Ex parte IVE

Board of Patent Appeals and Interferences

Feb 8, 2000

08386670 (B.P.A.I. Feb. 8, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RONALD A. IVE
_____________
Appeal No. 1999-1491
Application No. 08/386,670
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT and McQUADE, Administrative Patent
Judges
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3 and 5 through 23. Claim 4 has
been canceled. We affirm-in-part.
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Application No. 08/386,670
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BACKGROUND
Appellant's invention relates to a cushion (10) for
supporting an infant (12) on a support surface (16) while
changing the infant's diaper with the objective of ensuring
the safety and security of the child. To this end, appellant
has invented a cushion which includes a foam padding
arrangement (18) and a casing (24). The upper supporting
surface of the padding is V-shaped in cross-section so as to
form a trough or channel in which the infant is supported
without the fear of the child rolling off the pad. The
casing (24) includes a top panel (40) and first and second
bottom panels (42, 44). Side and end casing panels (46, 48)
join the top panel (40) to the bottom panels (42, 44) with the
end panels (48) forming pockets (50, 52) in order to allow
first and second pad sections (20, 22) of the padding
arrangement to be easily removed from the casing (24) when the
casing becomes soiled. The first and second pad sections are
divided into a pair of foam pieces in order to permit folding
to take place around a transverse line "T", thus lending a
portability feature to the invention. The infant is secured
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to
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the pad by an adjustable elasticized strap (66). The cushion
itself is secured to the support surface by an anchoring
structure (80) which inhibits sliding of the pad along the
support surface. A copy of representative claim 1 appears
below:
1. A cushion adapted to support an infant on a support
surface of a support structure, comprising:
(a) a pad having a lower surface, an upper surface and a
pair of longitudinally extending side surfaces joining the
lower surface and the upper surface, the upper surface being
formed in a trough-shaped configuration to define a channel
whereby the infant may be supported therein;
(b) a casing sized and adapted to receive said pad in an
interior thereof, said casing including a bottom panel
extending along the lower surface of said pad, a top panel
extending along the upper surface of said pad and a pair of
side panels each extending along a respective side surface of
said pad; and
(c) a restraining strap connected to said casing and
positioned to be extended transversely across the channel
thereby to releasably secure the infant therein.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Kelly 2,598,999 June 3, 1952
Solin 3,319,273 May 16, 1967
Burpo 3,811,140 May 21, 1974
Mueller et al. (Mueller) 3,871,637 Mar. 18,
Appeal No. 1999-1491
Application No. 08/386,670
Claim 20 is not included in the first statement of the1
rejection. However, the examiner refers to it in the body of
the rejection of claims 13 through 17. We will therefore
5
1975
Ledesma 4,579,111 Apr. 1, 1986
Deck 5,161,273 Nov. 10,
1992
Emelien 1,449,012 July 4, 1966
(French Patent)
As stated in the final rejection (Paper No. 6), claims 1
through 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck; claim 6 stands
rejected under 35 U.S.C. § 103(a) over Ledesma in view of Deck
as applied to claim 5 and further in view of Emelien; claim 7
stands rejected under 35 U.S.C. § 103(a) over Ledesma in view
of Deck as applied to claim 1 and further in view of Mueller
et al; claims 8 and 9 stand rejected under 35 U.S.C. § 103(a)
over Ledesma in view of Deck as applied to claim 1 and further
in view of Kelly; claims 10, 11 and 12 stand rejected under 35
U.S.C. § 103(a) as being obvious over Ledesma in view of Deck
as applied to claim 1 above and further in view of Solin;
claims 13 through 17 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Ledesma in view of Deck and Solin ;1
Appeal No. 1999-1491
Application No. 08/386,670
assume that claim 20 is rejected with claims 13 through 17.
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claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck and Solin as
applied to claim 17 and further in view of Mueller; claim 21
stands rejected under 35 U.S.C. § 103(a) as being obvious over
Ledesma in view of Deck and Solin as applied to claim 17 and
further in view of Kelly; claim 22 stands rejected under 35
U.S.C. § 103(a) as being obvious over Ledesma in view of Deck
and Solin as applied to claim 13 and further in view of Burpo;
and claim 23 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Ledesma in view of Kelly.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 6, mailed September 24, 1996) and the examiner's answer
(Paper No. 12, mailed August 29, 1997) for the examiner's
complete reasoning in support of the rejection, and to the
appellant's brief (Paper No. 11, filed April 23, 1997) and
reply brief (Paper No. 13, filed October 29, 1997) for the
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arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Looking at page 7 of the brief, we note that appellant
has indicated that independent claim 1 as well as dependent
claims 2, 3, 5 through 7 and 10 stand together; that dependent
claims 8 and 9 stand together; that claims 11 and 12 stand
together; that independent claim 13 as well as claims 14
through 16 stand together; that claims 17 through 20 stand
together; and that each of claims 21 through 23 are separately
patentable.
