Ex Parte Koskey

Board of Patent Appeals and Interferences

Jul 29, 2009

11398920 (B.P.A.I. Jul. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
JAMES DONALD KOSKEY, JR.
__________

Appeal 2009-003874
Application 11/398,920
Technology Center 3600
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Decided:1 July 29, 2009
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

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).

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Application 11/398,920

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This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-19, all the claims pending. We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The invention is directed to “a heated pet bed that is economical to
operate and economical to purchase” (Spec. 2).
Claims 1, 8, and 13 are representative of the subject matter on appeal:
1. An outdoor heated pet bed, comprising:
a low wattage heating wire;
a foil packet enclosing the low wattage heating wire;
a foam layer adjacent to one side of the foil packet; and
a weather resistant cover enclosing the foam layer and the foil packet.

8. A heated pet bed, comprising:
a low wattage heater;
a weather resistant cover enclosing the low wattage heater; and
an air nozzle in the weather resistant cover.

13. A heated pet bed comprising:
a low wattage heater;
an insulating layer surrounding the low wattage heater; and
a cover permanently enclosing the insulating layer.

The Examiner relies on the following evidence:
Reusche US 6,084,209 Jul. 4, 2000
Owen US 6,189,487 B1 Feb. 20, 2001
Curley US 2001/0045372 A1 Nov. 29, 2001
DiLiberto, Jr. US 2003/0183550 A1 Oct. 2, 2003

The Examiner rejected the claims as follows:
(A) Claims 1-3 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Reusche and Owen.

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(B) Claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Reusche, Owen, and Curley.

(C) Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Reusche,
Owen, and DiLiberto, Jr.

(D) Claims 8-11 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Owen and DiLiberto, Jr.

(E) Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Owen,
DiLiberto, Jr., and Reusche.

(F) Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Owen.

(G) Claims 15-19 under 35 U.S.C. § 103(a) as unpatentable over Owen,
DiLiberto, Jr., and Curley.

PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based on
the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). On appeal
to this Board, Appellant must show that the Examiner has not sustained the
required burden. See e.g., Ex parte Yamaguchi, 88 USPQ2d 1606, 1608,
1614 (BPAI 2008) (precedential); and Ex parte Fu, 89 USPQ2d 1115, 1118,
1123 (BPAI 2008) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief . . .
will be refused consideration by the Board, unless good cause is shown.”).
Anticipation is the epitome of obviousness, In re McDaniel, 293 F.3d
1379, 1385 (Fed. Cir. 2002).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that is was obvious under § 103.

Id. at 421. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
FINDINGS OF FACT
FF1 Independent claim 1 is directed to a pet bed comprising four
elements: a low wattage heating wire; a foil packet enclosing the heating
wire; a foam layer adjacent to one side of the foil packet; and a weather
resistant cover enclosing the foam layer and the foil packet. Independent
claim 8 is directed to a pet bed comprising three elements: a low wattage
heater; a weather resistant cover enclosing the heater; and an air nozzle in
the cover.
FF2 The Specification does not define the term “weather resistant,”
but teaches that a weather resistant cover may be made of “a plastic
material” (Spec. 7: 2-3), for example, “PVC [polyvinyl chloride] which is
both water proof and fire retardant” (id. at 8: 3-4).
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FF3 The Examiner finds that “a zipper would not preclude [an] item
from being weather resistant . . . [for example] the majority of weather
resistant sleeping bags have zippers” (Ans. 9).
FF4 Independent claim 13 is directed to a pet bed comprising three
elements: a low wattage heater; an insulating layer surrounding the heater;
and a cover permanently enclosing the insulating layer. Claim 14 depends
from claim 13 and requires an air nozzle in the cover.
Owen
FF5 Owen describes a heated pet bed which can be used in “an
outdoor location” (Owen, col. 3, l. 20).
FF6 Owen states that the object of his invention is “to provide a
heated pet bed in which the amount of heat delivered to the upper surface of
the bed can be easily regulated” (Owen, col. 1, ll. 26-28), “without the need
for thermostats, switches or other complicated structures” (id. at col. 1, ll.
36-37).
FF7 Owen’s Figures 1 and 2, reproduced immediately below, show
details of the pet bed’s electric heating element and placement of the heating
element between layers of foam insulation material in a blanket casing:

