Ex Parte Farley

Patent Trial and Appeal Board

Jun 9, 2016

12879969 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/879,969 09/10/2010 David Farley
570 7590 06/13/2016
P ANITCH SCHWARZE BELISARIO & NADEL LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103
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.
688677-5002 8155
EXAMINER
POLITO, NICHOLAS F
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID FARLEY
Appeal2014-006467
Application 12/879,969
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Farley (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner's decision rejecting claims 1-5, 8, and 9, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-006467
Application 12/879,969
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter "relates to a device for supporting
portions of the body." Spec. 1, para. 2. Claims 1, 5, and 9 are independent.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A pillow comprising:
a main body having a top support surface, a bottom
support surface and rounded ends joining the top and bottom
support surfaces about a rounded profile having no recessed
areas where a thickness of the main body decreases progressively
towards an edge of the main body, the main body consisting of a
polyurethane foam; and
a plurality of holes with each hole extending through the
thickness of the main body from an opening at the top support
surface to an opening at the bottom support surface, the holes
each having a constant circular cross section having a diameter
of 5/8 inch or greater and sidewalls configured to collapse
laterally upon placement of a compressive load on the top
support surface.
EVIDENCE
The Examiner relied upon the following evidence:
Freedlander
Lanteri
Pearce (hereafter
"Pearce '099")
US 3,239,854 Mar. 15, 1966
US 6,668,404 B2 Dec. 30, 2003
US 2004/0226099 Al Nov. 18, 2004
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Application 12/879,969
REJECTIONS
Appellant appeals from the Final Action, dated March 20, 2013,
which includes the following rejections:
1. Claims 1-5, 8, and 9 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. 1
2. Claims 1, 2, 5, and 9 under 35 U.S.C. § 103(a) as unpatentable
over Pearce '099 and Freedlander.
3. Claims 3, 4, and 8 under 35 U.S.C. § 103(a) as unpatentable over
Pearce '099, Freedlander, and Lanteri.
ANALYSIS
First Ground of Rejection: Written Description
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
The Examiner found that the limitation in claims 1, 5, and 9, reciting
the main body of the pillow "consisting of a polyurethane foam," is not
supported adequately by the original disclosure. Final Act. 2. In particular,
the Examiner found that "the Specification states 'the pad may be made of a
cellular material, such as polyurethane foam' which is an open ended
1 The Final Action does not include claims 2-4 and 8 in the statement of this
rejection (Final Act. 2), yet these claims depend, directly or indirectly, from
either claim 1 or claim 5. Br. 11-12 (Claims App.). As such, we understand
that the Examiner has rejected claims 1-5, 8, and 9 under 35 U.S.C. § 112,
first paragraph.
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Application 12/879,969
statement in contrast to the new closed limitation 'consisting of a
polyurethane foam."' Id. (citing Spec., para. 14 ).
We find that the disclosure in the Specification of a pillow "pad ...
made of a cellular material, such as polyurethane foam" (Spec., para. 14) is
sufficient disclosure to reasonably convey to skilled artisans that Appellant
possessed the claimed subject matter as of the filing date. Specifically, one
of skill in the art would understand this sentence to describe that
polyurethane is an exemplary type of a cellular foam material from which
the claimed pillow may be made. Br. 6. Thus, the skilled artisan reading the
original disclosure would understand that, at the time of filing, Appellant
was in possession of an invention in which the main body of the pillow
consists of polyurethane foam. Accordingly, we do not sustain the
Examiner's rejection of claims 1-5, 8, and 9 under 35 U.S.C. § 112, first
paragraph, based on lack of an adequate written description.
Second Ground of Rejection: Obviousness based on Pearce '099 and
Freedlander
Appellant argues the claims subject to the second ground of rejection
as a group. Br. 7-8. We select claim 1 as the representative claim, and
claims 2, 5, and 9 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Pearce '099 discloses a pillow comprising,
inter alia, a "main body consisting of a polyurethane foam." Final Act. 3
(citing Pearce '099, para. 550, Figs. 9, 16, 29).2
2 The Examiner relied on Freedlander to teach a pillow main body having
rounded ends joining top and bottom support surfaces about a rounded
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Application 12/879,969
Appellant argues that Pearce '099 does not disclose, but rather teaches
away from, a pillow main body consisting of polyurethane foam. Br. 7-8.
In particular, Appellant asserts that Pearce '099 claims priority to U.S.
Patent 5,749,111, also to Pearce (hereafter "Pearce '111"),3 and that the
Examiner conceded in the Final Action that Pearce '111 teaches away from
the use of polyurethane foam. Id. at 7; see Final Act. 8 (stating, in response
to previous arguments, that the "Examiner agrees that Pearce [' 111] (U.S.
Patent No. 5,749,111) teaches against the use of polyurethane foam as a
cushioning media"). According to Appellant, Pearce '099 also "seek[s] to
evenly distribute forces across the contact area of a cushioned object and
avoid pressure peaks against the cushioned object," and specifically
"indicates that a seated person experiences the highest level of discomfort
when seated on a foam cushion." Br. 7-8 (citing Pearce '099, paras. 164,
201).
We are not persuaded by Appellant's argument that Pearce '099
teaches away from a main body consisting of polyurethane foam material.
