Ex Parte Lee

Patent Trial and Appeal Board

Jul 28, 2016

12930330 (P.T.A.B. Jul. 28, 2016)

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.
12/930,330 01/03/2011 Youn Jae Lee ZIN-021 9125
47713 7590 07/29/2016
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
07/29/2016 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 YOUN JAE LEE
____________________

Appeal 2014-007013
Application 12/930,330
Technology Center 3600
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Youn Jae Lee (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 1–6, 8, and 18–211. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The Examiner indicates that claims 7 and 9–17 are allowed. Final Act. 4
(mailed on September 30, 2013).
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Application 12/930,330

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CLAIMED SUBJECT MATTER
The claims are directed to a massage module that fits into a cavity of a
decompressed foam mattress. Claims 1 and 18 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An article comprising:
a foam layer with an outer surface, wherein a cavity in the
foam layer has walls that are perpendicular to the outer surface,
wherein the walls of the cavity form a shape, and wherein the
cavity opens through a hole in the outer surface that has the
shape; and
a massage module that occupies the cavity in the foam
layer, wherein the massage module includes a massage motor
encased in molded foam, and wherein a first side of the massage
module has the shape.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fromson
Sleichter
Godette
US 5,544,376
US 6,053,880
US 6,684,423 B2
Aug. 13, 1996
Apr. 25, 2000
Feb. 3, 2004

REJECTIONS
I. Claims 1–5, 8, and 18–21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sleichter and Godette.
II. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Sleichter, Godette, and Fromson.

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ANALYSIS
Rejection I
Independent claims 1 and 18 each recite, in part, “a massage motor
encased in molded foam.”
The Examiner finds that Sleichter discloses most of the limitations of
the independent claims but fails to disclose that motor 12 of Sleichter is
encased in molded foam. Final Act. 3. The Examiner relies on Godette as
teaching “a motor 70 that is encased or completely covered in a foam
enclosure/plug 73,” and the Examiner reasons that it would have been
obvious “to employ a foam enclosure as taught by Godette yielding
predictable results that attenuate noise of the vibrating motor.” Id. at 2–3
(citing Godette, col. 4, ll. 28–29; Fig. 2). The Examiner takes the position
that the requirement in claim 1 for molded foam is a product-by-process
limitation that “is the same as or obvious from a product of the prior art,”
and as such does not distinguish over the foam of Godette “even though the
prior (Godette) product was made by a different process.” Id. at 3.
Appellant asserts that neither Sleichter nor Godette teaches molded
foam. Appeal Br. 6. Appellant argues that “a motor encased in molded
foam is different than the structure of Sleichter’s housing 13 wrapped in
pieces of fibrous material 20,” and that “the structure of Godette’s motor
housing 71 that is squeezed between two pieces of pre-formed foam is
different than the structure of foam molded around a motor.” Id. at 9–10.
Appellant asserts that “[m]olded foam flows around protrusions and into
crevices of the object that is encased by the molded foam,” and by contrast,
“[p]re-formed foam pieces do not conform to protrusions and crevices.” Id.
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at 10. Appellant thus maintains that “[b]ecause the structure of the recited
motor encased in molded foam is different than the structures of Sleichter
and Godette, claims 1 and 18 cannot be interpreted as product-by-process
claims.” Id.
In the Answer, the Examiner responds that “Godette [further]
discloses a motor 70 that is encased or completely covered in a pre-formed
foam enclosure/plug 73,” and that moreover,
the foam enclosure/plug 73 taught by Godette is inherently a
molded foam product since the chemically produced liquid mass
of the foam enclosure would have to be molded/cured in order to
manufacture the light firm spongy material into the shape that
completely surrounds the motor as clearly shown in figures 2–3.

