Ex parte Burstein

Board of Patent Appeals and Interferences

Mar 12, 1998

08260674 (B.P.A.I. Mar. 12, 1998)

Application for patent filed June 16, 1994. According1
to appellant, this application is a continuation of
Application 08/004,990 filed January 15, 1993.
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not binding precedent of the Board.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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHARON A. BURSTEIN
_____________
Appeal No. 96-4137
Application 08/260,6741
______________
HEARD: January 9, 1998
_______________
Before CALVERT, MEISTER and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 1-8 and 10-23. Claim 9 has been
allowed.
Appeal No. 96-4137
Application 08/260,674
2
Appellant’s claimed subject matter is an article of
furniture which includes a chair which has a convex lumbar
support on its backrest.
Claim 1 is exemplary of the subject matter on appeal
and recites:
1. Orthopedically correct modular furniture for
a child with a growing and pliable bone structure comprising a
pair of laterally spaced arm rests having a first plurality of
tray adjustment holes formed therein and having a second
plurality of tilt control holes formed therein, a first pair
of chair legs each coupled to a respective one of said arm
rests and spaced from said tray adjustment holes, a second
pair of chair legs, each coupled to a respective one of said
arm rests on a side of said arm rests that is generally
opposite to the places of coupling for said first pair of
chair legs, said second pair of chair legs joining said arm
rests in the vicinity of said tilt control holes, a chair
interposed between said laterally spaced arm rests, said chair
being pivotally joined to said arm rests near the places of
coupling for said front chair legs, said chair having at
least one pair of holes formed in opposite lateral sides
thereof for selection alignment with said tilt control holes,
a backrest for said chair between the lateral sides thereof, a
seat for said chair between said lateral sides thereof, and a
convex lumbar support on said backrest and spaced
perpendicularly from said seat by a distance that is
predetermined by the average size of the child using the
modular furniture to produce and orthopedically correct and
physiologically healthy support for the growing and pliable
bone structure of the child.
THE REFERENCES
Appeal No. 96-4137
Application 08/260,674
This reference was made of record by the Examiner in the2
final rejection (Paper No. 19).
3
The following references were relied on by the
examiner:
Greenbaum 2,529,687 Nov. 14,
1950
Quinton et al. (Quinton) 4,718,724 Jan. 12,
1988
Cone 4,807,928 Feb. 28,
1989
Turner et al. (Turner) 4,938,603 Jul. 3, 1990
Giambrone 4,968,092 Nov. 6,
1990
Bougher et al. (Bougher) 5,039,169 Aug. 13,
1991
Blaustein 1,110,442 Oct. 12, 1955
(French Patent)
In addition to these references, we have relied on the
following
reference in support of new rejections entered pursuant to our
authority under 37 CFR 1.196(b):
Cerf 3,288,525 Nov. 29, 19662
THE REJECTIONS
Appeal No. 96-4137
Application 08/260,674
The examiner’s answer contained new grounds of3
rejection of (1) claim 23 under 35 U.S.C. § 112, first
paragraph, and (2) claims 13 and 14 under 35 U.S.C. § 112,
second paragraph. In response thereto, the appellant filed an
amendment on September 9, 1996 (Paper No. 29) to “overcome”
these new rejections. The examiner entered this amendment,
but made no mention of the new rejections (see the
supplemental answer dated December 23, 1996 (Paper No. 30)).
In view of the fact that the examiner did not dispute the
appellant’s position that the amendment overcame the new
rejections or otherwise make any mention of these rejections
in the supplemental answer, we presume that they have been
withdrawn. See Ex parte Emm, 118 USPQ 180 (Bd.App. 1957).
4
The examiner made the following rejections:3
Claims 22 and 23 stand rejected under 35 U.S.C. §
112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention.
Claims 1, 5, 12, 19, 20 and 22 stand rejected under
35 U.S.C. § 103 as being unpatentable over Turner in view of
Quinton.
Claims 2, 3, 4, 13 and 14 stand rejected under 35
U.S.C. § 103 as being unpatentable over Turner and Quinton as
applied to claim 1 above, in further in view of Bougher.
Claims 6 and 21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Turner and Quinton as applied to
Appeal No. 96-4137
Application 08/260,674
5
claim 1 above, in further in view of Cone.
