Ex Parte Callsen et al

Patent Trial and Appeal Board

May 31, 2018

14162786 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/162,786 01/24/2014 Kevin F. Callsen
116 7590 06/04/2018
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
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.
POLY-41448US3 1029
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN F. CALLSEN and DAVID H. TRACHTMAN
Appeal2017-007734
Application 14/162, 786
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 23-27 as unpatentable under 35 U.S.C. § 103(a)
1 In explaining our decision, we refer to the Specification filed Jan. 24, 2014
("Spec."), the Final Office Action entered Aug. 5, 2016 ("Final Act."), the
Appeal Brief filed Dec. 14, 2016 ("App. Br."), the Examiner's Answer
entered Mar. 17, 2017 ("Ans."), and the Reply Brief filed Apr. 26, 2017
("Reply App. Br.").
2 Polymer Concepts, Inc. is identified as the real party in interest. App.
Br. 1.
Appeal2017-007734
Application 14/162,786
over Habboub3 in view of Lewis4 alone and further in view of Laidlaw. 5
App. Br. 2; Final Act. 3-5.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The invention relates to support structures including a first layer of
foam material and a second layer of elastomeric gel material. Spec. ,r 2.
Claim 23 is illustrative:
23. A method of making a support structure
comprising the steps of:
providing a first layer of foam material including a first
side with a plurality of protrusions and a plurality of channels,
wherein the protrusions each include a first support surface;
dispensing a liquid material into the plurality of channels
to a liquid level; and
curing the dispensed liquid into a second layer of an
elastomeric gel material such that a second support surface is
formed at the liquid level.
App. Br. 8 (Claims App'x) (formatting added). Claim 26 is also
independent and additionally requires bonding areas of a third layer with the
second support surface of an elastomeric gel material "such that a support
surface of the third layer forms a plurality of mounds that are each vertically
aligned with a corresponding one of the protrusions of the first layer." Id.
3 Habboub et al., US 2003/0041379 Al, pub. Mar. 6, 2003 ("Habboub").
4 Lewis et al., US 5,534,609, iss. July 9, 1996 ("Lewis").
5 Laidlaw, US 5,918,334, iss. July 6, 1999 ("Laidlaw").
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Application 14/162,786
OPINION
Obviousness of Claims 23-25
The Examiner determines that claims 23-25 would have been obvious
to one of ordinary skill in the art at the time of the invention over the
combination of Habboub in view of Lewis for the reasons stated on pages 3-
4 of the Final Action.
Appellants argue the claims as a group (App. Br. 2), accordingly,
claims 24 and 25 will stand or fall together with claim 23. 37 C.F.R.
§ 4I.37(c)(l)(iv). Appellants contend that the Examiner erred in combining
the teachings of Lewis to modify Habboub' s method to include applying and
curing the elastomer gel disclosed by Lewis. App. Br. 3. Appellants
contend that although Habboub discloses fluids for use in the reservoir other
than air and mineral oil, i.e. polymer gels, "Habboub states that the viscous
fluids used in the system 'maintain viscosity in an acceptable range in the
temperature and pressure conditions in which the body support member will
be used."' Id. (citing Habboub ,r 58). According to Appellants, "Habboub
discloses that the ability of the viscous fluid to flow within the air spaces or
the energy dissipation means provides specific advantages to its system" and
the modification with Lewis's cured silicon gel "would (i) change the
respective function of the viscous fluid disclosed in Habboub and (ii) change
the principle of operation of the support system disclosed in Habboub" to the
point of "render[ing] the Habboub systems unusable without additional and
significant redesign." Id. at 4.
Appellants further assert that the Examiner erred by providing no
reason or motivation as to why one of ordinary skill in the art would modify
the support system of Habboub with the cured silicone gel disclosed by
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Application 14/162,786
Lewis. Id. at 5. In addition, Appellants contend that the Examiner's
determination that "the elastomeric gel of Lewis would be suitable for
achieving the purposes of Habboub with a reasonable expectation of
success" is conclusory and not supported by Habboub, which "states that the
thermal and mechanical functions provided by the viscous fluid are based on
the fluids['] ability to be displaced and flow within the support system." Id.
The Examiner responds that "Habboub is open to the use of any fluid
so long as it is capable of flowing in order to provide the thermal regulation
function and mechanical effects." Ans. 2 (citing App. Br. 4; Habboub ,r 61).
Regarding Lewis, the Examiner finds that "Lewis teaches a cured silicone
gel that is both a fluid and a viscous fluid." Id. at 2-3 (citing Lewis 9:8-54).
The Examiner also determines that the combination of Habboub and Lewis
is a substitution of functional equivalents for forming a cushion. Id.at 3. In
this regard, the Examiner finds that Habboub desires a fluid, such as
polymer gels, for use in a cushion product and Lewis discloses a specific
type of polymer gel useful in producing shock absorbing cushions. Id.
In the Reply Brief, Appellants assert that "[ t ]he Examiner cites no
portion of Lewis for disclosing that the cured silicone gel has a viscosity that
is maintained in an acceptable range to provide both the thermal regulation
function and mechanical effects described in Habboub." Reply Br. 2.
According to Appellants, without such an explanation there is no basis for
the substitution of Lewis' cured silicone gel for the polymer gels of
