Ex Parte BrownDownload PDFPatent Trial and Appeal BoardAug 21, 201814159896 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/159,896 01/21/2014 Norman L. Brown 45191 7590 08/23/2018 HERBERT L. ALLEN ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A. 255 SOUTH ORANGE A VENUE, SUITE 1401 P. 0. BOX 3791 ORLANDO, FL 32802-3791 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0114400_CIP 7826 EXAMINER LEE, MICHELLE J ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 08/23/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): skemraj@allendyer.com jlong@allendyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NORMAN L. BROWN Appeal2018-000086 Application 14/159,896 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the Examiner's rejection of claims 1-7, 10, and 11 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, "[t]he real party in interest is Norman Brown." Appeal Br. 2. 2 Although still pending, claims 8, 9, and 12-20 are withdrawn from consideration. See, e.g., Final Action mailed May 31, 2016. Appeal2018-000086 Application 14/159,896 According to Appellant, the "invention relates ... to a device and method for immobilizing a patient during radiotherapy." Spec. ,r 2. Claim 1 is the only independent claim on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. A patient immobilization apparatus comprising: an inflatable shell having a patient receiving area and defining an interior volume; a fill material arranged within the interior volume; at least one control valve located on the inflatable shell and coupled to the interior volume operable to control air introduction and evacuation into and from the interior volume; and at least one pocket located on the patient receiving area and having a pocket opening; and supplemental padding arranged in the at least one pocket and removable through the pocket opening; wherein the inflatable shell and the fill material are configured to conform to a shape of a patient laying on the patient receiving area with the control valve open, and closing the control valve locks the inflatable shell and the fill material into their conformed shape. REJECTION AND PRIOR ART The Examiner rejects claims 1-7, 10, and 11 under 35 U.S.C. § I03(a) as unpatentable over Van Steenburg (US 6,308,353 Bl, iss. Oct. 30, 2001) and Ragen (US 2002/0108176 Al, pub. Aug. 15, 2002). 2 Appeal2018-000086 Application 14/159,896 ANALYSIS Based on our review of the record, including the Examiner's Final Office Action and Answer, and Appellant's Appeal Brief and Reply Brief, Appellant does not persuade us that the rejection of claims 1-7, 10, and 11 as obvious based on Van Steenburg and Ragen is in error. Thus, we sustain the Examiner's obviousness rejection. With respect to independent claim 1, the Examiner finds that although Van Steenburg discloses most of the claim's recitations, Van Steenburg fails to disclose the claimed pocket and supplemental padding arranged therein. Answer 2-3. Instead, the Examiner finds that Ragen discloses both the pocket and supplemental padding, and that it would have been obvious to modify Van Steenburg to include Ragen's pocket and padding. Id. at 3. Appellant argues that the rejection is in error because, according to Appellant, Ragen is non-analogous art. Appeal Br. 9-13; see also Reply Br. 2--4. More specifically, Appellant argues that the "claimed invention is not primarily seeking to solve a problem of 'discomfort,' but rather seeking - consistently with the other examples described in the 'Background' -to minimize the likelihood of patient movement during the administration of radiation therapy." Appeal Br. 10 (emphasis added). Further, Appellant argues that the Declaration by Norman L. Brown "similarly does not identify the overall problem to be solved [as] one of 'discomfort."' Id. For a prior art reference to be analogous art, "a reference [must be] either in the field of the applicant's endeavor or reasonably pertinent to the problem with which the inventor was concerned ... based on the judgment of a person having ordinary skill in the art." In re Kahn, 441 F.3d 977, 986- 87 (Fed. Cir. 2006) (citation omitted). Appellant's Specification expressly 3 Appeal2018-000086 Application 14/159,896 states that the reason that "[t]he pocket carries supplemental padding [is] to provide additional comfort to the patient [ which will] minimiz[ e] the likelihood that the patient will move during a procedure." Specification ,r 6 (emphasis added). We note that Norman L. Brown's Declaration does not dispute this reasoning set forth in Appellant's Specification. See Declaration of Norman L. Brown dated Feb. 22, 2016, 1-3. Thus, based on the record as a whole, we determine that Appellant is, in fact, concerned with the problem of providing comfort, and that providing comfort results in less patient movement. Ragen's background discusses that a baby may be uncomfortable when in a conventional baby support that is laid on a hard surface. Ragen ,r 4. For this reason, Ragan's support baby wrap includes a head-and-back- support structure to make the baby comfortable in such circumstances (see id. at ,r,r 6, 7). Therefore, based on our review, Ragen is concerned with the same problem as Appellant, and Ragen is analogous art that may be used by the Examiner in an obviousness rejection. Appellant further argues that the rejection is in error because there is no reason to combine the teachings of Van Steenburg and Ragen as the Examiner proposes. Appeal Br. 14--15; see also Reply Br. 5. More specifically, Appellant argues that there is no reason for the Examiner to combine Van Steenburg and Ragen to provide supplemental padding on an inflatable shell, because "neither Van Steenburg nor Ragen teaches or suggest[ s] [ the specific arrangement ofJ placing supplemental padding on top of existing conformal support." Id. at 14. To the extent Appellant seeks an explicit teaching, suggestion, or motivation to combine references based on something disclosed in any of the 4 Appeal2018-000086 Application 14/159,896 references themselves, this is no longer the law in view of the Supreme Court's holding inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007). The court in KSR explains that the combination of familiar elements according to known methods is likely to be obvious when the combination does no more than yield predictable results. KSR at 416. When considering obviousness of a combination of known elements, the question is "whether the improvement is more than the predictable use of prior-art elements according to their established functions." KSR at 417. In this case, (using the claim's nomenclature) the Examiner's proposed combination of Van Steenburg's inflatable shell with Ragen's pocket and supplemental padding would provide a device in which both the shell and supplemental padding perform the same function after combination as before, with predictable results known to the ordinary artisan. Importantly, Appellant does not persuade us that the combination provides anything other than the predictable, expected result. Thus, based on the foregoing, we sustain the Examiner's obviousness rejection of claim 1. Further, we sustain the Examiner's obviousness rejection of dependent claims 2-7, 10, and 11, based on Van Steenburg and Ragen, which Appellant does not argue separately. See Appeal Br. 15. DECISION We AFFIRM the Examiner's obviousness rejection of claims 1-7, 10, and 11. 5 Appeal2018-000086 Application 14/159,896 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation