Ex Parte Lau

Board of Patent Appeals and Interferences

Nov 24, 2009

11401528 (B.P.A.I. Nov. 24, 2009)

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.
11/401,528 04/10/2006 Vincent W.S. Lau PAT-1548DIV 4236
7590 11/24/2009
Raymond Sun
12420 Woodhall Way
Tustin, CA 92782
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
11/24/2009 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 VINCENT W. S. LAU
____________________

Appeal 2009-002550
Application 11/401,528
Technology Center 3600
____________________

Decided: November 24, 2009
____________________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) (2002) from a Patent
Examiner’s final rejection of claims 17-23.1 We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm.

1 Claims 1-16 have been canceled. (App. Br. 3).
Appeal 2009-002550
Application 11/401,528

2
STATEMENT OF THE CASE
Appellant’s claims are directed to methods of inflating an inflatable
bed. According to the Specification, objectives of the invention include
providing an inflatable bed with improved sleeping comfort, adjustable
firmness, and easy and convenient deployment and folding for storage.
(Spec. 1:24-30).
Claim 17 is the only independent claim in the application. Appellant
does not argue any claims or rejections separately. We select independent
claim 17 to decide the appeal. See 37 C.F.R. § 41.37(c)(1)(vii)(2006).
Accordingly, the remaining claims stand or fall with claim 17.
Claim 17 reads as follows:
17. A method of inflating an inflatable bed, comprising:
a. providing an inflatable bed having:
an inflatable main chamber having a top panel;
a top cover attached to the top panel of the main chamber
to define a sealed chamber between the top cover and the
top panel, the top cover having a periphery;
a padding provided in the sealed chamber; and
an inflatable tube attached around the periphery of the
top cover;
b. inflating the main chamber; and
c. inflating the tube to cause the top cover to be smoothened
and flattened.

(App. Br. 13, Claims App’x.).

Figures 1 and 2 from the Application, reproduced below,
illustrate one embodiment of the inflatable bed of the invention.
(Spec. 2: 7-9).

Appeal 2009-002550
Application 11/401,528

3

{Figure 1 illustrates an exploded perspective view of an inflatable bed
of the invention and Figure 2 illustrates a perspective
view of the bed in Fig. 1. (Id.).}

THE EVIDENCE
The Examiner relies upon the following as evidence in support of the
rejections:
Mattson 4,371,997 Feb. 8, 1983
Hsu 6,671,910 Jan. 6, 2004
Schecter 2004/0019972 A1 Feb. 5, 2004

THE REJECTIONS
The following rejections are before us for review:
1. Claims 17-20, and 22-23 stand rejected under 35 U.S.C. § 103(a) over
the combination of Mattson and Hsu.
2. Claim 21 stands rejected under 35 U.S.C. § 103(a) over the
combination of Mattson, Hsu and Schecter.
THE ISSUES PRESENTED
Has Appellant established that the Examiner erred (1) because the
combination of Matson and Hsu would not yield all the limitations of the
Appeal 2009-002550
Application 11/401,528

4
claimed invention (App. Br. 7), or (2) because Hsu cannot be combined with
Mattson (App. Br. 9)?
FINDINGS OF FACT
1. Mattson described an adjustable firmness cushion, such as a
mattress, with multiple layered foam-filled compartments. (Mattson 1:7-8;
2: 19-23).
2. Mattson disclosed that “[f]oam plastic pads are contained in
separate air-tight compartments with each of the compartments having an air
passage which is controlled by a manually operated valve.” (Id. Abstract).
3. Mattson’s single figure is reproduced below:

{Mattson’s figure shows an adjustable firmness cushion
of the invention. (Id. 1: 39-59).}

4. Mattson taught that the mattress comprised a lower pad (12)
enclosed in a compartment, i.e., the “inflatable main chamber” of claim 17,
and an upper compartment, i.e., a sealed chamber, enclosing a padding (10).
(Id. 1:39-51).
5. Mattson’s figure disclosed that the main chamber (12/13) had a
top panel (the intermediate layer separating the upper compartment and
lower main chamber, i.e., the bottom cover 11 of pad 10). (Id. Fig.).
6. Mattson disclosed a surrounding layer (11) which had a top
portion, i.e. the top cover, attached to the top panel of the main chamber to
define the upper compartment, i.e., sealed chamber. (Id. Fig.; 1:39-42).
Appeal 2009-002550
Application 11/401,528