Habboub such that substitution would lead to a predictable result. Id.
Appellants also argue that Lewis states in the Abstract that the cured silicone
gels are useful in prostheses and coatings, which would not be functionally
equivalent to Habboub's fluids nor capable of flowing through channels, and
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Application 14/162,786
only states "shock absorbing cushions" among a broad category of uses in
the section titled "Description of Related Art." Id. at 3--4.
We are not persuaded by Appellants' arguments for the reasons stated
by the Examiner. In addition, we add the following.
Appellants' argument that the combination would change the function
and principle of operation of Habboub' s viscous fluid is unpersuasive
because the Examiner's finding that Lewis's silicone gel is viscous is
supported by the record. See Ans. 2-3; Lewis 9:8-54. The cited portion of
Lewis not only discloses that its cured silicone gel has a viscosity, which
Lewis equates to flow, but that the viscosity can be influenced or varied with
a rheology modifier and with crosslinking reactions ("[h ]igher crosslink
densities are usually associated with ... high viscosity"). Lewis 9:8-26.
Appellants do not direct us to any evidence that Habboub requires more than
flow or a viscosity to accomplish the stated thermal regulation and
mechanical effects in its seat cushion, i.e. a particular viscosity. Nor do
Appellants argue that it would have been outside the level of skill of a
person having ordinary skill in the art to modify the viscosity of the silicone
gel, as suggested by Lewis, as appropriate for a particular application or use.
Additionally, Appellants have not directed us to any evidence in this
appeal record to show that the flow or viscosity of Lewis' cured silicone gel
would make Habboub' s cushion inoperable or unsuitable for its intended
purpose. Indeed, Appellants acknowledge (Reply Br. 4) that Lewis discloses
a broad range of uses for silicone polymers, from coatings to dental
impressions to shock absorbing cushions in footwear and automobiles
(Lewis 1 :23-27). Thus the teachings of Lewis are not limited to the
application highlighted in the abstract as Appellants suggest (Reply Br. 3).
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Application 14/162,786
In a determination of obviousness, a reference may be relied upon for all that
it would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That
the [prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.").
Appellants' assertion that the substitution of Lewis's silicone gel for
Habboub's polymer gel would not lead to a predictable result (Reply Br. 2)
also is not persuasive of error by the Examiner. In KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398 (2007), the Supreme Court emphasized "the need for
caution in granting a patent based on the combination of elements found in
the prior art," id. at 415, and discussed circumstances in which a patent
might be determined to be obvious. In particular, the Supreme Court
emphasized that "the principles laid down in Graham [ v. John Deere Co.,
383 U.S. 1 (1966)] reaffirmed the 'functional approach' of Hotchkiss [v.
Greenwood, 52 U.S. 248 (1850)]," id., and reaffirmed principles based on its
precedent that "[ t ]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
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Application 14/162,786
Id. at 417. The operative question in this "functional approach" is thus
"whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id.
The Supreme Court stated that there are "[t]hree cases decided after
Graham [that] illustrate the application of this doctrine." Id. at 416. "In
United States v. Adams [383 U.S. 39 (1966)], .... [t]he Court recognized
that when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." Id.
"Sakraida [v. AG Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black
Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are illustrative- a
court must ask whether the improvement is more than the predictable use of
prior art elements according to their established function." Id. at 417.
Here, the Examiner has provided a sufficient basis for finding that the
substitution of Lewis' silicone gel for the fluid in Habboub's prior art
cushion would yield a predictable result. First, Habboub teaches that the
fluid can be a polymer gel and that the fluid flow contributes to a thermal
regulation function and a mechanical effect of deformation and recovery due
to loading and unloading the user's weight. Ans. 2-3; Habboub ,r,r 61, 62.
Second, Lewis teaches shock absorbing cushions as an application for
silicone gels specifically and that its silicone gel has viscosity (flow).
Ans. 3; Lewis 1:23-27.
Because the Examiner's findings are supported by the preponderance
of the evidence cited in this appeal, we are not persuaded of reversible error
in the rejection of claim 23 over the combination of Habboub and Lewis.
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Application 14/162,786
Obviousness of Claims 2 6 and 2 7
The Examiner determines that claims 26 and 27 would have been
obvious to one of ordinary skill in the art at the time of the invention over
the combination of Habboub and Lewis and in further view of Laidlaw for
the reasons stated on pages 4--5 of the Final Action.
Appellants argue that the Examiner's rejection of claims 26 and 27 is
in error for the same reasons presented with respect to independent claim 23.
App. Br. 6. Because we are not persuaded of error in the rejection of
claim 23 for the reasons discussed above, we also sustain the rejection of
claims 2 6 and 2 7.
CONCLUSION
We affirm the Examiner's rejections of claims 23-27 as obvious
under 35 U.S.C. § I03(a).
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.I36(a)(l).
AFFIRMED
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