Ex Parte Green

Board of Patent Appeals and Interferences

Jan 29, 2009

10921198 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD GREEN
____________

Appeal 2008-1700
Application 10/921,198
Technology Center 3600
____________

Decided: January 29, 2009
____________

Before WILLIAM F. PATE III, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
This is an appeal from the final rejection of claims 1, 2, 7-14, 16-22
and 24-27. Claims 3-6, 15 and 23 have been cancelled. These are all of the
claims in the application.
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We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and
134.
The claimed invention is directed to a meditation cushion and a
meditation mat each characterized by the presence of slow recovery, low
resilience, temperature sensitive viscoelastic foam. The foam is said to
allow the user to maintain a proper alignment of pelvis and spine during
meditation. A method of meditation is also claimed.
Claims 1 and 14 are illustrative of the claimed subject matter.
1. A meditation sitting cushion comprising: an upper layer
of slow recovery, low resilience, temperature sensitive visco-
elastic foam; and a lower, less compressive supporting layer of
material selected from a group consisting essentially of
buckwheat hulls, spelt hulls and kapok natural fiber for
providing a firm base of support, said lower layer and said
upper layer being enclosed together in a cover material, said
lower and upper layers adapted to maintain a proper alignment
of pelvis and spine of a sitting user on said cushion.

14. A meditation mat comprising:
a layer of slow recovery, low resilience, temperature
sensitive visco-elastic foam enclosed between an upper layer of
cotton batting and a lower layer of cotton batting.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Yamada 4,064,578 Dec. 27, 1977
Summer 5,134,740 Aug. 04, 1992
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Tegner DES 355,077 Feb. 07, 1995
Landvik 6,159,574 Dec. 12, 2000

REJECTIONS

Claims 1-2 and 7-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellant’s admitted prior art as shown in Figure 5 of the
application in view of Landvik and Yamada.
Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Appellant’s admitted prior art in view of Landvik, Yamada and further
in view of Tegner.
Claims 14 and 16-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Summer in view of Landvik.
Claims 22 and 24-26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellant’s admitted prior art in view of Landvik and
further in view of Summer.
Finally, claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellant’s admitted prior art in view of Landvik and
Yamada.

FINDINGS OF FACT
1. In Appellant’s Figure 5, admitted prior art, a person using a
meditation cushion and mat is shown. The cushion is shown as
comprised of a cover filled with buckwheat hulls, spelt hulls, kapok or
some other cushioning natural. The cushion is placed on a mat, the
interior of which is not shown. It is noted that the meditator assumes
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a meditation position which includes establishing a pocket for the hips
on the meditation cushion. See Figure 5 and Specification 1:8 - 5:18.
2. Landvik discloses mattresses and cushions (col. 1, l. 5) for providing a
laminated support for pressure relief comprising at least two layers of
foam adhered together wherein at least one layer is of viscoelastic
foam. See column 1, lines 40-44. The foam support can be
comprised of a single layer of viscoelastic foam and a single layer of
polyurethane foam adhered together. See column 1, lines 51-53. The
viscoelastic properties of the laminated support respond to body
weight and body temperature. Therefore, the hard viscoelastic
material will initially firmly support a body thereon and will soften at
pressure points. The support subsequently gently molds to the form of
the body, allowing pressure to be absorbed uniformly and distributed
evenly across the support. See column 1, lines 54-64. Accordingly, it
is our finding that Landvik teaches the use of viscoelastic foam in
cushions for the purpose of gently molding to the form of the body
and eliminating pressure points.
3. Yamada discloses a therapeutic cushion comprising two layers. The
air permeable cloth cover encloses a sponge mat a which is in turn
supported by the so-called slider material b which is comprised of
fibrous natural material such as banya, chaffs, rice hulls, buckwheat
hulls, feathers, synthetic resin fibers and the like. See column 2, lines
40-45 and column 3, lines 20-25. The foam disclosed by Yamada is
normal polyurethane foam, so Yamada differs from the claimed
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subject matter in that the foam layer is not temperature sensitive
viscoelastic foam. See Yamada column 2, lines 57-68.
4. Tegner is a design patent directed to a portable chair cushion. It
shows a cushion of right-circular-cylindrical shape whose height is
somewhat less than the cushion’s diameter. See Figure 1.
5. Summer discloses a meditation support designed to maintain the
position of the meditator in a comfortable position with a vertical
torso. It discloses a wedge-shaped triangular cushion, the front
thereof resembling a fish tail. See column 1, lines 26-31. The notch
at the front is provided for the heel of the user. The cushion is
constructed of a fabric cover sewn over a resilient material such as
kapok, cotton batting or flexible foam. See column 3, lines 37-41.
Another embodiment is provided where the cushion has a rigid plastic
base which provides stackability. The rigid plastic has a first layer of
resilient padding thereon. See column 7, line 25 – column 8, line 7.

