Ex Parte Morgan et al

Patent Trial and Appeal Board

Jul 31, 2017

14018946 (P.T.A.B. Jul. 31, 2017)

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.
14/018,946 09/05/2013 Justin Taylor Morgan 1742.059 9066
23598 7590 08/02/2017
BOYLE FREDRICKSON S.C.
840 North Plankinton Avenue
MILWAUKEE, WI 53203
EXAMINER
KURILLA, ERIC J
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN TAYLOR MORGAN, ANTHONY J. PATRICK, and
JOSHUA JAMES JAKUBOWSKI
Appeal 2015-008319
Application 14/018,9461
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants’ claimed “invention relates to mattresses providing
pressure redistributing surfaces for medical or other use and in particular to
mattress providing for two different mattress firmnesses.” (Spec. 12.)
1 According to Appellants, the real party in interest is Direct Supply Inc.
(Appeal Br. 3.)
Appeal 2015-008319
Application 14/018,946
Claims 1,16, and 18 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A mattress comprising:
a mattress body having opposed first and second
supporting surfaces each sized and adapted to receive and
support a supine individual extending along a mattress length
when either of the first and second supporting surfaces is
upwardly facing and horizontal, the mattress body including at
least three polymer foam layers having different firmnesses and
extending along substantial portions of the mattress length, a
firmness of the polymer foam layers selected to present a lesser
firmness to a supported individual lying on the first supporting
surface than to the supported individual lying on the second
supporting surface; and
a cover fitting around the mattress body to retain the
mattress body therein.
REJECTIONS2
Claims 1—18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Larsen (US 2008/0256706 Al, pub. Oct. 23, 2008) and Collins
(US 2009/0165213 Al, pub. July 2, 2009).
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Larsen, Collins, and Erdman (US 2008/0098533 Al, pub. May 1,
2008).
2 The rejection of claim 18 under 35 U.S.C. § 112, second paragraph, was
withdrawn in view of the claim amendment filed December 22, 2014. (See
Advisory Action mailed January 21, 2015.) However, we note that the
proposed amendment was not entered.
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Application 14/018,946
ANALYSIS
The § 103 rejection of claims 1, 4-7, 9, and 15
The Examiner finds that
Larsen generally teaches a mattress with a top surface and a
bottom surface shows [sic] that body section 44 and top section
41 have different ILDs [indentation load deflections], which
relates [sic] to the firmness of the mattress. Larsen does not show
at least three polymer foam layers having different firmnesses.
Collins teaches three foam layers having different firmnesses in
[0270] and [0271],
(Answer 3.) The Examiner also finds that
[o]ne of ordinary skill in the art would have therefore recognized
that portions of Larsen (especially body section 44) could be
modified to have different foam layers in order to provide Larsen
with the predictable established function of having different
foam layers (which is to allow each foam layer to impart
characteristics of the overall feel of the mattress).
(final Action 7.)
Appellants argue that “[n]either of these references teaches a
reversible mattress and the Examiner has neither suggested nor demonstrated
an alternative motivation for the necessary modification of Larsen or Collins
to produce the present invention, or that this motivation was known or
recognized in the prior art.” (Appeal Br. 11.)
As an initial matter, we note that claim 1 does not recite a “reversible
mattress.” However, Appellants indicate that they are using the term
“reversible” to mean “a structure of the mattress necessary for the mattress
to function as a mattress in either of two orientations.” (Reply Br. 1.)
Appellants further argue that claim 1 is directed to “a reversible mattress
having different supporting surface firmnesses using different foam layers”
and not merely a mattress having different foam layers. (See Appeal Br. 14.)
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Application 14/018,946
To the extent Appellants’ use of the term “reversible mattress” is directed to
some unspecified added structure “necessary for the mattress to function as a
mattress in either of two orientations,” Appellants’ argument is not
commensurate with the scope of the claim. (See Answer 3.)
We agree with the Examiner that both Larson and Collins disclose
mattresses having foam layers. (See Answer 3.) Collins discloses a mattress
wherein
the body support 4302 illustrated in FIG. 43 has the same layers
arranged in the same order as the body support 2202 illustrated
in FIG. 22. However, the top layer 4310 ... comprises two sub­
layers 4301a, 4301Z>. . . . Similarly, any of the other layers 4312,
4314 can instead or also comprise two or more sublayers of
material. . . .