5
7. Mattson’s figure disclosed that the sealed chamber was between
the top cover and the top panel, with the top cover having a side that served
as a periphery. (Id. Fig.).
8. Mattson described inflating the main chamber. (Id. 1:49-59).
9. Mattson did not describe providing an inflatable tube attached
around the periphery of the top cover, or inflating the tube to cause the top
cover to be smoothened and flattened.
10. Hsu described an inflatable bed that included an inflatable
mattress attached to the top surface of an inflatable air box spring. (Hsu
Abstract).
11. Hsu’s figure 9 is reproduced below:

{Figure 9 of Hsu shows a perspective view of an inflatable bed
. (Id. 3:37-39).}

12. Hsu disclosed that the inflatable bed comprised an airtight
stabilizing tube (202), i.e., an inflatable tube, attached around the periphery
of a top surface/cover of the air box spring. (Id. 6:22-28).
13. Hsu disclosed that the interior of the stabilizing tube (202) was in
gaseous or fluid communication with the chamber of the air box spring. (Id.
6:33-35).
Appeal 2009-002550
Application 11/401,528

6
14. Hsu disclosed that the purpose of the inflatable tube (202) was to
provide stability for the inflatable mattress. (Id. 7:10-15).
15. Schecter described a cushioning device preferably comprising a
foam core filler material such as visco-elastic foam materials and a method
for its production. (Schecter [0008]).
PRINCIPLES OF LAW
When determining whether a claim would have been obvious, an
Examiner must make “a searching comparison of the claimed invention –
including all its limitations – with the teaching of the prior art.” In re
Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). “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). “[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
417. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
The question of obviousness cannot be approached on the basis that
an artisan having ordinary skill would have known only what was read in the
references, because such artisan must be presumed to know something about
the art apart from what the references disclose. See In re Jacoby, 309 F.2d
513, 516 (CCPA 1962).
Appeal 2009-002550
Application 11/401,528

7
If a prior art “disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient” evidence of anticipation. Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939), quoted in In re Oelrich, 666 F.2d 578, 581
(CCPA 1981).

ANALYSIS
I. The Rejections
Regarding independent claim 17, the Examiner found that Mattson
described
a. providing an inflatable bed having: an inflatable main
chamber (the lower compartment) having a top panel (the
intermediate section of liner); a top cover (11) attached to the
top panel of the main chamber to define a sealed chamber
between the top cover and the top panel, the top cover having a
periphery; and a padding (10) provided in the sealed chamber;
and
b. inflating the main chamber;

(Final Rejection, Feb. 6, 2007, p. 2). The Examiner also found that Mattson
did not describe “providing an inflatable tube attached around the periphery
of the top cover, and inflating the tube to cause the top cover to be
smoothened and flattened,” as recited in claim 17. (Id. 3).
However, the Examiner found that Hsu described an inflatable bed
“comprising an inflatable tube (202) attached around the periphery of a top
cover (col. 6, lines 22 through 28) to provide stability for the inflatable
mattress (col. 7, lines 10-15).” (Final Rejection, 3).
Appeal 2009-002550
Application 11/401,528

8
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Mattson to
include an inflatable tube attached to the periphery of the top cover, as
described by Hsu. (Id.). The Examiner determined that motivation for the
modification “would have been to stabilize the inflatable bed.” (Id.). The
Examiner also determined that the step of inflating the tube to cause the top
cover to be smoothed and flattened would have been inherently met by the
inflation of the device taught by the combination of Mattson and Hsu. (Id.
5)(citing Hsu 7:10-15).
II. Appellant’s Contentions
Appellant challenges the Examiner’s rejection of claim 17 by
asserting that the combination of Mattson and Hsu does not yield all of the
limitations of the claimed invention. (App. Br. 7). Specifically, Appellant
asserts that “Hsu does not teach the attachment of an inflatable tube around
the periphery of the top cover,” as claimed. (Id.). Rather, according to
Appellant, “the tube 202 in Hsu is attached to the air box spring 204 (and not
to a top cover).” (Id.). Further, Appellant asserts that “[t]he top and bottom
surfaces of the air box spring 204 in Hsu do not define any sealed chamber
that retains a padding.” (Id. 8).
This argument is not persuasive as Appellant considers Hsu
individually. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). As the
Examiner explained, the rejection relies upon Mattson for teaching a top
cover (Ans. 6), as well as the sealed chamber and padding elements of claim
Appeal 2009-002550
Application 11/401,528

