Ex Parte Jahrling

Board of Patent Appeals and Interferences

Jul 15, 2009

11031799 (B.P.A.I. Jul. 15, 2009)

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.
11/031,799 01/07/2005 Peter Jahrling 2004P00060US 7766
7590 07/15/2009
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
07/15/2009 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 PETER JAHRLING
__________

Appeal 2009-2680
Application 11/031,799
Technology Center 3600
__________

Decided:1 July 15, 2009
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 12-30, all of
the pending claims, which are directed to a support mat for a patient. The

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2680
Application 11/031,799

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Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 12-30 are on appeal. Claim 12, the only independent claim, is
representative and reads as follows:
Claim 12: A support mat for a patient, comprising:
a mat for accommodating the patient;
a mat cover completely enclosing the mat in an interior volume
completely defined by the mat cover, wherein the mat cover is formed by a
welded mat cover sheet and is free of weld seams on its outer surface; and
at least two mat cover side parts arranged at opposite ends of the mat,
the mat cover side parts being connected to the mat cover and formed as
overhangs.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• claims 12-14, 18-21, and 23-30 in view of McCormick2 and Frank;3
• claim 15 in view of McCormick, Frank, and Neary;4
• claims 16 and 17 in view of McCormick, Frank, and Weeks;5 and
• claim 22 in view of McCormick, Frank, and Zwickey.6
OBVIOUSNESS
Issue
The Examiner has rejected claims 12-14, 18-21, and 23-30 under 35
U.S.C. § 103(a) as being obvious in view of McCormick and Frank (Ans. 3).

2 McCormick et al., U.S. 6,128,796, Oct. 10, 2000
3 Frank, US 1,913,750, June 13, 1933
4 Neary, US 5,509,718, Apr. 23, 1996
5 Weeks, US 4,993,092, Feb. 19, 1991
6 Zwickey, US 5,400,448, Mar. 28, 1995
Appeal 2009-2680
Application 11/031,799

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The Examiner finds that McCormick discloses a support mat for a patient
that meets most of the limitations of claim 12 except that “McCormick fails
to disclose the mat cover completely enclosing the mat” (Ans. 3). The
Examiner finds that “Frank discloses a cover having a bottom flap 7 that
completely encloses a mattress” (id.). The Examiner concludes that it
“would have been obvious for one having ordinary skill in the art at the time
of the invention to completely enclose the mat as taught by Frank in order to
exclude dirt and moisture from the mat” (id. at 3-4).
Appellant contends that the Examiner erred in concluding that the
cited references suggest a mat cover that completely encloses the mat
(Appeal Br. 6-13).
The dispositive issue in this appeal is: Does the evidence of record
support the Examiner’s conclusion that the combination of the cited
references suggests the support mat of claim 12 in which a mat cover
completely encloses the mat?
Findings of Fact
1. McCormick discloses “a protective covering that prevents the
spread of infection by gurneys and other nonsterile patient bearing
structures” (McCormick, col. 1, ll. 6-8).
2. Figures 2 and 3 of McCormick are shown below:
Appeal 2009-2680
Application 11/031,799

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Figure 2 (on the left) shows a top view of an embodiment in which
“dotted lines indicate reinforcing members attached to the underside of the
device and the locations of pockets attached to the underside of the device”
(id. at col. 3, ll. 18-20). Figure 3 (on the right) shows “the invention device
used as a cover for a gurney pad” (id. at col. 3, ll. 22-23).
3. McCormick discloses that “[d]ue to the simplicity of design, the
device is readily foldable and disposable and hence can serve as a disposable
‘stretcher’ for moving injured patients. The device is preferably sufficiently
light weight and pliable to fold for carrying in a backpack, for example, by
military personnel” (id. at col. 4, l. 64 to col. 5, l. 2).
4. McCormick states that its “device is adapted for placement upon a
gurney or hospital bed with side railings and with a mattress pad upon which
Appeal 2009-2680
Application 11/031,799

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the device can be placed in the manner of a fitted sheet” and that the “device
further comprises a lengthwise pocket … running along a middle portion of
the underside of each side edge of the sheet[,] … preferably sized to fit over
the side railings of a gurney or hospital bed” (id. at col. 5, ll. 17-24).
5. McCormick discloses that the
device shown in FIG. 2 further comprises a head portion
12 including an underside sidewise pocket 16 and a foot portion
14 including a sidewise pocket 18. The sheet is dimensioned to
cover and protect a mattress or pad such as is typically found on
a gurney with the two underneath sidewise pockets 16 and 18
being dimensioned to receive the ends of such a mattress while
the sheet underside lies along the surface of the mattress. Thus,
the device functions as a fitted sheet for the gurney mattress or
pad in the manner of a fitted sheet.
(Id. at col. 5, ll. 36-50).
6. Frank discloses “bedding protection devices, for use, more
especially, in bunk houses of logging camps, road crews, etc., for safe-
guarding the bed-clothes from becoming unnecessarily soiled” (Frank, col.
1, ll. 1-5).
7. Figure 1 of Frank is shown below:

