Ex Parte Ferber et al

Board of Patent Appeals and Interferences

Nov 18, 2009

09833401 (B.P.A.I. Nov. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROMAN S. FERBER and STEPHEN CHUNG
____________

Appeal 2009-005180
Application 09/833,401
Technology Center 3700
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Decided: November 18, 2009
____________

Before: LINDA E. HORNER, STEFAN STAICOVICI and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Roman S. Ferber et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final decision rejecting claims 1-25. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention is an air bubble massage bathtub mat
system. Spec. 1: 4-5. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An air bubble massage bathtub mat system for a bather in
a tub comprising:
an air pump that provides a source of compressed air;
a mat having at least one air passage and a plurality of air
outlet holes;
a hose connecting the air pump to the air passage in the
mat;
a controller for controlling operation of the air pump; and
a remote control unit capable of communicating with the
controller while the bather remains in the tub but not being
physically connected to the controller and electrically isolated
from the controller power supply.

THE EVIDENCE
The Examiner relies upon the following evidence:
Cook US 3,045,254 Jul. 24, 1962
Stern US 4,962,759 Oct. 16, 1990
Sandrin US 5,050,591 Sep. 24, 1991
Haraga US 5,245,714 Sep. 21, 1993
Barradas US 5,588,161 Dec. 31, 1996
Lin US 6,183,430 B1 Feb. 6, 2001

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THE REJECTIONS
Appellants seek review of the following rejections by the Examiner:
1. Rejection of claims 1-7, 10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Stern, Lin, and Haraga.
2. Rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Stern, Lin, Haraga, and Barrada.
3. Rejection of claim 1, 8, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Lin and Haraga.
4. Rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Lin, Haraga, and Sandrin.
5. Rejection of claim 14-25 under 35 U.S.C. § 103(a) as unpatentable
over Sandrin and Cook.

ISSUES
Appellants argue claims 1-7, 10, and 12 as a group.1 App. Br. 6-10.
As such, we select claim 1 as the representative claim, and claims 2-7, 10,
and 12 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellants argue Haraga is directed to a whirlpool, and as such is not
analogous art to Stern and Lin, which relate to bath mats. App. Br. 6-9. The
claimed invention, like Stern and Lin, relates to a bathtub mat system.

1 The Examiner rejected claim 10 as unpatentable over Stern, Lin, and
Haraga. Ans. 3; see also, Office Action dated June 16, 2005, page 2. While
Appellants appealed claim 10 (App. Br. 2, Status of Claims), Appellants do
not include claim 10 in the argument against this rejection (App. Br. 6), and
Appellants present no separate argument for claim 10 (App. Br. passim).
Based on this inconsistency in the Appeal Brief, we treat claim 10 as being
appealed, but not separately argued, and we group claim 10 with claim 1.

