Ex Parte Lachenbruch et al

Patent Trial and Appeal Board

Mar 31, 2017

12984976 (P.T.A.B. Mar. 31, 2017)

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.
Nl-22838 3356
EXAMINER
SMITH, KAITLYN ELIZABETH
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
12/984,976 01/05/2011
63565 7590 04/03/2017
HILL-ROM SERVICES, INC.
Legal Dept., Mail Code KCW
1069 State Road 46 East
BATESVILLE, IN 47006
Charles A. Lachenbruch
04/03/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES A. LACHENBRUCH, ANDREW KERR,
CHRISTOPHER R. O’KEEFE, TIMOTHY J. RECEVEUR,
and RACHEL WILLIAMSON
Appeal 2015-005723
Application 12/984,976
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Charles A. Lachenbruch et al. (Appellants) appeal under 35 U.S.C. §
134(a) from the Examiner’s decision to reject under 35 U.S.C. § 102(b): (1)
claims 1—4, 11, 13, 15, 19, and 21 as anticipated by Acton (US
1 We note that the Examiner states that claim elements in subject application
“that use the word ‘means’ (or ‘step for’) are presumed to invoke 35 U.S.C.
112(f) except as otherwise indicated in an Office action” and that claim
elements in the subject application “that do not use the word ‘means’ (or ‘step
for’) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise
indicated in an Office action.” Final Act. 4.
Appeal 2015-005723
Application 12/984,976
2006/0053554 Al; pub. Mar. 16, 2006); and (2) claims 1—3, 11, 13, 14, 17,
21, 27, and 28 as anticipated by Zhang (US 7,137,992 B2; iss. Nov. 21,
2006); and to reject under 35 U.S.C. § 103(a): (1) claim 16 as unpatentable
over Acton, Buker (US 3,866,612; iss. Feb. 18, 1975), and Frey (US
7,497,870 B2; iss. Mar. 3, 2009); and (2) claim 18 as unpatentable over
Acton and Mason (US 5,507,792; iss. Apr. 16, 1996). Claims 5—10, 12, 20,
22—26, and 29 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relate to “a cooling system associated with
the occupant support.” Spec. 11, Figs. 1, 20. Claims 1 and 27 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A targeted cooling system for an occupant of an occupant
support comprising:
a coolant conduit having an inlet for receiving coolant
from a source thereof and an outlet for discharging the coolant to
a destination, at least a portion of the conduit being
nonpermanently and manually shape adjustable, shape stable
subsequent to adjustment, and removably securable to one or
both of the occupant support and the occupant.
ANALYSIS
Anticipation by Acton
Claims 1—4, 11, 13, 15, 19, and 21
Independent claim 1 is directed to a targeted cooling system including
“cooling conduit,” wherein “at least a portion of the conduit” is “removably
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Application 12/984,976
securable to one or both of the occupant support and the occupant.” Appeal
Br. 21, Claims App. The Examiner finds Acton “teaches that the structure
24 is ‘removably securable’ as 24 is an independent structure that is
coupled (emphasis added) to the patient support and it is the [EJxaminer’s
position that as the structure is coupled to the patient support it is removably
securable.” Ans. 3; see also Final Act. 4—5; Acton || 27—30, Fig. 4.
Appellants contend that the Examiner alleges support for the
“removably securable” assertion “by pointing out that structure 24 is
described as an independent structure which is coupled to the occupant
support. The fact that structure 24 is ‘coupled’ to the occupant support does
not tell the reader if the coupling renders support 24 removable or non­
removable.” Reply Br. 3. Appellants further contend that the text of Acton
“does not expressly describe structure 24 as being removable” and “[tjhere is
nothing in the illustrations [of Acton] to suggest a separable connection
between structure 24 and some other part of the occupant support.” Id.', see
also Appeal Br. 9-11.
