Ex Parte Murphy

Patent Trial and Appeal Board

Apr 20, 2016

12505697 (P.T.A.B. Apr. 20, 2016)

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.
12/505,697 07/20/2009 Marcus L. Murphy 4362-139 2723
20792 7590 04/21/2016
MYERS BIGEL & SIBLEY, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
CUOMO, PETER M
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
04/21/2016 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 MARCUS L. MURPHY
____________

Appeal 2014-000874
Application 12/505,6971
Technology Center 3600
____________

Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Marcus L. Murphy (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1–26. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 According to Appellant, the real party in interest is Ultra-Mek,
Incorporated. Br. 1 (filed May 14, 2013).
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INVENTION
Appellants’ invention relates to “a furniture unit that is convertible
into a bed.” Spec. ¶ 1.
Claims 1, 14, and 25 are independent. Illustrative claim 1 reads as
follows:
1. A furniture unit containing a foldable bed, comprising:
a base including a storage cavity;
a seat section;
an intermediate section;
a head section;
a mechanism having pivotally interconnected links, the
mechanism interconnecting the base with the head, intermediate
and seat sections;
wherein the mechanism controls the movement of the
head, intermediate and seat sections between a folded position,
in which the head, intermediate and seat sections are generally
horizontally disposed and positioned in vertically stacked
relationship, with the head section below the intermediate
section and the seat section above the intermediate section, the
head and intermediate sections being positioned in the cavity of
the base, and an unfolded position, in which the head,
intermediate and seat sections are horizontally disposed and
serially aligned to form a sleeping surface;
wherein in the folded position, the intermediate section is
inverted from its orientation in the unfolded position; and
wherein the intermediate section is configured to move
relative to the base about a single pivot axis.

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REJECTIONS2
The following rejections are before us for review:
I. The Examiner rejected claims 1–7, 9, and 12 under 35 U.S.C.
§ 102(b) as being anticipated by Creveling (US 2,664,145, iss.
Dec. 29, 1953).
II. The Examiner rejected claims 8, 11, 13, and 14–26 under 35
U.S.C. § 103(a) as unpatentable over Creveling.

ANALYSIS
Rejection I
For claim 1, Appellant challenges the Examiner’s finding that
Creveling discloses an “intermediate section is configured to move relative
to the base about a single pivot axis.” Br. 8–9. The Examiner finds
Creveling discloses that limitation because “the intermediate section and its
associated linkages all collectively move relative to the base about a single
pivot axis at 34.” Final Act. 3. “In other words, while the intermediate
section may move relative to other linkages about multiple pivot axes, there
is only a single pivot axis (34) to which the intermediate section moves
relative to the base.” Ans. 8. The Examiner agrees Appellant and Creveling
disclose different folding mechanisms, but asserts a “broad, yet reasonable”
interpretation of claim 1 supports this finding. Id. We do not agree.
Notably, the Examiner does not articulate the “broad, yet reasonable”
interpretation actually relied upon. The Examiner’s analysis also does not
clearly explain why the claim language and Specification are consistent with

2 The Examiner has withdrawn the Double Patenting rejection of claims 1
and 9. Ans. 4.
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the breadth given. Whatever the actual interpretation, the Examiner’s
rejection in this case demonstrates it is unreasonably broad and contrary to
the plain language, which is consistent with the Specification.
Claim 1 requires configuring the intermediate section “to move
relative to the base about a single pivot axis.” Br. 15 (Claims App.). That
language is clear and unambiguous. As Appellant asserts, “[t]his language
means that the intermediate section pivots relative to the base about a single
pivot axis.” Br. 8. Put another way, relative to the base, the intermediate
section must rotate about one, and only one, axis. This understanding is
consistent with the Specification. Figures 2–5 show pivot axis 74 as having
a fixed location relative to the base and the intermediate section 20 rotates
only about the pivot axis 74 by using the rear intermediate section mounting
bracket 70. Spec. Figs. 2–5. Although other links and pivots are connected
to mounting bracket 70, those links couple the movement of the head section
24 to the rotational movement of the intermediate section 20. Id. ¶¶ 23, 24;
Figs. 2–5.
In Creveling, there are no fewer than two pivot axes (e.g., 35, 25,
and 34) relative to the base, about which the intermediate section rotates.
See Creveling 2:46–3:6; Figs. 2–4. The Examiner finds “the intermediate
section [in Creveling] may move . . . about multiple pivot axes,” but fails to
explain why the intermediate section movement about those axes should be
ignored, or why that movement is not relative to the base. Ans. 8; Final
Act. 3. While the Examiner remarks that pivot axis 34 in Creveling is the
only axis of rotation for the intermediate section fixed to the base, the
Examiner does not explain why being “fixed to the base” is relevant to
evaluating whether a pivot axis allows the intermediate section to move
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relative to the base. Id. Appellant’s claim 1 is limited to one and only one
axis of rotation relative to the base, regardless of whether that axis is fixed,
or not, to the base. As a result, the Examiner has not established a prima
facie case that Creveling discloses a mechanism for a foldable bed “wherein
the intermediate section is configured to move relative to the base about a
single pivot axis.” Therefore, we do not sustain the Examiner’s anticipation
rejection of claim 1.
Because the Examiner’s analysis of dependent claims 2–7, 9, and 12
does not cure the above deficiencies, we also do not sustain the anticipation
rejection of those claims.
Rejection II
Claims 8, 11, and 13
The Examiner’s obviousness rejection of dependent claims 8, 11,
and 13 relies upon the anticipation rejection of independent claim 1.
Because the Examiner’s obviousness analysis of claims 8, 11, and 13 does
not cure the deficiencies discussed above for claim 1 (supra, Rejection I),
we do not sustain the Examiner obviousness rejection of claims 8, 11,
and 13.

