Ex Parte Gilbride

Board of Patent Appeals and Interferences

Sep 21, 2011

10737886 (B.P.A.I. Sep. 21, 2011)

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.
10/737,886 12/18/2003 Brian Gilbride 1310 6851
33055 7590 09/21/2011
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
FARAH, AHMED M
ART UNIT PAPER NUMBER
3769
MAIL DATE DELIVERY MODE
09/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN GILBRIDE
____________

Appeal 2009-014274
Application 10/737,886
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian Gilbride (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 2-16. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
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Application 10/737,886

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THE INVENTION
Appellant’s claimed invention relates to “a universal tanning bed
filtration device adapted for mounting to upper and lower tanning units of
conventional tanning beds.” Spec. 1, ll. 23-24. Claims 2 and 7, reproduced
below, are representative of the subject matter on appeal.
2. In a tanning bed having an upper tanning unit and a lower
tanning unit connected by hinges so that the upper unit can be
opened and a closed in a manner analogous to a clamshell, said
upper unit having a row of lamps that are intended to tan the
upwardly facing parts of the person, and the lower unit having a
row of lamps that are intended to tan the downwardly facing
parts of said person, said upper tanning unit having an outer
wall, an inner wall, and at least one ventilation fan(s) supported
on and penetrated through said outer wall and said inner wall
for providing fluid communication from said outer air to said
inner tanning bed space, wherein the improvement comprises:
a tanning bed air filter affixed over said ventilation fans
for filtering incoming air that is provided to said tanning bed;
wherein said tanning bed air filter comprises:
a holder for attachment to said inner wall;
a filter media retained within said holder; and
a cover screen for mechanical attachment to said
holder.

7. A tanning bed filter comprising a universal tanning bed
filtration device adapted for mounting to upper tanning units of
conventional tanning beds over at least one of the existing
ventilation fans for filtering incoming air that is provided to
said tanning bed.
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REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 7, 12, and 16 under 35 U.S.C. § 102(b)
as being anticipated by Mack (US 5,944,860; issued August 31,
1999).
2. The Examiner rejected claims 7, 12, and 16 under 35 U.S.C. § 102(b)
as being anticipated by Hufton (US 3,971,643; issued July 27, 1976).
3. The Examiner rejected claims 2-16 under 35 U.S.C. § 103(a) as being
unpatentable over Appellant’s Admitted Prior Art (AAPA) and
Kramer (US 4,683,888; issued August 4, 1987).
ISSUES
The issues presented by this appeal are:
Are the filtration devices of Mack and Hufton capable of being
mounted to tanning units of conventional tanning beds for use as tanning bed
filters?
Would the combined teachings of the AAPA and Kramer have led one
of ordinary skill in the art to the tanning bed filter of claims 2 and 7?
ANALYSIS
Rejection of claims 7, 12, and 16 as anticipated by Mack
Appellant argues claims 7, 12, and 16 as a group. App. Br. 9-12. We
select claim 7 as representative, and claims 12 and 16 stand or fall with
claim 7. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner determined that the “recitation of the tanning bed in the
preamble of the claims fails to add any functional and/or structural limitation
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to the claimed filter and, therefore, is not given a patentable weight.”
Ans. 6. Appellant contends that the preamble of claim 7 “gives ‘life and
meaning’ to the claims, serving to define the interrelationship of the
mechanical elements recited in the body of the claims.” Reply Br. 2.
If . . . the body of the claim fully and intrinsically sets
forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999) (citations omitted). “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
Claim 7 recites that the “tanning bed filter” comprises “a universal
tanning bed filtration device adapted for mounting to upper tanning units of
conventional tanning beds over at least one of the existing ventilation fans
for filtering incoming air that is provided to said tanning bed.”1
We first examine whether the “adapted for mounting to upper tanning
units of conventional tanning beds” language further defines any structural
limitation to the claimed filter that would cause the preamble to breathe life
or meaning into the claim. Appellant’s Specification describes that the