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Owen’s Figure 1 illustrates the pet bed’s “heating element 20 to which power
is supplied through a power cord 22. The power cord extends from the heating
element . . . to a conventional step down transformer 30 . . . [and] a coiled wire
24 is placed over the power cord” (Owen, col. 2, ll. 28-34). Figure 2 shows
“upper blanket layer 12 and a lower blanket layer 14 which are joined along
their peripheral edges by means of a zipper 16 to form a hollow blanket casing”
(id. at col. 2, ll. 15-17). “Within the blanket casing . . . are disposed at least
three layers of insulating foam material . . . 42, 44, 46, 48 ” (id. at col. 2, ll. 56-
60).
FF8 “The heating element may be an electric resistance wire 26 laid
out in a generally serpe[n]tine fashion and imbedded within a backing sheet 28.
The backing sheet is preferably a vinyl insulated pad, but could also be foil
layers with the resistance wire sandwiched therebetween” (Owen, col. 2, ll. 46-
50). “The heating element 20 is interposed between two adjacent layers of the
foam material so that at least one foam layer is above the heating element and
at least one foam layer is below the heating element” (id. at col. 2, ll. 61-64),
and “the amount of heat supplied to the upper blanket layer 12 can be easily
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regulated by selectively interposing the heating element 20 between different
adjacent foam layers” (id. at col. 3, ll. 11-13).
FF9 “The upper and lower blanket layers are made of a flexible,
durable, material, such as cotton canvas, nylon, or vinyl” (Owen, col. 2, ll. 25-
27).
Reusche
FF10 Reusche discloses a heated pet bed comprising a heating element
mounted inside a hollow plastic housing formed of a top portion bonded to a
bottom portion around its periphery (Reusche, col. 2, ll. 40-44).
FF11 The heating element comprises a heating coil sandwiched between
two sheets of foil (Reusche, col. 3, ll. 48-49), connected to a power cord (id. at
col. 2, l. 55).
FF12 The power cord is protected by a coil spring (Reusche, col. 2, ll.
57-58), and a ground wire from the power cord is interconnected with the coil
spring (id. at col. 3, ll. 2-4).
DiLiberto
FF13 The Examiner finds, and Appellant does not dispute, that
DiLiberto “teaches it is known to have an air nozzle (paragraph 89) in a bed for
reducing the size for storage” (Ans. 6).
Curley
FF14 Curley describes a pet bed constructed of fire retardant materials
(Curley ¶ 38).
OBVIOUSNESS
Issue (A): Claims 1-3 and 6
The Examiner rejected claims 1-3 and 6 as unpatentable over Reusche
and Owen. Appellant does not present separate arguments for the claims
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subject to this rejection. We select claim 1 as representative. 37 C.F.R. §
41.37(c)(1)(vii) (2006).
The issue raised by this rejection is whether Appellant has established
that the Examiner erred in concluding that a heated pet bed with a low
wattage heating wire enclosed in a foil packet, a foam layer adjacent to the
foil packet, and a weather resistant cover would have been obvious over the
disclosures of Reusche and Owen.
Analysis
Owen discloses a heated pet bed with a heating element comprising a
low wattage heating wire (electric resistance wire 26) enclosed in a foil
packet (backing 28, comprising foil layers sandwiching the resistance wire);
a foam layer adjacent to the foil packet (Owen’s heating element is
interposed between layers of foam material 42, 44, etc.); and a weather
resistant cover (blanket casing 12, 14, which may be made of vinyl) (FF9).
Reusche also discloses a heated pet bed with a heating element
(heating coil 34) enclosed in a foil packet (heating coil 34 is sandwiched
between two sheets of foil 36) (FF11), connected to a wire-protected power
cord (FF12), and electrically grounded (FF12).
The Examiner concluded that it would have been obvious to combine
the features of Reusche and Owen to provide “a comfortable bed by virtue of
a foam layer and a cover that is whether [sic, weather] resistant so that it
may be used outdoors” (Ans. 5).
Appellant contends that “Reusche clearly does not have a foam layer
and combining Reusche with Ownes [sic] does not solve the problem . . .
[b]ecause Reusche teaches ‘air gaps’ above and below the heating element
and Owen teaches a foam layer against the heating layer” (App. Br. 7).
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Appellant’s argument is not persuasive. As discussed above, Owen
discloses a heated pet bed with a heating element comprising a low wattage
heating wire enclosed in a foil packet; a foam layer adjacent to the foil
packet; and a weather resistant vinyl cover (FF9). In short, Owen discloses
a heated pet bed that combines all of the elements required by claim 1.
