Ex Parte McGrath et al

Board of Patent Appeals and Interferences

Jul 27, 2006

10336729 (B.P.A.I. Jul. 27, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEBORAH McGRATH and YVONNE GOLDMAN
____________

Appeal No. 2006-1670
Application No. 10/336,729
Technology Center 3600
____________

Heard: July 11, 2006
____________

Before FRANKFORT, BAHR and FETTING, Administrative Patent Judges.
BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 1-3, 5, 8-21, 23-25
and 27-52. Claims 4, 6, 7, 22 and 26 stand objected to as depending from a rejected claim but
are otherwise indicated as allowable by the examiner. As indicated on page 2 of the answer
(mailed September 12, 2005), the amendment submitted with the brief (filed May 24, 2005) has
been entered, thereby overcoming the rejection of claim 48 under the second paragraph of 35
U.S.C. § 112.
We AFFIRM-IN-PART.
Appeal No. 2006-1670 Page 2
Application No. 10/336,729

BACKGROUND
The appellants’ invention relates to bed clothing with means for facilitating the changing
of an absorbent panel thereof (present specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellants’ brief.
The examiner relies upon the following as evidence of unpatentability:
Fukuroi US 4,015,457 Apr. 5, 1977
O’Connell US 4,097,943 Jul. 4, 1978
Blake US 5,086,530 Feb. 11, 1992
Ghanem US 6,651,278 B2 Nov. 25, 2003 (Oct. 12, 2001)

The following rejections are before us for review.
Claims 27-52 stand rejected under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the appellants’ specification so as to convey that the
appellants had possession of the invention at the time the application was filed, i.e., failing to
comply with the written description requirement.
Claims 27-29, 31, 34-47 and 49-51 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Ghanem.
Claims 1, 2, 5, 8-10, 12-15, 17-21, 23-25, 27, 28, 31, 34-36, 38, 40, 41, 43-47 and 49-51
stand rejected under 35 U.S.C. § 103 as being unpatentable over Blake in view of Ghanem.
Claims 1, 2, 5, 8-10, 12, 13, 16-21, 23-25, 27, 28, 31, 34-36, 38, 42-47 and 49-51 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Ghanem in view of Blake.
Claims 3 and 29 stand rejected under 35 U.S.C. § 103 as being unpatentable over Blake
in view of Ghanem or Ghanem in view of Blake, as applied to claim 2 above, and further in view
of Fukuroi.
Claims 11, 13, 37 and 39 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Blake in view of Ghanem or Ghanem in view of Blake, as applied to claim 1 above, and further
in view of O’Connell.
Appeal No. 2006-1670 Page 3
Application No. 10/336,729

Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding this appeal, we make reference to the examiner's answer for the examiner's
complete reasoning in support of the rejections and to the appellants’ brief and reply brief (filed
November 2, 2005) for the appellants’ arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art, and to the respective positions
articulated by the appellants and the examiner. As a consequence of our review, we make the
following determinations.
We turn first to the rejection of claims 27-52 under the first paragraph of 35 U.S.C. §
112. The test for determining compliance with the written description requirement is whether
the disclosure of the application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim language. See Vas Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
The basis of the examiner’s written description rejection is that the appellants’
specification, as originally filed, does not provide written description support for the “padded”
panel or underpanel recited in claims 27-52. The examiner’s position is certainly
understandable, inasmuch as the appellants’ original specification does not contain the term
“padded” or any recognized synonym of the term “padded.”
The appellants argue that the “padded” characteristic of the upper panel is supported in
their original disclosure by (1) the description of the upper panel as “absorbent,” (2) the
illustration in “Figure 1” [sic: Figure 2] of cross lines, allegedly invoking the illusion of quilting,
(3) the description of the absorbent panel as being “embossed” and (4) the allusion to “an
Appeal No. 2006-1670 Page 4
Application No. 10/336,729

auxiliary feather mattress” in paragraph 32 on page 11. With respect to the fourth item, we note
that paragraph 32 is so obtuse as to offer little in the way of description of the absorbent panel,
other than some indication that the panel may provide some degree of comfort.
To the extent that the term “padded” is understood in the broad sense of “stuffed, lined or
covered with a pad or padding [i.e., any soft material used to pad]” (Webster's New World
Dictionary, Third College Edition (Simon & Schuster, Inc. 1988)), we find that the above
sources of disclosure in the appellants’ original specification provide support for the recitation of
a “padded” panel. Consistent with the appellants’ underlying disclosure, we interpret a “padded”
panel to be any material in the bedding art described as being either absorbent, in the context of
absorbing bodily fluids, or soft so as to provide comfort. With this understanding, we shall not
sustain the examiner’s rejection of claims 27-52 under the first paragraph of 35 U.S.C. § 112 as
lacking written description support.
We turn next to the rejection of claims 27-29, 31, 34-47 and 49-51 as being anticipated
by Ghanem. The appellants have not argued any of the claims included in this rejection
separately from the other claims so included. Therefore, in accordance with 37 CFR §
41.37(c)(1)(vii), we select claim 45 as the representative claim to decide the appeal of this
rejection, with claims 27-29, 31, 34-44, 46, 47 and 49-51 standing or falling therewith.
Ghanem discloses a quick change bed sheet set comprising a lower panel 12 for fitting
onto a mattress 10, an air permeable, absorbent, porous (col. 4, ll. 23-24) upper panel 16 and a
minor panel 24 for releasable attachment to the upper panel. The lower panel 12 is provided
with a fastener 14 that extends “around the perimeter of the lower panel” such that, when the
lower panel is fitted onto the mattress, the fastener 14 is “disposed about the periphery of the
mattress” (col. 3, first full para.). The upper panel 16 is formed with a fly 13 to overlay the
lower panel and has a first fastener 18 attached to the periphery thereof. The first fastener 18 “is
the cooperating opposite part of the fastener 14” (col. 3, l. 28). According to Ghanem, “[t]he
Appeal No. 2006-1670 Page 5
Application No. 10/336,729