At the outset, we note that Appellants’ Specification describes that
“[referring to FIGS. 1 and 4-7, a securement feature 130 renders each
cooling system conduit 100 removably securable to the occupant support, to
the occupant, or to both.” Spec. 110 (emphasis added). In other words, we
understand the phrase “removably securable” to mean that a securement
feature (e.g., a clamp) is used to removably secure the conduit to one or both
of the occupant support and the occupant.
Acton discloses
In some embodiments, nozzle 18 is coupled to a structure
other than siderail 16. One alternative is to employ an
independent structure 24 dedicated to the mounting of nozzle 18
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Application 12/984,976
as in FIG. 4. Structure 24 is coupled to patient support apparatus
10. Structure 24 is positionable such that nozzle 18 is located in
a plurality of positions. Structure 24 comprises a first member
62 which is coupled to frame 30 of patient-support apparatus 10.
A second member 64 is movably coupled to first member 62 and
third member 66 is movably coupled to second member 64.
Acton 127 (emphasis added), Fig. 4. In other words, Acton discloses a
structure (i.e., structure 24) separate from siderail 16 that can be used to
mount nozzle 18. Merely because structure 24 is “independent,” does not
mean that structure 24 is “removably securable” to patient-support apparatus
10. Acton is silent as to how first member 62 of structure 24 is “coupled to”
(i.e., connected to) frame 30 of patient-support apparatus 10 (e.g., via a
clamp, welding, etc.). See id. Consequently, structure 24 being “coupled
to” (i.e., connected to) frame 30 of patient-support apparatus 10 does not
necessarily mean that structure 24 is “removably” connected to frame 30 of
patient-support apparatus 10 because it could just as easily mean that
structure 24 is “permanently” connected to frame 30 of patient-support
apparatus 10. We agree with Appellants that “[t]he fact that structure 24 is
‘coupled’ to the occupant support does not tell the reader if the coupling
renders support 24 removable or non-removable.” Reply Br. 3. As such,
based on the foregoing reasons, the Examiner fails to establish by a
preponderance of the evidence that Acton anticipates the system of claim 1.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
4, 11, 13, 15, 19, and 21 as anticipated by Acton.
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Application 12/984,976
Anticipation by Zhang
Claims 1—3, 13, 14, 17, and 21
Appellants do not offer arguments in favor of dependent claims 2, 3,
13, 14, 17, and 21 separate from those presented for claim 1. See Appeal Br.
13—15. We select claim 1 as the representative claim, and claims 2, 3, 13,
14, 17, and 21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants raise an argument specific to the rejection of claim 11. Appeal
Br. 15—17. Therefore, we address claim 11 separately below.
Independent claim 1 is directed to a targeted cooling system including
a “cooling conduit,” wherein “at least a portion of the conduit” is
“removably securable to one or both of the occupant support and the
occupant.” Appeal Br. 21, Claims App. The Examiner finds that Zhang
discloses “a coolant conduit (combination of elements 12, 112 and 111, Figs.
1 and 3),” wherein “a least a portion of the conduit (112, Figs. 1 and 3)” is
“removably securable to one or both of the occupant support and the
occupant (the conduit is capable of being removed as it is secured to the
occupant support via mounting elements).” Final Act. 6; see also Ans. 4—5.
Appellants contend that
arm 112 is not disclosed as removably securable to one or both
of the occupant support and the occupant. Rather, the component
described as being secured to the vehicle wall (i.e. the occupant
support) is air conduit 12. Conduit 12 is not disclosed as shape
adjustable and shape stable subsequent to adjustment nor do
FIGS. 1 and 3 give the impression that it is. Even if it were, there
is no disclosure that the securement of conduit 12 to the vehicle
wall is [Appellants’] removably securable relationship. On the
contrary the reference teaches that “mounting element 21 [is]
adapted for securely attaching to the interior wall of the vehicle
so as to retain the air conduit 12 in position.” ... Moreover, there
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Application 12/984,976
is no reason to believe that [Appellants’] “removably securable”
relationship would be desirable in the automotive application
shown in the reference.