Claims 7, 8, 10, 15, 16 and 18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Turner and Quinton
as applied to claim 1 above, and further in view of Greenbaum.
Claim 11 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Turner and Quinton as applied to claim
1 above, and further in view of the French Patent.
Claim 17 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Turner in view of Quinton, Greenbaum
and the French Patent.
Claim 23 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Turner in view of Quinton, Bougher,
Greenbaum, the French Patent and Cone, as applied above.
Claims 6 and 21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Turner and Quinton as applied to
claims 1 and 12, and further in view of Giambrone.
Claim 23 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Turner in view of Quinton, Bougher,
Greenbaum, the French Patent and Giambrone.
Rather than reiterate the entire arguments of the
examiner and the appellant in support of their respective
Appeal No. 96-4137
Application 08/260,674
6
positions, reference is made to the appellant’s brief (Paper
No. 25), the appellant’s reply brief (Paper No. 28), the
examiner’s answer (Paper No. 26), the examiner’s supplemental
answer (Paper No. 30), and the examiner’s second supplemental
answer (Paper No. 32) for the full exposition thereof.
OPINION
In reaching our conclusions on the issues raised in
this appeal, we have carefully considered appellant’s
specification and claims, the applied references and the
respective viewpoints advanced by the appellant and the
examiner. As a consequence of our review, we have made the
determinations which follow.
We turn first to the rejection of claims 22 and 23
under 35 U.S.C. 112, second paragraph. It is the examiner’s
position that the word “average” which occurs several times in
both claims 22 and 23 is indefinite, since it appears to be
referring to the broad range of sizes of which the furniture
could be made.
We initially note that the purpose of the
requirements stated in the second paragraph of 35 U.S.C. 112
Appeal No. 96-4137
Application 08/260,674
7
is to provide those who would endeavor, in future enterprise,
to approach the area circumscribed by the claims of a patent,
with the adequate notice demanded by due process of law, so
that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility
of infringement and dominance. In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970). The inquiry as stated in
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971) is;
... whether the claims do, in fact, set out
and circumscribe a particular area with a
reasonable degree of precision and
particularity. ... [t]he definiteness of
the language employed must be analyzed-not
in a vacuum, but always in light of the
teachings of the prior art and of the
particular application disclosure as it
would be interpreted by one possessing the
ordinary level of skill in the pertinent
art.
The appellant’s disclosure indicates that certain
calculations have been done to establish an average radius of
curvature, an average lumbar support distance, an average
lumbar support width and an average lumbar support center
spacing. These calculations depend on the average size of a
child. Appellant argues that the average size of a child
Appeal No. 96-4137
Application 08/260,674
8
changes over time and that the claim language covers this
change. As such, the term “average” in claims 22 and 23 is
based on the variable average size of a child. This being the
case, whether an article of furniture was covered by the claim
at a point in time would be determined not on the basis of the
structural elements and their interrelationships, as set forth
in the claim, but by the average size of a child at that point
in time. This would give rise to uncertainty as to what the
average size of a child is and thus uncertainty as to the
interpretation of the claim. Cf. Ex parte Brummer, 12 USPQ2d
1653, 1655 (BPAI 1989). Such uncertainty we believe is
exactly what the requirements of 35 U.S.C. § 112 seek to
avoid. Therefore, we will sustain this rejection.
In regard to the rejection of claims 1, 5, 12, 19,
20 and 22 under 35 U.S.C. § 103 over Turner in view of
Quinton, the examiner’s answer states:
Turner has a child seat as set forth in the
prior office action with a lumbar support
comprising portions of elements 76 and 78.
Turner discloses that these elements are to
support a child’s back comfortably. Turner
lacks a convex lumbar support. Quinton
shows a convex lumbar support 20 on a seat.