Claims 14–24, and 26
For claim 14, Appellant asserts the Examiner fails to establish a prima
facie case for modifying Creveling to include a mechanism that “is
configured to pivot the front legs and to pivot the rear legs under the seat
section when the furniture unit is in the folded position.” Br. 10–12. The
foldable furniture of Creveling includes a mechanism that pivotally folds the
rear leg 46 to accomplish a compact storage position, but the mechanism
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does not fold front leg 47, which is rigidly secured to the frame. Creveling
3:38–42, Figs. 2–4. Nevertheless, the Examiner finds pivoting legs are well
known in the art and “[o]ne of ordinary skill in the art would have
recognized that Creveling legs could be made pivotable in order to provide
Creveling with the predictable established function of pivoting legs (which
is to allow a folding bed to assume a plurality of positions).” Final Act. 4–5.
We are persuaded the Examiner did not properly articulate a reason
with a rational underpinning supporting the legal conclusion of obviousness.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding that in addition to
demonstrating that each of the components is known, the Examiner must
also provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). We agree the record supports
the general finding that pivoting legs were well known. However, the
Examiner does not sufficiently explain why that fact made it obvious for a
skilled artisan to modify Creveling’s leg 47 from a fixed leg to a pivoting
one and to couple the modified leg 47 with a mechanism configured to pivot
both legs 46 and 47 under the seat section when the furniture is in the folded
position, as claim 14 requires. We agree with Appellant that stating a skilled
artisan recognized leg 47 could be made to pivot in order to give that leg the
functionality of a pivoting leg is circular logic. See Br. 11.
Even granting a skilled artisan would have known a furniture leg
could be made to pivot to get the benefits of a pivotable leg, that fact does
illuminate what was known by the skilled artisan at the time of the invention
that would have led to seeking those benefits specifically for leg 47 in
Creveling. Furthermore, the Examiner does not explain what was known at
the time of the invention that would have led the skilled person to also
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couple leg 47 to a mechanism, such as the one claimed, to pivot the leg. The
Examiner fails to answer sufficiently those questions in a manner that the
evidence in this record supports.
The Examiner offers justifications for the modification, which are to
“allow a bed to fold down into a smaller arrangement (which Creveling is
certainly concerned with) and allow a user to adjust the bed should it be on
an uneven surface.” Ans. 9. Regarding the second justification, the
Examiner offers no evidentiary support that allowing leg 47 to pivot under
the seat section enables a user to adjust the bed on uneven surfaces. Broad
conclusory statements standing alone will not suffice as “evidence” of
knowledge leading to a particular combination. In re Kotzab, 217 F.3d
1365, 1370 (Fed. Cir. 2000).
Regarding the first justification, the Examiner does not sufficiently
explain why a skilled artisan would have considered it obvious to replace
Creveling’s rigidly secure leg 47 with a pivoting leg, when Creveling
already allows the bed to fold down into a smaller arrangement without such
a modification. See Creveling Fig. 2. Furthermore, the Examiner offers no
reasoning for why a skilled artisan would modify the mechanism of
Creveling and couple it to leg 47 to pivot both legs 46 and 47 under the seat
section when the furniture is in the folded position. Again, the Creveling
foldable furniture already folds under the seat section without modifying the
disclosed mechanism. See id. For the foregoing reasons, we do not sustain
the Examiner’s obviousness rejection of claim 14.3 Therefore, we also do