[T]he sub-layers can have different densities, hardnesses,
temperature responsiveness or insensitivity, and other material
properties .... With reference again to the body support 4302
illustrated in FIG. 43 by way of example only, the top sub-layer
4310a . . . has a greater density and lower hardness than that of
the bottom sub-layer 4310b.
(Collins H270-71.) In other words, Collins discloses a mattress having at
least three layers of foam and that the different layers, including sub-layers,
can have, e.g., different hardnesses. Additionally, Figure 22, referred to
above, and its associated description disclose:
The bottom layer 2214 of the body support 2202 illustrated
in FIG. 22 comprises a cellular structure of flexible polyurethane
foam that is relatively highly resilient and supportive. The
bottom layer 2214 can therefore provide a relatively stiff
substrate upon which the top and middle layers 2210, 2212 lie,
thereby providing support for the top and middle layers 2210,
2212. Also, the flexibility of the bottom layer 2214 can provide
a degree of deformability for user comfort (to the extent that the
user’s weight affects the shape of the bottom layer 2214), while
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Application 14/018,946
the top and middle layers 2210,2212provide the desirable body-
conforming and pressure distribution features described above.
{Id. 1178, emphasis added.) In short, Collins discloses a bottom layer of
foam presenting a different degree of deformability or firmness than the top
layer.
Regardless, Appellants further argue:
It is again important to emphasize that the design of a
mattress for this purpose is not simply a matter of selecting the
hardness of the outer layers of the mattress. If that were the case,
then the presently claimed three layers of foam would not be
required and rather two layers (one firm and one soft) would be
sufficient. A usable mattress must satisfy a number of competing
requirements including not only reversibility, but flexibility,
back support, and the reduction of pressure points such as cause
localized blood circulation loss and ulceration. See
Specification, paragraph [0004].
(Appeal Br. 13—14.) But Appellants do not persuasively argue what
limitations of claim 1 correspond to these asserted “competing
requirements” nor do Appellants persuasively argue that the mattresses of
Larsen and/or Collins are not “usable mattresses,” as Appellants use that
term.
Appellants also argue that “the Examiner must provide some showing
that the prior art alone or in combination teaches that Larsen should be
modified.” {Id. at 14.)
But the Examiner finds, and we agree, that “Larsen shows a body
section 44 and a top section 41 each having a different ILD. Therefore
Larsen has already recognized the benefits of having different layers with
different firmness.” (final Action 7.) The Examiner also finds that “Collins
elaborates on the benefits of having a mattress with many different layers of
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Application 14/018,946
various characteristics (firmness being one characteristic).” (Id.) Thus, the
Examiner determines that
there is a teaching, suggestion, and motivation in the prior art to
modify Larsen in a way that it has additional layers of foam.
Collins teaches having multiple foam layers, each layer having a
different characteristic than adjacent layers. These
characteristics include, but are not limited to, temperature
responsiveness, softness, firmness, durability (see [0033]-
[0036]). It would be obvious to impart multiple foam layers in
Larsen for the purpose of having different desirable
characteristics in each layer.
(Id. at 4.) Appellants do not persuasively argue why the Examiner erred in
determining that “there is a teaching, suggestion, and motivation in the prior
art to modify Larsen.” (See id.)
In view of the above, we are not persuaded that the Examiner erred in
making the proposed combination of the layered foam mattress of Larsen
and the layered foam mattress of Collins or in rejecting claim 1 under § 103.
Claims 4—7, 9, and 15 depend from claim 1 and are not separately
argued. Appellants acknowledge that “[djependent claims 4—7, 9 and 15
stand or fall with independent claim 1.” (Appeal Br. 10.) Claims 4—7, 9,
and 15 fall with claim 1. See 37 C.L.R. § 41.37(c)(l)(iv).
The f103 rejection of claims 2 and 3
Claim 2 recites (emphasis added):
2. The mattress of claim 1 wherein a first polymer foam layer
adjacent to the first supporting surface has a lesser indentation
force deflection (ILD) than the polymer foam layer adjacent to
the second supporting surface and a third polymer foam layer
positioned between the first and second polymer foam layers and
having an IFD greater than the IFD of the first polymer foam
layer and the second polymer foam layer.
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The Examiner finds that “Collins explicitly discloses the use of
different firmnesses for a plurality of foam mattress layers.” (Final
Action 8.)
Appellants argue that “even in combination [Larsen and Collins] also
fail to teach the claimed sequence and firmness relationships of claim 2.”
(Appeal Br. 15.)