1 Claim 12 is almost identical to claim 7 but recites that the device is adapted
for mounting to “lower” tanning units.
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holder 128 of the tanning bed air filter 124 is “mechanically attached to the
outside of the outer wall 120 to cover each ventilation fan 129.” Spec. 8,
ll. 19-20. The mechanical attachment “is by bolts or screws 150 or other
conventional means.” Spec. 9, ll. 1-2. Appellant’s Specification describes
that in the preferred embodiment, the holder 128 is attached “using the
existing bolt holes 152” in a conventional tanning bed. Spec. 9, l. 17.
Alternatively, “the holder 128 may be molded within the outer wall 120 to
cover each ventilation fan 129.” Spec. 8, l. 21 – Spec. 9, l. 1. In light of the
description in Appellant’s Specification that the filter can be mounted to a
tanning bed using bolts, screws, or other conventional means, we agree with
the Examiner that the “tanning bed” language in the preamble of claim 7
does not breathe life and meaning into the claim and is merely a statement of
intended use, because the “adapted for mounting” limitation fails to further
define any structural limitation of the claimed filter. In other words, the
“adapted for mounting” language does not call for the filter to have any
particular structure that renders it suitable for mounting to a tanning unit.
Rather, any filter capable of having a bolt, screw, or other fastening means
passed through it or over it so that it may be mechanically fastened to a
tanning bed unit over at least one of the existing ventilation fans suffices.
We next examine whether the functional language “for filtering
incoming air that is provided to said tanning bed” further defines any
structural limitation to the claimed filter that would cause the preamble to
breathe life or meaning into the claim. Appellant’s Specification describes
that “there exists a need for a means by which dusty and dirty air can be kept
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from accumulating on internal surfaces and components of tanning beds.”
Spec. 2, ll. 9-11. The Specification further describes:
The filter media 126 provides for the filtering of incoming air to
the bed, which may be drawn in by internal fans, or by natural
convection due to the heating property of the bed. It is
anticipated that many types of filter media can be utilized,
including foam, fiberglass, aluminum fiber, or formed paper
materials.
Spec. 9, ll. 2-6. In light of the description in Appellant’s Specification that
the filter is for filtering incoming air, we agree with the Examiner that the
“tanning bed” language in the preamble of claim 7 does not breathe life and
meaning into the claim and is merely a statement of intended use because it
fails to further define any structural limitation to the claimed filter. In other
words, the functional language “for filtering incoming air” does not call for
the claimed filter to have any particular structure that renders it suitable for
filtering air passing through a tanning bed. Rather, any filter capable of
filtering air suffices.
Thus, the prior art filter need only be capable of having a bolt, screw,
or other fastening means passed through it or over it so that it may be
mechanically fastened to a tanning bed unit over at least one of the existing
ventilation fans and be capable of filtering air in order to anticipate these
claims.
Mack discloses a mat filter element 10 having a cardboard edging 11
on a mat-type medium 12 for filtering air provided to occupied spaces by
heating, ventilating, and air conditioning equipment. Col. 1, ll. 5-7; col. 4,
ll. 51-54; fig. 1. We find that this filter element 10 is capable of having a
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screw or other fastening means passed through the cardboard edging 11 so
that it may be mechanically fastened to a tanning bed unit over at least one
existing ventilation fan. We further find that the mat-type medium 12,
which is disclosed as being woven glass fiber mat (i.e., fiberglass) (col. 1,
ll. 30-32) is capable of filtering dust and dirt from air. As such, we agree
with the Examiner that Mack anticipates claims 7, 12, and 16.
Appellant argues that Mack is “nonanalogous art.” App. Br. 10. The
question of whether a reference is analogous art is irrelevant to whether that
reference anticipates. See In re Self, 671 F.2d 1344, 1350 (CCPA 1982). A
reference may be from an entirely different field of endeavor than that of the
claimed invention or may be directed to an entirely different problem from
the one addressed by the inventor, yet the reference will still anticipate if it
explicitly or inherently discloses every limitation recited in the claims. In re
Schreiber, 128 F.3d at 1478. As such, we sustain the rejection of claims 7,
12, and 16 under 35 U.S.C. § 102(b) as anticipated by Mack.
Rejection of claims 7, 12, and 16 as anticipated by Hufton
Appellant argues claims 7, 12, and 16 as a group. App. Br. 12-13.
We select claim 7 as representative, and claims 12 and 16 stand or fall with
claim 7. See 37 C.F.R. § 41.37(c)(1)(vii).
As with the prior rejection, the Examiner interpreted the “tanning
bed” language in the preamble of independent claim 7 as simply a statement
of intended use. Ans. 7. We agree with the Examiner’s interpretation for
the same reasons set forth supra.
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Hufton discloses an air filter 72 having a frame 74 and a mat 76 of
filter media, such as a fine diameter (.00003 inch) fiber glass felt, for use
with a paper dust bag of a vacuum for filtering smaller dust and dirt particles
passed out of the dust bag. Col. 4, ll. 53-65. We find that filter 72 is capable
of having a screw passed through the frame 74 so that it may be
mechanically fastened to a tanning bed unit over at least one existing
ventilation fan.2 We further find that mat 76, which is disclosed as being a
fine diameter fiber glass felt, is capable of filtering dust and dirt from air.
As such, we agree with the Examiner that Hufton anticipates claims 7, 12,
and 16.
Appellant argues that Hufton is “nonanalogous” art. App. Br. 12.
The question of whether a reference is analogous art is irrelevant to whether
that reference anticipates. See Self, 671 F.2d at 1350; Schreiber, 128 F.3d at
1478. As such, we sustain the rejection of claims 7, 12, and 16 under
35 U.S.C. § 102(b) as anticipated by Hufton.
Rejection of claims 2-16 as unpatentable over AAPA and Kramer
Appellant argues claims 2-6, 8, and 13 as a first group and claims 7,
9-12, and 14-16 as a second group. App. Br. 13-15. We select claim 2 as
representative of the first group and claim 7 as representative of the second
group. See 37 C.F.R. § 41.37(c)(1)(vii).