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The issue before us is:
Have Appellants shown the Examiner erred in rejecting claim 1
because Haraga is not analogous art?
Appellants argue that the rejection of claim 11, which depends from
claim 1, is in error because Barrada fails to disclose that its remote control is
electrically isolated from the controller of the portable foot bath as recited in
claim 1. App. Br. 9. Appellants argue that the rejection of claims 12 and 13,
which depend from claim 1, is in error because Sandrin likewise fails to
disclose that the remote control is electrically isolated from the controller of
the portable footbath as recited in claim 1. App. Br. 10.
The issue before us is:
Have Appellants shown the Examiner erred in the rejection of claims
11-13 because neither Barrada nor Sandrin discloses that the remote control
is electrically isolated from the controller of the portable footbath as recited
in claim 1?
Appellants argue claims 14-19 as a group. App. Br. 10-14. As such,
we select claim 14 as the representative claim, and claims 15-19 stand or fall
with claim 14. Appellants argue claims 20-25 as a group. App. Br. 10-14.
As such, we select claim 20 as the representative claim, and claims 21-25
stand or fall with claim 20. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellants contend there is no motivation to combine Sandrin and
Cook as proposed. App. Br. 10-14. More specifically, Appellants contend
that Sandrin expressly teaches away from modifying its mat to include foam
or flexible blocks by disclosing the drawbacks of rigid surfaces. App.
Br. 14. Further, Appellants contend that the proposed modification of
Sandrin would render Sandrin unsatisfactory for its intended purpose
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because the addition of foam or flexible blocks would render the mat
incapable of being filled with a fluid and then drained to roll up the mat.
App. Br. 13.
The issues before us are:
Have Appellants shown the Examiner erred in the rejection of claims
14 and 20 because Sandrin expressly teaches away from modifying the mat
to include foam or flexible blocks?
Have Appellants shown the Examiner erred in the rejection of claims
14 and 20 because the proposed modification of the Sandrin would render
Sandrin unsatisfactory for its intended purpose?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Haraga discloses a whirlpool bath A with six nozzles in the bathtub
body 1 in the shape of a box with an open upper surface. Haraga,
col. 6, ll. 1-5; fig. 1. The device includes a controller C that
controls the operation of a pump P that circulates hot water
through a hot water circulation path D. Haraga, col. 6, ll. 27-31,
38-40; figs. 1, 3. Haraga discloses a remote controller 30 for
operating the controller C of the whirlpool bath. Haraga, col. 19, l.
67 to col. 20, l. 2; figs. 1, 14.
2. Fixed (traditional) massage bathtubs and portable massage bath
mats are in the same field of endeavor, as evidenced, for example,
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by Lin describing that portable bathtub massage pads and fixed
massage bathtubs are the two types of massage bathtubs on the
market. Lin, col. 1, ll. 10-27.
3. Appellants’ Specification describes a need for a convenient control
for the air bubble massage bathtub mat system that minimizes
potential shock hazard and eliminates the need for the bather to
exit the bathtub to operate the pump and other controls. Spec.
1:22-2:5.
4. Haraga discloses the remote controller 30 enables the user to
transmit instructions to the controller C. Haraga, col. 19, l. 67 to
col. 20, l. 2; figs. 1, 14. The remote controller includes switches to
adjust the level of output (hot water blow-off strength increasing
and decreasing switches 268, 269). Haraga, col. 20, ll. 41-43;
fig. 14. Haraga discloses the remote controller may be used while
bathing (without exiting the tub). Haraga, col. 24, ll. 10-12.
5. Cook discloses a compressible bathtub liner that provides “yielding
and non-slip protection and comfort for the user of the tub.” Cook,
col. 1, ll. 8-10, 15-16. Cook discloses liner 18 includes lower layer
64 is made of a compressible material such as foam rubber with a
sufficient cross section and density to provide substantial
cushioning for occupants without undue collapse. Cook, col. 2,
ll. 26-34.
6. The Appellant’s Specification does not provide a lexicographic
definition of the phrase “flexible blocks” as used in the claims.
Spec. passim.
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7. The word “flexible” is commonly understood to mean “capable of
being bent or flexed, pliable.” THE AMERICAN HERITAGE
DICTIONARY (2d College ed. 1982) (“flexible,” adjective,
definition 1a).
8. Sandrin discloses a water massage mat for a bathtub. Sandrin,
col. 1, ll. 5-11; fig. 1. Sandrin discloses the mat is comprised of a
rectangular cover 1 formed of two corresponding rectangular
leaves, upper leaf 11 and lower leaf 12, that are welded along a
perimetrical line 21. Sandrin, col. 2, ll. 64 to col. 3, ll. 2. Within
the rectangular cover 1 are additional welds to divide the mat into a
first channel 31 and a second channel 32. Sandrin, col. 3, ll. 14-15,
33-42. First hermetically sealed channel 31 contains water, air, or
a combination of the two, and is filled and drained through port 7.
Sandrin, col. 4, ll. 8-11; figs. 1, 4. Second channel 32 is filled with
compressed air provided through feeder conduit 4, and the
compressed air exits second channel 32 through small holes 5.
Sandrin, col. 3, ll. 5-10, 45-47; fig. 1. Once filled, sealed channel
31 transforms the mat into a “proper soft mattress,” supporting the
body of the user so that the user will not interfere with the
operation of small holes 5. Sandrin, col. 3, ll. 56-60; col. 4, ll. 62-
64; figs. 1, 4.
9. Sandrin discloses that in the prior art, the use of rigid surfaces in
bathmats caused localized pressures against the user’s body,
resulting in an unpleasant effect. Sandrin, col. 1, ll. 41-45.
10. The Appellant presents no persuasive argument or evidence that
modifying Sandrin to use the foam of Cook in sealed channel 31 in
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place of fluid would have been beyond the skill of a person of
ordinary skill in the art. App. Br. passim.