It would have been obvious to have provided
the lumbar support of Quinton on the seat
Appeal No. 96-4137
Application 08/260,674
9
of Turner because doing so would provide
added support to the lumbar regions of an
occupant’s back. Quinton further has the
advantage of being adjustable to
accommodate the needs of a variety of
occupants including children of different
sizes for whom an adult can adjust said
lumbar support. [Examiner’s Answer at pages
4-5]
We agree with the analysis of the examiner. In
addition, we are of the opinion that motivation for the
combination is provided in the body of the Quinton reference
in that Quinton discloses that the lumbar support promotes
comfort and avoids and alleviates backache (Col. 1, lines 7-
8). Therefore, in our opinion, a person of ordinary skill in
the art would have been motivated to provide the convex lumbar
support disclosed in Quinton on the Turner chair to obtain the
advantages of such lumbar support as taught by Quinton. In
view of the foregoing, we will sustain the examiner’s
rejection of claim 1. In addition, we will sustain this
rejection as it relates to claims 5, 12, , 20 and 22 because
the appellant has not argued the separate patentability of
these claims. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987).
In regard to claim 19, the appellant argues that
Appeal No. 96-4137
Application 08/260,674
10
claim 19 is directed to a structure for tilting the seat and
the backrest. We agree with the examiner, that the tilting
feature is disclosed in Turner. (Figure 1; column 1, lines
57-67). As such, we will sustain this rejection as it relates
to claim 19.
Appellant argues, directing our attention to wing
section 78, that Turner does not disclose a lumbar support.
We do not find this argument persuasive because the examiner
is relying on central section 76 along with wing section 78
for teaching of lumbar support. We agree with the examiner
that central section 76 along with some portions of wing
section 78 provides support for the lumbar section of a person
seated in the chair disclosed.
Appellant also argues that there is no suggestion to
compare the wing section 78 with a cushion as disclosed in
Quinton. As stated above, in our view it is the central
section in addition to the wing section 78 which form the
lumbar support in Turner. In addition, as also stated above,
it is our view that there is clear suggestion in Quinton for
combining the chair disclosed in Turner with the lumbar
support disclosed in Quinton
Appeal No. 96-4137
Application 08/260,674
11
because Quinton discloses that said lumbar support promotes
comfort and avoids or alleviates backache.
We have sustained the examiner’s rejection of claim
22 under 35 U.S.C. § 112, second paragraph, because in our
view it is uncertain what is meant by the term “average.”
While we might speculate as to what is meant by the claim
language, uncertainty does not provide a proper basis for
making the comparison between that which is claimed and the
prior art, as we are obligated to do. Rejections under on 35
U.S.C. § 103 should not be based upon “considerable
speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims.” In re Steele, 305
F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). When no
reasonably definite meaning can be ascribed to certain terms
in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejection of claim
22 under 35 U.S.C. § 103. We hasten to add that this reversal
is not based upon any evaluation of the merits thereof and
does not preclude the examiner’s advancement of a rejection
Appeal No. 96-4137
Application 08/260,674
12
predicated upon the art against a definite claim.
We now address the rejection of claims 2, 3, 4, 13
and 14 under 35 U.S.C. § 103 as unpatentable over Turner and
Quinton and further in view of Bougher. The examiner stated:
Turner lacks a safety restraint system.
Bougher teaches a child seat with a safety
restraint system... It would have been
obvious to provide the safety restraint
system disclosed by Bougher for the child
seat of Turner since Bougher’s safety
restraint system is provided to hold a
child secure and since the safety restraint
system with two shoulder straps as
disclosed by Bougher is known to those
skilled in the art to limit relative
lateral movement of an occupant as well as
forward movement. [Examiner’s Answer pages
6-7]
We agree with the analysis of the examiner, and thus
we will sustain this rejection as it relates to claim 2. We
will also sustain this rejection as to claim 13 because
appellant has not argued the separate patentability of claim
13. See In re Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528.
Appellant argues that there is no suggestion to
combine the safety strap taught by Bougher with the lumbar
support taught by Quinton. We do not agree. As stated above,
we find ample suggestion for including the lumbar support of
Appeal No. 96-4137
Application 08/260,674
13
Quinton in the chair of Turner to obtain the advantages as
taught by Quinton of promoting comfort and avoiding or
alleviating backache. In addition, in our view, a person of
ordinary skill in the art
would have been motivated to use the safety strap as taught by
Bougher in the child seat of Turner to obtain the self evident
advantage of restraining a child seated in the chair.
Appellant argues that there is no suggestion to
combine an adjustable safety strap as recited in claim 3, with
an infant’s lumbar support. This argument is not persuasive
because Bougher discloses an adjustable strap and as discussed
above, there is ample suggestion to combine the teachings of
Turner, Quinton and Bougher. Therefore, we will sustain this
rejection as it relates to claim 3.
