Ex parte BODIN et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

07994770 - (D) (B.P.A.I. Apr. 30, 1998)

Application for patent filed December 22, 1992.1
In claim 21, the phrase “insulation matter” should read 2
--insulation mattress--, and this informality should be corrected
in any further prosecution that may occur.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PHILIPPE BODIN, MICHEL EUGENE
and LUC MICHELET
__________
Appeal No. 96-1237
Application No. 07/994,7701
__________
ON BRIEF
__________
Before THOMAS, GARRIS and FRANKFORT, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 10 through 12 and 21 . The only other claims remaining in2
Appeal No. 96-1237
Application No. 07/994,770
2
the application, which are claims 1 through 9 and 14 through 20,
stand withdrawn from further consideration by the examiner.
The subject matter on appeal relates to a sound and thermic
insulation mattress. With reference to Figure 2 of the
appellants’ application drawing, the mattress 20 comprises an
opening 22 having a compressible water repellent foam insert 24
therein and at least one adhesive strip 30 glued onto at least
one of the two opposing faces of the insert and a portion of the
insulating mattress directly surrounding the opening. This
appealed subject matter is adequately illustrated by independent
claim 10 which reads as follows:
10. Sound and thermic insulation mattress to be secured to
a support and comprising an insulating mattress having at least
one opening; a compressible water repellent foam insert having
two opposing faces and being mounted in said opening of said
mattress, said insert being large enough to substantially fill
said opening, being watertight and having sound and thermic
insulation properties; and at least one adhesive strip glued onto
at least one of the two opposing faces of said insert, said
adhesive strip having a surface larger than that of the insert so
as to keep said insert in place and to also cover no more than at
least a portion of the insulating mattress directly surrounding
said opening to ensure a sealed link between said insert and said
insulating mattress when said mattress is secured to said
support.
The prior art relied upon by the examiner as evidence of
obviousness is set forth below:
Cunnington 2,129,167 Sep. 6, 1938
Millard 3,182,119 May 4, 1965
Appeal No. 96-1237
Application No. 07/994,770
The appealed claims will stand or fall together; see page3
2 of the Answer and 37 CFR 1.192(c)(5)(1993).
3
The Admitted Prior Art shown in Figure 1 of the drawing and
discussed on pages 2 and 3 of the specification for this
application.
The claims on appeal stand rejected under 35 U.S.C. § 103 as
being unpatentable over the Admitted Prior Art in view of
Cunnington and further in view Millard . On page 4 of the3
Answer, the examiner expresses his obviousness conclusion in the
following manner:
It would have been obvious to one of ordinary skill in
the art to place a resilient spacer in the hole of the
admitted prior art tape and insulation seal [shown at
the upper portion in Figure 1 of the appellants’
drawing] in order to improve the insulation ability of
the taped hole because of the teachings of Cunnington.
It further would have been obvious to use a foam spacer
because of the teachings of Millard to use foam as a
resilient spacer.
We refer to the Brief and Reply Brief and to the Answer for
a complete exposition of the respective viewpoints expressed by
the appellants and the examiner concerning the above noted
rejection.
Opinion
The rejection before us cannot be sustained.
Obviousness cannot be established by combining pieces of
prior art absent some teaching, suggestion or incentive
Appeal No. 96-1237
Application No. 07/994,770
4
supporting the combination. In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987). From our perspective, the
prior art applied by the examiner simply does not contain the
requisite teaching, suggestion or incentive for combining pieces
of this prior art in such a manner as to obtain the here claimed
invention. Our fundamental reason for reaching this
determination is the fact that the various individual features of
the applied prior art relied upon by the examiner concern
differing problems, functions and purposes.
Specifically, the spacer element of Cunnington performs a
spacing function for the purpose of militating against the
problem of insulation compression (e.g., see lines 21 through 32
in the first column on page 2). This function and purpose are
not applicable to the Admitted Prior Art shown at the upper
portion in Figure 1 of the appellants’ drawing since the
insulation of this prior art does not possess a compression
problem. Indeed, there is no insulation at all at the location
of this admitted prior art structure into which the examiner
proposes placing Cunnington’s spacer element. Further, the
Millard patent not only fails to cure this defect but possesses a
similar one (i.e., the problem, function and purpose associated
with patentee’s grommet do not appropriately correspond to those
Appeal No. 96-1237
Application No. 07/994,770
5
of the Admitted Prior Art or for that matter the Cunnington
reference).
Under these circumstances, it is our belief that the prior
art combination proposed by the examiner is the result of
impermissible hindsight reconstruction based upon the appellants’
own disclosure rather than some teaching, suggestion or incentive
based upon the prior art. In re Deminski, 796 F.2d 436, 443, 230
USPQ 313, 316 (Fed. Cir. 1986). As a consequence, we cannot
sustain the examiner’s § 103 rejection of claims 10 through 12
and 21 as being unpatentable over the Admitted Prior Art in view
of Cunnington and further in view of Millard.
The decision of the examiner is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge)
Appeal No. 96-1237
Application No. 07/994,770
6
Michael N. Meller
P.O. Box 2198
Grand Central Station
New York, NY 10163