fastener 14 may be a series of cooperating fasteners, such as button and button holes or male and
female snaps or opposite sides of a zipper or Velcro or cohesive materials” (col. 3, ll. 11-14).
Ghanem’s upper panel 16 has a second fastener attached thereto including elements 20,
22 for engagement with corresponding fastener elements 26, 28 on a minor panel 24 for
releasably connecting the minor panel to the upper panel. The minor panel is water or liquid
proof with an absorbent layer 30 and another layer 32 that prevents passage of liquids. The
minor panel 24 protects the other parts of the bed clothes and mattress from liquid discharges.
The air permeability of the minor panel is restricted by virtue of it being water-proof.
Such lack of air permeability will normally contribute to temperature build-up because body heat
is not dissipated in the area of the minor panel. At night or during periods of lessened activity,
when most accidental discharges of bodily fluids take place, the lack of air permeability is well
tolerated. During the day, however, the presence of the minor panel may become uncomfortable
for the bedridden user. The minor panel can be removed during the day to increase air
permeability without significant disruption of the bedding. See col. 4, first full para.
The appellants argue that Ghanem does not show a continuous fastener as called for in
the appealed claims (brief, pp. 7-8). We note, in this regard, that claim 45 does not positively
recite the securing layer. Rather, claim 45 is directed only to a padded layer with a first fastener
portion mounted to an outer periphery thereof, wherein said first fastener portion is adapted to
engage a second fastener portion mounted on a securing layer to be located on side surfaces of
the mattress and wherein said first and second fastener portions are opposed, elongated,
cooperating, configured surfaces intended to directly contact and interlock with each other in a
single plane, such that movement between the securing layer and said padded panel is restricted
in the direction force is transmitted thereto and wherein said first fastener portion and second
fastener portion are easily associated or dissociated from each other in the form of a continuous,
separable fastener.
Appeal No. 2006-1670 Page 6
Application No. 10/336,729

As illustrated in Figure 2 and described in col. 3, ll. 27-29, a fastener 18 is “attached to
the periphery of the upper panel 16” as called for in claim 45 and “is the cooperating opposite
part of the fastener 14,” which, as illustrated in Figure 2 and described in col. 3, ll. 10-11, “is
disposed about the periphery of the mattress,” the fastener 18 thus also being adapted to engage a
second fastener portion (fastener 14) to be located on side surfaces of the mattress, as called for
in claim 45. The fasteners 14, 18, which may be opposite sides of a zipper, for example, engage
and interlock in the form of a continuous, separable fastener. We note, in this regard, that the
claim does not require that the continuous fastener to be formed be continuous about the entire
periphery of the mattress.
The appellants also argue that the upper panel 16 of Ghanem is not “padded.” In light of
our discussion above, it should be apparent that we consider Ghanem’s “absorbent porous upper
panel” (col. 4, ll. 23-24) to be “padded” as supported by the appellants’ original disclosure.
Additionally, one of ordinary skill in the art of bed sheets would have understood from
Ghanem’s description of the bed sheets as capable of being “used in a protective mode [with the
water-proof minor panel] or a comfort mode [without the minor panel]” (col. 2, ll. 30-31) and
made of “woven or knitted cotton” (col. 3, ll. 4-5 and 29-30) that the upper panel is soft so as to
provide comfort. A soft bed sheet panel that is described as “absorbent” falls within the
definition of “padded” set forth above.
In light of the above, the appellants’ arguments fail to persuade us that the examiner has
erred in rejecting claim 45 as being anticipated by Ghanem. We thus sustain the rejection of
claim 45, as well as claims 27-29, 31, 34-44, 46, 47 and 49-51 which stand or fall therewith, as
being anticipated by Ghanem.
With respect to the examiner’s rejection of claims 1, 2, 5, 8-10, 12, 13, 16-21, 23-25, 27,
28, 31, 34-36, 38, 42-47 and 49-51 as being unpatentable over Ghanem in view of Blake, the
appellants have argued all of the claims together. Accordingly, we select claim 45 as the
representative claim to decide the appeal of this rejection, with the remainder of the claims
Appeal No. 2006-1670 Page 7
Application No. 10/336,729

