Ex Parte Bryant

Patent Trial and Appeal Board

Nov 22, 2016

11553088 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111553,088 10/26/2006
22497 7590 11/25/2016
LARSON AND LARSON
11199 69TH STREET NORTH
LARGO, FL 33773
FIRST NAMED INVENTOR
Julie Windle Bryant
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.
2272.0 3194
EXAMINER
NGUYEN, TUAN N
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
frank@larsonpatentlaw.com
ipdocket@larsonpatentlaw.com
justin@larsonpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JULIE WINDLE BRYANT
Appeal2014-008173
Application 11/553,088
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant 1 appeals under 35 U.S.C. § 134 from a rejection of claims
1---6, 8-14, 16, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant identifies the real party in interest as JWB-S, Inc., a
corporation of which the inventor, Julie Windle Bryant, is president and
owner. Appeal Br. 2.
Appeal2014-008173
Application 11/553,088
CLAIMED SUBJECT MATTER
The claims are directed to a reduced strain toilet seat. Spec. 1. Claim
1, reproduced below, illustrates the claimed subject matter:
1. A toilet seat comprising:
a rigid base having a centrally located aperture disposed
therein, the rigid base sized for receiving and supporting a weight
of a human in a seated position for use as a toilet seat, the rigid
base comprising a top surface, a bottom surface and two side
surfaces;
a top cover affixed to the bottom surface of the rigid base
and forming a gap between the top cover and the top surface and
the two side surfaces of the rigid base; and
a solid gel cushion disposed within the gap, thereby
providing a cushioned interface between the rigid base and the
human;
wherein the shape of the toilet seat is substantially circular
with a flattened outer top edge, a flattened inner top edge and two
flattened outer sides.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harrison
White
Nomura
Keller
us 3,863,277
US 6,370,704 Bl
US 6,815,379 B2
WO 2005/102134 Al
REJECTIONS
The Examiner made the following rejections:
Feb.4, 1975
Apr. 16, 2002
Nov. 9, 2004
Nov. 3, 2005
Claims 1, 2, 4---6, 8-10, 12-14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harrison and Keller.
2
Appeal2014-008173
Application 11/553,088
Claims 3, 11, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrison, Keller, Nomura, and White.
Claim 22 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
OPINION
Claims 1, 2, 4-6, 8-10, 12-14, and 16 rejected as
obvious over Harrison and Keller.
A. Appellant first argues that the Examiner's proposal to substitute
the gel of Keller for the foam in Harrison would result in an inoperable
device. Appeal Br. 6. Specifically, Appellant argues that in the claimed
toilet seat "the gel is held in position by the cover and the position of the
cover is maintained by being attached to the bottom surface of the solid
core." Appeal Br. 6.
Claim l calls for a top cover affixed to the bottom surface of the rigid
base and forming a gap between the top cover and the top and two side
surfaces of the base. The solid gel cushion of Appellant's claim 1 is
disposed in the gap. There is no requirement in claim 1 that the gel be held
in position by the cover, and Appellant's argument is not persuasive because
it is not directed to limitations found in claim 1.
We note that Keller discloses several ways to hold his gel in place
(Keller 10:7-16), and this supports the Examiner's conclusion that a person
of ordinary skill in the art would use the necessary processes to hold the gel
in place. Ans. 2.
B. Appellant next argues that using the gel of Keller in the seat of
Harrison would not result in "the force reduction and comfort provided by
3
Appeal2014-008173
Application 11/553,088
[Appellant's] claimed toilet seat." Appeal Br. 7-8. Appellant bases this
argument on the idea that the gel of Keller would not remain in place, but
would ooze inside the covering until the user was being supported by the
cover pressing directly against the rigid base. Appeal Br. 8. Because of how
Keller describes his material we do not agree. Specifically, Keller describes
his material as having "shape memory even after repeated use." Keller
3:30-4:1. In addition, Keller says,
since a gel material as defined above has shape memory, i.e., it is
capable of returning to its original shape after the cushioned body
[of the user] is removed, its use according to the invention has
the advantage of reducing the "bottoming out" effect due to a
repeated and continued use of conventional cushioning devices.
Keller 7: 10-14.
Generic flowable material may be drawn by gravity. If
such fluid media were used, the toilet seat would thus exert
pressure on some portions of the cushioned body as the flowable
media attempt to flow in response to the gravitational force ....
The use of a gel according to the invention has removed the ...
drawback ... because the gel material does not excessively flow.
Keller 7 :22-29. Keller thus discloses a material and performance criteria for
the material that would preclude the oozing at the core of Appellant's
argument. In addition, Appellant has not pointed to specific language in
claim 1 directed to the force reduction and comfort argument. Because this
argument is not directed to any limitation in claim 1, on the record
presented, we are not persuaded that the Examiner erred. Limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
C. For her third argument, Appellant argues that there was no
motivation in Harrison and Keller that they should be combined. Appeal Br.
4
Appeal2014-008173
Application 11/553,088
9. Specifically, Appellant states that "[t]he [E]xaminer's treatment of foam
and gel as equivalents eliminates any motivation for one of ordinary skill to
substitute one for the other, and thus correspondingly eliminates the
[E]xaminer's support for a finding of obviousness." Appeal Br. 9.
Case law does not support the Appellant.
[W]hen a patent "simply arranges old elements with each
performing the same function it had been known to perform" and
yields no more than one would expect from such an arrangement,
the combination is obvious. [Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)].