As appellant argues that claims 4 and 14 are
patentable for the same reasons that claim 2 is patentable, we
will sustain the rejection as to these claims also, as there
has been no argument regarding their separate patentability.
See In re Nelson, 816 F.2d at 1572, 2 USPQ2d at 1528.
We now turn to the rejection of claims 6 and 21
Appeal No. 96-4137
Application 08/260,674
14
under 35 U.S.C. § 103 over Turner and Quinton and further in
view of Cone. Each of claims 6 and 21 recites a tray having
one flat surface and another surface generally parallel
therewith, the surface having a T shaped recess formed
therein. The examiner has cited Cone for teaching a T shaped
recess which in the examiner’s opinion comprises shank 44 and
cross portion with elements 52 and 54 as shown in figure 5.
We agree with the appellant that Cone does not disclose a T
shaped recess as recited in claims 6 and 21. In contrast Cone
discloses rectangular slots 72 and 74 and handle 44 (See
Figures 4 and 5). As such, we will not sustain the rejection
of claims 6 and 21 as unpatentable over Turner and Quinton and
further in view of Cone.
We turn next to the examiner’s rejection of claims
7, 8, 10, 15, 16 and 18 under 35 U.S.C. § 103 as being
unpatentable over Turner and Quinton as applied to claim 1
above, and further in view of Greenbaum.
Initially, we note that our decision as it relates
to the rejections of claims 7 and 16 is based upon our
interpretation of the claim language in view of the disclosure
in appellant’s specification. In this regard, we interpret
Appeal No. 96-4137
Application 08/260,674
15
the language of these claims to recite a first pair of chair
leg extensions for selective connection to the pair of first
chair legs and a second pair of chair leg extensions for
selective connection to the pair of second chair legs.
The examiner has cited the Greenbaum reference for
teaching a pair of U-shaped leg extensions which provide
needed height for Greenbaum’s child seat. In the examiner’s
opinion:
It would have been obvious to have provided
the removable extensions of Greenbaum on
the child seat of Turner, because doing so
would have provided the advantage of
enabling the person attending the child to
choose a high or low configuration . . .
[Examiner’s Answer, page 9]
We agree with the analysis of the examiner, and thus we will
sustain this rejection as it relates to claim 7.
Appellant argues that Greenbaum discloses table leg
11 and chair leg 16 as to opposed to chair leg extensions and
chair legs as recited in claim 7. However, as the seat in
Greenbaum is disposed to be placed on top of the table, the
table legs 11 form an extension for the chair legs and can be
broadly considered to be chair leg extensions. Therefore, we
do not find this argument persuasive.
Appeal No. 96-4137
Application 08/260,674
16
In regard to the recitation in claim 8 that the
lengths for each of said extensions are generally twice as
long as said first and second pairs of chair legs, the
examiner is of the opinion that the length of the table legs
appears to be greater than the length of the chair legs as
depicted in Figure 2 and that in any case it would have been a
matter of design choice to modify the length of table legs to
be twice the length of the chair legs, since the appellant has
not disclosed that providing leg extensions of generally twice
the length of said front and rear chair legs solves any stated
problem not solved by the leg extensions that are disclosed by
Greenbaum. (Examiner’s Answer at page 10). We agree with the
analysis of the examiner, and thus we will sustain this
rejection as it relates to claim 8.
In regard to the recitation in claim 10 that there
is a means for attaching the foot rest for selective
interposition between the first pair of chair legs. The
examiner relies on the disclosure of Turner for teaching a
selective interposition of a foot rest between front chair
legs. Appellant’s argument that brace 17 of Greenbaum’s chair
is not a footrest is not persuasive in view of the disclosure
Appeal No. 96-4137
Application 08/260,674
17
of Turner of a footrest. Therefore, we will also sustain this
rejection as it relates to claim 10.
We will also sustain this rejection as it relates to
claim 15 because we find unpersuasive appellant’s argument
that the back 14 and seat 13 of Greenbaum are supported by
side arms 15 rather than being supported by the second chair
legs as recited in claim 15 because Turner discloses chair
legs 14 which support the backrest and the seat (See Figure
1).
