Ex Parte Mandell

Patent Trials and Appeals Board

Jun 13, 2019

14874490 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/874,490
135012 7590
Eleanor L.M. Mandell
24 Church St
Greenfield, MA O 1301
10/05/2015
06/13/2019
FIRST NAMED INVENTOR
Eleanor Leah May Mandell
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3538
EXAMINER
ADEBOYEJO, IFEOLU A
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
06/13/2019 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 ELEANOR LEAH MAY MANDELL
Appeal2018-008574 1
Application 14/874,4902
Technology Center 3600
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 4--7, and 9. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br."), filed Feb. 22,
2018, the Reply Brief ("Reply Br.") filed Aug. 13, 2018, the Examiner's
Answer ("Ans.") mailed Aug. 6, 2018, and the Final Office Action ("Final
Act."), mailed July 28, 2017.
2 Appellant does not identify a real party in interest.
Appeal2018-008574
Application 14/874,490
BACKGROUND
The Specification discloses a "multipurpose doughnut shaped
cushioning device [that] is designed to cup within its contoured recess one
human skeletal joint, such as a knee or elbow, or one bony protuberance,
such as the back of the head." Spec. 6.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. What is claimed is:
a cushion that supports a body joint of a user above a
support surface, the cushion comprising
a doughnut shaped body having an outer diameter of from
approximately 6 cm to approximately 15 cm and having height
of from approximately 2 cm to approximately 6 cm,
said body formed of foam or similar flexible resilient
material, said material of sufficient density to cushion the weight
of an adult human,
said body including a doughnut hole shaped cushion
recess through said body from top to bottom,
a top outer shoulder forming the top outside edge of said
body and having a convex shape of predetermined acclivity,
a bottom outer shoulder forming the bottom outside edge
of said body and having a convex shape of predetermined
acclivity,
a top inner shoulder forming the top of said cushion recess
and having a convex shape of predetermined acclivity,
a bottom inner shoulder forming the bottom of said
cushion recess and having a convex shape of predetermined
acclivity,
a top surface,
a bottom surface,
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Appeal2018-008574
Application 14/874,490
whereby during exercise, manual labor, therapeutic
procedure or other human endeavor, said body joint is placed
inside said cushion recess thereby reducing risk of injury,
increasing comfort, or providing alignment or beneficial traction.
Appeal Br. 12.
REJECTION
The Examiner rejects claims 1, 4--7, and 9 under 35 U.S.C. § 103 as
unpatentable over Norriss3 in view ofMathews. 4
DISCUSSION
As discussed below, we agree with Appellant's argument that the
Examiner has not provided a sufficient reason to support the obviousness
determination. See Appeal Br. 4--5.
With respect to claim 1, the Examiner finds that Norriss teaches a
cushion as claimed except that:
N orriss does not disclose an outer diameter of from
approximately 6 cm to approximately 15 cm and having height
of from approximately 2 cm to approximately 6 cm, said body
including a doughnut hole shaped cushion recess through said
body from top to bottom a top inner shoulder forming the top of
said cushion recess and having a convex shape of predetermined
acclivity, a bottom inner shoulder forming the bottom of said
cushion recess and having a convex shape of predetermined
acclivity.
Final Act. 2-3. The Examiner determines that the claimed dimensions are
obvious based on optimization. Id. at 4. Regarding the required recess
through the body and the claimed top and bottom inner shoulders, the
Examiner relies on Mathews. Id. at 3. Specifically, the Examiner finds that
3 Norriss, US 3,574,397, iss. Apr. 13, 1971.
4 Mathews, US 3,848,281, iss. Nov. 19, 1974.
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Appeal2018-008574
Application 14/874,490
Mathews teaches a doughnut shaped cushion with a recess and top and
bottom inner shoulders having a convex shape as claimed. Id. The
Examiner determines:
It would have been obvious to one of ordinary skill in the art ...
to modify the cushion of Norriss to include a doughnut hole as
taught by Mathews for the purpose of avoiding contact with
sensitive parts of the user's body such as the ear of the user. Such
a modification would have been obvious to try using known
methods in the art and would not yield unexpected results.
Id. at 3--4.
As indicated in the rejection, the Examiner relies on Mathews not only
for the teaching of a hole through the cushion's body, but also for the
teaching of the specific shape of the top and bottom inner shoulders of the
device. However, the Examiner appears to only provide a specific reason
for including a hole through the device, i.e., to avoid contacting parts of the
user's body. See Ans. 5 ("Mathews also disclose [sic] solving the same
problem ... by including a hole with [sic] allows clearance for the ear ....
This is the motivation."). The Examiner does not indicate why one of
ordinary skill in the art would further modify Norriss's device to include top
and bottom inner shoulders that are convex other than saying that these
modifications would be "obvious to try using known methods in the art and
would not yield unexpected results." Final Act. 4.
Regarding obvious to try, the Supreme Court stated:
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
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Appeal2018-008574
Application 14/874,490
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also
MPEP § 2143(I)(E). Here, the record does not support an obvious-to-try
rationale. For example, the Examiner does not identify a problem associated
with the shape of a cushion's bottom inner shoulder; does not discuss any
design need or market pressure to solve such a problem; and/or does not
explain why there are only a finite number of identified, predictable
solutions to solve such a problem. Thus, we determine that the Examiner's
rationale is not adequately supported on the record before us. Accordingly,
we do not sustain this rejection.
CONCLUSION
We REVERSE the rejection of claims 1, 4--7, and 9.
REVERSED
5