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In this case, both
Harrison and Keller teach cushioned toilet seats, and Keller teaches a solid
gel to reduce a decubitus-like effect, as the Examiner explained. Ans. 3
(referring to Keller 2:27-3: 1 ). The Examiner has done more than provide
mere conclusory statements. Instead, the Examiner has "articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.'' In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
Accordingly, we are not persuaded the Examiner erred.
Claims 3, 11, and 22 rejected as obvious over
Harrison, Keller, Nomura, and White.
A. Appellant argues that the rejection of claim 22 should be
reversed because "the [E]xaminer has not demonstrated that a person of
ordinary skill would have chosen and combined the elements of White, Jr.
and Harrison." Appeal Br. 12. Appellant asserts that without such evidence
the rejection is insufficient. Id. This argument is based on a mistake of law.
There is no requirement to show that a person of ordinary skill in the art
5
Appeal2014-008173
Application 11/553,088
would, in fact, have chosen a particular combination of features. In KSR
International Co. v. Teleflex Inc., the Court wrote:
For over a half century, the Court has held that a "patent for a
combination which only unites old elements with no change in
their respective functions ... obviously withdraws what is already
known into the field of its monopoly and diminishes the
resources available to skillful men." This is a principal reason
for declining to allow patents for what is obvious. The
combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield
predictable results.
KSR, 550 U.S. at 415--416 (2007) (alteration in original) (citations omitted).
The Court further found that "when a patent 'simply arranges old elements
with each performing the same function it had been known to perform' and
yields no more than one would expect from such an arrangement, the
combination is obvious." KSR, 550 U.S. at 417. For this argument,
Appellant has conceded that White shows the shape for a toilet seat
described in claim 22. Appeal Br. 12. Nor does Appellant contest that the
other features of claim 22 and claim 9 from which claim 22 depends are
shown by Harrison, Keller, and Nomura. Appellant makes no argument that
claim 22 does not describe an arrangement of old elements, each performing
the same function as it had been known to perform and yielding no more
than one would expect from such an arrangement. Accordingly, Appellant
has not demonstrated a failure to meet the standard set forth in KSR, and so
we are not persuaded of error.
B. Appellant argues the rejection of claims 3 and 11 was erroneous
based on the same mistaken legal theory as they argued in connection with
6
Appeal2014-008173
Application 11/553,088
claim 22. Appeal Br. 12-13. We do not find this argument persuasive for
the reasons stated above in connection with claim 22.
Claim 22 stands rejected as failing to comply
with the written description requirement
A. Claim 22 reads: "The toilet seat of claim 9, wherein the outer
circumferential edge of the top cover and the inner circumferential edge of
the top cover are substantially linear." Appeal Br. 19 (Claims App.). The
Examiner rejects this claim as failing to comply with the written description
requirement of 35 U.S.C. § 112, first para. The Examiner explained, "[t]he
language, as claimed, fails to have support in the original specification.
Therefore, it is considered as new matter." Final Act. 4.
Appellant seeks reversal because the Examiner failed to find a specific
level of ordinary skill in the art. Appeal Br. 14. The Federal Circuit has set
out the standard for determining whether a specification supports a claim.
We have consistently held that, to satisfy § 112, a patent's
written description "must 'clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is
claimed."' Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (alteration in original)
(quoting Vas-Cath Inc. v Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991)).
Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F. 3d 1336, 1346
(Fed. Cir. 2013). Here, the Examiner made rejections under §103, relying
on references that are closely related to Appellant's field and so reflect the
level of ordinary skill in the art. Therefore, the Examiner need not have
made specific findings concerning the level of skill in the art. See Okajima
7
Appeal2014-008173
Application 11/553,088
v. Bourdeau, 261F.3d1350, 1355 (Fed. Cir. 2001). Accordingly, we are not
persuaded the Examiner erred.
B. Appellant also complains that the Examiner did not specify
which words in Claim 22 do not have support in the Specification. Appeal
Br. 14. In fact, almost none of the language in claim 22 has any support in
the written description or original claims. The phrases "outer
circumferential edge" and "inner circumferential edge," and both "linear"
and "substantially linear" do not appear in the original Specification or
claims as Appellant admits. Appeal Br. 15. To be clear, then, none of the
substantive words or phrases in claim 22 appear in the Specification as
originally filed. For support, Appellant reprints Figure 3 and quotes three
lines in the Specification: "[T]he toilet seat 20 of the present invention is
shaped more circular with the top outer and inner edge substantially flat and
outer right and left edge substantially flat." Appeal Br. 14--15 (quoting
Spec. 6: 14--17). Appellant then repeats the substantive phrases from claim
22 noted above and concludes "the [Appellant] believes that it shows
possession of the claimed invention." Appeal Br. 15. 37 C.F.R. §
41.3 7 ( c )( 1 )(iv) requires substantive arguments in an appeal brief. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Appellant's argument
amounts to a mere denial of the accuracy of the Examiner's finding.
Without more, such an argument does not apprise us as to where the
Specification demonstrates Appellant was in possession of the subject matter
now claimed as of the filing date sought.
DECISION
For the above reasons, the Examiner's rejection of claims 1-6, 8-14,
16, and 22 is affirmed.
8
Appeal2014-008173
Application 11/553,088
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9