Turning first to the examiner's rejection of claim 1
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under 35 U.S.C. § 103(a) as being obvious over Ledesma in view
of Deck, we observe that Ledesma teaches a cushion or pad (10)
that is adapted to support a user on a support surface of a
support structure (12). As readily seen in Figure 1, the
cushion of Ledesma includes pads (14, 16) which define a
trough-shaped channel in the upper surface thereof, whereby
the user may be supported therein. The cushion of Ledesma
also includes a casing (20) for receiving the pads (14, 16).
The only feature of appellant’s cushion defined in claim 1 on
appeal that is lacking in Ledesma is the restraining strap
which extends transversely across the pad and releasably
secures the user in the trough-shaped channel. The examiner
has taken the position that it would have been obvious to one
of ordinary skill in the art at the time of appellant's
invention to provide a restraining strap on Ledesma's cushion
which extends transversely across the cushion in view of Deck
who discloses a neonatal cradle (11) which includes a foam
channel-shaped pad (19) which has a restraining strap
including a pair of strap portions (26, 27) extending across
the channel. The appellant has argued (brief, pages 12 and
13) that a restraining strap would be cumulative to Ledesma's
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device since Ledesma already incorporates restraining straps
(24). Furthermore, appellant urges that adding a restraining
strap across Ledesma's channel would interfere with access to
the individual's back and lumbar region during surgery.
We disagree with appellant. The Court of Appeals for the
Federal Circuit and its predecessor, the Court of Customs and
Patent Appeals, have provided us with the following guidance
for evaluating what would have been obvious within the meaning
of 35 U.S.C. § 103. The question under 35 U.S.C. § 103(a) is
not merely what the references expressly teach, but what they
would have suggested to one of ordinary skill in the art at
the time the invention was made. See Merck & Co., Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). While there must be some
suggestion or motivation for one of ordinary skill in the art
to combine the teachings of the references, it is not
necessary that such to be found in the four corners of the
references themselves; a conclusion of obviousness may be made
from common knowledge and common sense of the person of
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ordinary skill in the art without any specific hint or
suggestion in the particular reference. See In re Bozek, 416
F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Further, in
an obviousness assessment, skill is presumed on the part of
the artisan rather than lack thereof. In re Sovish, 769 F.2d
738, 743, 226, USPQ 771, 774 (Fed. Cir. 1985). In combining
the teachings of Deck with Ledesma, we note that Deck
discloses that the cushion is for supporting critically ill
neonates during prolonged hospital confinement (col. 1, lines
11-16) and furthermore, that Deck's invention may also be used
for performing medical procedures with a minimum of handling
of the neonate (col. 3, lines 16-35). An exemplary procedure
is radiography, wherein one of ordinary skill in the art would
know that keeping the infant in a singular position is
important to obtaining accurate radiographs. With this
teaching in mind and the teaching in Ledesma (col. 1, line 31)
that the support cushion therein may be used for “a number of
operations,” we agree with the examiner that it would have
been obvious to one of ordinary skill in the art to provide a
securement strap transverse to Ledesma's cushion (10) in order
to provide added securement to Ledesma's device. One should
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note that Ledesma does not design his pad to be age-specific
and therefore, it is likely that it would be used for a small
child as well as adults. In such a case, a transverse strap
would be an effective addition to the cushion for providing
restraint of the user. Contrary to appellant’s assertions, we
consider that it would have been well within the ordinary
skill of one in the art and therefore obvious to position the
strap in a location that does not impede the surgical process.
Furthermore, appellant's claim 1 does not recite specific
parameters for the positioning of the infant. In the final
analysis, it is our opinion that the examiner has established
a prima facie case of obviousness in the rejection of claim 1
as being obvious over Ledesma in view of Deck. We therefore
affirm the examiner's rejection of claim 1. Since claims 2,
3, 5 through 7 and 10 are grouped with claim 1 and therefore
fall with claim 1, we affirm the examiner's rejection of those
claims also.