9
17 (Final Rejection, 2). The Examiner relied upon Hsu for teaching “an
inflatable tube attached to the periphery of a cover member.” (Ans. 6; Final
Rejection, 3.). It is the combination of these prior art elements that render
claim 17 obvious. We do not find that the Appellant has established
otherwise with persuasive evidence.
Appellant also asserts error by alleging that “[n]either Mattson nor
Hsu teach the step of inflating the tube to cause the top cover to be
smoothened and flattened.” (App. Br. 8). Additionally, Appellant asserts
that Hsu does not teach or suggest that tube (202) causes “the top cover of a
bed/mattress (as opposed to a box spring) to be smoothened and flattened.”
(Id.) Appellant further contends that “mere inflation of a tube does not
automatically mean that a top cover will be smoothened or flattened,” e.g.,
when a tube is only “partially inflated.” (Id.) Also, the Appellant asserts the
stability provided by Hsu’s tube relates to the “separate and detachable
mattress” and not to the structure, i.e. box spring. (Id.)
Appellant has not established nonobviousness by asserting that
inflating a tube attached to a top cover does not always cause the top cover
to be smoothened and flattened, e.g., where the tube is only partially
inflated. As the Examiner explained, any inflation of a flexible material
would cause the material to be smoothened and flattened to some extent.
(Ans. 6). Hsu taught that the interior of the stabilizing tube was in gaseous
or fluid communication with the chamber of the air box spring. (See FF 13).
We agree with the Examiner that smoothing and flattening of the top cover
would have been the natural result flowing from inflating a tube that was in
gaseous communication with the main chamber. Moreover, Hsu did not
describe partially inflating the peripherally attached tube. Rather, Hsu
Appeal 2009-002550
Application 11/401,528

10
taught that the purpose of the inflatable tube was to provide stability for the
inflatable mattress. (Id. 7:10-15). A skilled artisan would have understood
and had the skill to inflate the tube to a degree that provided such stability.
We find that the Examiner properly accounted for all the claimed elements,
and that Appellant has not established error.
Appellant contends that Mattson and Hsu “cannot be properly
combined.” (App. Br. 9). In particular, the Appellant asserts that neither
Mattson nor Hsu teach or suggest how to smoothen and flatten the top cover
11 in Mattson. Therefore, according to the Appellant, it is only by
impermissible hindsight reconstruction that a skilled person in the art who
considered “attaching the tube 202 in Hsu to the top layer 11 in Mattson”
would know that such a modification would smoothen and flatten the top
cover 11 in Mattson. (Id.).
The question of obviousness cannot be approached on the basis that
an artisan having ordinary skill would have known only what was read in the
references, because such artisan must be presumed to know something about
the art apart from what the references disclose. See In re Jacoby, 309 F.2d
513, 516 (CCPA 1962). Here, the known elements of the prior art are
combined for their known functions. The Examiner found that it would have
been obvious to a person having ordinary skill in the art at the time of the
invention to stabilize Mattson’s inflatable bed by incorporating and inflating
the stabilizing tube described by Hsu. (Final Rejection 3-4; Ans. 7). We do
not find that the Appellant has established with any persuasive evidence that
such knowledge or skill was beyond that of an ordinary artisan at the time of
the invention. Further, as the Examiner explained, “the top cover is
inherently smoothened and flattened by the inflation of [an attached] tube.”
Appeal 2009-002550
Application 11/401,528

11
(Final Rejection 5). See In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979)
(rejecting the notion that “a structure suggested by the prior art, and, hence,
potentially in the possession of the public, is patentable ... because it also
possesses an inherent, but hitherto unknown, function which [Applicants]
claim to have discovered. This is not the law. A patent on such a structure
would remove from the public that which is in the public domain by virtue
of its inclusion in, or obviousness from, the prior art.”). Consequently, we
are not persuaded of Examiner error.
Accordingly, we affirm the Examiner’s rejections of claims 17-23.

CONCLUSION OF LAW
On the record before us, the Appellants have not shown error on the
part of the Examiner. It would have been obvious to one of ordinary skill in
the art at the time the invention was made to combine the known elements of
the prior art for their known functions.
Appeal 2009-002550
Application 11/401,528

12
DECISION
The rejection of claims 17-20 and 22-23 under 35 U.S.C. §103(a) as
being unpatentable over the combination of Mattson and Hsu is
AFFIRMED.
The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mattson, Hsu and Schecter is
AFFIRMED.
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

lp

RAYMOND SUN
12420 WOODHALL WAY
TUSTIN CA 92782