Ex parte KIDWELL

Board of Patent Appeals and Interferences

Jul 22, 1998

08424759 (B.P.A.I. Jul. 22, 1998)

Application for patent filed April 18, 1995.1
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(2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DONALD E. KIDWELL
__________
Appeal No. 97-3295
Application 08/424,7591
__________
ON BRIEF
__________
Before ABRAMS, STAAB, and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 6-9 and 20-27, which constitute all
of the claims remaining of record in the application.
Appeal No. 97-3295
Application No. 08/424,759
We note that the dependency of claim 6 is recited as2
being from claim 5, which has been canceled. It would appear
that claim 6 should depend from claim 20. Also, as pointed
out by the examiner, claim 27 was not reproduced in the
appendix to the Brief.
2
The appellant's invention is directed to a suntanning
body support. The subject matter before us on appeal is
illustrated by reference to claim 20, which has been
reproduced in an appendix to the Brief.2
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Lerman 3,323,151 Jun. 6, 1967
Spann 3,938,205 Feb. 17, 1976
Oldfield 4,535,495 Aug. 20, 1985
De Fries 4,222,468 Sep. 16, 1980
Groenewald 5,224,226 Jul. 6, 1993
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 6, 8 and 20 on the basis of Groenewald and De
Fries.
(2) Claim 7 on the basis of Groenewald, De Fries and
Lerman.
(3) Claim 9 on the basis of Groenewald, De Fries and
Spann.
(4) Claims 21-24 on the basis of Spann and Groenewald.
Appeal No. 97-3295
Application No. 08/424,759
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(5) Claims 25-27 on the basis of Spann, Groenewald and
Oldfield.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Brief. As a result of our review, we have determined that
none of the rejections should be sustained. Our reasoning is
based upon the guidance from our reviewing court that in a
rejection under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness
(see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993)), which is established when the teachings of
the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art
(see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993)).
Appeal No. 97-3295
Application No. 08/424,759
4
The primary objective of the appellant’s invention is to
provide a platform for supporting a sunbather’s body in
positions that orient the side surfaces of the body toward the
sun’s rays (Brief, page 2). As manifested in all of the
independent claims, the structure for accomplishing this
objective comprises, inter alia, a body support surface which
is inclined to the generally planar surface upon which it is
intended to rest, and has contours conforming to the contours
of the body of the sunbather. Central to our decision not to
sustain the rejections is our belief that one of ordinary
skill in the art would have understood from the specification
that the “contours” are the undulations along the body support
surface which accommodate various portions of the user’s body
(see Figures 1, 2 and 7), while “inclined” should be
interpreted as meaning that the entire body support surface is
sloped with regard to the surface upon which the elongate
structure of which it is a part rests (see Figures 1, 2 and
5).
Independent claim 20 stands rejected on the basis of
Groenewald in view of De Fries. From our perspective,
Groenewald is the type of prior art device over which the
Appeal No. 97-3295
Application No. 08/424,759
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appellant believes his invention to be an improvement. This
reference discloses a body support surface that has contours
to conform to the contours of the body of the user. However,
we do not agree with the examiner that the body support
surface is “inclined” with respect to the planar surface that
it is to rest upon, as required by the claim, considering the
interpretation set forth above which we have held should be
applied to this term.
The rejection of claim 20 fails at this point, for the
deficiency in Groenewald is not alleviated by the teachings of
De Fries. The relevance of this secondary reference extends,
at most, to its teaching of providing a storage compartment in
a head rest/blanket combination useable for reclining on a
beach.
Thus, the combined teachings of Groenewald and De Fries
fail to establish a prima facie case of obviousness with
respect to the subject matter recited in independent claim 20,
and thus the rejection of this claim and claims 6 and 8, which
depend therefrom, cannot be sustained.
Adding Lerman, which is cited for its teaching of
providing a cushion with an opening to function as a handle,
Appeal No. 97-3295
Application No. 08/424,759
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also fails to cure the aforementioned shortcoming in
Groenewald, and therefore the rejection of claim 7 also is not
sustained.
Spann was added to Groenewald and De Fries in the
rejection of claim 9, which requires that the elongate
structure be wedge-shaped, with triangular ends. Spann is
directed to a body positioner for use in supporting a patient
lying upon an operating room table or the like. It comprises
an elongated body having a plurality of flat surfaces upon
which the patient’s body can be supported (column 1, line 29
et al.). The ends of the body are essentially triangularly
shaped. However, the mere fact that the Groenewald structure
could be modified in the manner proposed by the examiner does
not make such a modification obvious unless the prior art
suggests the desirability of doing so (see In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). There
must be a motivation stemming from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure (see, for example,
Appeal No. 97-3295
Application No. 08/424,759
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Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988)). We find this to be lacking.
Groenewald does not explicitly, or by implication,
provide any teaching or suggestion that the body support
surface disclosed should or could be used in anything other
than in the orientation shown in Figures 2-4. According to
Groenewald,
[t]he structure of the mattress 10 is specifically
designed to provide a comfortable support to the
body of a person, in particular in the lumbar
regions of the body and thereby to assist in
relieving lumbago pains, i.e. muscular pains in the
lumbar region (column 2, lines 34-38),
which in our view would strongly indicate to one of ordinary
skill in the art that it should not be inclined with respect
to the surface upon which it rests. That is, it would appear
from this statement that the Groenewald device would not
perform its intended function if the support surface was so
inclined.
For this reason, it is our opinion that there would have
been no suggestion to modify the Groenewald mattress in the
Appeal No. 97-3295
Application No. 08/424,759
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manner proposed by the examiner in view of the teachings of
Spann, and the rejection therefore cannot be sustained.
Independent claim 21 stands rejected as being
unpatentable over Spann in view of Groenewald. It is the
examiner’s position that it would have been obvious to one of
ordinary skill in the art to contour the body support surface
of Spann “to prevent the body from slipping along the inclined
surface of Spann” (Answer, page 5). However, Spann utilizes
all five surfaces of the body support (column 2, lines 37-41;
in Figures 1-4), and teaches that “this placement of the block
also provides for a wide base surface against the table with
resulting increase in stability” (column 2, lines 49-51).
Therefore, contouring the Spann block would seem adversely to
affect the desired operation of the device, which in our view
must be considered a disincentive to one of ordinary skill in
the art to modify it in the manner proposed by the examiner.
Thus, a prima facie case of obviousness is not established and
the rejection of claim 21 and claims 22-24, which depend
therefrom, cannot be sustained.
The same holds true of the rejection of independent claim
25 and dependent claims 26 and 27, which have been rejected on
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Application No. 08/424,759
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the basis of Spann in view of Groenewald and Oldfield. The
latter reference, a back rest cited for its teaching of having
portions of varying widths, does not overcome the problem with
the basic combination.
SUMMARY
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
Neal E. Abrams )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John P. McQuade )
Administrative Patent Judge )
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