Ex Parte Koskey

Board of Patent Appeals and Interferences

Feb 2, 2011

11398920 (B.P.A.I. Feb. 2, 2011)

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.
11/398,920 04/06/2006 James Donald Koskey JR. KHI0601 9370
25007 7590 02/02/2011
LAW OFFICE OF DALE B. HALLING
3595 FOUNTAIN BOULEVARD SUITE A2
COLORADO SPRINGS, CO 80910
EXAMINER
SANDERSON, JOSEPH W
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
02/02/2011 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
JAMES DONALD KOSKEY, JR.
__________

Appeal 2011-000602
Application 11/398,920
Technology Center 3600
__________

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

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2011-000602
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,
wherein the weather resistant cover is waterproof and the outdoor heated pet
bed is collapsible and forms a sandwich with essentially no air gaps between
the low wattage heating wire, the foil packet, the foam layer and both a top
and bottom portion of the weather resistant cover.

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, wherein the weather
resistant cover is waterproof and the heated pet bed is collapsible and forms
a sandwich with essentially no air gaps between the low wattage heater and a
top and a bottom portion of the weather resistant cover 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, wherein the cover
is water proof and the heated pet bed is collapsible and forms a sandwich
with essentially no air gaps between the low wattage heater, the insulating
layer and a top and a bottom portion of the cover.

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Application 11/398,920

3
The Examiner relies on the following evidence:
Balboni US 4,162,393 Jul. 24, 1979
Hwang et al. US 5,524,308 Jun. 11, 1996
Reusche et al. US 6,084,209 Jul. 4, 2000
Owen et al. US 6,189,487 B1 Feb. 20, 2001

The Examiner rejected the claims as follows:
(A) Claims 1-19 under 35 U.S.C. § 112, second paragraph, as indefinite.

(B) Claims 1-19 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (new matter).

(C) Claims 1 and 6-14 under 35 U.S.C. § 103(a) as unpatentable over
Hwang and Owen.

(D) Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Hwang,
Owen and Reusche.

(E) Claims 4, 5, and 15-19 under 35 U.S.C. § 103(a) as unpatentable over
Hwang, Owen, and Balboni.

FACT FINDINGS
1. Independent claim 1 is directed to a collapsible heated 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 waterproof cover enclosing the foam layer and the foil packet,
with essentially no air gaps between the heating wire, the foil packet, the
foam layer, and the cover.
Independent claim 8 is directed to a collapsible heated pet bed
comprising three elements: a low wattage heater; a waterproof cover
enclosing the heater; and an air nozzle in the cover, with essentially no air
gaps between the heater and the cover.
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4
Independent claim 13 is directed to a collapsible heated pet bed
comprising three elements: a low wattage heater; an insulating layer
surrounding the heater; and a waterproof cover permanently enclosing the
heater, with essentially no air gaps between the heater, the insulating layer,
and the cover.
2. The Specification teaches that the waterproof 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).
Owen
3. Owen describes a heated pet bed which can be used in “an
outdoor location” (Owen, col. 3, l. 20).
4. 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).
5. 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).
6. “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).
7. “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).
Hwang
8. Hwang discloses a portable sleeping mat “in which a body
means has an air-tight pad receiving cavity in which a pad is received and
the cavity may be inflated and deflated with air to increase and decrease the
resistance to forces imposed thereon” (Hwang, col. 3, ll. 7-11).
9. The pad comprises a flexible open-cell polyurethane foam
(Hwang, col. 7, ll. 42-43).
10. The body means comprises a nylon outer layer and a
thermoplastic or thermosetting inner layer (Hwang, col. 7, ll. 44-46).
11. A valve extends through the lower layer of the body means and
into the air-tight pad receiving cavity. When the valve is open, air can flow
into and out of the pad receiving cavity to inflate or deflate the pad as
desired (Hwang, col. 6, ll. 48-67).
12. An inflatable, waterproof pillow may be attached to Hwang’s
sleeping mat (Hwang, col. 10, ll. 40-49).
Reusche
13. Reusche discloses a pet bed with an electrically grounded
heating element (Reusche, col. 2, l. 67 - col. 3, l. 1).