ISSUES
Appellant provides several contentions that are alleged to apply
generally to all of the grounds of rejections. The first contention is that the
claimed cushion and mat provide unexpected results. To buttress this
argument, Appellant has submitted three declarations under 37 C.F.R
§ 1.132. Appellant next contends that there is no motivation to combine the
prior art references. Appellant further contends that simplicity of the
invention is not a bar to patentability and that the invention must be analyzed
as a whole. Appellant further argues that the substitution of an equivalent
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material does not necessarily render the invention obvious, and the
substitution of the viscoelastic foam provides new properties that improve
the product. Finally, Appellant relies on praise by those skilled in the art,
long-felt, but unresolved need, and the perception of need by those skilled in
the art.
With respect to the rejection of claims 1, 2 and 7-9, Appellant argues
that there is no motivation to combine the references, that the Examiner
combines these references only through hindsight, and that the teachings of
the references are incompatible with each other.
With respect to the rejection of claims 12 and 13, Appellant again
argues that there is no motivation, and that the Examiner combines the
references using hindsight.
With respect to claims 14 and 16-21, Appellant further argues that
there is no motivation to combine the references.
With respect to the rejections of claims 22 and 24-26, Appellant again
argues that there is no motivation to combine the references, and the same is
argued with respect to claim 27.
Accordingly, the issues for our decision include: (1) whether there
was a lack of motivation to combine the references, (2) whether the
Examiner indicated that due to simplicity, the claims were obvious, (3)
whether the invention has not been analyzed as a whole, (4) whether the
substitution of the viscoelastic foam provides new properties that were
unexpected, and (5) whether the evidence as a whole, giving due weight to
evidence alleged to prove praise, long-felt need and perception of need,
supports the Examiner’s conclusion of obviousness.
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PRINCIPLES OF LAW
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error in
the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Obviousness
“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. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). 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. of Kansas City, 383 U.S. 1, 17-18 (1966); see
also KSR Int’l Co., 550 U.S. at ___,127 S. Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”). The scope and content
of the prior art includes the explicit and inherent teachings of the prior art.
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In re Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001) (citing In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in granting
a patent based on the combination of elements found in the prior art,” KSR
Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed circumstances in
which a patent might be determined to be obvious. In particular, the Court
pointed out that “the principles laid down in Graham reaffirmed the
‘functional approach’ of Hotchkiss [v. Greenwood], 11 How. 248 [(1851)].”
KSR Int’l Co., 550 U.S. at_, 127 S. Ct. at 1739 (citing Graham, 383 U.S. at
12). The Court reiterated that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court also noted that “when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at__, 127 S. Ct. at 1740
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
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Id. The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.