The Examiner does not indicate where either Larsen or Collins
discloses a “foam layer positioned between the first and second polymer
foam layers and having an IFD greater than the IFD of the first polymer
foam layer and the second polymer foam layer,” as recited in claim 2. Nor
does the Examiner sufficiently explain why such an arrangement of foam
layers would have been obvious. Therefore, we are persuaded that the
Examiner erred in rejecting claim 2 under § 103.
Dependent claim 3 depends from claim 2. For the reasons discussed
above with regard to claim 2, we are persuaded that the Examiner erred in
rejecting claim 3 under § 103. See Appeal Br. 10.
The §103 rejection of claim 8
Claim 8 recites:
8. The mattress of claim 1 further including a second cover
outside the first cover wherein the second cover includes indicia
indicating relative firmness of the first and second opposed
surfaces; and
wherein the first cover and second cover cover the
substantial entirety of the polymer foam layers.
The Examiner finds “this second cover amounts to a tag that conveys
information to a user. A tag that conveys information to a user is not
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Application 14/018,946
considered a patentable distinction because tags do not perform a
mechanical function.” (Final Action 8.) In other words, the Examiner finds
that the second cover is merely descriptive or printed matter, i.e., “matter
claimed for what it communicates.” See In re DiStefano, 808 F.3d 845, 850
(Fed. Cir. 2015). The Federal Circuit has “long held that if a limitation
claims (a) printed matter that (b) is not functionally or structurally related to
the physical substrate holding the printed matter, it does not lend any
patentable weight to the patentability analysis.” Id. at 848. “[T]he critical
question is whether there exists any new and unobvious functional
relationship between the printed matter and the substrate.” In re Gulack,
703 F.2d 1381, 1386 (Fed. Cir. 1983).
Appellants argue that “[t]he printed matter rejection on this claim is
. . . inappropriate because the indicia is related to the foam densities exposed
on each surface.” (Appeal Br. 16.)
The printed matter on the second cover is descriptive of the mattress
but is not functionally related to the mattress. For example, should the
mattress be placed in the cover backwards, the description on the cover will
be incorrect, but the functionality of the mattress will not be affected.
Therefore, we are not persuaded that the Examiner erred in rejecting claim 8
under § 103 in view of Larsen and Collins.
Appellants further argue that Erdman fails “to teach indicia which
show the firmness of opposite sides of the mattress as required by the
claims” and that “Erdman fails to show a tag on a second cover.” (Appeal
Br. 17.) However, Erdman discloses that information, such as firmness, may
be displayed on “components such as . . . fabric mattress covers 24.”
(Erdman | 61; see also Answer 4.) Regardless, for the reasons discussed
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Application 14/018,946
above, we are not persuaded that the Examiner erred in rejecting claim 8
under § 103 in view of Larsen, Collins, and Erdman.
The §103 rejection of claims 10—12 and 17
Claim 10 recites:
10. The mattress of claim 1 further including a bottom cover
adjustable to be positioned over at least a portion of the bottom
of the mattress when the mattress is in either of two orientations
with the opposed first or second supporting surface uppermost,
the bottom cover including outwardly exposed anti-slip material.
The Examiner finds that “it is well known in the art to use anti slip
materials (and it is also well known to use extra mechanical pieces) to
prevent a mattress from sliding.” (Final Action 8.) “Their use is not a
patentable distinction.” (Answer 4.)
Appellants argue that the “rejection largely ignores the express
limitations of the claim which at a minimum requires [sic] placement of the
slip resistant material on ‘bottom cover adjustable to be positioned over at
least a portion of the bottom of the mattress when the mattress is in either of
two orientations.’” (Appeal Br. 17—18.)
We are persuaded that the Examiner erred in rejecting claim 10 under
§103. Although the Examiner finds that it was known in the art to use anti­
slip materials and extra mechanical pieces in some capacities, the Examiner
does not find that the prior art teaches “a bottom cover adjustable to be
positioned over at least a portion of the bottom of the mattress . .., the
bottom cover including outwardly exposed anti-slip material.” (See
Claim 10.) Nor does the Examiner provide sufficient explanation as to why,
in view of the prior art, it would have been obvious to include “a bottom
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Application 14/018,946
cover adjustable to be positioned over at least a portion of the bottom of the
mattress . . . , the bottom cover including outwardly exposed anti-slip
material,” as recited in claim 10.
Claims 11 and 12 depend directly from claim 10 and claim 17
depends directly from claim 11. For the reasons discussed above with
regard to claim 10, we are persuaded that the Examiner erred in rejecting
claims 11, 12, and 17 under § 103. See Appeal Br. 10.