Appeal 2009-2680
Application 11/031,799

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Figure 1 shows “a top plan view of a bedding protecting device …,
the fly member being shown in its spread or extended position” (id., col. 1,
ll. 31-34).
8. Figure 3 of Frank is shown below:

Figure 3 shows “a perspective view showing the cover fully folded
and illustrative of the position when in use” (id. at col. 1, ll. 36-38).
9. Frank discloses that “the bottom flap 7 is secured above the springs
of a bed and made fast thereto by means of … grommet-lanyard fastenings”
and that the “mattress and bedding are placed above the bottom flap 7” (id.
at col. 2, ll. 72-76).
10. Frank discloses that “the fly 8 is then thrown over the made-up
bed” (id. at col. 2, ll. 78-79).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
Appeal 2009-2680
Application 11/031,799

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“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).
Analysis
Claim 12 defines a support mat for a patient comprising a mat and a
mat cover completely enclosing the mat in an interior volume completely
defined by the mat cover. The Examiner finds that McCormick discloses a
mat and mat cover as recited in claim 12, with the exception of a mat cover
that completely encloses the mat, and that Frank discloses a cover having a
bottom flap 7 that completely encloses a mattress (Ans. 3). The Examiner
concludes that one of skill in the art would have motivated to completely
enclose the mat of McCormick, as disclosed in Frank, to exclude dirt and
moisture (id. at 3-4).
Appellant contends that, contrary to the Examiner’s position, Frank’s
fly 8 would not completely enclose a mattress because “parts of the bed
frame would normally be positioned between the flaps 9 and 10 contiguous
with the fly and the bottom flap 7 supporting the mattress and attached to the
inside of the bed frame (toward its bottom)” (Appeal Br. 13). Appellant also
argues that the combined references would not suggest the claimed
invention, which requires completely enclosing a mat (id.) and, in any event,
“there is no rational reason to combine such a teaching of this 1929 bed-
covering-to-keep-it-clean invention with McCormick, which teaches its
patient transport device” (id.).
Appeal 2009-2680
Application 11/031,799

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Appellant’s arguments are persuasive. McCormick discloses a patient
transport sheet that may be attached to a gurney mattress in the manner of a
fitted sheet and that is preferably sufficiently light weight and pliable to fold
for carrying in a backpack. Frank discloses a mattress protection cover that
is fixed to the springs underneath a mattress and that can be thrown over a
made-up bed to protect the bed clothes, but that is left open at one end.
The products disclosed by McCormick and Frank thus are designed to
provide different features: McCormick’s product is disclosed to be
disposable and easy to fit onto a gurney, while Frank’s product is designed
to be attached securely to a bed and reused over a period of time. The
Examiner has not adequately explained why one of skill in the art would
have been motivated to provide the McCormick patient transport device with
a back cover as disclosed by Frank, to achieve “a mat cover completely
enclosing the mat” as required by claim 12. Such a mattress cover, with a
patient on top as contemplated by McCormick, would be more difficult to
attach to a gurney mattress than McCormick’s fitted-sheet design. The
Examiner has not shown that the proposed combination would provide a
cover that would “exclude dirt and moisture from the mat” (Ans. 4) any
better than McCormick’s fitted-sheet design, or provide any other advantage
that would offset losing the convenience of the fitted-sheet design.
The Examiner has also rejected claim 15 under 35 U.S.C. § 103(a) as
being obvious in view of McCormick, Frank, and Neary (Ans. 5); claims 16
and 17 under 35 U.S.C. § 103(a) as being obvious in view of McCormick,
Frank, and Weeks (id. at 6); and claim 22 under 35 U.S.C. § 103(a) as being
obvious in view of McCormick, Frank, and Zwickey (id.).
Appeal 2009-2680
Application 11/031,799

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Claims 15-17 and 22 depend from claim 12. As discussed above, the
Examiner has not adequately explained how McCormick and Frank would
have suggested the invention of independent claim 12. The Examiner has
pointed to nothing in Neary, Weeks, or Zwickey that would make up for the
deficiency of McCormick and Frank.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the combination of the cited references suggests the support mat of
claim 12 in which a mat cover completely encloses the mat.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a) of claims 12-30
based on the cited references.

REVERSED
lp

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN NJ 08830