The appellant also argues that the table and chair
legs 11 and 16 in Greenbaum are not attachable to each other
but rather stacked together and therefore do not meet the
limitations recited in claim 16 that the first and second pair
of chair legs be selectively attachable to first and second
pair of chair leg extensions. We do not find this argument
persuasive because we find the recitation in claim 16 of
selectively attachable first and second chair leg extensions
to be broad enough to include chair legs and chair leg
extensions which are stacked on each other. We note that
Webster’s II New Riverside University Dictionary (Riverside
Publishing Company 1984) defines the word “attach” as to
Appeal No. 96-4137
Application 08/260,674
18
connect or to join. Therefore, we will sustain this rejection
as it relates to claim 16.
We will sustain the rejection as it relates to claim
18 for the same reasons as given above for claim 10.
We now address the rejection of claim 1l under 35
U.S.C. § 103, as being unpatentable over Turner and Quinton,
as applied to claim 1 above and further in view of the French
Patent. The examiner cited the French Patent for showing
arcuate rungs 40 with a lower arcuate surface and means 41
provided on the upper surface for attaching each respective
rung to a front chair leg 7 and a rear chair leg 3 (Examiner’s
Answer at pages 10-11). It is the examiner’s opinion, and we
agree, that it would have been obvious to provide the child’s
seat disclosed by Turner with the rungs taught by French
Patent to provide a rocking chair means which is easy to
connect and disconnect. In view of the foregoing, we will
sustain the examiner’s rejection of claim 11 under 35 U.S.C. §
103 as being unpatentable over Turner and Quinton and further
in view of the French patent.
The appellant has not argued the propriety of this
rejection as it related to the French Patent but rather
Appeal No. 96-4137
Application 08/260,674
19
restates that the French Patent fails to suggest the lumbar
support for a high chair and to that extent the French Patent
is merely cumulative of all the references considered thus
far. We find this argument unpersuasive as we find ample
suggestion for placing a lumbar support as taught by Quinton
in a high chair as disclosed by Turner as we detailed above.
We turn next to the rejection of claim 17 as
unpatentable under 35 U.S.C. § 103 over Turner in view of
Quinton, Greenbaum and the French Patent. We agree with the
examiner’s analysis as it relates to the application of rungs
as taught by the French patent and thus we will sustain this
rejection for the reasons stated above with respect to claim
7, which was rejected over Turner, Quinton and Greenbaum. As
with the rejection of claim 11, the appellant has not directed
attention to the application of the French Patent but rather
repeats his assertion as discussed above, that there is no
suggestion for placing a lumbar support in a high chair.
Therefore, we will sustain the rejection of claim 17 as
unpatentable 35 U.S.C. § 103 over Turner in view of Quinton,
Greenbaum and the French Patent.
We turn next to the rejections of claim 23 under 35
Appeal No. 96-4137
Application 08/260,674
20
U.S.C. § 103 as being unpatentable over (1) Turner in view of
Quinton, Bougher, Greenbaum, the French Patent and Cone and
(2) Turner in view of Quinton, Bougher, Greenbaum, the French
Patent and Giambrone. We have sustained the examiner’s
rejection of claim 23 under 35 U.S.C. § 112, second paragraph,
because in our view it is uncertain what is meant by the term
“average.” While we might speculate as to what is meant by
the claim language, uncertainty does not provide a proper
basis for making the comparison between that which is claimed
and the prior art, as we are obligated to do. Rejections
under on 35 U.S.C. § 103 should not be based upon
“considerable speculation as to the meaning of the terms
employed and assumptions as to the scope of the claims.” In
re Steele, 305 F.2d at 862, 134 USPQ at 295 (CCPA 1962). When
no reasonably definite meaning can be ascribed to certain
terms in a claim, the subject matter does not become obvious,
but rather the claim becomes indefinite. In re Wilson, 424
F.2d at 1385, 165 USPQ at 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of claim
23 under 35 U.S.C. § 103. We hasten to add that this reversal
is not based upon any evaluation of the merits thereof and
Appeal No. 96-4137
Application 08/260,674
21
does not preclude the examiner’s advancement of a rejection
predicated upon the art against a definite claim.
We now direct our attention to rejection of claims 6
and 21 under 35 U.S.C. § 103 as being unpatentable over Turner
and Quinton and further in view of Giambrone. We will not
sustain this rejection because we agree with the appellant
that Giambrone discloses a tray with a T shaped housing
thereon (See Figure 1) and not a tray having a “T shaped
recess formed therein” as recited in claims 6 and 21.
