Ex Parte Brown

Patent Trial and Appeal Board

Aug 21, 2018

14159896 (P.T.A.B. Aug. 21, 2018)

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2 Although still pending, claims 8, 9, and 12-20 are withdrawn from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).
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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
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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
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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.
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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
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