Ex Parte Carlos

Board of Patent Appeals and Interferences

Oct 25, 2010

11289031 (B.P.A.I. Oct. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VICTOR RAMON CARLOS
____________

Appeal 2009-008441
Application 11/289,031
Technology Center 3600
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008441
Application 11/289,031
2
STATEMENT OF THE CASE
Victor Ramon Carlos (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-21, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
THE INVENTION
Appellant’s claimed invention is a pillow for human spine and head
support during sleep. Spec. 1:3-5. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A pillow comprising:
a flexible outer shell including a plurality of internal
dividers that define a plurality of compartments;
stuffing material within each of the plurality of
compartments;
the flexible outer shell further comprising
a tapered center region defining a center
region longitudinal axis;
a top region defining a top region
longitudinal axis that is approximately orthogonal
to the center region longitudinal axis, the top
region including a left portion, a center portion,
and a right portion;
the tapered center region including a thicker end that is
adjacent the center portion of the top region, and a thinner distal
end;
at least one of the plurality of internal dividers being
located within the tapered center region and being oriented
approximately orthogonal to the center region longitudinal axis;
and
at least one of the plurality of internal dividers being
located within the top region and being oriented approximately
orthogonal to the top region longitudinal axis.
Appeal 2009-008441
Application 11/289,031
3
THE REJECTIONS
Appellant seeks review of the following Examiner’s rejections:
1. Rejection of claims 1, 2, 4-7, 9, 10, 13-17, 19, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Degen (US 3,849,810, issued Nov. 26,
1974) and Perry (US 6,622,727 B2, issued Sep. 23, 2003).2
2. Rejection of claims 3 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Degen, Perry, and Castro (US 5,829,079, issued Nov. 3, 1998).
3. Rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Degen, Perry, and Adat (US 6,490,743 B1, issued Dec. 10, 2002).
4. Rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Degen, Perry, and Zajas (US 5,632,050, issued May 27, 1997).
5. Rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Degen, Perry, and Richardson (US 6,050,265, issued Apr. 18, 2000).
ISSUE
Would a person of ordinary skill in the art have combined Degen and
Perry as proposed by the Examiner in order to reach the subject matter of
independent claim 1?
ANALYSIS
Rejection of claims 1, 2, 4-7, 9, 10, 13-17, 19, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Degen and Perry
Independent claim 1 is directed to a pillow having a center region
adjacent the center portion of a top region. The center region tapers to