3 We note that claim 14 recites, “the seating unit further including front and
rear legs coupled with the mechanism . . . .” Br. 17 (Claims App., emphasis
added). Appellant’s Specification, however, does not disclose a seating unit
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not sustain the Examiner’s obviousness rejection of claims 15–24, and 26,
which all depend from and rely upon the rejection of claim 14.
Appellant also challenges the Examiner’s finding that Creveling
shows “the front and rear legs are disposed between the seat and
intermediate sections in the closed position,” as claim 26 requires. Br. 12
(emphasis added). The Examiner finds “Creveling shows at least a portion
of the front and rear legs being disposed between the seat and intermediate
sections.” Final Act. 5 (citing Creveling Fig. 2). Appellant alleges that
finding is improper because the legs are “positioned laterally of the frame.”
Br. 12.
We are persuaded the Examiner erred. In the context of claim 26, the
term “between” means within the space separating and defined by the
boundaries of the seat and intermediate sections, which is consistent with the
plain and ordinary meaning. See Between Definition, Meriam-Webster.com,
http://www.merriam-webster.com/dictionary/between (last visited on April
12, 2016) (“in the time, space, or interval that separates”). We note claim 26

including front and rear legs coupled with the mechanism. Instead, the
Specification describes the rear leg (called “intermediate leg 88”) as attached
to the intermediate section and the front leg (called “a front leg 108”) as
attached to the seat section. We also note that the mechanism for folding the
front and rear legs under the seating section likewise appears dependent
upon attaching the rear and front legs to the intermediate and seat sections,
respectively. We leave it to the Examiner upon return of this application for
further prosecution to determine whether claim 14 satisfies the written
description and enablement requirements of 35 U.S.C. § 112, ¶ 1 in light of
the above observations. No inference, however, should be drawn from our
decision not to make a new ground of rejection in the first instance. See 37
C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP), 8th ed., rev. 8, July 2010, § 1213.02.
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depends from claim 14, which requires a “vertically stacked relationship,”
with the seat section being positioned on top of the intermediate section, and
a mechanism that is configured to fold the front and rear legs under the seat
section. See Br. 17 (Claims App.). As such, if “between” includes an area
unbounded by the boundary of the seat and intermediate sections and
includes area outside those sections, then it would be a meaningless
limitation because folding the legs under the seat section will necessarily
cause the legs to fall into such an area. Ethicon Endo-Surgery, Inc. v. U.S.
Surgical Corp, 93 F.3d 1572, 1578 (Fed. Cir. 1996) (rejecting an
interpretation that renders a limitation meaninglessly empty). Consistent
with requiring “between” to limit the area to the boundary defined by the
intermediate and seat sections, the Specification only describes and depicts
the folding mechanism as folding front and rear legs, 88 and 104, within the
space separating the seat section from the intermediate section (as required
by claim 26). See Spec. ¶¶ 30–32, Figs. 2, 6.
As a result, we agree with Appellant that the legs of Creveling are not
“between” the intermediate and seat sections in the closed position because
they always remain laterally positioned outside of the space defined by those
sections. See Creveling 3:38–42, Figs. 2–5. Therefore, we do not sustain
the Examiner’s obviousness rejection of claim 26 for the additional reason
that a preponderance of the evidence does not support the finding that
Creveling’s legs are disposed between the seat and intermediate sections in
the closed position.

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Claim 25
Appellant contends claim 25 is patentably distinct from Creveling
because it requires the base to have “at least two walls with upper edges, and
in the folded position the seat section rests atop the upper edges.” Br. 12–
13. Rejecting claim 25 as obvious, the Examiner determined,
[i]t is well known in the art of folding beds to have walls on a
device such as Creveling’s, wherein the seat section rests on the
upper edge of the walls. One of ordinary skill in the art would
have recognized that walls could be used on Creveling in order
to prevent a user's hand from getting caught in the linkages.
Furthermore, allowing the seat section to rest on base walls
would provide stability to the apparatus.
Final Act. 5. Appellant alleges the Examiner is incorrect because the
suggested modification would render Creveling inoperable for its stated
purpose. Br. 13. We are not persuaded.
The Examiner correctly and fully explained why Appellant’s
argument is misplaced. Specifically, the Examiner states,
[Appellant’s] argument assumes the intended purpose of
Creveling is “to insure that the parts will be firmly and securely
locked in the closed or folded position.” This intended purpose
is entirely too narrow. A more reasonable intended purpose of
Creveling is to provide a user with a hassock that can expand into
a bed. Adding walls to Creveling’s base would not interfere with
this intended purpose. It is well known that households are
commonly occupied by children and pets. The Creveling
apparatus could easily be modified to have walls surrounding the
base in order to lower the possibility of a pet or child getting
caught in the folding linkages of Creveling. Appellant’s
argument that a front wall would destroy Creveling is flawed
because Claim 25 requires “at least two walls” and not
necessarily a front wall. Appellant argues that adding walls
would interfere with the locking ability of Creveling. The
Examiner respectfully disagrees. Walls could be added to the
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sides of the base to protect children and pets and not interfere
with the lock.
Ans. 10. Because a preponderance of the evidence supports the Examiner’s
factual findings and because we agree with the Examiner’s reasoning, we
sustain the obviousness rejection of claim 25.

SUMMARY
We reverse the Examiner’s anticipation rejection of claims 1–7, 9,
and 12.
We reverse the Examiner’s obviousness rejection of claims 8, 11, 13,
14–24, and 26.
We affirm the Examiner’s obviousness rejection of claim 25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART