Ex Parte Hayano et al

Patent Trial and Appeal Board

Aug 22, 2016

13007655 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/007,655 01/16/2011
36493 7590 08/23/2016
R. MICHAEL WEST
LAW OFFICES OF R. MICHAEL WEST
1922 21ST STREET
SACRAMENTO, CA 95811
FIRST NAMED INVENTOR
Thomas M. Hayano
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10984-Appeal2 7180
EXAMINER
THROOP, MYLES A
ART UNIT PAPER NUMBER
3673
MAILDATE DELIVERY MODE
08/23/2016 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 THOMAS M. HAY ANO, SUNG HAE LEE,
and BRUCE P. MCKENDRY
Appeal2014-008358
Application 13/007,655
Technology Center 3600
Before WILLIAM A. CAPP, GEORGE R. HOSKINS and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 6-9, 11, 15-19, and 21-30. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-008358
Application 13/007,655
THE INVENTION
Appellants' invention relates to bed rails for beds and convertible
cribs. Spec. 1. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A bed rail for use with a convertible crib having a
mattress, an underlying mattress support frame with a
rectangular peripheral portion, and two end rails and one side
rail extending upwardly from respective portions of the
mattress support frame to a height above the mattress,
compnsmg:
a. a first horizontal leg and a second horizontal leg, said
first and second legs being adapted to fit between the mattress
and the mattress support frame, each of said legs having a
proximate end and a distal end and extending transversely from
an open side of the convertible crib to the other side of the
convertible crib with the side rail;
b. means for securing said distal end of said first and
second legs to the mattress support frame, said means for
securing comprising respective clamps at said distal ends of
said first and second legs, said clamps encircling a respective
peripheral portion of the support frame located on the other side
of the convertible crib with the side rail; and,
c. an elongated side panel, said side panel having a first
lower comer rotatably connected to said proximate end of said
first leg and a second lower comer rotatably connected to said
proximate end of said second leg, said side panel having a
raised position extending vertically and upwardly from said
lower comers to an elevation above the mattress to provide a
safety restraint on said one open side of the convertible crib,
and a lowered position extending vertically and downwardly
from said lower comers below the mattress to provide access to
said open side of the convertible crib.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Blevins
Leoutsakos
Ozrovitz
Hernandez
Miller
us 2,750,605
us 5,400,450
us 5,542, 135
US 6,983,496B1
US 7,373,679 B2
June 19, 1956
Mar. 28, 1995
Aug. 6, 1996
Jan. 10,2006
May 20, 2008
The following rejections are before us for review:
1. Claims 1, 2, 9, 11, 16-19, 21, 22, 25-27, and 30 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Hernandez, Miller, and
Blevins.
2. Claims 6-8, 15, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hernandez, Miller, Blevins, and Ozrovitz.
3. Claims 26, 27, and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hernandez, Miller, Blevins, and Leoutsakos.
4. Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hernandez, Miller, Blevins, Leoutsakos, and Ozrovitz.
OPINION
Unpatentability of Claims 1, 2, 9, 11, 16-19, 21, 22, 25-27, and 30
over Hernandez, Miller, and Blevins
Claim 1
The Examiner finds that Hernandez discloses a bed rail for use with a
convertible crib. Final Action 2. The Examiner finds that Hernandez and
Miller each disclose bed rails with two horizontal legs. Id. The Examiner
relies on Miller and Blevins as teaching means to secure the distal end of the
legs to the mattress support frame. Id. at 2-3. The Examiner relies on
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Application 13/007,655
~vfiller as disclosing an elongated side panel with a lower corner that is
rotatably connected to the proximate end of a leg. Id. at 3. The Examiner
also relies on Miller as disclosing side panels that: (1) extend vertically and
upwardly in a raised position to provide a safety restraint on the open side of
a convertible crib, and (2) extend downwardly in a lowered position to
provide access to the open side of the crib. Id. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
the invention was made to combine Hernandez and Miller. Id. According to
the Examiner, a person of ordinary skill in the art would have done this to
provide a bed rail that is more sturdy. Id.
The Examiner concedes that Miller does not teach legs that extend
across the bed. Id. However, the Examiner finds that Blevins teaches rails
that extend across the entire width of the bed. Id. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to combine Hernandez, Miller, and Blevins so
that Miller's legs extend across the entire width of the bed. Id. According to
the Examiner, a person of ordinary skill in the art would have done this to
make the rail even more sturdy and stable. Id.
Appellants traverse the Examiner's rejection by arguing that the
Examiner found motivation to combine the prior art in Appellants'
disclosure. Appeal Br. 15. Appellants argue that, to avoid analytical error
when combining references, the motivation to combine teachings must be
found in the prior art references themselves. Id. (citing Mintz v. Dietz &
Watson, 679 F.3d 1372, 1377-78 (Fed. Cir. 2012)). Appellants argue that
there is nothing in the teachings of Hernandez to suggest that it needs
improvement. Id. Appellants conclude that, inasmuch as Hernandez
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discloses an operable device, extending its legs would be viewed by a person
of ordinary skill in the art as unnecessary. Similarly, Appellants argue that
Miller uses a single strap to secure its bed rail which is adequate to
accomplish its stated purpose. Id. at 16.
Contrary to Appellants' position, there no requirement that a
motivation to combine teachings must be found in the prior art references
themselves. Instead, it is well settled that a reason to modify a prior art
reference may be found explicitly or implicitly in market forces; design
incentives; the "interrelated teachings of multiple patents;" "any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent;" and the background knowledge, creativity, and
common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007)). An implicit motivation
to combine exists when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Dystar Textilfarben GmBH & Co.
v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Id. Here, the Examiner's finding that modifying the prior art as proposed
would make it more sturdy is sufficient to support the Examiner's
conclusion ofunpatentability. Final Action 3; see also Ans. 2-3.
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Appellants next argue that Blevins' leg extensions do not pass
between the mattress and the mattress support frame, as claimed. Appeal
Br. 16. Instead, Blevins' extensions are supported below the bottom of the
box spring. Id.
In response, the Examiner points out that the rejection is based on the
combination of Hernandez, Miller, and Blevins, not Blevins alone. Ans. 3.
The Examiner points out that the proposed leg extensions of Hernandez and
Miller would be in the claimed location. Id. at 3--4.
Miller discloses a bed support rail that is pivotally coupled to a base
so that it may be disposed in either an upright or lowered configuration
while the base is "under a mattress." Miller, Abstract; Figs. 2, 4.
[V]arious configurations and designs of the base portion may be
used to provide the necessary support for the rail portion 102,
including, but not limited to, a base portion 104 designed to
extend down to the floor, or underneath both the mattress and
box spring, or coupled to a bed frame.
Id. col. 2, 11. 16-20. Hernandez discloses a similar arrangement. Hernandez,
col. 5, 11. 44--59 ("Mattress legs 24a and 24b are inserted and positioned
below mattress 11"). Thus, Hernandez and Miller disclose a location for the
legs that meet the limitation in claim 1 directed to being "adapted to fit
between the mattress and the mattress support frame." Claims App. The
Examiner merely relies on Blevins as teaching that it was known to extend
similar legs to the "other side" of the crib. Id.; Ans. 3. Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 425 (CCPA 1981). Furthermore, it is well established that "it is not
necessary that the inventions of the references be physically combinable to
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render obvious the invention under review." In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). Combining the teachings of references does not
involve an ability to combine their specific structures. In re Nievelt, 482
F.2d 965, 968 (CCPA 1973). The Examiner's findings that the combination
of Hernandez, Miller, and Blevins discloses the leg extension limitations of
claim 1 is supported by a preponderance of the evidence.
Appellants also argue that the purpose of Blevins' extension is to
support the carriage in accommodating guard panel 40 when it is slid out of
sight for storage. Appeal Br. 16-17. Appellants argue "one of ordinary skill
in the art would take into consideration the function, operation, and location
of Blevins' rails, in assessing how and why the characteristics of such rails
might or might not be adapted to modify another structure." Id. This
argument regarding the alleged purpose for Blevins' leg extensions is not
persuasive. It is well settled that it is not necessary for the prior art to serve
the same purpose as that disclosed in Appellants' Specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). "A reference
may be read for all that it teaches, including uses beyond its primary
purpose." In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR,
550 U.S. at 418--421).
legs.
Appellants argue that Blevins teaches away from the claimed support
If anything, the Blevins reference teaches away from
Appellants' claimed support legs, which are located between
the mattress and the underlying mattress support frame. It
would be awkward, unworkable, and uncomfortable for the user
of the bed, if the relatively thick and unyielding assembly of the
carriage, arms, rollers, and guard panel were all stuffed between
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the box spring or a mattress support frame. This is why the
arms and their extensions are maintained in spaced relation
below the bottom of the box spring.
Appeal Br. 16. However, a reference does not teach away if it merely
discloses an alternative invention but does not "criticize, discredit, or
otherwise discourage" investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed.Cir.2004). Appellants have not directed
us to any language in Blevins that criticizes, discredits, or otherwise
discourages investigation into locating support legs for a bed rail between a
mattress and a bed frame.
Next, Appellants argue that Miller's rotatable connections are not
located at the junction of its horizontal legs and the lower comers of its side
panels. Appeal Br. 17-18. In response, the Examiner states that Miller was
relied on as teaching the horizontal component of the legs. Ans. 4, citing
Miller, Fig 1, element 108. The Examiner finds, and Appellants do not
dispute, that Hernandez, Fig. 2, elements 25a, 25b, disclose rotatable
connections at the junction of its horizontal legs and the lower comers of its
side panels. Id. Appellants' argument amounts to another individual attack
against the references in a combination of references. Merck, 800 F .2d at
1097; Keller, 642 F.2d at 425.
Finally, Appellants argue that the Examiner's proposed combination
would not only change, but destroy, the operation and purpose of
Hernandez. Appeal Br. 20. This argument lacks support in the evidentiary
record and Appellants fail to support this conclusory argument with any
persuasive technical analysis. As we have previously discussed, Appellants
attack the references of a proposed combination individually and also argue
that the references cannot be combined physically. We agree with the
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Examiner that the respective teachings of Hernandez, ~vfiller, and Blevins
can be combined in the manner proposed with a reasonable expectation of
success so as to render claim 1 unpatentable.
We have considered Appellants' remaining arguments, including the
arguments raised in their reply brief, and find them to be without merit. In
view of the foregoing discussion, we determine the Examiner's findings of
fact are supported by a preponderance of the evidence and that the
Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claims 2, 9, 11, and 16
Claims 2 and 9 depend directly from claim 1. Claims App. Claim 11
is an independent claim that is substantially similar in scope to claim 1. Id.
Claim 16 depends from claim 11. Id.
Appellants do not argue for the separate patentability of these claims
apart from arguments presented with respect to claim 1 which we have
previously considered and found unpersuasive. Appeal Br. 21-22. We
sustain the rejection of claims 2, 9, 11, and 16.
Claim 17
Claim 17 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Appellants do not argue for the separate
patentability of claim 1 7 other than to recite a limitation directed to the
horizontal legs being adapted to fit between the mattress and the support
frame when the removable side rail is removed. Appeal Br. 22. Appellants
also allude to the presence of means plus function language in claim 17. Id.
The sub-section of Appellants' brief devoted to claim 17 does not rise
to the level of a separate argument for the patentability of a claim. See 3 7
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C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(Rule 41.3 7 requires more than recitation of the claim elements and a naked
assertion that the elements are not found in the prior art.).
We sustain the rejection of claim 1 7.
Claim 18
Claim 18 depends from claim 17. Claims App. Appellants do not
argue for the separate patentability of claim 18. Appeal Br. 23. We sustain
the rejection of claim 18.
Claims 19 and 21
Appellants raise essentially identical arguments with respect to
claims 19 and 21. Appeal Br. 23-25. For this reason, we treat these two
claims together. Claim 19 depends from claim 17. Claims App. Claim 21
is an independent claim that is substantially similar in scope to claim 1,
except that it contains the following limitation directed to securing the bed
rail to the crib, which is also substantially recited in claim 19.
b. means for securing said distal end of said first and second
legs to the mattress support frame, said means for securing
comprising a flexible strap, said strap having one end connected
to said distal end of one of said legs, said strap being wrapped
around said respective peripheral portion of the support frame
located on said other side of the convertible crib with the side
rail, and then extending transversely underneath the support
frame to a respective peripheral portion of the support frame
located on the open side of the convertible crib and being
attached thereto.
Claims App. Appellants argue that this limitation is missing from the prior
art. Appeal Br. 23-24. In particular, Appellants distinguish their invention
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by arguing that their means for securing extends across the mattress in one
direction, wraps around the support frame, and then extends transversely
beneath the support frame to return to the frame on the same side as the bed
rail. Id.
In response, the Examiner directs our attention to Miller's flexible
strap 106 and anchoring member 112. Ans. 6; see also Miller, Fig. 1. The
Examiner states that: ( 1) Miller teaches the legs of the bed rails being
between a mattress and a box spring; (2) Hernandez teaches the legs being
beneath a mattress and above a supporting bed frame; and (3) Blevins
teaches legs that are located below both the mattress and the supporting bed
frame. Ans. 6. The Examiner also states that Miller teaches a structure in
Fig. 1, element 112 that reads on Appellant's limitation of a "flexible strap."
Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to place the
support rails in any of the three locations that are taught in the prior art. Id.
Furthermore, the Examiner concludes that the combined teachings of the
three references would lead one to understand that it would be possible for a
"flexible strap" to extend "transversely underneath the support frame," and
further that it would be desirable to combine the cited prior art to yield the
claimed invention because doing so would provide two methods of securing
the apparatus; the first method being the legs, which extend beneath the
mattress, and the second method being a strap that extends "underneath the
support frame." Id. at 6-7. According to the Examiner, providing both
methods to secure the apparatus of Hernandez would further contribute to its
strength and support. Id. at 7.
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In reply, Appellants argue that the Examiner's rationale is contrary to
law and that the Examiner has provided no articulated reasoning with
rational underpinning to support the rejection. Reply Br. 6-7.
Miller discloses a support rail for a bed that is pivotally coupled to a
base and can be disposed in an upright or lowered configuration while the
base is under a mattress. Miller, Abstract. Miller features a securement
strap 106 that may be made of nylon, fabric, or similar construction. Miller,
col. 2, 11. 21-23. The securement strap is used as an anchoring mechanism
to prevent the base portion 104 from slipping out from between the mattress
and box spring of the bed. Id. col. 2, 11. 24--27. The securement strap 106 is
secured to the bed frame with anchoring member 112. Id. col. 2, 11. 27-30.
The strap has an adjustment buckle 114 to adjust the length of strap 106 so
that it fits various sizes of beds. Id. col. 2, 11. 32-34.
Essentially, the question presented to us and argued by Appellants is
whether it would have been patentably non-obvious to modify Miller's
flexible strap 106 so that it wraps around the bed frame, returns toward the
bed rail beneath the bed frame, and then attaches with anchoring
member 112 on the same side of the bed as the bed rail instead of the side
opposite the bed rail. Stated differently, is it patentably non-obvious to
secure something by wrapping a securing strap all of the way around an
object (like a bed frame) before attaching the end of the strap as opposed to
wrapping it only one-half way around the object before attaching the end of
the strap? We resolve this question favorably to the Examiner and adversely
to Appellants.
The Supreme Court admonishes us to ask whether an alleged
improvement is more than the predictable use of prior art elements according
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to their established functions. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). When a patent "simply arranges old elements with each
performing the same function it had been known to perform" and yields no
more than one would expect from such an arrangement, the combination is
obvious. Id. (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Appellants essentially argue that their strap attaches to their bed frame in a
different place than what is expressly disclosed in Miller and that this fact,
alone, is sufficient to establish patentability. We disagree.
It is well settled that 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. KSR, 425 U.S at 417. If a
person of ordinary skill can implement a predictable variation, 35 U.S.C.
§ 103 likely bars its patentability. Id. We are not persuaded that enhancing
the securement of an article by additional wrapping entails more than the
exercise of ordinary skill. Appellants present neither evidence nor
persuasive technical reasoning that tends to show that wrapping a flexible
strap all of the way around a bed frame before attaching it to a bed frame is
more than a mere predictable variation of Miller which attaches a flexible
strap at the opposite side of the bed frame. Appellants present no evidence
that their invention produces new, unexpected, or non-obvious results.
We sustain the rejection of claims 19 and 21.
Claims 22 and 25
Claims 22 and 25 depend from claim 21. Claims App. Appellants do
not argue for the separate patentability of claims 22 and 25 apart from
arguments that we have previously considered and found unpersuasive with
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respect to claim 21. Appeal Br. 25, 26. \Ve sustain the rejection of claims
22 and 25.
Claims 26, 27, and 30
Inasmuch as we sustain the Examiner's rejection of claims 26, 27,
and 30 under the alternative ground of rejection over Hernandez, Miller
Blevins, and Leoutsakos, which is discussed more fully below, we do not
reach the ground of rejection of these claims over the combination of
Hernandez, Miller, and Blevins.
Claims 6 and 7
Unpatentability of Claims 6--8, 15, 23, and 24
over Hernandez, Miller, Blevins, and Ozrovitz
Claims 6 and 7 depend, directly or indirectly, from claim 1. Claims
App. Appellants do not argue for the separate patentability of claims 6 and 7
apart from arguments that we have previously considered and found
unpersuasive with respect to claim 1. Appeal Br. 21. We sustain the
rejection of claims 6 and 7.
