13374971 (P.T.A.B. Jul. 13, 2016)

Ex Parte Navarro

Patent Trial and Appeal BoardJul 13, 2016

13374971 (P.T.A.B. Jul. 13, 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. 13/374,971 01/25/2012 Nancy Navarro 3524 7590 07/14/2016 Gary Honeycutt 4728 Ravendale Richardson, TX 75082 EXAMINER CUOMO, PETER M ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 07/14/2016 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 NANCY NAVARRO ____________ Appeal 2014-006259 Application 13/374,971 Technology Center 3600 ____________ Before JAMES P. CALVE, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nancy Navarro (“Appellant”)1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting, under 35 U.S.C. § 103(a), claims 1–4 as unpatentable over Garza (US 6,622,325 B1, iss. Sept. 23, 2003) and Varaney (US 4,173,048, iss. Nov. 6, 1979), and claim 5 as unpatentable over Garza, Varaney, and Lacour (US 2,295,906, iss. Sept. 15, 1942). The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appeal Brief identifies Appellant as the real party in interest. Appeal Br. 1. Appeal 2014-006259 Application 13/374,971 2 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal, and it recites: 1. A pillow shaped to provide a central support area for the head and an extended area on each side of said central support area, a first opening in said extended area on one side of said central support area, and a second opening on the other side of said central support area, to prevent the facial area of the user from touching the pillow when the user is lying on either side; and a pair of pillow extensions below said opening, shaped to surround the upper body and shoulder of the user when lying on either side. Appeal Br. (Claims App.). ANALYSIS In rejecting claim 1 as obvious over Garza and Varaney, the Examiner finds Garza discloses, as claimed, a pillow 10 with a central support area for the head, and an extended side area with openings 12, 12′ which prevent the user’s facial area from touching the pillow when the user is lying on either side. Final Act. 2. The Examiner finds Garza lacks the claimed pair of pillow extensions below openings 12, 12′. Id. The Examiner finds Varaney discloses pillow 20 including a pair of extensions 22, 23 extending downwardly from head supporting section 21, along each side of a pillow user. Id. The Examiner determines it would have been obvious to add such side extensions to Garza’s pillow, in light of Varaney’s teaching that the side extensions support a blanket or sheet over the pillow user. Id. (citing Varaney, 4:46–61). Appellant argues the “combination of known elements” in claim 1 “is inventive and patentable because it creates a new cooperative functional Appeal 2014-006259 Application 13/374,971 3 relationship.” Appeal Br. 2. Specifically, Appellant asserts the claimed pillow extensions “keep the user’s body in a position that requires the head to remain on” the central support area, and “requires the face to remain over one of” the first and second openings. Id. Appellant contends “the issue is not whether the references were properly combined; instead, the key issue is whether or not either reference suggests the use of its disclosure in combination with the other.” Id. at 3. These arguments are not persuasive. Although obviousness does not require a motivation or suggestion to combine to be found in the cited prior art references, such an expressly disclosed motivation or suggestion may, in appropriate cases, be sufficient for a determination of obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 407 & 415–19 (2007). This is just such a case. The Examiner finds Varaney discloses its side extensions 22, 23 beneficially support a blanket or sheet over the user. Final Act. 2 (citing Varaney, 4:46–61). That finding, which Appellant does not challenge, is supported by a preponderance of the evidence. See Varaney, 4:46–61, Figs. 1, 4, and 5. Varaney’s disclosure thus provides an express motivation for modifying Garza’s pillow 10 to include side extensions. Appellant also argues “the Examiner has relied upon an alleged inherent function, said to exist after combining the references, and not before.” Appeal Br. 3. Appellant cites five court decisions concerning combinations of references based, in part, on a finding that the combination inherently would yield functional benefits. Id. at 3–5; Reply Br. 1–2. That, however, is not the situation presented here. The Examiner’s rejection is not premised upon a finding that a person of ordinary skill in the art would have combined Garza with Varaney for the reason of achieving a functional result Appeal 2014-006259 Application 13/374,971 4 inherently but not expressly disclosed in either reference. Rather, the rejection is premised upon a finding that Varaney expressly discloses a functional benefit of using side pillow extensions 22, 23: to “support a blanket or sheet over a user of the pillow.” Final Act. 2. That finding is supported by a preponderance of the evidence, as discussed above. Moreover, the only functionality recited in claim 1 is that the openings “prevent the facial area of the user from touching the pillow when the user is lying on either side.” Appeal Br. (Claims App.). The Examiner finds Garza’s pillow openings 12, 12′ perform that function. Final Act. 2. That finding, which Appellant does not challenge, is supported by a preponderance of the evidence. See Garza, Figs. 1–2, Abstract (“facial relief units (12, 12′) create voids in . . . pillow member (20) adjacent a person’s eye sockets and cheek bones”), 1:20–24 (pillow 20 “eliminates the compression of the user’s cheekbones and eye socket area”), 3:5–8 (“fresh air will circulate beneath the unsupported eye socket and cheekbone area of the user”). Appellant’s argument further mentions the claimed extensions functioning to “keep the user’s body in a position that requires the head to remain on” the central support area, and “requires the face to remain over one of” the openings. Appeal Br. 2. That functionality, however, is not recited in claim 1. Claim 1 recites only that the extensions are “shaped to surround the upper body and shoulder of the user when lying on either side.” Appeal Br. (Claims App.) (emphasis added). Varaney’s extensions 22, 23 are so shaped. See Varaney, Fig. 4, 4:9–20. For the foregoing reasons, we sustain the rejection of claim 1 as unpatentable over Garza and Varaney. Appellant does not provide any Appeal 2014-006259 Application 13/374,971 5 additional argument against the rejection of claims 2–4 as unpatentable over Garza and Varaney, or the rejection of claim 5 as unpatentable over Garza, Varaney, and Lacour. Appeal Br. 2–6. We, therefore, sustain those rejections as well. DECISION The Examiner’s decision to reject claims 1–5 is AFFIRMED. 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