Ans. 4–5 (emphasis added). The Examiner also notes that “the claims do not
explicitly recite the method of production wherein the foam of the present
invention flows around protrusions and into crevices of the object that is
encased by the foam.” Id. at 6.
Appellant replies that the Examiner improperly parses the term
“encased in molded foam” so that this term “is first reduced to ‘encased in a
pre-formed foam’ and then to ‘completely covered in a pre-formed foam
enclosure.’” Reply Br. 7. Appellant asserts that the phrase “‘encased in
molded foam’ must be interpreted as that term is used in the specification,”
which requires that liquid foam is poured over the motor to “flow around the
surfaces of the object and set up conforming to those surfaces.” Id. at 7–8
(citing Spec. ¶ 30).
We agree with Appellant that the motor of Godette is not “encased in
molded foam” as one of ordinary skill in the art would interpret this phrase
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in light of the Specification. The Examiner has properly regarded this
phrase as being a product-by-process limitation, and is correct in noting that
if the product is the same as or obvious over a product in the prior art, the
claim is unpatentable even though the prior product was made by a different
process. However, the structure implied by the process steps should be
considered when assessing the patentability of product-by-process claims
over the prior art, especially where the product can only be defined by the
process steps by which the product is made, or where the manufacturing
process steps would be expected to impart distinctive structural
characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276,
279 (CCPA 1979) (holding the phrase “interbonded by interfusion” to limit
structure of the claimed composite and noting that terms such as “welded,”
“intermixed,” “ground in place,” “press fitted,” and “etched” are capable of
construction as structural limitations).
Here, Appellant’s Specification discloses that “massage module 12 is
made by molding foam over massage motor 28.” Spec. ¶ 30. This is
accomplished by placing motor 28 into a mold on top of a piece of cut foam
32 and then pouring liquid foam materials “into the mold over massage
motor 28.” Id. “When massage module 12 is removed from the mold, the
massage motor is encased in molded foam above the piece of cut foam 32.”
Id.; see also Fig. 6. In view of this, one of ordinary skill in the art would
understand that describing the motor as “encased in molded foam,” when
read in light of the Specification, entails pouring liquid polymeric material
over the motor so that the foam is molded in place around the motor. By the
same token, one of ordinary skill would understand that because the liquid to
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be foamed flows around the contours of the motor, a motor encased in
molded foam would have distinctive structural characteristics compared to a
motor wrapped in pre-formed foam that would not flow around the motor
and take the exact shape of the motor. See Appeal Br. 10; see also Reply Br.
7–8. As such, a motor encased in molded foam is not structurally the same
as “a motor 70 that is encased in or completely covered in a preformed foam
enclosure/plug 73.” Ans. 4. Accordingly, the Examiner has not established
that the claimed motor encased in molded foam is the same as Godette’s
motor wrapped in pre-formed foam. Moreover, the Examiner has not
provided adequate reasoning to establish that a motor encased in molded
foam would have been obvious over the structurally different prior art
Godette product.
The Examiner’s position advanced in the Answer that, “the foam
enclosure/plug 73 taught by Godette is inherently a molded foam product”
that is formed by liquid foam that takes the shape of the motor (Answer 5),
is not supported by a preponderance of the evidence. Although Figures 2
and 3 of Godette show foam surrounding motor 70 of Godette (see Answer
5), Godette discloses that “[t]he assembly of the foam inner jacket 72 and
motor 70” is placed in outer housing 74. Godette, col. 3, ll. 46–47; see also
col. 2, ll. 7–11. A common definition of “assembly” is “the fitting together
of manufactured parts into a complete machine, structure, or unit of a
machine.” Merriam-Webster Collegiate Dictionary (11th ed. 2005). Thus, it
appears that the foam jacket and motor of Godette are fit together as an
assembly and are not molded in-place to attain a motor encased in molded
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foam. For these reasons, the rejection of claims 1–5, 8, and 18–21 as being
unpatentable over Sleichter and Godette is not sustained.

Rejection II
The Examiner does not rely on Fromson in any manner that would
overcome the deficiency of the rejection based on Sleichter and Godette.
Accordingly, for the same reasons discussed supra, we do not sustain the
Examiner’s rejection of claim 6.

DECISION
The decision of the Examiner to reject claims 1–5, 8, and 18–21 as
unpatentable over Sleichter and Godette is reversed.
The decision of the Examiner to reject claim 6 as unpatentable over
Sleichter, Godette, and Fromson is reversed.

REVERSED