Nor are we persuaded by Appellant’s argument that “Owen shows a
zipper 16 to close his cover . . . [and a] zipper is clearly not weather
resistant” (App. Br. 8).
Owen describes his heated pet bed as suitable for outdoor use. In
addition, the Examiner finds, and Appellant does not dispute, that “weather
resistant sleeping bags have zippers” (FF3). We agree with the Examiner
that “a zipper would not preclude . . . [Owen’s cover] from being weather
resistant” (Ans. 9).
Finally, Appellant contends that Reusche “has a non-collapsible bed
. . . [and] teaches air gaps between the heating element and the cover” (App.
Br. 8), while “[t]he present application clearly requires no air gaps so that
there is the appropriate insulation when no pet is on the bed and to provide
better heat transfer where a pet’s body is in contact with the bed” (id.).
Appellant’s argument is not persuasive as the rejected claims do not
require these features.
Conclusions of Law
Appellant has not established that the Examiner erred in concluding
that a heated pet bed with a low wattage heating wire enclosed in a foil
packet, a foam layer adjacent to the foil packet, and a weather resistant cover
would have been obvious over the disclosures of Reusche and Owen.
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The rejection of claims 1-3 and 6 as unpatentable over Reusche and
Owen is affirmed.
Issue (B): Claims 4 and 5
The Examiner rejected claims 4 and 5 as unpatentable over Reusche,
Owen, and Curley.
Claim 5 depends from claim 4, and claim 4 depends from claim 1.
We note that claim 5 was included with the rejection of claims 1-3 and 6
over Reusche and Owen in the Final Rejection (May 29, 2007), but has been
included with the rejection of claim 4 over Reusche, Owen, and Curley in
the Examiner’s Answer, “to accurately reflect the proper dependency chain”
(Ans. 2-3).
In any case, Appellant makes no separate argument with respect to
claim 5, and merely contends that “Claim 4 is allowable as being dependent
upon an allowable base claim” (App. Br. 8), i.e., independent claim 1.
As discussed above, Appellant has not established that the Examiner
erred in concluding that a heated pet bed with the elements required by claim
1, i.e., a low wattage heating wire enclosed in a foil packet, a foam layer
adjacent to the foil packet, and a weather resistant cover, would have been
obvious over the cited art.
The rejection of claims 4 and 5 as unpatentable over Reusche, Owen,
and Curley is affirmed.
Issue (C): Claim 7
The Examiner rejected claim 7 as unpatentable over Reusche, Owen,
and DiLiberto.
Appellant contends that “Claim 7 is allowable as being dependent
upon an allowable base claim” (App. Br. 9), i.e., independent claim 1.
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As discussed above, Appellant has not established that the Examiner
erred in concluding that a heated pet bed with the elements required by claim
1, i.e., a low wattage heating wire enclosed in a foil packet, a foam layer
adjacent to the foil packet, and a weather resistant cover, would have been
obvious over the cited art.
The rejection of claim 7 as unpatentable over Reusche, Owen, and
DiLiberto is affirmed.
Issues (D) & (E): Claims 8-12 and 14
The Examiner rejected claims 8-11 and 14 as unpatentable over Owen
and DiLiberto, and also rejected claim 12 as unpatentable over Owen,
DiLiberto, and Reusche.
All of these claims require an air nozzle in the weather resistant cover
of a heated pet bed, and the issue raised by each of these rejections is
whether Appellant has established that the Examiner erred in concluding that
a heated pet bed with a low wattage heater enclosed in a weather resistant
cover, with an air nozzle in the cover would have been obvious over the
disclosures of Owen and DiLiberto.
The Examiner concluded that it would have been obvious to include
an air nozzle in the cover of Owen’s heated pet bed to “provid[e] a means to
evacuate air from a mattress . . . for the purpose of reducing its size for
storage” (Ans. 6).
Appellant contends, among other things, that “it would make no sense
to add an air nozzle to Owen” (App. Br. 9), because Owen “has to be able to
open his cover to move the heating element to different positions [in] the
layer[s] of foam” (id.).
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We agree with Appellant on this point. Owen states that the object of
his invention is “to provide a heated pet bed in which the amount of heat
delivered to the upper surface of the bed can be easily regulated” (Owen,
col. 1, ll. 26-28), “without the need for thermostats, switches or other
complicated structures” (id. at col. 1, ll. 36-37; FF6). This is accomplished
by “selectively interposing the heating element 20 between different
adjacent foam layers” (id. at col. 3, ll. 12-13; FF8), i.e., by moving the