Claim 8
Claim 8 depends from claim 6. Claims App. Claim 6 includes the
following limitation: "a bolster, said bolster being substantially the same
length as said side panel and having an upper head portion extending above
an upper surface of the mattress and a lower foot portion extending only
between the mattress and said side panel." Id. Claim 8 adds the limitation:
"said upper head portion of said bolster includes a planar face, angled
upwardly with respect to said upper surface of the mattress." Id.
The Examiner finds that Ozrovitz discloses a bumper. Final Action 5.
With respect to claim 8, the Examiner notes that Ozrovitz' bumper is not
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perfectly flat or planar and, instead, exhibits a "slight curve." Id. However,
the Examiner finds that it would have been an obvious matter of design to
make the slight curve of Ozrovitz to be flat or planar. Id. The Examiner
reasons that inasmuch as Appellants have not disclosed that the planar side
solves any stated problems that are not also solved by the slightly curved
shape of Ozrovitz, it appears that the invention would perform equally well
with the shape disclosed by Ozrovitz. Id.
Appellants argue that they did solve a problem by providing the
claimed angled face on the bolster. Appeal Br. 21. Appellants argue that the
angled face of their invention is adapted to prevent the head or other parts of
the infant or toddler from being entrapped between the side panel and
mattress. Id. Appellants argue that the Examiner's finding that the "slight
curve" of Ozrovitz performs equally well as Appellants' claimed
configuration is merely a matter of opinion, not fact. Id.
In response, the Examiner states that the bolster of Ozrovitz has an
approximately planar shape and that the rejection is based on the claimed
limitations being obvious. Ans. 5. The Examiner states that the teachings of
Ozrovitz render obvious "a planar shape." Id. According to the Examiner,
while the bolster of Ozrovitz appears to have a slight curve, it still is capable
of performing Appellant's stated purpose. Id. The Examiner notes that
Appellants provided no evidence that the claimed shape performs differently
than the substantially similar shape of Ozrovitz' bolster. Id. Thus, the
Examiner concludes that the claimed "planar shape" is merely a matter of
design. Id. at 5---6.
We have reviewed Appellant's Figures 6, 7, and 8 which depict the
claimed planar face. See Figures 6-8. We have also reviewed Ozrovitz'
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Figures 4--7 and their accompany disclosures in columns 3 and 4 of
Ozrovitz' Specification. We agree with the Examiner that, although
Ozrovitz is not perfectly planar, its degree of curvature may properly be
characterized as "slight." See Ozrovitz, Fig. 3, element 24; Fig. 4, element
30; and Fig. 5, element 34.
With respect to Appellants' argument that the Examiner's rejection is
merely a matter of opinion, we note that, as persons of scientific competence
in the fields in which they work, examiners are responsible for making
findings, informed by their scientific knowledge, as to the meaning of prior
art references to persons of ordinary skill in the art and the motivation those
references would provide to such persons. In re Berg, 320 F.3d 1310, 1315
(Fed. Cir. 2003). Absent legal error or contrary factual evidence, those
findings can establish a prima facie case of obviousness. Id. We think the
Examiner's well stated findings and analysis are sufficient to satisfy the
Examiner's burden of establishing a prima facie case. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011). Thus, the burden is properly shifted to
Appellants to rebut the Examiner's case. Id. at 1365.
Appellants have failed to successfully rebut the Examiner's case with
evidence, technical reasoning, or other means of persuasion. We sustain the
rejection of claim 8.
Claim 15
Claim 15 depends from claim 11. Claims App. Appellants do not
argue for the separate patentability of claim 15 apart from arguments that we
have previously considered and found unpersuasive with respect to claim 11.
Appeal Br. 22. We sustain the rejection of claim 15.
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Claims 23 and 24
Claim 23 depends from claim 21 and claim 24, in tum, depends from
claim 23. Claims App. Appellants do not argue for the separate
patentability of claim 23 and 24 apart from arguments that we have
previously considered and found unpersuasive with respect to claims 8
and 21. Appeal Br. 25-26. We sustain the rejection of claims 23 and 24.
Claim 26
Unpatentability of Claims 26, 27, and 30
over Hernandez, Miller, Blevins, and Leoutsakos
Claim 26 is an independent claim that is substantially similar in scope
to claim 1 except that the underlying mattress support frame is a continuous,
planar structure. Claims App. Claim 26 recites a connector that extends
between the distal end of the horizontal legs and the planar structure. Id.
The Examiner relies on Leoutsakos, Figure 1, element 20 as disclosing a
plate member. Final Action 6. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to combine the prior art with the plate member of Leoutsakos. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide a more stable base stn1cture for the side rail of Miller.
