Ex Parte Matthews

Board of Patent Appeals and Interferences

Aug 29, 2003

09537949 (B.P.A.I. Aug. 29, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUSAN H. MATTHEWS
____________
Appeal No. 2002-0070
Application No. 09/537,949
____________
ON BRIEF
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Before ABRAMS, STAAB, and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Susan H. Matthews appeals from the examiner’s final rejection of claims 20, 22-30, 39 and
40, all the claims currently pending in the application. The amendment filed subsequent to the final
rejection canceling claims 21 and 41 and amending claims 20, 22-24, 26 and 39 has been entered.
Appeal No. 2002-0070
Application No. 09/537,949
1The preamble of claims 20 and 39 state that the claims are directed to “A support pillow
in kit form.”
2
Appellant’s invention pertains to a support pillow “in kit form”1 (claims 20, 22-25, 39 and
40) and to a method for storing a curved support pillow (claims 26-30). An understanding of
appellant’s invention can be derived from a reading of exemplary claims 20 and 26, which appear in
the Appendix to appellant’s brief.
The references relied upon by the examiner as evidence of obviousness are:
Fraser 2,995,845 Aug. 15, 1961
Blais 3,796,304 Mar. 12, 1974
Matthews 5,261,134 Nov. 16, 1993
Redewill 5,313,678 May 24, 1994
The following rejections under 35 U.S.C. § 103(a) are before us for review:
(1) claims 20, 22, 24 and 25, rejected as being unpatentable over Matthews in view of Blais;
(2) claims 23, 26, 27, 29, 30, 39 and 40, rejected as being unpatentable over Matthews in
view of Blais and Fraser; and
(3) claim 28, rejected as being unpatentable over Matthews in view of Blais, Fraser and
Redewill.
Reference is made to appellant’s brief (Paper No. 12) and to the examiner’s answer (Paper
No. 13) for the respective positions of appellant and the examiner regarding the merits of these
rejections.
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Discussion
Looking first at the rejection of claims 20, 22, 24 and 25 as being unpatentable over
Matthews in view of Blais, Matthews, the examiner’s primary reference in each of the rejections, is
appellant’s own patent and is directed to a support pillow 10 comprising a curved pillow body
having a medial region 15 and a pair of opposing arms 18, 20 that extend from a medial region to
define a generally open well 16. The examiner concedes (answer, page 3) that Matthews does not
disclose a support pillow that includes “a central holder removably secured to the medial region of
the pillow body, with the central holder comprising a piece of material surrounding and substantially
covering the medial region, wherein the material tapers in a direction toward the open well,” as
called for in claim 20. The examiner turns to Blais to overcome this deficiency.
Blais pertains to packaging for cordsets (i.e., electrical extension cords). Blais provides a
collar 48 secured about the mid-section of the cordset. The collar holds the strands of cord at the
mid-section so that the cord is more closely packed at the mid-section than at the looped ends of the
cordset. As shown in Figures 1-4 and as described at col. 4, lines 30-37, a conventional fastener
such as a wire staple 50 may be used to fastened the ends of the collar together. The packaged
cordset resists unraveling in storage and display yet can be readily unpackaged and extended prior to
use, is adapted for hanging display without unraveling, and is adapted for nesting in a bin display
without appreciable entanglement with other cordsets in the bin (col. 1, line 62, through col. 2, line
3). In the “Background” section of the specification, Blais states (col. 1, lines 26-29) that prior art
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wrappings for cordsets usually included printed information concerning such matters as price,
electric power carrying capacity, and cord length.
In proposing to combine Matthews and Blais to reject claim 20, the examiner submits that
“it would have been obvious in view of Blais to surround a mid portion of the pillow of Matthews
for providing advertising and information thereon relating to the pillow” (answer, page 3). In a
similar vein, the examiner also contends that “it is conventional to package an article in a simple
holder such as taught by Blais . . . to display print information concerning the article. The
motivation to combine the references together is to provide an economical package yet allowing a
user to inspect the pillow without interfering with the holder” (answer, page 5).
Appellant argues, first, that Blais constitutes nonanalogous art. However, in the view we
take in this case, even if we assume that Blais is analogous art, the obviousness rejections of the
appealed claims is not well founded.
Appellant also argues (brief, page 5) that Blais teaches a specific collar for maintaining the
integrity of a hanked electric cording during storage and display, and that there is nothing in the fair
teachings of Blais and Matthews that would have suggested or motivated one of ordinary skill in the
art to combine their teachings in a manner that would have resulted in the claimed subject matter.
We agree.
Like appellant, we find no basis in the combined teachings of Matthews and Blais for
employing the cordset wrap of Blais for packaging the pillow of Matthews. In this instance,
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assuming that a person of ordinary skill in the art were motivated to provide packaging for the
pillow of Matthews, it is not apparent to us why such a person would have looked to the teachings
of Blais, a reference which expresses no concern whatsoever for packaging a pillow, but is instead
concerned with the specific needs associated with the packaging of a cordset formed into a hank.
The broad reference in Blais to providing product information on the packaging for an article that
differs substantially in both form and function from that disclosed by Matthews does not provide a
reasonable basis for the examiner’s conclusion that it would have been obvious to one having
ordinary skill in the art to provide the pillow of Matthews with the wrap of Blais. Given the
disparate natures of the inventions and objectives of Matthews and Blais, it is apparent to us that the
examiner is using the hindsight benefit of appellant’s own disclosure to extract from Blais an
isolated teaching regarding providing product information to a would-be purchaser in order to
justify the selective combination of the cordset wrap of Blais with the pillow of Matthews in an
attempt to reconstruct a facsimile of appellant’s claimed subject matter. However, as our court of
review indicated in In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992), it is
impermissible to use the claimed invention as an instruction manual or “template” in attempting to
piece together isolated disclosures and teachings of the prior art so that the claimed invention is
rendered obvious.
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In light of the foregoing, we shall not sustain the standing rejection of claim 20, or claims
22, 24 and 25 that depend either directly or indirectly therefrom, as being unpatentable over
Matthews and Blais.
Turning to the rejection of claims 23, 26, 27, 29, 30, 39 and 40 as being unpatentable over
Matthews in view of Blais and Fraser, and the rejection of claim 28 as being unpatentable over
Matthews in view of Blais, Fraser and Redewill, we note that the examiner has employed Blais in
the same capacity as used in the rejection of claims 20, 22, 24 and 25, namely, as a basis for
concluding that it would have been obvious to provide the pillow of Matthews with a central holder
removably secured to the medial region of the pillow. This line of reasoning is no more persuasive
here then it was with respect to the rejection of claims 20, 22, 24 and 25. As to the addition of
Fraser and/or Redewill to the basic reference combination, Fraser’s teaching of a labeling tag for
suspending gloves or similar articles from a hanger rod, and Redewill’s teaching of providing an
additional protective cover (e.g., tote bag 110) for a pillow, do not overcome the basic deficiencies
of Matthews and Blais discussed above. Accordingly, we also shall not sustain the standing
rejections of 23, 26-30, 39 and 40.
The decision of the examiner is reversed.
REVERSED
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Application No. 09/537,949
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NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/lp
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