standing or falling with claim 45. The appellants contend that, in addition to the argument
discussed above that Ghanem discloses neither a padded panel nor a continuous fastener, the
applied references provide no suggestion to modify Ghanem as proposed by the examiner.
We find the argument that Ghanem discloses neither a padded panel nor a continuous
fastener unpersuasive for the reasons discussed above. With respect to the modification of
Ghanem proposed by the examiner, that is, “to form the top panel of Ghanem with an upper
surface formed of absorbent material for comfort” (answer, p. 8), Ghanem describes the upper
panel as being “absorbent.” We additionally note that claim 45 does not require an absorbent
upper panel. Thus, for the reasons discussed above, no modification to Ghanem is required to
meet the “padded” or “absorbent” limitations of claim 45 or any other claim included in this
rejection. The rejection of claim 45, as well as claims 1, 2, 5, 8-10, 12, 13, 16-21, 23-25, 27, 28,
31, 34-36, 38, 42-44, 46,47 and 49-51 standing or falling therewith, as being unpatentable over
Ghanem in view of Blake is sustained.
We turn next to the rejection of claims 1, 2, 5, 8-10, 12-15, 17-21, 23-25, 27, 28, 31, 34-
36, 38, 40, 41, 43-47 and 49-51 as being unpatentable over Blake in view of Ghanem. As the
appellants have not separately argued any of the claims so rejected apart from the other claims
included in this rejection, we again select claim 45 as the representative claim, with the
remainder of the claims so rejected standing or falling with claim 45. Blake discloses a quick
change sheet 20 comprising a top panel 21 having an upper surface formed of absorbent
material, such as a soft fabric, for comfort (col. 4, ll. 22-24) and a bottom panel 22. The top and
bottom panels are releasably interconnected by washable, reusable, releasable fasteners, such as
strips of hook (25) and loop (32) fasteners, as illustrated in Figure 2. The fasteners are not
positioned as called for in claim 45. The examiner’s position in making the rejection is that it
would have been obvious, in view of the teachings of Ghanem, to modify Blake “by providing a
continuous fastener so that the sheet is securely attached on all sides to the securing layer”
(answer, p. 6).
Appeal No. 2006-1670 Page 8
Application No. 10/336,729

The appellants argue, on page 9 of the brief, that Ghanem’s criticism of using a moisture
proof panel covering the entirety of the mattress is an express teaching away from a modification
of the Blake patent. We do not agree. While Ghanem may also provide a suggestion to modify
Blake to provide a moisture proof panel covering only a portion of the mattress, so as to maintain
as much air permeable area as possible for comfort, Ghanem also illustrates an alternate means
of fastening the upper panel to the lower panel in a manner that is easily releasable and yet
evidently more secure than the two strips of hook and loop fasteners disclosed by Blake and thus
would have provided ample suggestion to one of ordinary skill in the art to modify Blake by
providing a fastener portion, such as one side of a zipper, on the lower panel located on side
surfaces of the mattress and a fly and fastener portion, such as a mating side of a zipper, on the
top panel to cooperate with the fastener portion on the lower panel to securely fasten the upper
panel to the lower panel about the periphery of the mattress.
In light of the above, we shall sustain the rejection of claim 45, as well as claims 1, 2, 5,
8-10, 12-15, 17-21, 23-25, 27, 28, 31, 34-36, 38, 40, 41, 43, 44, 46, 47 and 49-51 which stand or
fall with claim 45, as being unpatentable over Blake in view of Ghanem.
With respect to the examiner’s rejections of claims 3 and 29 as being unpatentable over
Blake in view of Ghanem or Ghanem in view of Blake further in view of Fukuroi and claims 11,
13, 37 and 39 as being unpatentable over Blake in view of Ghanem or Ghanem in view of Blake
further in view of O’Connell, the appellants rely on the arguments discussed above against the
rejections based on Blake in view of Ghanem or Ghanem in view of Blake. For the reasons set
forth above, we do not find those arguments persuasive. It follows that we shall sustain these
rejections as well.

Appeal No. 2006-1670 Page 9
Application No. 10/336,729

CONCLUSION
To summarize, the rejection under 35 U.S.C. § 112, first paragraph, is reversed and the
rejections under 35 U.S.C. §§ 102 and 103 are sustained. The decision of the examiner to reject
claims 1-3, 5, 8-21, 23-25 and 27-52 is affirmed as to claims 1-3, 5, 8-21, 23-25, 27-29, 31, 34-
47 and 49-51 and reversed as to claims 30, 32, 33, 48 and 52.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-1670 Page 10
Application No. 10/336,729

BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. Box 1404
Alexandria, VA 22313-1404

M/BM TEAM

APPEAL NO. 2006-1670
APPLICATION NO. 10/336,729

Copies:

______ APJ BAHR

______ APJ FETTING

______ APJ FRANKFORT

DECISION: AFFIRMED-IN-PART

PREPARED: Aug 15, 2006

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