Ex Parte FletcherDownload PDFPatent Trial and Appeal BoardFeb 25, 201511498945 (P.T.A.B. Feb. 25, 2015) Copy Citation 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. 11/498,945 08/03/2006 Richard Edmond Fletcher CDM/8877.9999 8869 152 7590 02/25/2015 CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 601 SW Second Avenue Suite 1600 PORTLAND, OR 97204-3157 EXAMINER CUOMO, PETER M ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 02/25/2015 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 RICHARD EDMOND FLETCHER ____________________ Appeal 2012-010635 Application 11/498,945 Technology Center 3600 ____________________ Before: JOHN C. KERINS, MICHAEL L. WOODS, and JAMES J. MAYBERRY, Administrative Patent Judges. MAYBERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Richard Edmond Fletcher (Appellant) 1 seeks review under 35 U.S.C. § 134 of the Examiner’s rejections of claims 24–31, 34, 35, 37, and 39–41. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a lifting and seating device. Claims 39, 40, and 41 are independent claims. Claim 39, reproduced below, is illustrative of the claimed subject matter: 1 Appellant indicates that Mangar International Ltd. is the real party in interest. Appeal Br. 2. Appeal 2012-010635 Application 11/498,945 2 39. An apparatus for lifting a person from a supine position on the ground to a sitting position above ground, comprising: (a) at least one inflatable ring having a hollow; (b) a flexible membrane which is attached to said inflatable ring and covers at least a portion of said hollow; (c) a planar back panel having a lower end which is attached to said flexible membrane in a manner such that said back panel can be rotated between a lowered position where it is substantially coplanar with said flexible membrane and a raised position where it projects upwardly from said flexible membrane; (d) a unitary inflatable support panel having a first end which is attached to said ring and a second end which is attached to said back panel a spaced distance from said lower end; wherein (e) said support panel has a length such that when inflated it supports said back panel in its raised position. REJECTION Claims 24–31, 34, 35, 37, and 39–41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Torres (US 2005/0081299 A1, published Apr. 21, 2005) and Aymar (US 3,606,623, issued Sept. 21, 1971). Non-Final Act. 2. ANALYSIS “flexible membrane” The Examiner finds that “Torres discloses a plurality of inflatable rings.” Non-Final Act. 2. The Examiner further finds that “Aymar discloses an inflatable bellows capable of raising the back section of a user.” Id. The Examiner determines that “[o]ne of ordinary skill in the art would have recognized that an apparatus similar to Aymar’s could be connected to the Appeal 2012-010635 Application 11/498,945 3 top of Torres to provide Torres with the predictable established function of Aymar (which is to raise a user).” Id., see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). In making this determination, the Examiner explains that “[t]he apparatus of Aymar could simply be placed on top of Torres, or the top layer of Torres (shown above ring 1 in Figure 5) could be replaced with the apparatus of Aymar.” Non-Final Act. 2; see also Answer 9–10 (“Placing Aymar on top of Torres would be a combination of prior art elements each of which would be providing their predictable established functions.”). Each independent claim under appeal requires a “flexible membrane.” See Appeal Br. 12–13, Claims App. Appellant argues that the Examiner’s proposed combination fails to disclose this “flexible membrane.” First, Appellant argues that Torres fails to disclose a flexible member, as Torres’s air mattress “is designed to provide stable support for a person sleeping on it.” Appeal Br. 5. Appellant also contends that Torres’s top ring is “constructed to be stable” and “includes reinforcing members 5, 6 that prevent the sides of the top ring from collapsing towards one another.” Id. Appellant further contends that the Torres’s “drawings indicate[] that [Torres’s top surface] is intended to provide stability and to provide support at all times, even if the mattress becomes partially deflated.” Id. Finally, Appellant contends that Aymar’s sheet 46 is not the recited flexible member and that Aymar’s rigid board 36 would need to be replaced as it would prevent the membrane from sagging into the hollow of the top ring. Appeal Br. 6. Specifically, Appellant argues that sheet 46 is placed Appeal 2012-010635 Application 11/498,945 4 under a mattress and, therefore, under a patient, to prevent the bellows structure from moving longitudinally when in use. Id. As such, “the sheet 46 in Aymar is an anchor, to prevent horizontal movement of the device, trapped between the mattress and the bed base, and is not capable of supporting a person.” Id. Also, Appellant contends that Aymar’s rigid board 36 “would prevent the sides of the upper ring from collapsing inwardly and toward one another and thereby would prevent whatever structure might serve the purpose of the membrane in the subject invention from sagging into the hollow when the upper most ring is not fully inflated.” Id. We find these arguments unpersuasive. First, as to Torres’s top layer, the Examiner correctly finds that this layer is a “flexible member because most airbeds are made of a material that can be rolled up and folded.” Answer 9. Further, the presence of reinforcing members 5, 6 does not support a finding that Torres’s top layer is not a flexible member. As disclosed in Torres (and found by the Examiner), these members are air- filled and would not render the top layer inflexible, particularly when partially inflated. 