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7
INDEFINITENESS
“A decision on whether a claim is invalid under § 112, 2d ¶, requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics
Inc. v. Safety Travel Chairs Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
The Examiner rejected claims 1-19 as indefinite because the claims
recite that “the bed forms a sandwich with no air gaps, however it is unclear
whether the sandwich is formed when in the collapsed or expanded
configuration” (Ans. 4).
We disagree. One skilled in the art would understand, from the plain
language of the claims, the relative positions of the various layers of the pet
bed, in both its collapsed and expanded configurations, and would also
understand that “these layer[s] are touching each other as opposed to an air
gap separating these layers” (App. Br. 7).
The rejection of claims 1-19 as indefinite is reversed.

WRITTEN DESCRIPTION
“In order to satisfy the written description requirement, the disclosure
as originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000). However, the disclosure must convey
with reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. See id.
The Examiner rejected claims 1-19 as failing to comply with the
written description requirement because “[t]he original disclosure does not
provide for the claimed lack of air gaps in the system” (Ans. 4).
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In the present case, we agree with the Examiner that the limitation
“essentially no air gaps” is new matter. While the plain language of the
claim is definite on its face (as discussed above), that doesn’t mean that the
claim language finds written descriptive support in the Specification as
originally filed. The Examiner correctly notes that there is no mention of a
lack of air gaps in the Specification, and Appellants do not identify any
specific teaching in the Specification which indicates that there are
“essentially no air gaps” between the various layers of the bed. See Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir.
2010) (“[A] description that merely renders the invention obvious does not
satisfy the [written description] requirement.)”
We further note that the Specification explicitly states that the purpose
of “air valve 18 in the cover allows air to be removed from the foam and
interior of the bed for shipping” (Spec. 7: 4-5 (emphasis added)). Moreover,
Figure 2, reproduced immediately below, shows what can reasonably be
interpreted as air space between foam layers 26 and 28 and cover 16:

{Figure 2: a cross-sectional view of heated pet bed 10}
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Therefore, we agree with the Examiner that the limitation “essentially
no air gaps” lacks written descriptive support in the Specification as filed,
and the rejection of claims 1-19 is affirmed.

OBVIOUSNESS
The Examiner rejected claims 1 and 6-14 as unpatentable over the
disclosures of Hwang and Owen. The Examiner also rejected claims 2 and 3
as unpatentable over Hwang, Owen, and Reusche, and claims 4, 5, and 15-
19 over Hwang, Owen, and Balboni.
The rejection of claims 1 and 6-14 over Hwang and Owen.
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) (FF5-6).
Owen does not disclose that the pet bed has an air nozzle in the cover as
required by claim 8.
Hwang discloses a portable sleeping mat comprising an inflatable and
deflatable open cell foam pad inside an air-tight vinyl cover, wherein the
flow of air into and out of the cover is controlled by a valve (FF8-11).
The Examiner concluded that it would have been obvious to combine
the features of Hwang and Owen “for the well known advantage of
providing a heated bed for a user in cold weather” (Ans. 5).

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Appellant contends that:
Owen is directed to a bed with at least three layers of foam
insulation and a removable heating element interposed between
the layers. The amount of heat is regulated by selectively
positioning the heating element between different adjacent
layers of foam . . . The heating layer is accessed by the zipper
16. There is no point in having an air nozzle with a zipper [as
required by independent claim 8].
(App. Br. 11.)
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; FF4). This is accomplished
by “selectively interposing the heating element 20 between different
adjacent foam layers” (id. at col. 3, ll. 12-13; FF6), 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.
Therefore, we will reverse this rejection with respect to claim 8, and
claims 9-12, which depend directly or indirectly from claim 8, as well as
claim 7, which depends from claim 1, and further requires an air nozzle.
For a similar reason, we are persuaded that the invention of
independent claim 13 would not have been obvious over the combined
disclosures of Hwang and Owen. Claim 13 is directed, in pertinent part, to a
pet bed comprising three elements: a low wattage heater; an insulating layer
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Application 11/398,920

