Ex Parte Bertram

Board of Patent Appeals and Interferences

Dec 22, 2009

11062357 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MORTON BERTRAM III
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Appeal 2009-003270
Application 11/062,357
Technology Center 2600
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Decided: December 22, 2009
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Before, JOHN C. MARTIN, MAHSHID D. SAADAT, and ROBERT E.
NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 5.
We reverse.
Appeal 2009-003270
Application 11/062,357

INVENTION
The invention is directed toward a magnetic attachment to a bed rail
for surgical appliances. See page 1 of Appellant’s Specification. Claim 1 is
reproduced below:
1. An accessory holder for use with a bed having a frame and a
sheet or drape, comprising:
a first component that attaches to the bed frame;
a second component including a coupling to receive an
accessory; and
one or more magnets allowing second component to be
magnetically coupled to first component through the sheet or drape.

REFERENCES
Edwards US 1,915,985 June 27, 1933
Callas US 5,472,163 Dec. 5, 1995

REJECTION AT ISSUE
The Examiner has rejected claims 1 through 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Edwards in view of Callas. The
Examiner’s rejection is on pages 3 and 4 of the Answer.1

ISSUE
Appellant argues on pages 2 and 3 of the Appeal Brief2 that the
Examiner’s rejection of claims 1 through 5 under 35 U.S.C. § 103(a) is in

1 Throughout the opinion we refer to the Answer dated April 2, 2008.
2 Throughout the opinion we refer to the Brief dated December 19, 2007 and
Reply Brief dated May 30, 2008.
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Application 11/062,357

error. Appellant asserts that the Examiner applies hindsight reasoning to
find that the combination of Edwards and Callas teaches magnetically
holding the sheets.
Thus, Appellant’s contention presents us with the issue: Has
Appellant shown that the Examiner erred in finding that the combination of
the references teaches using a magnet to allow the first component to be
coupled to the second component through a sheet or drape as recited in
independent claim 1?3

FINDINGS OF FACT
1. Edwards teaches a bedside signaling apparatus for use with a
hospital bed. Page 1 lines 1-7.
2. The apparatus includes a bracket, item 17a, which attaches to
the side of the bed. Edwards, page 2, lines 28-44.
3. The bracket, item 17, includes a portion, item 16, which holds a
flexible tube. The other end of the flexible tube holds a button
that the patient can push to actuate a signal. Edwards, page 2,
lines 21-28.
4. Callas teaches a magnetic holder for a merchandising display
which is held on a metal support by a magnet enclosed within a
right angle body shell. Abstract.

3 Appellant’s additional arguments raise further issues which we do not
reach as this issue is dispositive of the case.
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Application 11/062,357

5. Callas teaches that the holder includes two body sections, items
12 and 14 which house a magnet. The magnet is used to secure
the holder to a metal support. Col. 2, ll. 14-20.

ANALYSIS
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination of Edwards and Callas teaches using a magnet
to allow a first and second component to be coupled through a sheet or
drape. Claim 1 recites an apparatus with two components, the first of which
is attached to a bed frame and the second of which receives an accessory.
The Examiner has found that Edwards teaches these components citing item
17 as the first component connected to the bed frame and item 16 as
connected to the accessory. Answer 3. Claim 1 further recites that magnets
couple these components through a sheet or drape. The Examiner has found
that Callas teaches coupling a bracket to a metal support with magnetic
coupling. Answer 3. While we agree with these findings we do not find that
the Examiner has established that the two components would be coupled
together through a sheet or drape as claimed. In Callas the portion 16, which
is connected to the accessory, is a part of bracket item 17. Fact 3. Thus, the
item in Callas which the Examiner equates to the second component is
merely a part of bracket item 17, which the Examiner equates to the claimed
first component. As such, there would be no way to magnetically couple the
two together through a sheet or drape. The Examiner also equates items 12
and 14 of Callas to the claimed first and second components. Answer 3 and
6. We similarly do not find that this teaching suggests coupling through a
sheet or drape as claimed. Callas teaches that items 12 and 14 house a
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magnet. Fact 5. However, we do not find, nor has the Examiner shown that
the magnet is used to couple items 12 and 14, let alone that the magnet
couples the items with a sheet or drape between them. Appellant has
persuaded us that the Examiner erred in finding that the combination of
Edwards and Callas teaches using a magnet to allow a first and second
component to be coupled through a sheet or drape as recited in claim 1.
Claims 2 through 5 depend upon claim 1. Accordingly, we will not sustain
the Examiner’s rejection of claims 1 through 5.

ORDER
The decision of the Examiner to reject claims 1 through 5 is reversed.

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Application 11/062,357

REVERSED

ELD

GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
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