Ex parte Koenig

Board of Patent Appeals and Interferences

Oct 20, 1999

08551319 (B.P.A.I. Oct. 20, 1999)

Application for patent filed November 01, 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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte J. FRANK KOENIG
_____________
Appeal No. 1998-1610
Application No. 08/551,319 1
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 1 through 17, 23 through 27 and 29 through
32. Claims 18 through 22, the other claims remaining in the
application, stand withdrawn from consideration under 37 CFR
Appeal No. 1998-1610
Application No. 08/551,319
2
§ 1.142(b) as being directed to a nonelected invention. Claim
28
has been canceled. The appellant has confined the appeal to
only claims 1 through 17 (brief, page 2). Consequently, the
appeal as to claims 23 through 27 and 29 through 32 is hereby
dismissed, leaving for review the standing rejections of
claims 1 through 17.
We REVERSE.
The subject matter on appeal is directed to a sleeping
pad for use in an infant's crib. An understanding of the
invention can be derived from a reading of exemplary claim 1,
a copy of which can be found in the "Appendix" to the main
brief (Paper No. 9).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Padjen 2,203,921 Jun. 11,
1940
Thorn 3,430,272 Mar. 04,
1969
Spann 4,603,445 Aug. 05,
1986
Saviez 4,809,374 Mar. 07,
1989
Hargest et al. 5,317,767 Jun.
Appeal No. 1998-1610
Application No. 08/551,319
We note the following errors in claim 1 (line numbers refer to the2
claim as it appears in the "Appendix"): line 1, "infants" should read --
infant's--, and line 16, "passageways" should read --passageway--.
As a result of an apparent typographical error in Amendment A, filed3
October 28, 1996 (Paper No. 5), the words "as in claim 1" in original claim 5
were omitted. For purposes of our review, we construe claim 5 as being
dependent on claim 1. Correction of claim 5 in Paper No. 5 is in order upon
return of this application to the jurisdiction of the examiner.
3
07, 1994
(Hargest)
Claims 1, 3 and 7 stand rejected under 35 U.S.C. §
102(b) as being anticipated by or, in the alternative, under
35 U.S.C.
§ 103 as obvious over Spann.2
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Spann.3
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Spann in view of Saviez.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Spann in view of Hargest.
Claims 8 through 12 and 15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Thorn in view of Spann.
Claim 13 stands rejected under 35 U.S.C. § 103 as being
Appeal No. 1998-1610
Application No. 08/551,319
4
unpatentable over Thorn in view of Spann and further in view
of Hargest.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Thorn in view of Spann and further in view
of Saviez.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Thorn in view of Spann and further in
view of Padjen.
The full text of the examiner's rejections and the
responses to the arguments presented by appellant appear in
the answer
(Paper No. 12), while the complete statement of appellant's
arguments can be found in the main and reply briefs (Paper
Nos. 9 and 13, respectively).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we have made the
Appeal No. 1998-1610
Application No. 08/551,319
5
determinations which follow.
The rejection of claims 1, 3 and 7 under 35 U.S.C. § 102(b)
We reverse the examiner’s rejection of claims 1, 3 and 7
under 35 U.S.C. § 102(b).
Anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either
expressly or under principles of inherency, each and every
element of a claimed invention. See In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), In re
Paulsen, 30 F.3d 1475, 1478-1479, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994),
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990), and RCA Corp. v. Applied Digital Data Sys., Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
Claim 1, drawn to a sleep pad for use in an infant's
crib, requires (a) a pad member having a top, a bottom and
Appeal No. 1998-1610
Application No. 08/551,319
At page 14 of the specification, the preferred foam material is4
described as a polyethylene foam marketed under the trade name ETHAFOAM®.
