Ex Parte DiGirolamo

Patent Trial and Appeal Board

Mar 13, 2013

10961671 (P.T.A.B. Mar. 13, 2013)

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.
10/961,671 10/08/2004 Shelley A. DiGirolamo 283-262 8225
30621 7590 03/14/2013
JENSEN + PUNTIGAM, P.S.
2033 6th Ave, Suite 1020
SEATTLE, WA 98121
EXAMINER
SAFAVI, MICHAEL
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
03/14/2013 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 PATENT TRIAL AND APPEAL BOARD

____________

Ex parte SHELLEY A. DIGIROLAMO
____________

Appeal 2011-000512
Application 10/961,671
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000512
Application 10/961,671

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STATEMENT OF THE CASE
Shelley A. DiGirolamo (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting claims 1-7. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to a pillow 10 including inner fabric
layers 12, 14, outer fabric layers 24, 26, and baffles 18, 20 connected to
inner fabric layers 12, 14. Spec. 2, ll. 22-23 and 32-33; Spec. 3, ll. 14-15
and 20-21; and fig. 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A pillow, comprising:
first and second substantially identical inner shell layers, each
having a length and width, secured together in a non-openable manner
around the peripheries thereof;
at least one baffle member extending between and secured to
the first and second inner shell layers, the baffle member extending
for substantially one entire dimension of the pillow and defining
interior chambers between the first and second inner shell layers;
first and second substantially identical outer shell layers,
secured in a non-openable manner around the peripheries thereof to
the peripheries of the first and second inner shell layers, wherein there
are no baffle members between the inner and outer shell layers; and
pillow filling located in the spaces between the inner and outer
shell layers and in said interior chambers.

Appeal 2011-000512
Application 10/961,671

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REJECTIONS
The following rejections are before us for review:1
The Examiner rejected claims 1-3 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Buchman (US 2,805,428, iss. Sep. 10, 1957) and
Sumergrade (US 3,411,164, iss. Nov. 19, 1968).
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Buchman, Sumergrade, and Hollander (US Pat. Pub.
2004/0068795 A1, publ. Apr. 15, 2004).
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Buchman, Sumergrade, and Robillard (US 5,038,432, iss.
Aug. 13, 1991).
The Examiner rejected claims 1 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Buchman and either Everts (US 1,206,775, iss. Nov. 28,
1916) or Ryndak (US 5,661,862, iss. Sep. 2, 1997).

SUMMARY OF DECISION
We AFFIRM.

1 The Examiner also presented objections to claims 6 and 7 for the
recitation “the baffle members.” Final Rejection 2, mailed January 9, 2008;
see also Br. 11. An objection is a petitionable matter and not an appealable
matter and is not within the jurisdiction of the Patent Trial and Appeal
Board. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§§ 1002.02(c)(4) and 1201. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
Appeal 2011-000512
Application 10/961,671

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ANALYSIS
The obviousness rejections based upon Buchman and Sumergrade
Claim 1
The Examiner found that Buchman discloses all the limitation of
independent claim 1, but “fails to explicitly disclose at least one baffle
member extending between and secured to the first and second inner shell
layers, the baffle member extending for substantially one entire dimension of
the pillow and defining interior chambers between the first and second inner
shell layers.” Ans. 5. The Examiner further found that Sumergrade
discloses at least one baffle member 16 or 18, as called for by independent
claim 1. Id. The Examiner concluded that it would have been obvious for a
person of ordinary skill in the art to include at least one baffle member of
Sumergrade in the pillow of Buchman “in order to prevent the fill material in
the central compartment from all shifting to one or the other side of the
compartment.” Id.
Appellant argues that the Examiner’s combination of the teachings of
Buchman and Sumergrade “amounts to a hindsight construction of
applicant’s invention, given the age of the references involved, in particular,
the age of the structural concepts embodied in those references, i.e. the
availability of the structural concepts for a very long period of time.” Br. 9.
We are not persuaded by Appellant’s argument because the Examiner
has provided a reason with rational underpinning (“in order to prevent the
fill material in the central compartment from all shifting to one or the other
side of the compartment”). See Ans. 5; In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
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Application 10/961,671

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obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)).
Furthermore, the age of Buchman’s double layered pillow and the
internal pillow baffles of Sumergrade, alone, does not establish non-
obviousness of the claimed subject matter.
[O]ur precedent requires that the applicant submit actual
evidence of long-felt need, as opposed to argument. This is
because “[a]bsent a showing of long-felt need or the failure of
others, the mere passage of time without the claimed invention
is not evidence of nonobviousness.”

In re Kahn, 441 F.3d 977, 990-91 (Fed. Cir. 2006) (citing Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.2004)). In this case,
we agree with the Examiner that, “Appellant has not made a showing that
the art tried and failed to solve the same problem notwithstanding its
presumed knowledge of the references.” Ans. 14. The Examiner relies on
the internal pillow baffles of Sumergrade as well known to “prevent the fill
material in the central compartment [of the pillow] from all shifting to one or
the other side of the compartment.” Ans. 12; see also Sumergrade, col. 1, ll.
31-33 (“. . . to prevent the filling material [of the pillow] from shifting to any
great degree . . . .”). We thus agree with the Examiner that incorporating the
baffles of Sumergrade into the double-layered pillow of Buchman between
the internal layers is simply rearranging elements without changing their
function. Ans. 14-15. “[W]hen a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976)).
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Thus, we are not persuaded that the Examiner relied on impermissible
hindsight, rather than the knowledge of those skilled in the art at the time of
the invention. As such, for the foregoing reasons, we sustain the rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Buchman and Sumergrade.
Claims 2-4, 6, and 7
Appellant does not present any arguments separate from the
arguments set forth supra with respect to the rejection of independent claim
1. See Br. 8. Therefore, for the same reasons set forth above, we likewise
sustain the rejections under 35 U.S.C. § 103(a) of claims 2, 3, and 6 as
unpatentable over Buchman and Sumergrade; of claim 4 as unpatentable
over Buchman, Sumergrade, and Hollander; and of claim 7 as unpatentable
over Buchman, Sumergrade, and Robillard.

The obviousness rejection based upon Buchman and either Everts or Ryndak
At the outset, we agree with the Examiner’s finding that Buchman
discloses all the limitation of independent claim 1, but fails disclose at least
one baffle member, as called for by claim 1. Ans. 9. We further agree with
the Examiner’s finding that both Everts and Ryndak discloses at least one
baffle member (2, 2 in Everts and 85, 85′ in Ryndak), as called for by
independent claim 1. Id.; see also Everts, fig. 2 and Ryndak, fig. 7. The
Examiner concluded that it would have been obvious for a person of
ordinary skill in the art to include at least one baffle member of either Everts
or Ryndak in the pillow of Buchman “in order to prevent the fill material in
the central compartment from all shifting to one or the other side of the
compartment.” Id.
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Appellant’s sole argument is that “[t]he argument for this ground of
rejection is the same as the argument for Ground of Rejection (H)1” (the
rejection of claims 1-3 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Buchman and Sumergrade). Br. 10; see also Br. 8. Therefore, for the
reasons set forth supra with respect to the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Buchman and Sumergrade, the
rejection of claims 1 and 5 over the combined teachings of Buchman and
either Everts or Ryndak is likewise sustained.

SUMMARY
The Examiner’s decision to reject claims 1-7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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