11
surrounding the heater; and a cover permanently enclosing the insulating
layer.
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; FF4). This is accomplished by “selectively interposing the heating
element 20 between different adjacent foam layers” (id. at col. 3, ll. 12-13;
FF6), i.e., by moving the heating element to different positions within the
blanket casing as needed. A permanent cover would prevent this flexibility.
Accordingly, we will reverse this rejection with respect to claim 13,
and claim 14, which depends from claim 13.
Claims 1 and 6, however, stand on a different footing. Claim 1 is
directed, in pertinent part, to a heated 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 waterproof cover
enclosing the foam layer and the foil packet (FF1). Claim 6 includes an
additional requirement for an electrical cord covered by a metal spring.
Neither claim requires a nozzle or that the cover permanently enclose the
heating element.
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; a weather resistant vinyl cover; and a
power cord protected by a coiled wire (FF5-7). In short, Owen discloses a
heated pet bed that combines all of the elements required by claims 1 and 6,
with the possible exception of the cover being waterproof - a feature shown
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by Hwang. In any case, Owen describes his heated pet bed as suitable for
outdoor use (FF3). Even without Hwang, we agree with the Examiner that
there is nothing unobvious about waterproofing a pet bed intended for
outdoor use. “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). 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.”).
Nor are we persuaded by Appellant’s argument that “[y]ou cannot
practice the invention of Owens [sic] with a weather resistant cover. The
specification of the present invention makes it clear that the zipper is not
weather resistant since it is not water tight” (App. Br. 9). Appellant has not
pointed to anything in the Specification which supports this argument, or
otherwise established that a zipper is necessarily non-waterproof.
Accordingly, we will affirm the rejection of claims 1 and 6 as
unpatentable over Hwang and Owen.
The rejection of claims 2 and 3 over Hwang, Owen, and Reusche.
Appellant’s arguments regarding this rejection are essentially the
same as discussed above (App. Br. 14), and are unpersuasive with respect to
claim 2, since claim 2 depends from claim 1 and merely requires that the foil
packet is electrically grounded - a conventional feature disclosed by Reusche
(FF13).
Claim 3, however, further requires “a thermostat controlling a current
to the low wattage heating wire.” Owen states that the object of his
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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) (FF4). That being the case,
we do not agree that the invention of claim 3 would have been obvious over
the cited references.
Therefore, we will affirm this rejection with respect to claim 2, but
reverse it with respect to claim 3.
The rejection of claims 4, 5, and 15-19 over Hwang, Owen, and Balboni.
Appellant makes no argument with respect to this rejection, and we
summarily affirm it with respect to claims 4 and 5 which do not include any
of the limitations we have determined to be unobvious over the cited prior
art (a nozzle, a permanent cover, or a thermostat, as discussed above).
Nevertheless, having determined that claim 13 would not have been
obvious over the combined disclosures of Hwang and Owen (a
determination not altered by Balboni’s disclosure), we will reverse this
rejection with respect to claims 15-19, which depend directly or indirectly
from claim 13.
SUMMARY
(A) The rejection of claims 1-19 under 35 U.S.C. § 112, second paragraph,
as indefinite is reversed.

(B) The rejection of claims 1-19 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is affirmed.

(C) The rejection of claims 1 and 6-14 under 35 U.S.C. § 103(a) as
unpatentable over Hwang and Owen is affirmed with respect to claims
1 and 6, and reversed with respect to claims 7-14.

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(D) The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Hwang, Owen and Reusche is affirmed with respect
to claim 2 and reversed with respect to claim 3.

(E) The rejection of claims 4, 5, and 15-19 under 35 U.S.C. § 103(a) as
unpatentable over Hwang, Owen, and Balboni is affirmed with respect
to claims 4 and 5, and reversed with respect to claims 15-19.

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).

AFFIRMED

alw

LAW OFFICE OF DALE B. HALLING
3595 FOUNTAIN BOULEVARD SUITE A2
COLORADO SPRINGS, CO 80910