2 Alternatively, we find that filter 72 is capable of having other fastening
means, such as duct tape, passed over the frame 74 to fasten the filter 72 to a
tanning bed unit over at least one existing ventilation fan.
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The Examiner determined that it would have been obvious to one of
ordinary skill in the art to modify a conventional tanning bed to dispose
filters over the air intake fans, as taught by Kramer, “so as to
reduce/eliminate drawn in contaminants, such as dust particles, into the
tanning bed as suggested by Kramer.” Ans. 5.
Appellant argues that “[t]here is nothing in the prior art that suggests a
free standing filtration device that can be mounted to existing vents and,
more specifically, to vents that were constructed without filters in older,
conventional tanning beds.” App. Br. 14. In particular, with regard to
claim 2, Appellant argues that Kramer does not teach or disclose the “holder
and screen elements” or “a means for retaining the filter media in the air
intake vent.” App. Br. 14-15. With regard to claim 7, Appellant argues that
Kramer does not “suggest a filtration device adapted for mounting to
existing air intake vents and, more particularly, to vents that lack filtration
media or means to retain filters.” App. Br. 15.
Kramer discloses a tanning system 10 having mounted on the
underside of the lower unit 14 a pair of air intake vents 22 having removable
metallic screens 24 to capture dust naturally attracted to the UV lamps
within the system. Col. 3, ll. 27-28, 44-47; fig. 4. Kramer discloses that the
screens 24 are removable and can be “rinsed off and replaced.” Col. 3,
ll. 48-49. Kramer further discloses a removable metallic grid 54 for
capturing dust naturally attracted to the UV lamps within the system that is
provided in intake vent 52 on upper unit 16. Col. 4, ll. 45-56; fig. 6.
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Metallic grid 54 is also removable and can be “rinsed off and then replaced.”
Col. 4, ll. 55-56.
Kramer does not disclose whether its metallic screens include a holder
or a cover screen, as called for in claim 2. Further, the Examiner has not
made any findings as to whether the prior art discloses these elements and
does not provide any reasoning as to whether these elements would have
been obvious to one of ordinary skill in the art in light of the teachings of the
prior art. As such, the Examiner failed to present a prima facie case of
obviousness as to independent claim 2. The rejection of dependent claims 3-
6, 8, and 13 suffer from the same shortcomings.
With regard to claim 7, however, we find that Kramer’s metallic
screen 24 and metallic grid 54 are capable of having a screw or other
fastening means passed through or over them so that they may be
mechanically fastened to a tanning bed unit over at least one existing
ventilation fan. We further find that the screen and grid, which are disclosed
as being for capturing dust naturally attracted to the UV lamps, are capable
of filtering dust from air. As such, we agree with the Examiner that the
combined teachings of the AAPA and Kramer render obvious the subject
matter of claim 7. Claims 9-12 and 14-16 fall with claim 7.
CONCLUSIONS
The filtration devices of Mack and Hufton are capable of being
mounted to tanning units of conventional tanning beds for use as tanning bed
filters.
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The Examiner failed to set forth an adequate prima facie case to
support the conclusion that the combined teachings of the AAPA and
Kramer would have led one of ordinary skill in the art to the tanning bed air
filter of claim 2.
The combined teachings of the AAPA and Kramer would have led
one of ordinary skill in the art to the tanning bed filter of claim 7.
DECISION
The decision of the Examiner to reject claims 2-6, 8, and 13 is
REVERSED.
The decision of the Examiner to reject claims 7, 9-12, and 14-16 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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