2 See Answer 9; Torres, ¶ 20 (providing that the reinforcing members 5, 6 are “fluidly connected to the peripheral tubular member”); Answer 9. Also, as depicted in Torres, these reinforcing members are not located in the top ring. See, e.g., Torres, Fig. 6 (showing no reinforcing member in the top ring); Figs. 2, 3, 4, 9, and 10 (depicting 2 Appellant argues that “one of the[] reinforcing members extends side to side, which prevents whatever might serve the function of the flexible membrane in the subject invention from sagging into the hollow.” Appeal Br. 5. We recognize that only claim 40 requires the flexible member to sag into the hollow and only when the apparatus is not fully inflated. See Appeal Br. 12–13, Claims App. Appeal 2012-010635 Application 11/498,945 5 reinforcing member in middle or lower ring). Further, we are not persuaded that the drawings indicate that Torres’s top surface is not flexible. These drawings depict Torres’s air mattress when it is fully inflated. In this configuration, the top surface would be pulled taut across the hollow formed by the Torres’s top-most ring. Cf. Claim 14, Appeal Br. 12–13, Claims App. (requiring the flexible membrane to be “pulled taut across the hollow when the uppermost ring is fully inflated and the back panel fully raised”). As to Aymar’s plastic sheet 46, Appellant offers no support for the contention that the sheet is not capable of supporting a person. See Appeal Br. 6. Significantly, there is no requirement in the claims that the flexible membrane supports a person. As for the contention that Aymar’s rigid board 36 would need to be removed, the Examiner correctly finds that “[o]ne of ordinary skill in the art would have recognized that a material other than a rigid board could be used in order to maintain Torres’s desire to let the apparatus condense for storage.” See Answer 10; see also KSR Int’l Co., 550 U.S. at 421 (“[A] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Also, the claims do not recite any flexibility requirements for the planar back panel nor do the claims require the back panel to be attached to the top ring—the claims require that the planar back panel be attached to the flexible member. See, e.g., Appeal Br. 12, Claims App. Teaching Away Appellant argues that, “[b]ecause Torres teaches [] rigid stability, it teaches away from the subject invention.” Appeal Br. 5. We find this argument unpersuasive. “A reference may be said to teach away when a Appeal 2012-010635 Application 11/498,945 6 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. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed . . . .”). Torres does not “criticize, discredit, or otherwise discourage” the claimed apparatus. See In re Fulton, 391 F.3d at 1201. Indeed, as discussed above, the Examiner correctly finds that Torres does not disclose a rigid structure, particularly when not fully inflated and that Torres’s top layer would sag into the hollow of Torres’s top-most ring when the air mattress is not fully inflated. See Answer 9. No reason to combine Appellant argues that the combination proposed by the Examiner would result in an unsafe structure and, as such, one of ordinary skill in the art would have no reason to combine Torres and Aymar as proposed by the Examiner. Appeal Br. 6–7; Reply Br. 2–3. Appellant supports this argument with a Declaration from Mr. Richard Rimington. See Appeal Br. 6–7; Rimington Decl. Specifically, Appellant argues that “[a]s Mr. Rimington states in his affidavit, the relevant industry believes that an inflatable air mattress of the type disclosed in Torres is only stable when completely deflated or completely inflated and that it would be inherently unstable during the process of being inflated.” Appeal Br. 7. We find this argument unpersuasive as it overstates Mr. Rimington’s Declaration. Mr. Rimington declares that prior art solutions did not include Appeal 2012-010635 Application 11/498,945 7 “an inflatable airbed to lift fallen persons from the floor and raise them to a sitting position above the floor as a reasonable solution [as] this would be a potentially unstable arrangement with a high risk of injury to a person being lifted if a fall from height ensues.” Rimington Decl. 4. This statement does not address Torres’s air mattress, which includes a pneumatic ring structure with a hollow in the center. See, e.g., Torres, Fig. 6. As the Examiner finds, the rings of Torres’s air mattress, when partially deflated, “will no longer pull the flexible membrane taut, and the flexible membrane will sag into the hollow.” 3 Answer 9. That is, the Examiner expressly finds that Torres’s air mattress provides the type of sagging that Mr. Rimington declares is necessary for safe lifting. See Rimington Decl. 4 (“[W]hat was not previously demonstrated is the use of a hollow pneumatic structure covered by a membrane that initially sags into the hollow to support the user but is subsequently tightened to lift the user out of that hollow to permit easy standing.”). Appellant shows no error in that finding. Secondary Considerations Appellant further argues that “the subject invention has met with commercial success and a device embodying the invention won an award at an industry trade show. Success of this type is a secondary indicia [sic] of non-obviousness.” Appeal Br. 8 (referencing a declaration of Mr. Andrew Barker). Appellant argues that “commercial success and the award are because of the device’s ability to safely lift a person from a prone position on the ground and