heating element to different positions within the blanket casing as needed.
The Examiner did not provide evidence that Owen’s heated bed would need
or benefit from evacuation by an air nozzle when stored. An air nozzle
would have no purpose or function in Owen’s pet bed, with its blanket
casing that opens and closes to accommodate a movable heating element.
Appellant has established that the Examiner erred in concluding that a
heated pet bed with a low wattage heater enclosed in a weather resistant
cover, with an air nozzle in the cover would have been obvious over the
disclosures of Owen and DiLiberto.
The rejection of claims 8-11 and 14 as unpatentable over Owen and
DiLiberto is reversed, as is the rejection of claim 12 as unpatentable over
Owen, DiLiberto, and Reusche, as all of these claims require an air nozzle in
the weather resistant cover of a heated pet bed.
Issues (F): Claim 13
The Examiner rejected claim 13 as unpatentable over Owen. Claim
13 is directed to a pet bed comprising three elements: a low wattage heater;
an insulating layer surrounding the heater; and a cover permanently
enclosing the insulating layer.
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The issue raised by this rejection is whether Appellant has established
that the Examiner erred in concluding that a heated pet bed with a low
wattage heater surrounded by an insulating layer and permanently enclosed
in a cover would have been obvious over Owen’s disclosure.
The Examiner concluded that it would have been obvious “to make
the cover of Owen et al. permanently enclose the insulating layer, since . . .
the provision of adjustability or non-adjustability, where needed, involves
only routine skill in the art” (Ans. 4).
Appellant contends that “Owen shows a zipper 16 that makes the
cover removable. This is important to Owen because he regulates the
temperature by placing the heating element in different positions within the
layers inside the cover of his bed” (App. Br. 7). Appellant contends that
converting Owen’s removable cover to a permanent cover “would defeat the
purpose of Owen” (id.).
Appellant’s argument is persuasive. Again, Owen states that the
object of his invention is “to provide a heated pet bed in which the amount
of heat delivered to the upper surface of the bed can be easily regulated”
(Owen, col. 1, ll. 26-28), “without the need for thermostats, switches or
other complicated structures” (id. at col. 1, ll. 36-37; FF6). This is
accomplished by “selectively interposing the heating element 20 between
different adjacent foam layers” (id. at col. 3, ll. 12-13; FF8), i.e., by moving
the heating element to different positions within the blanket casing as
needed. A permanent cover would prevent this flexibility.
Appellant has established that the Examiner erred in concluding that a
heated pet bed with a low wattage heater surrounded by an insulating layer
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and permanently enclosed in a cover would have been obvious over Owen’s
disclosure.
The rejection of claim 13 as unpatentable over Owen is reversed.
Issue (G): Claims 15-19
The Examiner rejected claims 15-19 as unpatentable over Owen,
DiLiberto, and Curley. Claims 15-19 depend directly or indirectly from
claim 13, and require a fire retardant insulating layer.
Appellant contends that claim 15, as well as claims 16-19, are
allowable as dependent on an allowable base claim (App. Br. 7, 10).
As discussed above, Appellant has established that the Examiner erred
in concluding that a heated pet bed with a low wattage heater surrounded by
an insulating layer and permanently enclosed in a cover (as required by
claim 13) would have been obvious over the disclosures of Owen. Neither
of the secondary references relied on by the Examiner makes up for this
deficiency.
The rejection of claims 15-19 as unpatentable over Owen, DiLiberto,
and Curley is reversed.
SUMMARY
(A) The rejection of claims 1-3 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Reusche and Owen is affirmed.

(B) The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Reusche, Owen, and Curley is affirmed.

(C) The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Reusche, Owen, and DiLiberto, Jr. is affirmed.

(D) The rejection of claims 8-11 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Owen and DiLiberto, Jr. is reversed.

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(E) The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Owen, DiLiberto, Jr., and Reusche is reversed.

(F) The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
Owen is reversed.

(G) The rejection of claims 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Owen, DiLiberto, Jr., and Curley is reversed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

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