Ex Parte MandellDownload PDFPatent Trials and Appeals BoardJun 13, 201914874490 - (D) (P.T.A.B. Jun. 13, 2019) Copy Citation 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, 2 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. 3 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 4 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 Copy with citationCopy as parenthetical citation