Appeal Br. 15 (citing Zhang 3:3—7).
At the outset, Appellants do not provide evidence—but rather only
attorney argument—to support the assertion that “there is no reason to
believe that [Appellants’] ‘removably securable’ relationship would be
desirable in the automotive application shown in [Zhang].” See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Further, in the Answer, the
Examiner clarifies that “[t]he conduit of Zhang has been designated as the
combination of elements 12, 112, and 111 in Figs. 1 and 3 of the Zhang
references.” Ans. 4 (emphasis added); see also Final Act. 3 (“the conduit
has been designated by the [E]xaminer as the combination of elements 12,
112 and 111.”).
Here, the Examiner finds that “a least a portion of the conduit (112,
Figs. 1 and 3)” is “capable of being removed as it is secured to the occupant
[support] via mounting elements 21.” See Final Act. 6; see also Ans. 5.
Figures 1 and 3 of Zhang illustrate mounting element 21 “securely
attaching” flexible nozzle arm 112 to air conduit 12 and the interior wall of
the vehicle. See Zhang, 3:3—7, 33—35, Figs. 1,3. As pointed out by the
Examiner, “[t]he fact that mounting elements 21 are adapted for securely
attaching does not preclude that they are [for] removably securing]” flexible
nozzle arm 112 to air conduit 12 and the interior wall of the vehicle. See
Ans. 4—5; see also Final Act. 6. Appellants do not provide persuasive
evidence or argument apprising us of Examiner error or that once conduit 12
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Application 12/984,976
is mounted via clips 21, that the conduit cannot be subsequently removed via
these clips should the need arise. See Appeal Br. 13—15; see also Reply 6—7.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claims 1 as anticipated by Zhang. We further
sustain the rejection of claims 2, 3, 13, 14, 17, and 21, which fall with claim
1.
Claim 11
Dependent claim 11 is directed to “[t]he cooling system of claim 1
including a securement feature associated principally with the conduit for
rendering the conduit removably securable to the occupant support or the
occupant.” Appeal Br. 22, Claims App.
Appellants contend that Paragraph 11 of the Specification
distinguishes “a securement feature associated principally with the conduit.”
Appeal Br. 16. According to Appellants, if “the securement feature (e.g. a
clamp)” “is more conveniently removable from the occupant support,” then
it is “associated principally with the conduit.” Id. Appellants further
contend that
Zhang does not specify the exact nature of the adaptation for
securely attaching the clips [mounting elements 21] to the
vehicle wall, but it is evident from Zhang’s disclosure that if the
mounting elements [21 ] were to be removed from the wall. . . ,
they would also be disengaged from the conduit [12] (by all
appearances the mounting elements would simply fall away from
or be easily separated from the conduit [12] with no noteworthy
additional effort, and Zhang discloses nothing to the contrary).
Hence, Zhang’s mounting clips 21 cannot be characterized as
being associated principally with the conduit.
Appeal Br. 16—17 (citing Zhang 3:3—7).
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Application 12/984,976
We recognize that claims are to be interpreted in light of the
Specification. Claims are construed with an eye toward giving effect to all
terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006). See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions which render phrases in
claims superfluous). Appellants’ Specification describes the “the clamp of
FIGS. 4 A and 4B is associated principally with the conduit 100 given that
the clamp is not as conveniently removeable from the conduit as it is from
the siderailC Spec. 11 (emphasis added); see also Appeal Br. 16.
Here, the Examiner does not give proper effect to the securement
feature being associated principally with the conduit. See Final Act. 7; see
also Ans. 5. As correctly pointed out by Appellants, Zhang merely discloses
that mounting elements 21 are “adapted for securely attaching to the interior
wall of the vehicle so as to retain the air conduit 12 in position.” Zhang 3:5—
7; see also Appeal Br. 16. Zhang is silent as to the removability of mounting
elements 21 with respect to either conduit 12 or the interior wall of the
vehicle. We agree with Appellants that “Zhang does not specify the exact
nature of the adaptation for securely attaching [or removing] the clips
[mounting elements 21] to the vehicle wall [or to conduit 12 for that
matter].” See Appeal Br. 16. Consequently, we agree with Appellants that
“Zhang’s mounting clips 21 cannot be characterized as being associated
principally with the conduit,” as claimed. Appeal Br. 16—17.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claim 11 as anticipated by Zhang.