raise them to a sitting position above ground.” Appeal 3 As discussed supra, only claim 40 requires the flexible member to sag into the hollow and only when the apparatus is not fully inflated. See Appeal Br. 12–13, Claims App. Appeal 2012-010635 Application 11/498,945 8 Br. 8. Appellant further argues that the commercial success and industry praise is specifically attributable to the element of claim 40, reciting, “the flexible membrane being attached to said uppermost ring and said back panel in a manner such that when said ring is not fully inflated and said back panel is not fully raised, the flexible membrane sags into the hollow, the membrane being pulled taut across the hollow when the uppermost ring is fully inflated and the back panel fully raised.” Id. Mr. Barker declares that Mangar International’s “Camel” product was voted the “Medtrade Providers Choice Award” at the Medtrade Conference and Expo in October 2005 “for the optimal use of technology.” Barker Decl. 1. Mr. Barker states that the Camel won this award because of “its ability to safely lift a person from a prone position on the ground and raise them to a sitting position above ground.” Id. at 2. Mr. Barker also states that “the Camel has been a commercial success.” Id. We understand that, notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the invention of the claims of the application under appeal, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471– 1472 (Fed. Cir. 1984). However, it is not sufficient that a product or its use merely be within the scope of a claim in order for objective evidence of nonobviousness tied to that product to be given substantial weight. There must also be a causal relationship, termed a “nexus,” between the evidence and the claimed invention. See Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). A nexus is required in order to Appeal 2012-010635 Application 11/498,945 9 establish that the evidence relied upon traces its basis to a novel element in the claim, not to something in the prior art. Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). Objective evidence that results from something that is not “both claimed and novel in the claim,” lacks a nexus to the merits of the invention. In re Huai- Hong Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). We find Appellant’s evidence fails to prove a nexus between the claimed invention and the purported secondary indicia of non-obviousness and, therefore, we give this evidence little weight. Mr. Barker’s declaration fails to establish that the Medtrade Providers Choice Award is attributable to novel elements in claim 40, or any element of the claim. Mr. Barker’s declaration merely shows that the award was given to the Camel product for “optimal use of technology” and provides no correlation to elements in claim 40. Further, Mr. Barker alleges that the Camel has had commercial success. Barker Decl. 2. However, he fails to provide any commercial data to support this assertion and also fails to provide evidence that there is a nexus between this alleged success and a novel element of claim 40. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (holding that, to establish a proper nexus between a claimed invention and the commercial success of a product, “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter” must be provided) (citation omitted). Here, Mr. Baxter does not provide evidence of any sales or market share for the Camel product. See id. Appeal 2012-010635 Application 11/498,945 10 “a unitary inflatable support panel having a first end which is attached to said ring” Appellant argues that: claims 39 and 40 have the limitation “a unitary inflatable support panel having a first end which is attached to said ring and a second end which is attached to such back panel a spaced distance from said lower end; wherein said support panel has a length such that when inflated it supports said back panel in its raised position.” The bellows of Aymar does not disclose a structure which is even close to this. Appeal Br. 9. This type of conclusory statement is not an appropriate argument. See, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Indeed, the Examiner did not recognize what Appellant was specifically arguing any distinction to be, and responded by pointing Appellant to the original rejection. See Answer 11. In reply, Appellant then argues, for the first time, that “[t]here is nothing to suggest that the bellows assembly of Aymar is attached to the bed in the manner the unitary support panel of the subject invention is attached to the ring.” Reply Br. 3–4. We find this eleventh-hour argument unavailing. First, the Examiner finds that “an apparatus similar to Aymar’s could be connected to the top of Torres.” Non-Final Act. 2 (emphasis added). Further, the Supreme Court has made clear that, when considering obviousness, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account Appeal 2012-010635 Application 11/498,945 11 of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co., 550 U.S. at 418. Here, one of ordinary skill would have the requisite skill to attach the bellows as recited in the claims. See id. at 421 (“[A] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). For the reasons above, we sustain the Examiners rejection of claims 24–31, 34, 35, 37, and 39–41 under 35 U.S.C. § 103(a) as being unpatentable over Torres and Aymar. DECISION For the above reasons, we affirm the Examiner’s rejection of claims 24–31, 34, 35, 37, and 39–41. 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) (2009). AFFIRMED rvb Copy with citationCopy as parenthetical citation