2 The Examiner also rejected claim 20 in the Office Action that is the subject
of this appeal. Office Action dated February 21, 2008, page 2. In the
Answer, however, the Examiner removed claim 20 from this rejection, and
added a new ground of rejection of claim 20 over Degen, Perry, and
Richardson. Ans. 3, 11 (see fifth rejection, infra).
Appeal 2009-008441
Application 11/289,031
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increase in thickness from the distal end to the end adjacent the center
portion of the top region.
The Examiner found that Degen discloses the subject matter of claim
1 except that Degen’s center region (stuffing 9) does not taper to increase in
thickness from the distal end to the end adjacent the center portion (centre
section 3). Ans. 3-4. The Examiner concluded that it would have been
obvious to taper the center region of Degen (stuffing 9), as taught by Perry,
in order “to provide a therapeutic and ergonomic support for the spine.”
Ans. 4.
The Examiner’s conclusion of obviousness must be based upon a
sufficient reason with a rational underpinning to explain the proposed
combination. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We
examine the prior art using the “functional approach” recently articulated by
the Supreme Court in KSR. Id. at 415.
Degen discloses a pillow 1 that includes a centre section 3 and two
outer sections 4 and 5, enclosed by a continuous case 6. Degen, col. 1,
ll. 55-61. Centre section 3 has an opening in case 6 along its width b.
Degen, col. 2, ll. 6-8; fig. 1. In the region of this opening, stuffing 9 is
connected by slide fastener 8 to case 6 so that stuffing 9 can be easily
removed and inserted or withdrawn from case 6 through the opening.
Degen, col. 2, ll. 9-15; fig. 2 (stuffing 9 inserted); fig. 4 (stuffing 9
withdrawn). Stuffing 9 is divided into three sections by two quilting seams
10 and 11, and has a uniform thickness. Degen, col. 2, ll. 38-39; fig. 4.
Appeal 2009-008441
Application 11/289,031
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Degen discloses that when stuffing 9 is inserted in centre section 3,
centre section 3 is about the same thickness as outer sections 4 and 5, and
when stuffing 9 is removed, centre section 3 is about half the thickness of
outer sections 4 and 5. Degen, col. 2, ll. 19-21, 26-29. This adjustability in
thickness places the head higher or lower depending on if the user lies on the
user’s back or side. Degen, col. 2, ll. 29-33. When not inserted, stuffing 9
may be removed completely by undoing slide fastener 8. Degen, col. 2,
ll. 33-35.
Degen discloses that stuffing 9 may also be rolled prior to insertion in
centre section 3, thus forming small neck roll 12. Degen, col. 2, ll. 36-40;
fig. 6. Alternatively, a higher or firmer neck roll may be formed by turning
down centre section 3, forming firm neck roll 14. Degen, col. 2, ll. 45-54;
fig. 8.
Hence, Degen discloses four possible configurations for pillow 1:
(1) with stuffing 9 inserted in centre section 3, (2) with stuffing 9 not
inserted in centre section 3 and completely removed, (3) as small neck roll
12, and (4) as firm neck roll 14. Degen does not disclose use of stuffing 9
attached to centre section 3 as support for a user’s spine.
Perry discloses a wedge pillow 50 and arm cushions 70 for use in
supporting patients 20 during a surgical procedure. Perry, col. 1, ll. 6-8; col.
2, ll. 64-67; col. 3, ll. 16-19; fig. 1. The wedge pillow 50 includes a platform
portion 52 to support the head 22 and neck 24 of the patient 20, and a spinal
portion 54 to provide the proper angle for the thoracic spine necessary for
proper sniffing position (the position that aligns the oral, laryngeal, and
pharyngeal axes for successful direct laryngoscopy). Perry, col. 1, ll. 44-47;
col. 3, ll. 24-26.
Appeal 2009-008441
Application 11/289,031
6
Degen’s stuffing 9 may be inserted or removed to vary the thickness
of centre section 3, or may be rolled to form two types of neck rolls;
however, Degen does not disclose stuffing 9 as a center region providing
spinal support. We fail to see why a person of ordinary skill in the art would
modify Degen’s stuffing 9 to be tapered as taught by Perry “to provide
therapeutic and ergonomic support for the spine” (Ans. 4) when nothing in
Degen informs a person of ordinary skill in the art that stuffing 9 may be
utilized to provide spinal support. Thus, absent hindsight, we see no reason,
and the Examiner has not provided an adequate articulation of a reason, why
a person of ordinary skill in the art would have been led to modify Degen’s
device to taper the center region, as called for in claim 1. The rejection of
dependent claims 2, 4-7, 9, 10, 13-17, 19 and 21 is also in error for the same
reasons as discussed for claim 1.
Remaining rejections of claims 3, 11, 12, 18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Degen and Perry in combination with either
Castro, or Adat, or Zajas, or Richardson
Claims 3, 11, 12, 18, and 20 depend, directly or indirectly, from
independent claim 1. The rejections of these claims depend on the same
combination of Degen and Perry used for the rejection of claim 1. The
modifications of that combination based upon the teachings of Castro, Adat,
Zajas, or Richardson do not correct the deficiency of the Degen and Perry
combination discussed in the analysis of claim 1, supra. Given this, the
rejections of claims 3, 11, 12, 18, and 20 are also in error.
CONCLUSION
A person of ordinary skill in the art would not have combined Degen
and Perry as proposed by the Examiner in order to reach the subject matter
of independent claim 1.
Appeal 2009-008441
Application 11/289,031
7
DECISION
We REVERSE the Examiner’s decision to reject claims 1-21.

REVERSED

nlk

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