PRINCIPLES OF LAW
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The
“field of endeavor” test asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320,
1325-27 (Fed. Cir. 2004).
“A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.”
In re ICON Health and Fitness, Inc, 496 F.3d 1375, 1380-1 (Fed. Cir. 2007)
(quoting KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007)).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that
was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
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2001). “[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int'l Co., 550 U.S. at 416 (citing United States v.
Adams, 383 U.S. 39, 51-52 (1966)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co., 550 U.S. at 406. The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR Int'l
Co., 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Rejection of claims 1-7, 10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Stern, Lin, and Haraga
Contrary to Appellants’ assertion, the correct focus of the analogous
art test is not whether the prior art references are analogous to each other.
Rather, the correct focus is whether the references are analogous art to the
claimed subject matter. See In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir.
2006). Because Appellants have the burden of showing error in the
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Examiner’s rejection and have not asserted Haraga is nonanalogous art to the
subject matter of claim 1, Appellants have failed to prove error by the
Examiner. To the extent that one might interpret Appellants’ argument that
Haraga’s whirlpool is not analogous art to Stern and Lin’s bath mats as also
asserting that Haraga is not analogous art to the claimed bathtub mat system,
we analyze that assertion.
The Examiner found that Haraga’s whirlpool is in the same field of
endeavor as bathtub mat systems because they both relate to hydromassage
apparatuses. Ans. 7. We analyze this finding by comparing the structure
and function of the claimed system and Haraga’s whirlpool. Claim 1 recites
a “bathtub mat system for a bather in a tub” comprising a controller that
controls the operation of an air pump that provides compressed air (fluid) via
a hose to a mat with at least one air passage and a plurality of air outlet
holes, and a remote control unit. Turning to Haraga, Haraga discloses a
whirlpool system that includes a controller that controls a pump that
circulates fluid via a connecting conduit of at least one passage and a
plurality of outlet holes, and a remote control unit (Fact 1).
Regarding structure, both the claimed system and Haraga’s whirlpool
include a controller, a pump, a conduit from the pump to a plurality of outlet
holes, and a remote controller. Further, Haraga’s device includes a tub and
the claimed device operates within a tub, so that each device operates in a
like structure. Regarding function, each controller controls the pump, each
pump moves fluid through a conduit to the outlet holes, and each can be
operated by a remote controller. Given these similarities, we find that
Haraga and the subject matter of claim 1 are in the same field of endeavor,
so that Haraga is analogous art to Appellants’ claimed bathtub mat system.
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Further supporting this conclusion, it was known in the art that fixed
massage bathtubs (e.g., a whirlpool such as Haraga) and portable massage
bathtub mat systems (e.g., the claimed device) are in the same field of
endeavor (Fact 2).
While we agree with Appellants’ assertion that whirlpools are
generally larger, “non-removable,” and have more complex and different
electrical operations as compared to bath mats, these distinctions are less
significant than the strong similarity of structure and function of whirlpools
and bathmat, discussed supra, and these distinctions do not alter our
conclusion that the two systems are in the same field of endeavor. See App.
Br. 8.
In addition to being in the same field of endeavor, we find a person of
ordinary skill in the art would have considered Haraga because Haraga is
reasonably pertinent to the problem facing Appellants. Appellants were
concerned with devising a convenient control that permits the user to operate
the pump and other functions from within the tub (Fact 3). The general
problem facing Appellants at the time of the invention was to provide a safe
and convenient form of control. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[T]he problem examined is not the specific problem solved by the
invention but the general problem that confronted the inventor before the
invention was made”).
Haraga discloses a remote control device that permits a bather to
operate the pump and other functions of the massage bathtub without exiting
the tub (Fact 4). A person of ordinary skill in the art would have considered
Haraga’s remote controller for a whirlpool, which directly addresses the
problem faced by Appellants. We decline to ignore this disclosure of
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Haraga just because Haraga’s device is larger, “non-removable,” and has
more complex and different electrical operations as compared to bath mats.
See App. Br. 8.
We find that Haraga and the claimed system are in the same field of
endeavor and that Haraga’s remote controller is reasonably pertinent to the
problem facing Appellants at the time of the invention. Based on this,
Appellants have failed to demonstrate error in the Examiner’s rejection of
claim 1. Claims 2-7, 10, and 12 fall with claim 1.

Rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Stern,
Lin, Haraga, and Barrada
We are unconvinced by Appellants’ argument that the rejection of
claim 11, which depends from claim 1, is in error because Barrada fails to
disclose that the remote assembly 76 is electrically isolated from the
controller of the portable footbath as recited in claim 1. App. Br. 9. As the
Examiner points out, Barrada is used in the proposed combination for the
disclosure of a recess to hold the remote control, not for the remote assembly
itself. Ans. 4, 7. For that reason, Appellants have failed to address the
proposed combination, and thus failed to demonstrate error by the Examiner
in the rejection of claim 11.

Rejection of claim 1, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Lin and Haraga
Appellants argue against the rejection of claims 1, 8, and 9 over Lin
and Haraga by repeating the argument used against the rejection of claims 1-
7, 10, and 12 under 35 U.S.C. § 103(a) as unpatentable over Stern, Lin, and
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Haraga, namely, that Haraga is nonanalogous art. For the reasons explained
in the analysis of the rejection of claim 1, supra, that argument is equally
unpersuasive here.

