie’s teaching to lay a patient’s bare back directly on an antiskid material to retain a patient on a medical procedure table in the Trendelenburg position; and VanSteenburg’s teaching to reduce the risk of skin shear by laying the patient on a stretchable cover overlying a friction 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 reducing anti-shear layer. In short, these teachings are generally divergent with respect to each other in terms of friction on the skin, and the Examiner has not shown that the “speed bump effect” would have been recognized by one of ordinary skill in the art prior to the disclosure of the ’314 patent so as to provide a reason to utilize the viscoelastic foam of VanSteenburg in a manner disclosed in Klauschie. VanSteenburg’s teachings suggest that any cradling provided by the cushion it describes is attributable to the structure of the cushion as a whole rather than to the viscoelastic layers 100,108,140 in particular. (See VanSteenburg, col. 1,11. 28—36). The Patent Owner presents expert testimony indicating that Klauschie’s technique of laying a patient directly on an antiskid surface atop pink egg-crate foam was not uniformly successful as a means to immobilize a patient on a tilted medical procedure table. (See Senthil Decl., 11. 44-49; see also Ans. 27). The Patent Owner also presents testimony that one of ordinary skill in the art would have been discouraged from implementing any technique for retaining a patient on a medical procedure table that would have resulted in skin shear, that is, unacceptable shear stresses in and immediately below the patient’s skin. (See App. Br. 17 & 18, citing declarations of Pigazzi, Plasencia, and Ljungman; Reply Br. 4 & 5; see also “Declaration,” executed by Dr. Alessio Pigazzi on Sept. 10, 2014, at 11. 36— 93; Second Plasencia Deck, 11. 36—93; Ljungman Deck, 11. 98—163). In view of VanSteenburg’s teaching that conventional patient support surfaces could generate unacceptable shear stresses in and immediately beneath the skin of a patient supported on a tiltable medical procedure table (see VanSteenburg, col. 1,11. 23—27), the Examiner’s conclusion that it would have been obvious either to replace the egg-crate foam used in the technique described in 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 Klaushie with viscoelastic foam, or to make the egg-crate foam described by Klauschie out of viscoelastic material, is not persuasive. Considering the evidence as a whole, the Examiner has not proven by a preponderance of the evidence that one of ordinary skill in the art would have had reason to modify the teachings of Klauschie in a fashion satisfying the limitations of claim 1 based on the teachings of VanSteenburg. Therefore, we do not sustain the Examiner’s decision rejecting claims 1—22, 27—29, 33, 35—39 and 42-45 under § 103(a) as being unpatentable over Klauschie and VanSteenburg. In the alternative rejection of claims 15—18, the Examiner cites Tursi for its description of compressibility and rebound properties of a class of viscoelastic polyurethane foams. (See Ans. 15, 19-20 & 27). The Examiner does not persuasively explain how these compressibility and rebound properties might remedy the above discussed deficiencies in the combination of Klauschie and VanSteenburg as applied in the Final Office Action. For this reason, we do not sustain the Examiner’s decision alternatively rejecting claims 15—18 under § 103(a) as being unpantentable over Klauschie, VanSteenburg and Tursi. Method Claims 23—26 Independent claim 23 recites: 23. A method of positioning a patient on a medical procedure table comprising: positioning a pad, having a length sufficient to extend from about at least the thighs of a patient to about at least the shoulders of said patient, on a tiltable medical procedure table; [and] 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 positioning at least the torso of said patient on said pad.... The Examiner correctly finds that one of ordinary skill in the art would have recognized “intrinsic benefits of viscoelastic foam in a medical bed environment such as decreased tissue load.” (Ans. 15). On the other hand, the Examiner has not articulated sufficient rationale to support the position that one of ordinary skill in the art would have had reason either to replace the egg-crate foam used in the technique described in Klaushie with viscoelastic foam, or to make the egg-crate foam described by Klauschie out of viscoelastic material. Because the Examiner’s reasoning in support of the rejection of claims 23—26 relies on this proposed modification to the teachings of Klauschi based on the teachings of VanSteenburg as generally discussed supra, we do not sustain the rejection of claims 23—26 under § 103(a) as being unpatentable over Klauschie and VanSteenburg. DECISION We REVERSE the Examiner’s decision to reject claims 1—29, 33, 35— 39 and 42-45 under § 103(a) as being unpatentable over Klauschie and VanSteenburg. We also REVERSE the Examiner’s decision alternatively rejecting claims 15—18 under § 103(a) as being unpatentable over Klauschie, VanSteenburg and Tursi. Consequently, we REVERSE the Examiner’s decision rejecting claims 1—29, 33, 35—39 and 42-45. 15 Appeal 2015-007831 Reexamination Control 90/013,087 Patent No. US 8,511,314 B2 REVERSED 16 Patent Owner: THE WEBB LAW FIRM, P.C. ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD., SUITE 1200 PITTSBURGH, PA 15222 Copy with citationCopy as parenthetical citation