Ex Parte Calloway et alDownload PDFPatent Trial and Appeal BoardMay 10, 201814272675 (P.T.A.B. May. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/272,675 13173 7590 Blue Filament Law 700 E. Maple Road Suite 450 FILING DATE 05/08/2014 05/14/2018 Birmingham, MI 48009 FIRST NAMED INVENTOR Lori Calloway 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. CALL-lOOUS 1065 EXAMINER CONLEY, FREDRICK C ART UNIT PAPER NUMBER 3673 NOTIFICATION DATE DELIVERY MODE 05/14/2018 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): ag@bluefilamentlaw.com ap@bluefilamentlaw.com patentdocketing@bluefilamentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LORI CALLOWAY and DEBRA GREEN Appeal2017-008120 Application 14/272675 Technology Center 3600 Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 1-5 and 7-11. App. Br. 2. Claim 6 has been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal2017-008120 Application 14/272,675 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to implementations of a portable bed cover dispenser." Spec. i-f 2. Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. A bed cover dispenser comprising: a resting piece having a planar blade configured to rest on part of a bed frame on which an edge of a mattress, the bed frame and the mattress secure a bed cover holder without any additional attachment mechanisms; the bed cover holder configured to hold a continuous roll of material wherein the continuous roll of material comprises material wrapped around a roll; and wherein the bed cover holder and the continuous roll of material are configured such that the material is adapted to selectively retract back onto the roll once a portion of the material is dispensed from the roll. REFERENCES RELIED ON BY THE EXAMINER McNeal Hess Pagel et al. us 3,344,444 us 3,466,679 us 4,358,865 THE REJECTION ON APPEAL Oct. 3, 1967 Sept. 16, 1969 Nov. 16, 1982 Claims 1-5 and 7-11 are rejected under 35 U.S.C. § 103 as unpatentable over Pagel, McNeal, and Hess. ANALYSIS Appellants argue all the claims together. App. Br. 8-14. We select claim 1 for review with the remaining claims (i.e., claims 2-5 and 7-11) standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner primarily relies on the teachings of Pagel, including that of "resting piece 5," but the Examiner relies on McNeal for teaching a 2 Appeal2017-008120 Application 14/272,675 retracting roll of material and on Hess for teaching a resting piece "with planar blade portions resting on a bed frame." Final Act. 2-3; see also Ans. 7. Appellants initially contend that the Examiner failed "to give patentable weight to the planar blade being press fit between a mattress and a frame in view of the negative limitation of 'without resort to additional attachment mechanisms. "' 1 App. Br. 8. Appellants contend the Examiner failed to find any teaching relating "to holding a roll dispenser to a bed merely by planar blades cantilevered between a mattress and a bed frame." App. Br. 8-9. As indicated above, the Examiner relies on Hess for teaching this "planar blade" limitation. Final Act. 2-3 (citation omitted). Appellants contend that Hess' "offset portions 66-69 and 66'---69' lack a planar blade, but instead has hanger hooks with a capital pi-shape (II) that bounds a bed frame on three sides." App. Br. 10. This, according to Appellants, "is in stark contrast to the instant invention that essentially uses the weight of the mattress to secure the inventive sheet dispenser." App. Br. 10. Accordingly, "Hess does not meet this recitation as [Hess'] bends in metal to form 3-side bounding of frame is a form of attachment not present in the instant invention." App. Br. 10; see also Reply Br. 5. 1 Appellants are addressing the first limitation, i.e., "a resting piece having a planar blade configured to rest on part of a bed frame on which an edge of a mattress, the bed frame and the mattress secure a bed cover holder without any additional attachment mechanisms." 3 Appeal2017-008120 Application 14/272,675 As indicated above, claim 1 recites "a resting piece having a planar blade." In other words, the "resting piece" has a "planar blade" portion. 2 In Appellants' Specification, item 105 is identified as a "resting piece" with "some implementations" being "shown in FIG. lB." Spec. i-f 12. The implementation depicted in Figure 1 B is an L-shaped bracket whose one horizontal leg is disposed between a lower bed frame 150 and an upper mattress 160. See also Spec. i-f 12; Ans. 6. The reference to Hess teaches supporting a container 7 via "offset portions" 66-69 (and 66'-69') that are similarly disposed between a bed frame and a mattress. See Hess 3:49---65; Figs. 1-7. However, Hess' "offset portions" are 3-sided (i.e., hook or U-shape members), not 2-sided L- brackets as depicted in Appellants' figures. See also Ans. 6. Nevertheless, Appellants do not explain how Hess' horizontal portion (i.e., the bottom of the U-shape that is sandwiched between the frame and the mattress) differs from Appellants' planar blade portion (also horizontally orientated) which is likewise sandwiched between the frame and the mattress. See Ans. 7. In other words, Appellants do not explain how Hess' corresponding "resting piece" fails to likewise have "a planar blade" as claimed. Appellants attempt to distinguish Hess by referring to Figure 2 of Hess stating that this figure "clearly shows in top view that the device uses opposing hooks to suspend the sheet dispenser ONLY FROM THE BED FRAME." App. Br. 10-11. Although Figure 2 of Hess does not illustrate 2 Appellants contend that they are "allowed to be their own lexicographer, whether a portion of reference numeral 105 is termed as a 'planar blade' or" otherwise. Reply Br. 3--4. 