The §103 rejection of claims 13 and 14
Claim 13 recites (emphasis added):
13. The mattress of claim 1 further including a top cover
adjustable to be positioned over at least a portion of the top of
the mattress body when the mattress body is in either of two
orientations with the opposed first or second supporting surface
uppermost, the top cover providing upwardly extending bolsters
positionable at opposed left and right edges of the mattress body.
The Examiner finds: “Regarding Claim 13, see bolsters of Larsen. It
is well known in the art of beds to provide a separate cover to allow bolsters
to be removably attachable to a mattress.” (Final Action 8.)
Appellants disagree and argue that “the bolsters of Larson ... are
integrated into the mattress foam material” and that the Examiner’s finding
that it is well known “to provide a separate cover to allow bolsters to be
removably attachable” is a “conclusory statement^ which effectively
preclude^] rebuttal by the Applicant. . . and fail[s] to meet the burden on
the Examiner.” (Appeal Br. 19.) Appellants further argue that “[t]he art of
record does not teach the limitations of claim 13 which requires [sic]
bolsters incorporated into a cover that permits reversibility.” (Id.)
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Application 14/018,946
The Examiner does not sufficiently explain why a finding that “[i]t is
well known in the art of beds to provide a separate cover to allow bolsters to
be removably attachable to a mattress,” would have made obvious “a top
cover providing upwardly extending bolsters,” as recited in claim 13. (See
Final Action 8.)
Claim 14 depends directly from claim 13. For the reasons discussed
above with regard to claim 13, we are persuaded that the Examiner erred in
rejecting claims 13 and 14 under § 103.
The f103 rejection of independent claim 16
Claim 16 recites:
16. A mattress comprising:
a mattress body having at least three layers of polymer
foam material of different IFD values, the layers of polymer
foam material extending generally parallel to opposed first and
second support surfaces of the mattress, the volume weighted
IFD values in a half of the mattress closest to the first support
surface being lower than volume weighted IFD values in a half
of the mattress closest to the second support surface; and
a fabric cover surrounding the mattress body.
The Examiner finds that “[cjlaim 16 is very similar to claim 1.”
(Answer 6.) With regard to the recitation of “different IFD values” in
claim 16, the Examiner finds that
Farsen generally teaches a mattress with a top surface and a
bottom surface shows [sic] that body section 44 and top section
41 have different IFDs, which relates to the firmness of the
mattress. Farsen does not show at least three polymer foam
layers having different firmnesses. Collins teaches three foam
layers having different firmnesses in [0270] and [0271].
(Id.)
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Application 14/018,946
Appellants argue that claim 16 “is different from claim 1 in that it
requires particular thicknesses of foam.” (Appeal Br. 19.) But claim 16
does not recite particular thicknesses of foam. However, Appellants further
argue that “the limitations of claim 16 would not be met by a multilayered
mattress having different foam densities unless the foam densities in the
upper half of the mattress (volume weighted) were greater than the foam
densities in the lower half of the mattress.” (Id.)
The Examiner does not indicate where the prior art discloses “the
volume weighted IFD values in a half of the mattress closest to the first
support surface being lower than volume weighted IFD values in a half of
the mattress closest to the second support surface,” as recited in claim 16.
Nor does the Examiner indicate that such a distribution of volume weighted
IFD values would have been obvious in view of the prior art. Therefore, we
are persuaded that the Examiner erred in rejecting claim 16 under § 103.
The §103 rejection of independent claim 18
Independent claim 18 recites, in relevant part, “an outer cover
removably positionable over the inner cover to present a slip resistant
surface at a bottom of the mattress body and not at a top of the mattress
body.”
In rejecting claim 18, the Examiner states “see claim 1 and claim 8
[sic, 10] rejections.” (Final Action 9.)
Appellants argue “[a]s discussed above with respect to claim 10, none
of the references relied upon show . . . that the outer cover has a slip resistant
surface and is removable so that the slip resistant surface may be positioned
at the bottom of the mattress.” (Appeal Br. 20.)
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Application 14/018,946
The Examiner answers that “[t]he slip resistant surface is discussed
above in the discussion relating to claim 10.” (Answer 6.)
For the reasons discussed above with regard to claim 10, we are
persuaded that the Examiner erred in rejecting claim 18 under § 103.
DECISION
The Examiner’s rejections of claims 1, 4—9, and 15 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner’s rejections of claims 2, 3, 10-14, and 16—18 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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