6
sides, (b) a plurality of substantially planar, four-sided
passageways extending through said pad member from said top to
said bottom, each one of said passageway sides extending
perpendicular to said top and said bottom and abuts against an
adjacent one of said passageway sides from said top to said
bottom; and (c) at least said passageway sides are formed from
a foam material having low compressibility whereby when an
infant is supported on said pad member, said passageway sides
retain their shape throughout and readily transmit gaseous and
liquid fluids therethrough and away from the crib in an
unrestricted manner. Consistent with the underlying
specification (page 13), we understand the claimed recitation
of "a foam material having low compressibility" to denote a
foam material that is sufficiently firm so that the
passageways maintain their shape and will not distort under
the weight of an infant. 4
The patent to Spann is concerned with a foam mattress
(Fig. 12) or a foam pad for use as a mattress cover and the
Appeal No. 1998-1610
Application No. 08/551,319
7
like. With reference to the embodiment illustrated in Figures
1-3, Spann describes the pad as having a plurality of
upstanding projections or promontorys A each having a planar
apex surface B. The projections are disposed in patterns such
as aligned rows and are integrally carried by a base portion C
of foam material formed in a flat synthetic foam blank. Base
portion C includes connecting portions D which taper toward
the medial portion of the pad forming a tapering ridge 12.
The ridge 12 tapers outwardly such that the connecting portion
D terminates to form a V-shaped notch 13. According to Spann,
such a construction provides limited independent movement for
each of the projections A. In addition, Spann teaches that
each of the projections A may be depressed (see Fig. 3)
substantially independently of the neighboring projections.
Individual movement and depression of the projections A cause
air to move between the voids formed between
the projections A as a person reclining on the pad moves or
turns and produces an air pumping action promoting increased
air flow with better transfer of heat and moisture. See, col.
4, lines
Appeal No. 1998-1610
Application No. 08/551,319
Based on the underlying disclosure and the recitation in claim 1 that5
the passageways are "substantially planar," we understand the limitation to
require, inter alia, that each passageway side be perpendicular to said top
and said bottom along its entire length.
8
8-54 and col. 5, lines 65-68. Spann teaches that the
described
pad may be made from an open cell polyurethane foam having a
density of about 1.63 pounds per cubic foot and an indentation
load deflection of about 34 to 38 (col. 5, lines 40-45).
Appellant argues (main brief, pages 8 and 9) that Spann
does not anticipate claim 1 because the reference does not
disclose: (1) passageway sides extending perpendicular to the
top and bottom of the pad and abutting against an adjacent one
of said passageway sides from said top to said bottom; and5
(2) passageway sides formed from a foam material having low
compressibility whereby the sides retain their shape
throughout under the compressive weight of an infant.
The examiner's response (answer, page 10) to argument (1)
is that Spann clearly shows "passageway sides extending
perpendic-ular to said top and said bottom and abutting
against an adjacent one of said passageway sides from said top
Appeal No. 1998-1610
Application No. 08/551,319
9
to said bottom" in Figure 16A.
We do not agree. Spann describes the embodiment shown in
Figure 16A as having voids that extend entirely through the
pad.
However, as shown in Figure 16A, the voids or apertures 43
extend
only in the areas between the promontorys. Thus, the voids in
Figure 16A do not have sides that extend from the tops of the
promontorys (which form the top of the pad) to the bottom of
the pad as required by claim 1. Figure 16A also fails to show
that the voids are substantially planar and four-sided and
that each side is perpendicular to the top and bottom of the
pad.
As to argument (2), the examiner has acknowledged
(answer, sentence bridging pages 3 and 4) that Spann fails to
expressly disclose passageway sides formed from a foam
material having low compressibility whereby the sides retain
their shape throughout under the compressive weight of an
infant. However, the examiner contends that "Spann appears to
Appeal No. 1998-1610
Application No. 08/551,319
10
teach a foam material that arguably performs this function"
(id. at 4).
We cannot support the examiner's position. Inherency may
not be established by probabilities or possibilities. In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). To
establish inherency, it must be clear that the missing
descriptive matter is necessarily present in the thing
described in the reference. Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991). In this case,
the disclosure of the reference itself precludes a finding
that
the void or passageway sides in Spann will necessarily retain
their shape throughout under the compressive weight of an
infant. Spann explicitly discloses that the upstanding
projections A, which form the sides of the voids, may be
depressed as shown in Figure 3 (col. 4, lines 45-49). In
fact, Spann views this independent movement of the projections
as a positive thing because it creates a pumping action which
Appeal No. 1998-1610
Application No. 08/551,319
11
causes air to flow from hole to hole. Thus, it is clear to us
that not only would the sides of the voids in Spann not retain
their shape throughout under the compressive weight of an
infant, but that such would be contrary to the intended
function of the disclosed pad.