Id. The Examiner characterizes the proposed combination as simply
combining known elements according to known methods to yield predictable
and obvious results. Id.
Appellants argue that there is no disclosure that the plate of
Leoutsakos should assume the configuration and physical characteristics of
Appellants' continuous planar structure. Appeal Br. 27. In particular,
Appellants argue that their planar structure is essentially co-extensive with
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the size of the mattress. Id. at 27-28. Appellants argue that Leoutsakos
does not teach that the plate is the same size and shape as the mattress or box
spring. Id. Finally, Appellants argue that the Examiner has not cited art that
teaches Appellants' means for securing. Id. at 28.
In response, the Examiner states that Figure 1 of Leoutsakos appears
to show that board 20 is coextensive with mattress 12. Ans. 7. The
Examiner adds that Leoutsakos teaches that "planar plate 20 is typically
shaped such that at least one edge is aligned with a side of the mattress 12."
Id. (quoting Leoutsakos col. 3, 11. 3-9). Thus, according to the Examiner,
Leoutsakos contemplates that at least one edge, and possibly more than one
edge of the board, could be aligned with the mattress and, as a mattress is
typically rectangular, there are only four edges. Ans. 7. The Examiner finds
that Leoutsakos teaches that planar plate 20 may be "any shape." Id. (citing
Leoutsakos, col. 3, 1. 6). The Examiner concludes that it would have been
obvious to try a board that is coextensive with a mattress on four sides since
doing so would merely be choosing from a finite number of identified,
predictable solutions, with a reasonable expectation of success. Ans. 7.
With respect to Appellants' argument that Leoutsakos does not satisfy
the "means for securing" limitation of claim 26, we note that Leoutsakos
explains that braces 24 are attached to plate 20 with screws, bolts or the like.
Leoutsakos, col. 2, 11. 54--55. Leoutsakos further explains that support
braces 24 typically include holes 25 that align with holes 30 on planar
plate 20. Id. col. 3, 11. 47--48. Such holes allow bolts, pins, clips or "any
other suitable means" to attach planar plate 20 to braces 24. Id. col. 3,
11. 48-50. In view of this teaching, Appellants' argument regarding lack of
securement means is refuted by the evidence of record.
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Appeal2014-008358
Application 13/007,655
vVith respect to the size and shape of Leoutsakos' plate 20, Figure 1
depicts a partial view of plate 20 relative to mattress 12, boxspring 13, and
bedframe 14. Plate 20 in Figure 1 appears to be substantially co-extensive in
size and shape with the horizontal dimensions of the mattress, boxspring,
and bedframe, at least to the partial extent depicted in Figure 1.
Nevertheless, Figure 1 is sufficient to suggest to a person of ordinary skill in
the art that plate 20 could assume the same lateral dimensions of a bed
frame. Furthermore, the "Description of the Prior Art" section of
Appellants' Specification admits that mattress support frames such as metal
frames provided with plywood boards, known as "bunkie boards," were
known in the prior art. Spec. 3. Appellants' invention merely uses well
known connection means, such as bolts and wing nuts, to secure the
horizontal legs through holes drilled in prior art "bunkie boards." Id. at 9-
10. This strikes us as falling within the ambit of ordinary skill. Appellants
provide neither evidence nor persuasive technical reasoning to rebut the
Examiner's position that it would have been obvious to try securing
horizontal support legs to a plate with lateral dimensions that are co-
extensive with the size of a bed frame.
We sustain the rejection of claim 26.
Claims 27 and 30
Claims 27 and 30 depend from claim 26. Claims App. Appellants do
not argue for the separate patentability of claims 27 and 30 apart from
arguments presented with respect to claim 26 which we have previously
considered and found unpersuasive. Appeal Br. 28, 29. We sustain the
rejection of claims 27 and 30.
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Appeal2014-008358
Application 13/007,655
Unpatentability of Claims 28 and 29
over Hernandez, Miller, Blevins, Leoutsakos, and Ozrovitz
Claims 28 and 29 depend, directly or indirectly, from claim 26.
Claims App. Appellants do not argue for the separate patentability of
claims 28 and 29 apart from arguments presented with respect to claims 8
and 26 which we have previously considered and found unpersuasive.
Appeal Br. 28-29. We sustain the rejection of claims 28 and 29.
DECISION
The decision of the Examiner to reject claims 1, 2, 6-9, 11, 15-19,
and 21-3 0 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)(l )(iv).
AFFIRMED
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