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Regarding claim 8 on appeal, the examiner has taken the
position that the teachings of Kelly would have made it
obvious to one of ordinary skill in the art at the time of
appellant's invention to provide anchoring straps to Ledesma's
cushion in order to securely hold the cushion on top of the
operating table (12). Appellant argues (brief, pages 16 and
17) that there would be no reason to modify Ledesma as
suggested since first, Kelly's anchoring structure is merely
looped around, but not secured to the support structure as
required in claim 8. Secondly, appellant argues, there would
be little motivation to anchor a surgical pad like that of
Ledesma to a support structure since the patient is
unconscious and in all likelihood is an adult and therefore,
the danger of the cushion sliding is minimal. We agree with
the examiner for the following reasons. First, we consider
Kelly's anchoring structure (16-19) which is looped around the
support structure to be, by its broad definition, "secured" to
both the crib structure and the support structure since once
the loop is tightened, it holds the structure to which it is
affixed (the crib) in place without sliding (see col. 2, lines
8-16). Unpatented claims should be given the broadest
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Webster’s Ninth New Collegiate Dictionary, 1990.2
13
reasonable interpretation consistent with the specification
and limitations of the specification should not be read into
the claims where no express statement of limitation is
included in the claim. See In re Prater, 415 F.2d 1393, 1404-
05, 162 USPQ 541, 550-51 (CCPA 1969). Appellant has not
specifically claimed any particulars of the securement
arrangement. “Secured” is simply defined as: to be made fast2
and certainly, Kelly’s teaching meets that definition.
Furthermore, we find adequate motivation to secure Ledesma's
pad to the support structure in view of Kelly's teachings,
especially from the standpoint of safety, in the event that a
patient under anesthesia needs to be maneuvered without danger
of the cushion sliding, or that the patient partially regains
consciousness and has some involuntary movement. We affirm
the examiner’s rejection of claim 8. Since claim 9 falls with
claim 8, we affirm the rejection of claim 9 also. Appellant
has stated that independent claim 23 is separately patentable,
but argues the rejection of claim 23 with claim 8. Since the
issue appellant argues is the anchoring structure and is the
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same issue that pertains to claim 8, we also affirm the
examiner’s rejection of claim 23.
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With regard to the examiner’s rejection of claim 11 as
being obvious over Ledesma in view of Deck and further in view
of Solin, the examiner recognizes that Ledesma lacks first and
second pad sections as claimed and the claimed first and
second pockets of the casing which are adapted to receive the
first and second pad sections. However, although the examiner
relies on Solin to “bridge the gap” between the claimed
invention and the patent to Ledesma, the examiner has failed
to explain why one of ordinary skill in the art would have
divided the cushion (10) of Ledesma transversely of the
pyramidal pad members (16) and also failed to point out any
part of Solin’s disclosure which discusses the presence of
pockets. Like appellant, we see no reason, teaching or
suggestion in Solin which would have led one of ordinary skill
in the art to divide the cushion of Ledesma in the particular
manner required in claim 11 on appeal. Moreover, while the
appellant provides no direct comment regarding the presence or
absence of pockets in the prior art applied by the examiner,
we must reverse the examiner who explicitly pointed out the
deficiency in the primary reference and then failed to
establish a prima facie case of obviousness since the missing
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feature was never taught. Accordingly, we reverse the
examiner’s rejection of claim 11. Since claim 12 depends from
claim 11 and stands or falls with claim 11, we reverse the
rejection of claim 12 also.
The examiner also rejects independent claim 13 as being
unpatentable over Ledesma in view of Deck and Solin. Since
claim 13 also recites the particulars with regard to the
folding of the cushion about a line transversely of the
trough-shaped pads sections and first and second pockets of
the casing being adapted to receive the first and second pad
sections, the comments set forth in the previous paragraph
apply equally to claim 13 and thus, we reverse the examiner’s
rejection of claim 13. We also reverse the examiner’s
rejections of claims 14 through 22, all of which depend from
claim 13.
CONCLUSION
The rejection of claims 1 through 3 and 5 under 35 U.S.C.
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§ 103(a) as being obvious over Ledesma in view of Deck is
affirmed.
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The rejection of claim 6 under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck as applied to claim
5 and further in view of Emelien is affirmed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck as applied to claim
1 and further in view of Mueller is affirmed.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a)
as being obvious over Ledesma in view of Deck as applied to
claim 1 and further in view of Kelly is affirmed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Ledesma in view of Deck
and further in view of Solin is affirmed.
The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck as applied to claim
1 above and further in view of Solin is reversed.
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The rejections of claims 13 through 17 and 20 under 35
U.S.C. § 103(a) as being obvious over Ledesma in view of Deck
and Solin is reversed.
The rejection of claims 18 and 19 under 35 U.S.C. §
103(a) as being obvious over Ledesma in view of Deck and Solin
as applied to claim 17 and further in view of Mueller is
reversed.
The rejection of claim 21 under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck and Solin as
applied to claim 17 and further in view of Kelly is reversed.
The rejection of claim 22 under 35 U.S.C. § 103(a) as
being obvious over Ledesma in view of Deck and Solin as
applied to claim 13 and further in view of Burpo is reversed.

The rejection of claim 23 under 35 U.S.C. 103(a) as being
obvious over Ledesma in view of Kelly is affirmed.
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No period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF/dal
Appeal No. 1999-1491
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TIMOTHY J. MARTIN
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