Rejection of claims 12 and 13 U .S.C. § 103(a) as unpatentable over Lin,
Haraga, and Sandrin
We are unconvinced by Appellants’ argument that the rejection of
claims 12 and 13, which depend from claim 1, is in error because Sandrin
fails to disclose that the remote control is electrically isolated from the
controller of the portable footbath as recited in claim 1. App. Br. 10. As the
Examiner points out, Sandrin is used in the proposed combination for the
disclosure of suction cups, not for the remote assembly itself. Ans. 5, 8. For
that reason, Appellants have failed to address the proposed combination, and
thus failed to demonstrate error by the Examiner in the rejection of claims 12
and 13.

Rejection of claim 14-25 under 35 U.S.C. § 103(a) as unpatentable over
Sandrin and Cook
Claim 14
Independent claim 14 includes the limitation of having a plurality of
“flexible blocks” secured between the layers. Appellants’ Specification does
not define “flexible,” and the common understanding of the term is “capable
or being bent or flexed, pliable” (Facts 6, 7). A person of ordinary skill in
the art would then understand the “flexible blocks” of claim 14 to be blocks
that are capable of being bent or flexed.
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We are unconvinced by Appellants’ argument that Sandrin expressly
teaches away from modifying its mat to include flexible blocks by disclosing
the drawbacks of rigid surfaces. App. Br. 14. The portion of Sandrin
referred to by Appellants discloses that the use of rigid material causes
localized pressures against the user’s body, resulting in an unpleasant effect
(Fact 9). See App. Br 14 (referring to Sandrin, col. 1, ll. 27-46). Cook
discloses a compressible material such as foam that provides substantial
cushioning and yielding comfort for occupants (Fact 5). A person of
ordinary skill in the art would have recognized that Cook’s compressible
material is designed to provide comfort to users and avoids the pitfall of the
prior art disclosed by Sandrin. Thus, Sandrin’s disclosure regarding rigid
materials would not have led a person of ordinary skill in a direction
divergent from the path taken by Appellants, and does not teach away from a
modification of Sandrin’s mat with a compressible material such at that
disclosed by Cook.
We are also unconvinced by Appellants’ contention that modification
of the Sandrin mat to include flexible blocks would render Sandrin
unsatisfactory for its intended purpose of being capable of being drained to
roll up the mat. App. Br. 13. The Examiner concluded that it would have
been obvious to modify the bath mat of Sandrin to use Cook’s foam in
sealed channel 31 instead of fluid, and that Cook’s foam would both provide
adequate support, and permit the mat to be rolled up. Ans. 8. Appellants
provide no persuasive argument or evidence that modifying Sandrin to use
the foam of Cook in sealed channel 31 in place of fluid would have been
beyond the skill of a person of ordinary skill in the art (Fact 10). We agree
with the Examiner, and Appellants have not convinced us otherwise, that a
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person of ordinary skill in the art would select foam that provides adequate
support while not being so rigid as to prevent the mat from being rolled up.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
The use of Cook’s foam in sealed channel 31 of Sandrin’s device would then
provide the needed support and eliminate the need to fill channel 31 with
fluid while still permitting the mat to be rolled up, so that Sandrin’s
modified device remains satisfactory for its intended purpose.
Appellants have failed to demonstrate the Examiner erred in the
rejection of claim 14. Claims 15-19 fall with claim 14.
Claim 20
Independent claim 20 includes the limitation of having at least one
“foam member” sealed between the layers.
We are unconvinced by Appellants’ argument that Sandrin expressly
teaches away from a combination with Cook by disclosing the drawbacks of
rigid surfaces. App. Br. 14. We see no distinction between claim 20 and
claim 14 warranting a change in our analysis of this argument under claim
14, supra. Likewise, we are also unconvinced by Appellants contention that
modification of the Sandrin device to meet the limitations of claim 20 would
render Sandrin unsatisfactory for its intended purpose for the reasons
explained in the analysis of claim 14, supra. See App. Br. 13.
Appellants have failed to demonstrate the Examiner erred in the
rejection of claim 20. Claims 21-25 fall with claim 20.

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CONCLUSION
Appellants have failed to show the Examiner erred in rejecting claim
1 because Haraga is analogous art.
Appellants have failed to show the Examiner erred in the rejection of
claims 11-13 because neither Barrada nor Sandrin discloses that the remote
control unit is electrically isolated from the controller of the portable
footbath.
Appellants have failed to show the Examiner erred in the rejection of
claims 14 and 20 because Sandrin does not teaches away from modifying its
mat with foam or flexible blocks and because the proposed modification of
the Sandrin would not render Sandrin unsatisfactory for its intended purpose.

DECISION
We AFFIRM the decision of the Examiner to reject claims 1-25.
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) (2007).

AFFIRMED

Vsh

KEVIN J. HEINL
BROOKS & KUSHMAN P.C.
22ND FLOOR
1000 TOWN CENTER
SOUTHFIELD MI 48075-1351