ANALYSIS
Turning first to the rejection of claims 1, 2 and 7-9, Appellant argues
these claims as a group. Therefore, we choose claim 1 as representative, and
the rejection of claims 2 and 7-9 will stand or fall with that of claim 1.
Inasmuch as Landvik discloses that temperature sensitive viscoelastic
foam formed as the upper layer in a cushion causes the foam to gently mold
to the form of the body and allows pressure to be absorbed uniformly and
evenly distributed, it would have been obvious to use an upper layer of
viscoelastic foam in the cushion of the acknowledged prior art. This is
merely the combination of two prior art elements according to known
methods to yield predictable results. See KSR, 550 U.S. at ___, 127 S. Ct.
at 1739. Accordingly, we determine that claim 1 is prima facie obvious
from the admitted prior art and Landvik taken alone, and therefore claims 1,
2 and 7-9 are prima facie obvious.
In view of the fact that Yamada shows a therapeutic cushion with an
upper layer of foam and a lower layer of buckwheat hulls, husks and the
like, our conclusion of obviousness based on the admitted prior art and
Landvik is buttressed, and we determine that claims 1, 2 and 7-9 are prima
facie obvious when considered in view of the admitted prior art, Yamada
and Landvik. Yamada merely reinforces the teaching that a foam layer can
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be placed over a layer of natural fibers to form a cushion that prevents the
interruption of blood circulation and the genesis of pressure points.
Turning to the rejection of claims 10-13, we note that the Examiner
has grouped these claims together whereas the Appellant argues the rejection
of claims 12 and 13. Nonetheless, we are in agreement with the Examiner
that it would have been a matter of design choice as to how thick or how
firm to make the viscoelastic foam layer to achieve the stated objective of
generally molding to the body with evenly distributed pressure. This is well
within the ordinary skill in the seat cushioning art. We further find that
Tegner discloses a cylindrical cushion as does Appellant’s admitted prior art.
For these reasons, the subject matter of claims 10-13 is prima facie obvious.
Turing to the rejection of claims 14 and 16-21, Appellant argues these
claims as a group. Thus claims 16-21 will stand or fall with claim 14. As
discussed above, Landvik discloses a cushion or mattress using at least one
layer of viscoelastic foam. Summer discloses a wedge-shaped mat that is
useful for meditation. Inasmuch as Landvik discloses that it is particularly
useful to gently mold to the form of the body and allow pressure to be
evenly and uniformly distributed, it would have been obvious to use
viscoelastic foam as one of the layers of the Summer mat. Accordingly, the
subject matter of claims 14 and 16-21 is prima facie obvious.
Turning to the rejection of claims 22 and 24-26, Appellant argues
these claims together. These claims will all stand or fall with independent
claim 22. As noted above, Landvik, when combined with Appellant’s
admitted prior art, discloses the benefit of viscoelastic foam in both cushions
and mattresses. Accordingly, it would have been prima facie obvious to use
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viscoelastic foam in both the cushion and mat as shown in Appellant’s
admitted prior art. This is merely combining prior art elements according to
known methods to yield predictable results. Accordingly, the subject matter
of claims 22 and 24-26 is prima facie obvious from the art cited by the
Examiner.
With respect to claim 27, the admitted prior art of Figure 5 shows the
method of meditation, but does not disclose viscoelastic foam in either the
cushion or the mat. In view of the teachings of Landvik as to the desirability
of the gentle molding of a support to the form of the body, and the
desirability of uniform and evenly distributed support given by the
viscoelastic foam layer, it would have been obvious to practice the method
shown in Figure 5 with viscoelastic foam installed in the cushion and mat.
Therefore, the subject matter of claim 27 is prima facie obvious.
With respect to all of the rejections, Appellant’s principal argument is
that there is a lack of motivation to combine. First, we must note that the
Supreme Court has said that a rigid application of the teaching, suggestion or
motivation (TSM) test is incompatible with its precedents concerning
obviousness. Secondly, we note that notwithstanding the fact that TSM is
not required to support an obviousness rejection, the disclosure of Landvik
provides ample motivation for one of ordinary skill to use a layer of
viscoelastic foam for the advantage of gently molding to the body and the
elimination of pressure points. Furthermore, Yamada discloses that foam
over a fibrous filler is advantageous in that it does not interrupt blood
circulation and does not generate pressure points. Here again, this is ample
incentive for the use of foam over a fibrous material in cushions and
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mattresses. Therefore we do not credit Appellant’s arguments with respect
to lack of motivation.
Appellant argues that simplicity is not a bar to patentability. We
agree, and also agree that the invention must be analyzed as a whole.
However, as explained above, we see ample motivation for the combination
of references used in rejecting the claimed subject matter. We also agree
with Appellant’s argument that the substitution of a viscoelastic foam may
have resulted in an improvement of the product. However, as explained
above, this improvement is entirely predictable and would have been
obvious to one of ordinary skill in the art.