4 Appeal2017-008120 Application 14/272,675 Hess' mattress, Figures 1 and 3 of Hess do, and these Figures 1 and 3 clearly illustrate Hess' devices retained in place between the mattress and the frame. Appellants also contend, "[ t ]here is no basis for modifying the hanger hooks of Hess into the planar blade portions of the pending claim 1 and further to do so, changes the fundamental basis of attachment of the roll." App. Br. 11; see also Reply Br. 5. Appellants appear to have mis-read the Examiner's rejection which does not rely on a modification of Hess' hangers, but instead states that it would have been obvious "to employ [Hess'] offset portions yielding predictable results that provide an alternative means [i.e., alternative to Pagel's resting piece 5] to secure the dispenser to the bed frame that is also easily detachable therefrom." Final Act. 3; see also Ans. 7. In other words, as per the Examiner, Appellants have "done nothing more than select an alternative means to support the dispenser on the frame which is not considered patentably distinct." Ans. 8. Appellants are not persuasive of Examiner error on this point. Appellants further address the limitation "without any additional attachment mechanisms," contending "the additional two sides of the hangers of Hess are inconsistent with" this limitation. App. Br. 12. However, as indicated above, Appellants' resting piece is an L-shaped bracket whereas Hess' corresponding resting piece is U-shaped. Appellants' Specification describes "screws, bolts, or any other attachment means known or future developed" as examples of "additional attachment mechanisms." Spec. i-f 12. But, Appellants do not explain how the third integral side of Hess' hook can be deemed to be an "additional attachment mechanism" as 5 Appeal2017-008120 Application 14/272,675 this term is understood. 3 Regarding ease of use, Hess teaches that even with this third side, "the containers may be easily removed from the beds or may be left in place." Hess 3 :53-55; see also id. at 3 :50-51. Appellants also contend, "the Examiner has erred in effectively reading the limitation of 'planar' out of claim 1," but Appellants do not explain how the middle horizontal portion of Hess' hook (that is engaged between the frame and the mattress) is not "planar." App. Br. 13; see also Hess Figs. 6-7. Appellants further contend, "Hess teaches away from the claimed invention" (App. Br. 13), but nowhere do Appellants identify where Hess criticizes, discredits or otherwise discourages the invention claimed. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Appellants also note the age of the references and "the intervening time between the prior art's teaching of the components and the eventual disclosure of the present invention." App. Br. 13. However, this argument is not persuasive because the mere passage of time without a claimed invention is not evidence ofnonobviousness absent a showing of long-felt need or the failure of others. In re Kahn, 441F.3d977, 990-91 (Fed. Cir. 2006) (referencing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)). Appellants contend, "the present invention address[ es] the long felt but unsolved need for [a] bed mounted roll" (App. Br. 14 ), but there is no evidence in the record that others "tried and failed to solve the problem" as needed for such an assertion. See In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (citation omitted); see also Ans. 8 and Hess. 3 It might also be said that Hess' third side is not "additional" since it is not a separate component as are screws, bolts, etc. 6 Appeal2017-008120 Application 14/272,675 Appellants additionally address a Declaration "by inventor Lori Calloway" stating that her expertise "qualifiers her as a person having ordinary skill in the art." App. Br. 14. This Declaration states that the claimed invention "is removed to replace a dispenser roll without lifting" because injuries arise from the "often awkward lifting of patients." Declaration i-f 5; App. Br. 14--15. In other words, Appellants attempt to distinguish their "slide blade press fit mounting versus the retainer scheme of Hess." Reply Br. 5; see also Declaration i-fi-15-7. However, the focus on the benefit of a lack of "lifting" is misplaced since this feature is unclaimed. 4 Further, the Examiner is not disputing the veracity of the Declarant's statement above regarding injury due to lifting, instead, the Examiner addresses Declarant' s assertion "that it was not obvious to arrive at my inventive portable bed cover dispenser that is held in place by blades held in place by the weight of the mattress against the bed frame." Declaration i-f 5. In other words, "Appellants have not presented any independent experimental or empirical data showing that the resting piece performs unexpectedly better than the resting piece of Pagel in view of McNeal, and Hess." Ans. 9; see also In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992). As per the Examiner, "the arguments of counsel and the statements from the inventor's opinion cannot take the place of evidence in the record." Ans. 9, see also id. at 8, 10. We do not find fault with the Examiner's analysis. Furthermore, regarding the issue of "lifting" when removing/replacing Appellants' device (see Declaration i-fi-15, 6), it is noted that Hess addresses a 4 As stated by our reviewing court, "the name of the game is the claim," and as such, unclaimed features cannot impart patentability. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). 7 Appeal2017-008120 Application 14/272,675 similar need stating "[ d]isposible cartridges must necessarily be easily detachable from the frame" and that "the containers may be easily removed from the beds." Hess 3:50-55. Appellants are not persuasive that Hess fails to likewise address the same problem of avoiding injury by avoiding the same "awkward lifting of patients." Declaration i-f 5. Additionally, and as indicated above, fundamental to an assertion of long-felt need is a showing that such need was not satisfied by another before the invention by an applicant. See Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Appellants are not persuasive on this point in view of the prior teachings of Hess. Accordingly, and based on the record presented, we sustain the Examiner's rejection of claims 1-5 and 7-11. DECISION The Examiner's rejection of claims 1-5 and 7-11 as being obvious over Pagel, McNeal, and Hess is sustained. 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 8 Copy with citationCopy as parenthetical citation