Ex Parte Diller

Patent Trial and Appeal Board

Apr 26, 2013

11771423 (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK G. DILLER
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Appeal 2011-001138
Application 11/771,423
Technology Center 3600
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Before LINDA E. HORNER, PATRICK R. SCANLON, and
ANNETTE R. REIMERS, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/771,423

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The invention is directed to a procedure chair “that permits ready
interchangeability of patient headrests.” Abst. Claims 1 and 7 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the claimed subject matter.
1. In a procedure chair including a headrest
and a back section, the improvement comprising:
a pintle fixed adjacent one end thereof to
said headrest and cantilevered in spaced relation
thereto,
a connector interconnecting said back
section and said headrest,
said connector having a socket freely
receiving said pintle for movement of said pintle
axially thereof into and out of said socket to permit
an exchange of headrests, and
a clamp for selectively clamping said pintle
in said socket to thereby connect said headrest
rigidly to said back section.
REFERENCES
The Examiner relies upon the following prior art references:
Carrick
Whitmyer
US 408,823
US 5,332,287
Aug. 13, 1889
Jul. 26, 1994

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REJECTIONS
The following rejections are before us on appeal:
Claims 1-4 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Whitmyer.
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Carrick and Whitmyer.
ANALYSIS
Rejection of claims 1-4 - Anticipation
Claim 1
The Examiner finds that Whitmyer discloses a procedure chair
comprising a pintle (element 76) fixed at one end to a headrest, a connector
(elements 46a and 46b) connecting the headrest to a back section (17) and
having a socket, and a clamp (elements 50, 51, 52) clamping the pintle in the
socket. Ans. 3-4.
Appellant presents several arguments contesting the Examiner’s
findings. First, Appellant argues that the element 76 of Whitmyer is a shaft,
not a pintle. App. Br. 8. This argument is not convincing because, as noted
by the Examiner, Appellant does not point to any definition of “pintle” in the
Specification or any ordinary meaning of “pintle” that would exclude a shaft
from being a pintle or provide any other explanation as to why the shaft 76
of Whitmyer is not a pintle. Ans. 7. Anticipation is not an ipsissimis verbis
test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Second, Appellant argues that the element 76 of Whitmyer is not
affixed adjacent to one end thereof to a headrest. App. Br. 8. We disagree.
The second end 80 of the element 76 is attached to the mid-portion of a
U-shaped element 82, and the U-shaped element 82 supports a pair of sub-
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occipital pads 16a, 16b. Whitmyer, col. 4, ll. 4-12; figs. 2 and 3. The
second end 80 of the element 76 is thus affixed at one end thereof to the
headrest assembly comprising the U-shaped element 82 and the sub-occipital
pads 16a, 16b.
Third, Appellant asserts that the half circle cut outs on each side of the
connector of Whitmyer do not define a socket that freely receives the pintle
for axial movement. App. Br. 8. We agree with the Examiner that the two
semicircular recesses of the connector 46b define an opening that receives
the shaft 76 and thus can be considered to be a “socket.” Ans. 7-8. The
Examiner correctly notes that Appellant’s Specification lacks any definition
of “socket” that would preclude such a finding. Id. Whitmyer also discloses
that the shaft 76 is freely received in this socket for axial movement. Col. 4,
l. 66 – col. 5, l. 1.
Fourth, Appellant argues that there is no suggestion in Whitmyer of
removable headrests, and, in fact, Whitmyer teaches away from
interchangeable headrests. App. Br. 8. We find this argument unpersuasive.
Claim 1 calls for the pintle to be freely received in the socket for axial
movement “to permit an exchange of headrests,” but does not actually recite
a plurality of interchangeable headrests. We agree with the Examiner that
this claim language is a statement of intended use, and Whitmyer meets this
functional limitation because the headrest is capable of being removed
and/or replaced. Ans. 8; see Whitmyer, col. 3, ll. 34-39 (describing
connectors 46 as “releasable”). With regard to the specific assertion that
Whitmyer “teaches away” from interchangeable headrests, we note that
“[t]eaching away is irrelevant to anticipation.” Seachange Int'l, Inc. v. C-
COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).
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Fifth, Appellant states that element 76 of Whitmyer is attached to the
U-shaped element 82, but projects perpendicularly “and is not cantilevered
in spaced relation to [the U-shaped] element.” Reply Br. 2. However,
element 76 is clearly cantilevered from U-shaped element 82 because it is
supported on element 82 at only one end thereof. Regarding the “in spaced
relation” language, this broad recitation does not require the element to
extend parallel to the headrest. As such, we agree with the Examiner that
element 76 can be considered to be “in spaced relation” to element 82 and
pads 16a, 16b. See Final Rej. 7.
Lastly, Appellant argues that the Examiner “refers to ‘a connector
(including 46a and 46b),’” and “[t]he so-called connector is, in fact, two
separate and substantially separated elements that each serve totally different
functions [and] cannot be lumped together to respond to the recitation of a
single element.” Id. This argument is not persuasive because claim 1 does
not require the claimed connector to be a single, unitary structure. In other
words, the connector is not claimed in such a manner that would prevent it