Under the provisions of 37 CFR § 1.196 (b) we make
the following new rejections:
Claim 12 is rejected under 35 U.S. C. § 103 as being
unpatentable over Cerf. Cerf discloses an article of
furniture for a child having a seat 10 and a backrest 11 and a
lumbar support 24 on the backrest which has a surface that
protrudes arcuately from the backrest. (See Figures 1, 3, and
6). Cerf also discloses that the article of furniture has a
back with a contour which may be conformed exactly to the
posterior and spinal curvature of a particular user, whereby
the seated individual is properly supported in a comfortable
and orthopedically approved posture. (Column 1, lines 38-42).
Appeal No. 96-4137
Application 08/260,674
22
In our view, patentability cannot be found in the numerical
ranges and recitations in claim 12 for the width of the lumbar
support and/or the distance the lumbar support is spaced from
the seat. As our reviewing in Court said in In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
the law is complete with cases in which the
difference between the claimed invention
and the prior art is some range and other
variable within the claim ... these cases
have consistency held that such a
situation, the applicant must show that the
particular range is critical, generally by
showing the claim range achieves unexpected
results relative to the prior art range.
Appellant has made no such showing in the instant case and
such we conclude that patentability can not rest on the
recited ranges and dimensions.
Claims 1-5, 10, 13, 15, 19 and 20 are rejected under
35 U.S. C. § 103 as being unpatentable over Turner in view of
Quinton and Cerf. Turner discloses the article of furniture
as claimed, except Turner does not disclose a lumbar support
nor a safety strap. Quinton discloses a lumbar support which
promotes comfort and avoids and alleviates backache. Cerf
discloses that:
It is desirable from the
Appeal No. 96-4137
Application 08/260,674
23
orthopedic standpoint, for the
child to maintain an erect
posture within the chair, for
prolonged slumping may lead to
deformity. But the spine of a
baby is so flexible and almost
rubber-like that he literally
collapses in an unsupported chair
of ordinary design, and all that
restrains him from sliding
completely out of his seat is the
safety belt. This problem is
encountered not merely in very
young infants, but also in babies
up to the age of twenty-four
months.” (Column 1, pages 14-22).
Quinton discloses a convex lumbar support to promote comfort.
Cerf is evidence that it was known in the art to provide a
lumbar support for a child. Cerf also teaches that there is a
need to provide a safety strap in a child’s chair (Column 2,
lines 9-11). As such, it would have been obvious to provide
the chair disclosed in Turner with a lumbar support as taught
by Quinton and Cerf in order to aid a child in maintaining
correct posture.
Claim 11 is rejected under 35 U.S.C. § 103 over
Turner in view of Quinton and Cerf as applied to claim 1 and
further in view of French Patent. The French Patent is cited
for teaching rungs. It would have been obvious to provide the
Appeal No. 96-4137
Application 08/260,674
24
Turner chair with rungs as taught by French Patent to obtain a
chair that rocks.
In summary, the examiner’s rejections of: claims 22
and 23 under 35 U.S.C. § 112, second paragraph and of claims
1-5, and 7-20 under 35 U.S.C. § 103 are affirmed. The
examiner’s rejections under 35 U.S.C. § 103 of claims 6, 21-23
are not sustained. Claims 1-5, 10-13, 15, 19 and 20 are
rejected pursuant to 37 CFR 1.196(b).
In addition to affirming the examiner’s rejection of
one or more claims, this decision contains new grounds of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months
from the date of the original
Appeal No. 96-4137
Application 08/260,674
25
decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of Patent
Appeals and Interferences upon the same record. . .
.
Should the appellant elect to prosecute further
before the Primary Examiner pursuant to 37 CFR § 1.196(b)(1),
in order to preserve the right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejections, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejections
are overcome.
Appeal No. 96-4137
Application 08/260,674
26
If the appellant elects prosecution before the
examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should
be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejections, including any
timely request for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART 1.196(b)
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 96-4137
Application 08/260,674
27
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JOHN P. SINNOTT
MORGAN & FINNEGAN
345 PARK AVENUE
NEW YORK, NY 10154