Ex Parte Boyer

Board of Patent Appeals and Interferences

Apr 27, 2009

11146308 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERNCES
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Ex parte CHARLES E. BOYER,
Appellant
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Appeal 2009-2290
Application 11/146,3081
Technology Center 3700
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Decided:2 April 27, 2009
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Before CAROL A. SPIEGEL, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
Appellant appeals under 35 U.S.C. § 134 from an Examiner's rejection
of claims 1-12. Claims 13-21, the only other pending claims, have been

1 Application 11/146,308 ("the 308 application"), Method of Embalming
With Sand-Filled Weights, filed 6 June 2005. The real party in interest is
CHARLES E. BOYER (Amended Appellant's Brief Under 37 C.F.R.
§ 41.37, filed 11 October 2007, ("Br.") at 2).
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2290
Application 11/146,308

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withdrawn from consideration (Br. 2; Ans.3 2). We have jurisdiction under
35 U.S.C. § 134. We REVERSE.
The subject matter on appeal is directed to a weighted device for use
with cadavers. Claim 1, the only independent claim on appeal, is illustrative
and reads (Br. 13, emphasis added):
1. A flexible, conformable, adherent device for
maintaining and preserving a cadaver in a
substantially normal lifelike appearance before,
during, and/or after the embalming process,
comprising:
a container having a releasable opening
defined in a surface of said container, wherein said
opening is configured to fill and/or empty said
container with particulate matter; and
granulated matter received and positionable
within said container, such that said device is
manipulatable to control fluids within a cadaver
and achieve a lifelike appearance of the cadaver
when applied directly onto the cadaver by exerting
pressure onto the cadaver.

The Examiner has rejected claims 1-9 and 12 as unpatentable under
35 U.S.C. § 103(a) over Slocum4 in view of Winston;5 and, claims 10 and 11
as unpatentable under 35 U.S.C. § 103(a) over Slocum in view of Winston
and Garyantes6 (Ans. 3-6).

3 Examiner's Answer mailed 11 March 2008("Ans.").
4 U.S. Patent 2,677,166, Method and Apparatus for Embalming, issued 4
May 1954, to Slocum et al. ("Slocum").
5 U.S. Patent 4,966,365, Body Exercise Device, issued 30 October 1990, to
Edith Winston ("Winston").
6 U.S. Patent 5,257,983, Blood Bag for Lyophilization, issued 2 November
1993, to Garyantes et al. ("Garyantes").
Appeal 2009-2290
Application 11/146,308

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The Examiner maintains that Slocum discloses the device of claim 1
but for filling the container with a fluid instead of the recited granulated
matter (Ans. 3 and 7). Appellant argues, in relevant part, that Slocum fails
to disclose an adherent device as required by claim 1 (Br. 6). Thus, the
dispositive issue is whether Slocum teaches or suggests an adherent device.
II. Findings of Fact
Slocum discloses a device comprising a rigid molding/forming
member, an inflatable binding member, and a means for securing the ends of
the inflatable binding member together (Slocum 3:29-35, 46-52). The
hollow binding member may be in the form of a narrow, hollow, flexible bag
having collapsible walls of rubber-like material, such as latex, and included
a capped opening through which fluid may be introduced to expand the bag
(Slocum 3:52-58; 7:67-73). The rigid forming member is preferably made
of plasticized wood fiber or some synthetic resinous material which is easily
molded to the desired form and which will not be damaged by repeated use
(Slocum 7:9-14). In one exemplary use, rigid eye molding members are
placed over the eyes to prevent excessive bulging and to insure proper
location of the surrounding tissue. A binding member is placed around the
head to hold the rigid eye molding members in place and secured by tying
the ends of the binding member together with cords. (Slocum 7:63-8:5)
The dictionary defines "adherent" as "able or tending to adhere" and
"adhere" as "to hold fast or stick by or as if by gluing, suction, grasping, or
fusing."7

7 Merriam-Webster's Collegiate Dictionary, tenth edition, Merriam-Webster,
Incorporated, Springfield, Massachusetts (1998) at p. 14).
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III. Principles and Analysis
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)). Furthermore, as the Supreme Court recently stated,
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR Int'l v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007) (quoting In re Khan, 441 F.3d 977, 988 (Fed.
Cir. 2006) (emphasis added)).
Here, the claims on appeal all require a flexible, conformable,
adherent device. The Examiner equates the binding member of Slocum to
the claimed device (Ans. 7) and cites column 7, line 72, as teaching that the
binding member is an adherent device (Ans. 3). The sentence referred to by
the Examiner describes a binding member in the form of a narrow, hollow,
flexible bag made of a rubber-"like material, for example latex," and goes on
to describe the binding member as having grommets with tie cords at its
ends (Slocum 7:67-73). Apparently, the Examiner believes any device made
of latex is an adherent device, i.e., a device which holds fast or sticks by or
as if by gluing, suction, grasping, or fusing. However, the Examiner has not
provided a factual basis for her belief, despite Appellant's argument that "[i]f
the Slocum binding members are not secured by the cords, …[the] binding
members would slide off the forming members" (Br. 6). Nor do we find that
Winston or Garyantes make up for the noted deficiency of Slocum. Absent
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some articulated reasoning why one of ordinary skill in the art would have
reasonably considered any device made of latex to be an adherent device, we
are constrained to reverse the Examiner's conclusions of obviousness.
Therefore, we agree with Appellant that the Examiner has not
provided a factual basis for concluding that Slocum teaches or suggests an
adherent device and reverse the rejections of claims 1-12 under § 103.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-9 and
12 as unpatentable under 35 U.S.C. § 103(a) over Slocum in view of
Winston is REVERSED; and
FURTHER ORDERED that the decision of the Examiner to reject
claims 10 and 11 as unpatentable under 35 U.S.C. § 103(a) over Slocum in
view of Winston and Garyantes is REVERSED.
REVERSED

ack

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