SECONDARY CONSIDERATIONS
As noted above, we have found the subject matter of the claims on
appeal to be prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and Appellant furnishes evidence of
secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully weighing the evidence for obviousness with
respect to the evidence against obviousness. See, e.g., In re Eli Lilly & Co.,
902 F.2d, 943, 945 (Fed. Cir. 1990). We are also mindful that the objective
evidence of nonobviousness in any given case may be entitled to more or
less weight depending on its nature and its relationship with the merits of the
invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538 (Fed. Cir.
1983). To be given substantial weight in the determination of obviousness
or nonobviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore we must determine whether
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there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986).
We turn now to the declarations. Turning first to the declaration of
Dr. Brian Reiss, Dr. Reiss states that he is an orthopedic and spinal surgeon,
and we credit his expertise in the field of the human skeleton. Dr. Reiss
states that he is highly impressed with the “Mountain Seat.” Dr. Reiss does
not describe the so-called Mountain Seat, and we are unable to ascertain
with any certainty whether it corresponds to the subject matter of the claims.
Dr. Reiss states that the viscoelastic foam molds to the backside and creates
a proper anterior pelvic tilt allowing the meditator to sit in a posture that
encourages efficient alignment of the vertebrae and reduces tension of the
supporting ligaments and musculature. It is interesting to us that he uses the
same words “molds to the backside” as are used in the Landvik patent. That
patent states that the cushion “gently molds to the form of the body….” See
col. 1, l. 61. Therefore, it is our conclusion that the result of using
viscoelastic foam in the cushion of the invention is not that surprising or
unexpected, inasmuch as it has been recognized and disclosed in the prior
art. We further note that while alignment of the spine may be a different
reason for the use of the viscoelastic foam than that taught in Landvik,
which teaches gently molding to the surface of the body uniformly and
distributing the pressure evenly thereto, it is not necessary in establishing
obviousness for references to be combined for the reasons given by the
inventor. See In re Kahn, 441 F.3d at 984 (“the law does not require that the
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references be combined for the reasons contemplated by the inventor.”)
Finally, Dr. Reiss concludes with the statements that the “Mountain Seat” is
medically sound and that he endorses it. Neither of these statements is
germane to the issue of obviousness or nonobviousness of the invention.
A second declaration has been furnished by Daido Roshi, who is the
abbot of a Zen monastery. We credit Abbot Roshi as an expert in
meditation. Here again, Abbot Roshi refers to the “Mountain Seat”, and we
are unable to ascertain whether the Mountain Seat corresponds to the
claimed subject matter. Abbot Roshi states that the combination of materials
in the Mountain Seat makes it possible for people who ordinarily would not
be able to meditate to successfully do so. He states that they can meditate
without significant pain and that the seat provides a most comfortable
support, and he wholeheartedly recommends it to anyone serious about
meditation. Here again, none of these results are unexpected in view of the
Landvik teachings that the layer of viscoelastic foam will gently mold to the
form of the body and will allows pressure to be absorbed uniformly and
distributed evenly across the support.
The final declaration is by a Dr. Marchaj, a medical doctor
specializing as a pediatrician, who has practiced sitting meditation for 22
years. We credit him as being an expert in both the medical and meditation
arts. Here again, the affiant refers to the “Mountain Seat”, and we are
unable to ascertain the relationship between the Mountain Seat and the
claimed subject matter. Dr. Marchaj states that the traditional material for
meditation cushions is kapok and is much too hard and blocks circulation,
creating nerve pressure and numbness. These results are not unexpected in
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view of Landvik’s disclosure that the use of viscoelastic foam allows
pressure to be absorbed uniformly and distributed evenly across a support
and Yamada’s disclosure that sitting or shifting one’s weight on a hard seat
cushion may interrupt circulation. Dr. Marchaj says the combination of
buckwheat hulls and viscoelastic foam is the ideal or proper firmness, even
for those who are overweight or inflexible. While we fully credit that this
may be the case, the prior art teaches a layer of viscoelastic foam for just
these benefits.
Accordingly, when considering the evidence anew, we first note that
we are unable to ascertain whether the “Mountain Seat” referred to in the
declarations is related to the claimed subject matter on appeal. Thus the
declarations do not establish any nexus between the claimed subject matter
and the evidence contained in the declarations. On this basis alone, the
declarations are entitled to no appreciable weight. Be that as it may, the
declarants, while generally laudatory in tone, merely support the conclusion
in the applied prior art with respect to viscoelastic foam. Consequently, the
evidence for nonobviousness found in the declarations is entitled to but little
weight. Accordingly, weighing all evidence anew, including the evidence for
obviousness and the evidence against obviousness, it is our legal conclusion
that the evidence for obviousness clearly outweighs the evidence against
obviousness. Therefore, the rejections of all of the claims on appeal are
sustained.

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CONCLUSION
The rejection of claims 1-2 and 7-9 under 35 U.S.C. § 103(a) is
sustained.
The rejection of claims 10-13 under 35 U.S.C. § 103(a) is sustained.
The rejection of claims 14 and 16-21 under 35 U.S.C. § 103(a) is
sustained.
The rejection of claims 22 and 24-26 under 35 U.S.C. § 103(a) is
sustained.
Finally, the rejection of claims 27 under 35 U.S.C. § 103(a) is
sustained.
All of the rejections on appeal have been 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) (2007).

AFFIRMED

vsh

ALFRED M. WALKER
225 OLD COUNTRY ROAD
MELVILLE, NY 11747-2712