from being met by multiple components.
For the above reasons, we are not persuaded of error in the
Examiner’s findings and accordingly sustain the rejection of claim 1 as
anticipated by Whitmyer.
Claim 2
The Examiner finds that Whitmyer discloses that the back section 17
includes a crossbar 64 and the connector has a second socket (in element
46a) that freely receives the crossbar. Ans. 4 (citing Whitmyer, col. 3, l. 67
– col. 4, l. 3; fig. 4). Appellant again argues that the elements 46a, 46b, and
46c are separate elements that are physically separated such that to
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collectively call them a “connector” “does violence to the language.” App.
Br. 9. However, we do not find this “separate element” argument persuasive
for the same reason discussed supra in connection with claim 1.
Appellant also argues that element 64 of Whitmyer cannot be a
“crossbar” because it is described as being oriented generally vertically.
Reply Br. 3. We find this argument unpersuasive as well. We agree with
the Examiner that Appellant’s Specification does not provide a definition
that would prevent element 64 from being considered a “crossbar” and
“[element] 64 can be considered to meet the limitation of a crossbar since it
connects (crosses between) the backrest and headrest.” Ans. 8.
Accordingly, we sustain the rejection of claim 2 as anticipated by
Whitmyer.
Claims 3 and 4
Claim 3 calls for the clamp to include two C-shaped resilient sections.
The Examiner finds that Whitmyer discloses a clamp having two C-shaped
sections 50, 51 that are resilient because “every material has at least some
degree of flexibility.” Ans. 4.
Appellant’s Specification describes “a resilient clamp 52 having
opposing, substantially C-shaped sections 54” and a threaded central socket
56 that receives a threaded shaft 57. Spec., para. [0017]. Turning the
threaded shaft 57 causes the clamp to “squeeze” the pintle 44 and the
crossbar 32 to lock them in place, and turning the shaft 57 (presumably in
the opposite direction) relieves the clamping force exerted on the pintle 44
and the crossbar 32, permitting the headrest to be easily removed. Spec.,
paras. [0018], [0019]. This description suggests more than a minor degree
of flexibility in the C-shaped sections 54. Accordingly, we determine that
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the Examiner’s finding that Whitmyer discloses a clamp having “resilient”
sections rests on an unreasonably broad interpretation of the claim language.
We thus do not sustain the rejection of claim 3—and of claim 4
depending therefrom—under 35 U.S.C. § 102(b) as being anticipated by
Whitmyer.
Rejection of claims 1-7 - Obviousness
The Examiner finds that Carrick discloses every limitation of
independent claims 1 and 7 with the exception that Carrick does not disclose
a cantilevered pintle fixed adjacent one end thereof to a headrest. Ans. 5-6,
7. The Examiner then finds that Whitmyer teaches a headrest with a
cantilevered pintle and concludes it would have been obvious to one of
ordinary skill in the art “to modify the headrest disclosed by Carrick by
making a cantilevered connection between the pintle ‘a’ and the headrest to
facilitate easier adjustment and removal of the headrest.” Ans. 6. The
Examiner also asserts that it would have been obvious “to apply the known
technique of a removable headrest mounted via a cantilever as taught by
Whitmyer to the known device of Carrick to yield predictable results.” Id.
Appellant disagrees, arguing that Whitmyer fails to suggest “the use
of a cantilevered pintle fixed adjacent one end to facilitate easy adjustment
and removal of headrests.” Reply Br. 5. Appellant also argues that the
proposed modification to Carrick would result in an inoperable structure
because it is essential that the ball a be secured to the rod A’, and the rod A’
must be secured at both ends for the device to function. Id.
We disagree with the Examiner that the prior art provides a clear
reason to make the proposed modification. As noted above, the Examiner
asserts that the modification would “yield predictable results.” However,
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“the ‘predictable result’ discussed in [KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398 (2007)] refers not only to the expectation that prior art elements are
capable of being physically combined, but also that the combination would
have worked for its intended purpose.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Carrick
discloses a “pintle” in the form of a ball a secured on a rod A’ that is fixed at
both ends to lugs A2, A3 of a bracket on the back of headrest A. Carrick, p.
1, ll. 68-73. The proposed modification would require removal of one of the
lugs A2, A3 to provide a cantilevered pintle a, A’. Without deciding if this
would result in an inoperable structure as asserted by Appellant, we doubt
that one of skill in the art would necessarily expect the modified structure to
work for its intended purpose. As such, the proposed modification would
not yield predictable results. The Examiner thus has not articulated
sufficient reasoning with a rational underpinning to support the legal
conclusion of obviousness.
For these reasons, we do not sustain the rejection of independent
claims 1 and 7—and of claim 2-6 depending from claim 1—under 35 U.S.C.
§ 103(a) as being unpatentable over Carrick and Whitmyer.
DECISION
We affirm the rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as
being anticipated by Whitmyer.
We reverse the rejection of claims 3 and 4 under 35 U.S.C. § 102(b)
as being anticipated by Whitmyer.
We reverse the rejection of claims 1-7 under 35 U.S.C. § 103(a) as
being unpatentable over Carrick and Whitmyer.

Appeal 2011-001138
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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