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Claims 27 and 28
Independent claim 27 is directed to a “targeted cooling system”
including “a coolant conduit having a first conduit portion” wherein “the
first conduit portion [is] shape adjustable but not shape stable subsequent to
adjustment.” Appeal Br. 24, Claims App.
The Examiner finds that Zhang “teaches a targeted cooling system”
including “a coolant conduit (combination of elements 12, 112 and 111,
Figs. 1 and 3) having a first conduit portion (12)” wherein first conduit
portion 12 is “shape adjustable but not being shape stable subsequent to
adjustment.” See Final Act. 7—8; see also Ans. 6.
Appellants contend that “Zhang’s conduit portion 12 (which is
equated to [Appellants’] first conduit portion) is not expressly disclosed as
‘shape adjustable but not shape stable subsequent to adjustment.’” Reply Br.
7; see also Appeal Br. 15, 17—18. Appellants further contend that
Conduit 12 is also not inherently shape adjustable because Zhang
illustrates conduit 12 with a smooth wall, i.e. a wall not
inevitably consistent with shape adjustability. The conclusion
that conduit 12 is not shape adjustable is reinforced by noting
that arm 112, which is shape adjustable, is illustrated as having a
ribbed construction.
Appeal Br. 17—18.
Zhang discloses that “[a]s shown in FIG. 3, the air nozzle 11
comprises a nozzle head 111 and a flexible nozzle arm 112 extended from
the air conduct 12.” Zhang 3:33—35 (emphasis added), Fig. 3; see also
Reply Br. 8. Based on Zhang’s disclosure, we agree with Appellants that
Figures 1 and 3 of Zhang “give the impression [that conduct 12 of Zhang is]
a rigid tube.” Reply Br. 8. Consequently, a rigid conduct would be “shape
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Application 12/984,976
stable subsequent to adjustment”; whereas, claim 27 recites that the first
conduit portion is “wot shape stable subsequent to adjustment.” Appeal Br.
24, Claims App. (emphasis added). Additionally, we agree with Appellants
that mounting elements 12 of Zhang “have nothing to do with the shape of
conduit 12. The mounting elements hold conduit portion 12 in its desired
position but do not affect its shape.” Reply Br. 8; see also Ans. 6. As such,
based on the foregoing reasons, the Examiner fails to establish by a
preponderance of the evidence that Zhang anticipates the system of claim
27.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 27 and 28 as anticipated by Zhang.
Obviousness Rejections
Claims 16 and 18
Claims 16 and 18 depend either directly or indirectly from claim 1.
See Appeal Br. 23, Claims App. In the obviousness rejections, the Examiner
relies on the same unsupported findings in Acton as for claim 1. See Final
Act. 8—10. The Examiner does not rely on Buker, Frey, or Mason to remedy
the deficiencies of Acton.
Accordingly, for reasons similar to those discussed above for claim 1,
we do not sustain the Examiner’s obviousness rejections of claims 16 and
18.
DECISION
We REVERSE the Examiner’s decision to reject claims 1—4, 11, 13,
15, 19, and 21 as anticipated by Acton.
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Application 12/984,976
We AFFIRM the Examiner’s decision to reject of claims 1—3, 13, 14,
17, and 21 as anticipated by Zhang.
We REVERSE the Examiner’s decision to reject of claims 11, 27, and
28 as anticipated by Zhang.
We REVERSE the Examiner’s decision to reject claim 16 as
unpatentable over Acton, Buker, and Frey.
We REVERSE the Examiner’s decision to reject claim 18 as
unpatentable over Acton and Mason.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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