Ex Parte Cohen

Board of Patent Appeals and Interferences

Feb 27, 2012

10666439 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/666,439 09/22/2003 Ernesto Cohen 28,437-A 8312
7590 02/27/2012
Charles E. Temko
22 Marion Road
Westport, CT 06880
EXAMINER
NELSON JR, MILTON
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
02/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERNESTO COHAN
____________________

Appeal 2010-002855
Application 10/666,439
Technology Center 3600
____________________

Before LINDA E. HORNER, ROBERT A. CLARKE, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002855
Application 10/666,439

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STATEMENT OF THE CASE
Ernesto Cohan (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 9 and 10. (App. Br. 1). Claims 1-8
were cancelled. (Ans. 2).1 We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
The invention is directed to a cover for upholstered furniture. (Spec.
1). Claim 9, which is reproduced below with paragraphing added, is
illustrative of the claimed subject matter.2

9. A unitary cover for upholstered chairs and
sofas comprising:
a hollow shell of resilient fabric having a
peripheral edge,
an elastic member for contracting said edge
to maintain said cover upon an engaged article of
furniture,
said cover including a plurality of
interconnected panels overlying a rectangular
cushion forming part of said sofa, said panels
including a rear panel having first and second parts
lying in separate planes disposed at a mutual angle

1 Appellant indicates that claims 5 and 6 were withdrawn from
consideration. (App. Br. 1). However, the Examiner's Answer properly
indicates that these claims were cancelled in the Amendment of August 12,
2004. (Ans. 2).
2 Claim 9 reproduced above corresponds to the Examiner-initialed version of
claim 9 shown in the "AMENDED CLAIMS APPENDIX," attached as an
Appendix to the Examiner's Answer. (Ans. 3).
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to provide a degree of excess material in an area at
the rear of said cushion;
the material comprising said first and second
parts being normally concealed from view and
providing excess material for movement over said
cushion when said cushion is sat upon by a user,
said excess material contracting when said cushion
is vacated.

THE REJECTIONS3
The following Examiner's rejections are before us for review.
1. Claim 9 is rejected under 35 U.S.C. § 102(b) as anticipated by
Cook (US 3,371,957, issued Mar. 5, 1968).
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cook and Riley (US 5,722,723, issued Mar. 3, 1998).

ANALYSIS
Rejection of claim 9
The Examiner found Cook discloses a cover including a rear panel
having first and second parts (i.e., portion a2 of envelope between pads b, b2)
disposed in separate planes at a mutual angle. (Ans. 4; see also Cook, col. 2,
ll. 31-34; Fig. 3). The Examiner found Cook's first and second parts
inherently provide excess material in an area at the rear of the cushion, and
the material comprising the first and second parts is normally concealed
from view. (Id.). The Examiner also found Cook's resilient material
forming the excess material moves over the cushion when sat upon by a
user, and necessarily contracts when the cushion is vacated. (Id.).

3 The Examiner's Answer indicates that the rejection of claims 9 and 10
under 35 U.S.C. § 112, second paragraph, has been withdrawn. (Ans. 3).
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Appellant contends that whatever "stretching" is possible in Cook's
material is because it is resilient. (App. Br. 4). Appellant contends that the
two parts of Appellant's back panel are disposed at a mutual angle, which
provides additional material to allow "stretching," and the "stretching" does
not depend on elasticity of the material. (Id.). Appellant also contends that
the resiliency of the cushion causes the additional material to return to its
initial position when the seat is vacated. (Id.). Appellant's contentions are
not persuasive.
The Examiner correctly determined that claim 9 calls for "movement,"
not "stretching," of the material. (Ans. 5). We agree with the Examiner that
the resiliency of Cook's cover material allows it to stretch, and the portion a2
of Cook's envelope shown in Figure 3 provides additional material capable
of allowing "stretching." (Id.). Cook discloses:
A loose cover especially for automobile and
like seats comprises an envelope for stretchable
textile material capable of fitting over the seat and
back portions of different size seat assemblies and
having a pad of foamed plastic bonded to the
underside of the envelope overlying said seat
portion to non-slidably grip the seat portion while
the remainder of the envelope is free to stretch and
slide on the assembly in accord with driver
movements and the like.
(Col. 1, ll. 14-22) (emphasis added).
According to Cook, the "remainder of the envelope" (i.e., the portion
of the envelope that the pad of foamed plastic is not bonded to) is free to
stretch and slide on the assembly due to movements of a person sitting on
the assembly. The portion a2 of the envelope shown in Figure 3 of Cook is
disposed between pads b, b2 (see col. 2, ll. 31-34). One of ordinary skill in
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the art would understand that stress can be imparted to portion a2 when a
user sits on Cook's cover, and that such stress would cause portion a2 to
stretch, as well as slide relative to the seat. In our view, such stretching and
sliding of portion a2 of Cook's envelope both provide "movement" of the
material "over" the seat. Accordingly, we agree with the Examiner that
Cook's cover provides "excess material" for movement over a cushion when
a user sits on the cushion. (Ans. 6). Claim 9 does not call for the excess
material to return to its initial position when the seat is vacated, as argued by
Appellant. In our view, Cook's additional material is capable of
"contracting" when a user vacates the seat, thereby removing the stress
imparted by the user from acting on the additional material. Appellant has
not provided any persuasive argument why Cook's additional resilient
material is not capable of "contracting" as claimed. Hence, we sustain the
rejection of claim 9.

Rejection of claim 10
The Examiner determined that Cook discloses all features of claim 10
except for "a resilient-elongated tube positioned over said excess material."
(Ans. 4). The Examiner found Riley teaches a resilient-elongated tube (i.e.,
resilient member 40) positioned over excess material formed by first and
second parts. (Id., citing Riley, Figs. 8 and 9). The Examiner concluded
that it would have been obvious to one of ordinary skill in the art to modify
Cook by positioning Riley's tube over the excess material formed by the first
and second parts. (Id. at 4-5). The Examiner determined that the
modification would stabilize Cook's cover by pressing on the excess
material, thereby reducing movement of the cover. (Id. at 5).
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We agree with Appellant that the Examiner did not articulate adequate
reasoning with rational underpinnings to explain why one of ordinary skill in
the art would have been led to position Riley's tube over portion a2 of Cook's
cover. For reasons discussed supra, we do not agree with Appellant's
contention that the "additional material" of Cook's cover would not move
when a force is applied to the resilient material of the cover. (App. Br. 5).
However, Cook's cover also includes pads b, b2 bonded to the underside of
the cover. The pads b, b2 non-slidably grip the seat and, as such, would
already appear to control excessive movement of portion a2 of the cover
when a user sits on or vacates the seat. In addition, even assuming that the
embodiment of Riley's member 40 shown in Figure 8 or 9 could be
positioned over Cook's portion a2, this modification would appear to result
in significantly increasing the width of the crevice between pads b, b2 when
the member 40 is in its expanded position. (See Riley, col. 4, ll. 36-39).
Hence, we do not sustain the rejection of claim 10.

DECISION
1. The rejection of claim 9 under 35 U.S.C. § 102(b) as
anticipated by Cook is AFFIRMED.
2. The rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Cook and Riley is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

Appeal 2010-002855
Application 10/666,439

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