Ex Parte KoskeyDownload PDFBoard of Patent Appeals and InterferencesJul 29, 200911398920 (B.P.A.I. Jul. 29, 2009) Copy Citation 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 __________ 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). Appeal 2009-003874 Application 11/398,920 2 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. Appeal 2009-003874 Application 11/398,920 3 (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). Appeal 2009-003874 Application 11/398,920 4 “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). Appeal 2009-003874 Application 11/398,920 5 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: Appeal 2009-003874 Application 11/398,920 6 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 Appeal 2009-003874 Application 11/398,920 7 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 Appeal 2009-003874 Application 11/398,920 8 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). Appeal 2009-003874 Application 11/398,920 9 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. Appeal 2009-003874 Application 11/398,920 10 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. Appeal 2009-003874 Application 11/398,920 11 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.). Appeal 2009-003874 Application 11/398,920 12 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. Appeal 2009-003874 Application 11/398,920 13 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 Appeal 2009-003874 Application 11/398,920 14 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. Appeal 2009-003874 Application 11/398,920 15 (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 alw LAW OFFICE OF DALE B. 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