Ex Parte Graham et al

Board of Patent Appeals and Interferences

Apr 26, 2012

11102398 (B.P.A.I. Apr. 26, 2012)

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.
11/102,398 04/08/2005 Mark A. Graham N1-16829 5839
63565 7590 04/27/2012
HILL-ROM SERVICES, INC.
Legal Dept., Mail Code K04
1069 State Road 46 East
BATESVILLE, IN 47006
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
04/27/2012 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 MARK A. GRAHAM and STEVEN J. SCHWARTZ
____________

Appeal 2009-012923
Application 11/102,398
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and KEN B.
BARRETT, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-012923
Application 11/102,398

2
STATEMENT OF THE CASE
Mark A. Graham and Steven J. Schwartz (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 4-6, 11-
17 and 20. Claims 10, 18, 19 and 21 are indicated by the Examiner as being
allowed, and claims 7-9 are objected to as being dependent from a rejected
base claim. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ invention is directed to a patient care equipment support
device. Independent claim 1 is illustrative:
1. A patient care equipment support comprising:
an upper portion,
a lower portion having a lower end configured to engage
a socket, the lower portion telescoping relative to the upper
portion, and the lower end telescoping relative to the lower
portion, and
an actuator non-rotationally coupled to the lower portion
for movement between functionally distinct first, second, and
third positions.

THE REJECTION
The Examiner rejected claims 1, 4-6, 11-17 and 20 under 35 U.S.C.
§ 102(b) as being anticipated by Smith (US 5,078,349, issued Jan. 7, 1992).
ISSUES
Did the Examiner err in finding that Smith discloses an actuator
coupled to a lower portion of the support for movement between first,
second and third functionally distinct positions?
Appeal 2009-012923
Application 11/102,398

3
ANALYSIS
The Examiner found that the Smith patent discloses a patient care
equipment support having an actuator 30´ that is movable between first,
second and third functionally distinct positions. Ans. 3. Appellants
challenge the finding, first on the basis that the element 30´ is integral with
element 28´, which the Examiner found to be responsive to the claimed
lower portion of the equipment support. Appeal Br. 8-9. Appellants
maintain that this is a mischaracterization of the disclosure of these elements
in Smith, and that rather than being an actuator and tube, as maintained by
the Examiner, they are simply flange and shank portions of release sleeve
26´. Id.
Even assuming that the Examiner’s position is correct that element
30´ can properly be regarded as an actuator, and element 28´ can properly be
regarded as corresponding to the claimed lower portion, the Examiner’s
finding that the actuator is movable to first, second and third functionally
distinct positions is not sustainable. The Examiner initially describes a first
functionally distinct position as that shown in Figure 5 of Smith, in which all
of the poles are blocked from movement relative to each other, a second
functionally distinct position being one where actuator 30´ “has moved
slightly relative [to] the lower tube (moving the middle tube relative [to] the
lower tube), but not enough to release the locking mechanism holding the
upper tube relative [to] the middle tube,” and a third functionally distinct
position being that in which the actuator is further moved, releasing the
locking mechanism to allow all tubes to move relative to each other. Ans. 3.
Appellants contend that the Examiner’s second position is not
functionally distinct from the first position, by the Examiner’s own
Appeal 2009-012923
Application 11/102,398

4
explanation that the locking mechanism is still engaged in both positions.
Appeal Br. 10; Reply Br. 3. The Examiner counters that, “the function
performed by the second position is the movement of the middle tube which
is attached to the actuator.” Ans. 7. The movement of the middle tube
without an attendant change in function does not establish that the second
position is functionally distinct from the first, only that it is positionally
different.
Given that all claims on appeal require an actuator that is movable
between first, second and third functionally distinct positions, the rejection
of claims 1, 4-6, 11-17 and 20 as being anticipated by Smith is not sustained.

CONCLUSION
The Examiner erred in finding that Smith discloses an actuator
coupled to a lower portion of the support for movement between first,
second and third functionally distinct positions.

DECISION
The rejection of claims 1, 4-6, 11-17 and 20 as being anticipated by
Smith is reversed.
REVERSED

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