The suggestion set forth by Appellant that Pearce '099 necessarily teaches
away simply because Pearce '111 teaches away is not convincing. The
profile having no recessed areas where a thickness of the main body
decreases progressively towards an edge of the main body. Final Act. 3--4.
Appellant does not contest the Examiner's finding as to the scope and
content of Freedlander, or the Examiner's proposed modification to the
pillow of Pearce '099 in view of the teachings of Freedlander.
3 Pearce '099 is a publication of U.S. Application No. 10/784,128, filed
February 20, 2004, which, through a chain of intermediary applications, is a
continuation-in-part of U.S. Application No. 08/601,374, filed February 14,
1996, now U.S. Patent No. 5,749,111.
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Appeal2014-006467
Application 12/879,969
Examiner does not rely on Pearce ' 111 in the ground of rejection before us
for review. As correctly noted by the Examiner, the rejection relies on the
disclosure of Pearce '099, which does not include the same language found
in Pearce' 111 that the Examiner had acknowledged as teaching away.
Ans. 3 (citing Pearce '099, paras. 550, 588-594). Furthermore, Appellant's
teaching away argmnent is refuted by the express disclosure of Pearce '099
itsell~ which states:
Foam rubber and polyurethane foams may also be useful as
cushioning media in the cushioning elements, so long as they
exhibit gel-like buckling behavior. Preferably, in order to exhibit
desired buckling and elastomeric or visco-elastomeric gel-like
behavior, column walls formed from polyurethane foams and
foam rubbers are very thin. Alternatively, thicker column walls
formed from polyurethane foams and foam rubbers may also
exhibit the desired buckling and gel-like characteristics with
appropriate column shapes and column pattern configurations.
Pearce '099, para. 550 (emphasis added). Pearce '099 further discloses that
"[f]lexible open-cell polyethylene-based polyurethane foams, such as is
widely and commonly used in the furniture and mattress industry, work
well." Id., para. 588 (emphasis added). In particular, Pearce '099 explains
how to make a cushion from polyurethane foam so that it exhibits the
necessary gel-like buckling behavior. Id., paras. 588-594.
A ppeliant' s reference to paragraphs 162 and 201 of Pearce '099 (Br.
7----8) is not persuasive. These paragraphs explain that a column-based
cushion structure exhibits the desired gel-like buckling characteristics to
provide even pressure distribution and comfort. We find nothing in the
disclosure of Pearce '099 that criticizes, discredits, or otherwise discourages
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Appeal2014-006467
Application 12/879,969
the use of polyurethane foam as a cushioning material for the main body of a
pillow. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art
does not teach away from claimed subject matter merely by disclosing
alten1ative solutions to a similar problem unless the prior art also criticizes,
discredits, or othenvise discourages the solution claimed). Furthermore,
Appellant does not present persuasive evidence or reasoning to explain why
a person of ordinary skill, upon reading the disclosure of Pearce '099, would
be led in a direction divergent from the path taken by Appellant. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellant also argues that Pearce '099 "do[ es] not disclose or even
suggest a pillow having either a main body or a pad consisting of
polyurethane foam." Br. 8. In particular, Appellant points to the portion of
Pearce '099 relied on by the Examiner that discloses that "rubber and
polyurethane foams may also be useful as cushioning media in the
cushioning elements, so long as they exhibit gel-like buckling behavior."
Br. 8 (quoting Pearce '099, para. 550). According to Appellant, "[g]iven
this caveat, it is clear that one of ordinary skill in the art would not look to
Pearce ['099] and incorporate the features of Freedlander in an effort to
arrive at the claimed invention." Id. This argument is not convincing
because, as discussed supra, Pearce '099 discloses that polyurethane foam
cushions with a column-based structure provide gel-like buckling behavior.
Accordingly, Appellant's arguments do not persuade us of error in the
Examiner's finding that Pearce '099 discloses the use of polyurethane foam
as a cushioning material, which is supported by a preponderance of the
evidence.
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Application 12/879,969
For the above reasons, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Pearce '099 and Freedlander.
Claims 2, 5, and 9 fall with claim 20.
Third Ground of Rejection: Obviousness based on Pearce '099,
Freedlander, and Lanteri
Appellant relies on the arguments made for the patentability of
independent claims 1 and 5, from which claims 3, 4, and 8 depend, and
argue only that Lanteri does not cure the asserted deficiencies in the
rejection based on the combination of Pearce '099 and Freedlander. Br. 8.
For the same reasons provided supra in our analysis of the Second Ground
of Rejection, we find these arguments are not persuasive of error. As
such, we sustain the rejection of claims 3, 4, and 8 as unpatentable over
Pearce '099, Freedlander, and Lanteri.
DECISION
The decision of the Examiner to reject claims 1-5, 8, and 9 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is REVERSED.
The decision of the Examiner to reject claims 1, 2, 5, and 9 under
35 U.S.C. § 103(a) as unpatentable over Pearce '099 and Freedlander is
AFFIRMED.
The decision of the Examiner to reject claims 3, 4, and 8 under
35 U.S.C. § 103(a) as unpatentable over Pearce '099, Freedlander, and
Lanteri is AFFIRMED.
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Appeal2014-006467
Application 12/879,969
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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