Since Spann does not disclose every limitation recited in
claim 1, expressly or inherently, it does not anticipate that
claim. In re Schreiber, supra. Claims 3 and 7, which depend
on claim 1, are likewise not anticipated.
The rejections of claims 1, 3 and 5-7 under 35 U.S.C. § 103
We reverse the examiner’s rejections under 35 U.S.C. §
103.
We agree with appellant's argument (main brief, page 10)
that Spann does not teach or suggest the limitation in claim 1
that "each one of said passageway sides extends perpendicular
to
said top and said bottom . . . from said top to said
bottom."
Appeal No. 1998-1610
Application No. 08/551,319
12
Rather, Spann shows in each of the figures which depict a void
extending from the top to the bottom of the pad, namely,
Figures 1-3, 9-11 and 18, that the void sides are not
perpendicular to the top of the pad throughout their length.
The examiner has not explained why it would have been obvious
to one of ordinary skill in the art to modify the pad
disclosed by Spann to provide void sides perpendicular to the
top of the pad throughout their length. Furthermore, Spann
teaches that the V-shaped notches 13 between projections A
which are formed by the tapering connecting portions D afford
the independent movement for the upstanding projections A
sought by Spann (col. 4, lines 43-49 and col. 5, lines 53-63).
Thus, Spann actually teaches away from forming the sides of
the voids perpendicular to the top throughout their length,
since such a modification would result in the elimination
of the V-shaped notches 13 and the independent movement for
the upstanding projections A which are critical to Spann.
We also agree with appellant's argument (main brief,
pages 10 and 11) that because Spann's projections A must
compress in
Appeal No. 1998-1610
Application No. 08/551,319
A prima facie case of obviousness requires that all the claim6
limitations be taught or suggested by the prior art. In re Royka, 490 F.2d
981, 985, 180 USPQ 580, 583 (CCPA 1974).
13
order to cause pumping of air through the voids, it would not
have been obvious to vary the compressibility of the foam
material suggested by Spann to provide a sufficiently stiff
pad
which effectively retains the basic shape of the passageways
when supporting the weight of an infant.
Since all the claimed limitations are not suggested by
the prior art, it follows that a prima facie case of
obviousness has not been established by the examiner. Claims6
5 and 6 are dependent on claim 1 and contain all of the
limitations of that claim. Accordingly, the examiner’s
rejection of claims 1, 3 and 5 through 7 under 35 U.S.C. § 103
will not be sustained.
The rejections of claims 2 and 4 under 35 U.S.C. § 103
Our review of Saviez and Hargest, which are used in
combination with Spann to reject claims 2 and 4, respectively,
Appeal No. 1998-1610
Application No. 08/551,319
14
reveals that neither reference supplies the deficiencies in
Spann discussed above. Since claims 2 and 4 are dependent on
claim 1 and contain all of the limitations of that claim, we
will not sustain the standing 35 U.S.C. § 103 rejection of
these claims.
The rejections of claims 8-17 under 35 U.S.C. § 103
We begin with the examiner's rejection of claims 8
through 12 and 15. Independent claim 8 is directed to the
combination of
an infant's crib and a sleeping pad. All of the sleeping pad
limitations in claim 1 are found in paragraph (b) of claim 8.
The examiner has rejected claim 8, as well as dependent claims
9 through 12 and 15, as unpatentable over Thorn in view of
Spann. However, Thorn does not supply the deficiencies noted
above with respect to Spann. Since all of the claimed
limitations in claims 8 through 12 and 15 would not have been
suggested by the combined teachings of Thorn and Spann, we
Appeal No. 1998-1610
Application No. 08/551,319
15
will not sustain the standing
35 U.S.C. § 103 rejection of these claims.
Claims 13, 14, 16 and 17 are dependent, directly or
indirectly, on claim 8. Hargest, Saviez or Padjen is used in
addition to Thorn and Spann to reject one or more of claims
13, 14, 16 and 17. Like Hargest and Saviez discussed above,
Padjen fails to supply the deficiencies in Spann previously
noted. Accordingly, we will not sustain the standing 35
U.S.C. § 103 rejections of these claims.
In summary, all of the examiner's rejections of
claims 1 through 17 are reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
Appeal No. 1998-1610
Application No. 08/551,319
16
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1998-1610
Application No. 08/551,319
17
Shlesinger Arkwright & Garvey
3000 South Eads Street
Arlington, VA 22202