Ex Parte O et al

Board of Patent Appeals and Interferences

Jul 30, 2008

10970448 (B.P.A.I. Jul. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte JAMES RICHARD O’REAGAN and 8
RUSSELL JAMES WESTON 9
____________________ 10
11
Appeal 2008-1704 12
Application 10/970,448 13
Technology Center 3600 14
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16
Decided: July 30, 2008 17
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19
Before WILLIAM F. PATE, III, JENNIFER D. BAHR and 20
MICHAEL W. O’NEILL, Administrative Patent Judges. 21
22
PATE, III, Administrative Patent Judge.23
24
25
DECISION ON APPEAL 26
27
STATEMENT OF CASE 28
The Appellants appeal under 35 U.S.C. § 134 (2002) from a Final 29
Rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b) 30
(2002). 31
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The Appellants claim a mattress system including air bladders and a 1
cover with air permeable air pockets which reduce the occurrence of bed 2
sores. 3
Independent claim 1 reads as follows: 4
1. A therapeutic mattress system, comprising: 5
a plurality of pressurized air bladders; 6
at least one resiliently activated reservoir, said at least 7
one reservoir in pressure communication with said bladders, 8
such that air is transferable between said bladders and said 9
reservoir; 10
a first perimeter bolster lateral to said bladders and a 11
second perimeter bolster opposite said first perimeter bolster 12
and lateral to said bladders; 13
a pressure dispersion cushion, said pressure dispersion 14
cushion covering said bladders and said first and second 15
perimeter bolsters; 16
a cover, said cover residing upon said pressure dispersion 17
cushion opposite said bladders, said cover including plural air 18
pockets, said air pockets being air permeable. 19
20
Independent claims 11, 20, 24 and 29 recite similar mattress systems 21
including a cover with air permeable air pockets, independent claim 29 22
reciting various elements of the mattress system in a means plus function 23
format. 24
The prior art relied upon by the Examiner in rejecting the claims is: 25
Agulnick 4,267,611 May 19, 1981 26
Maier 6,223,369 May 1, 2001 27
The Examiner rejected all of the claims under 35 U.S.C. § 103(a) as 28
unpatentable over Maier and Agulnick. 29
We AFFIRM. 30
31
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ISSUE 1
The sole issue raised in the present appeal is whether the Appellants 2
have shown that the Examiner erred in rejecting claims 1-30 as unpatentable 3
over Maier and Agulnick. 4
5
FINDINGS OF FACT 6
The record supports the following findings of fact (FF) by a 7
preponderance of the evidence. 8
1. Maier discloses a therapeutic mattress system 150 including 9
pressurized air bladders 152, 154, 156, 158 and a resiliently activated 10
reservoir 160, 162 that is in pressure communication with the bladders so 11
that air is transferable between the bladders and the reservoir (Fig. 6; Col. 12
11, l. 50-Col. 12, l. 5). The mattress system of Maier also includes a first 13
perimeter bolster (the inner/side bolster 68) lateral to the bladders and a 14
second perimeter bolster (the inner/side bolster 70) opposite the first 15
perimeter bolster and lateral to the bladders (Fig. 6; Col. 11, ll. 50-54). The 16
mattress system of Maier further includes a pressure dispersion cushion 24 17
that covers the bladders and the perimeter bolsters, as well as a cover 12 on 18
the pressure dispersion cushion opposite the bladders (Figs. 1 and 6; Col. 5, 19
ll. 6-9; Col. 11, ll. 50-54). 20
2. Maier teaches that the disclosed therapeutic mattress system 21
provides pressure relief to address the problem of pressure sores that can 22
develop on patients confined to beds in hospitals, nursing homes, or private 23
residences (Maier: Col. 1, ll. 18-32; Col. 2, ll. 17-28; Ans. 7). 24
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3. Maier further discloses that the perimeter bolsters (the 1
inner/side bolsters) are more dense (i.e., have a first compressibility) while 2
the pressure dispersion cushion is less dense (i.e., has a second 3
compressibility) so that the pressure dispersion cushion is relatively softer 4
(Col. 8, ll. 62-66). 5
4. Maier does not disclose that the cover includes plural air 6
pockets that are air permeable. 7
5. Agulnick discloses a therapeutic mattress 10 having a cover 12, 8
14 with plural air permeable air pockets (the inflatable ribs) 23 (Figs. 1 and 9
4; Col. 2, ll. 37-42; Col. 3, ll. 21-27 and 38-46). 10
6. Agulnick teaches that the mattress cover massages and cools 11
the body to prevent development of bed sores, and discloses that the mattress 12
cover is suitable for use in hospitals, nursing homes and residences (Col. 1, 13
ll. 6-11; Col. 5, ll. 46-51). 14
15
PRINCIPLES OF LAW 16
“Section 103 forbids issuance of a patent when ‘the differences 17
between the subject matter sought to be patented and the prior art are such 18
that the subject matter as a whole would have been obvious at the time the 19
invention was made to a person having ordinary skill in the art to which said 20
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 21
1734 (2007). The question of obviousness is resolved on the basis of 22
underlying factual determinations including (1) the scope and content of the 23
prior art, (2) any differences between the claimed subject matter and the 24
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called 25
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secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 1
(1966). In KSR, the Supreme Court emphasized “the need for caution in 2
granting a patent based on the combination of elements found in the prior 3
art,” and reaffirmed principles based on its precedent that “[t]he combination 4
of familiar elements according to known methods is likely to be obvious 5
when it does no more than yield predictable results.” KSR, 127 S.Ct. at 6
1739. 7
The Court also explained “[o]ften, it will be necessary for a court to 8
look to interrelated teachings of multiple patents; the effects of demands 9
known to the design community or present in the marketplace; and the 10
background knowledge possessed by a person having ordinary skill in the 11
art, all in order to determine whether there was an apparent reason to 12
combine the known elements in the fashion claimed by the patent at issue.” 13
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis 14
should be made explicit,” but “the analysis need not seek out precise 15
teachings directed to the specific subject matter of the challenged claim” Id. 16
at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). 17
In the above regard, the Federal Circuit has also held that teaching, 18
motivation, or suggestion may be implicit from the prior art as a whole, 19
rather than expressly stated in the references. See In re Kahn, 441 F.3d at 20
988. Moreover, an implicit motivation to combine has been found to exist 21
when the improvement is technology-independent and the combination of 22
references results in a product that is more desirable. Dystar Textilfarben 23
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 24
(Fed. Cir. 2006). In such situations, the proper question is whether one of 25
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ordinary skill in the art possesses knowledge and skills rendering him 1
capable of combining the prior art references. Id. 2
3
ANALYSIS 4
The Examiner rejected claims 1-30 as unpatentable over Maier and 5
Agulnick (Ans. 3-7). The Appellants contend that the Examiner’s rejection 6
is inappropriate and set forth various arguments directed to specific groups 7
of claims. We address each of these arguments set forth by the Appellants 8
infra. 9
10
Claims 1-30 11
With respect to all of the rejected claims, the Appellants contend that 12
the Examiner failed to establish a prima facie case of obviousness because 13
no motivation for combining Maier and Agulnick in the manner suggested 14
has been shown (App. Br. 17 and 18). In this regard, the Appellants contend 15
that while Maier discloses the use of a cover, Maier does not suggest using 16
an air permeable cover (App. Br. 18; FF 1 and 4). Moreover, the Appellants 17
contend that Agulnick teaches away from the invention because the air 18
permeable cover of Agulnick is used on a conventional mattress instead of a 19
more complex patient support system such as that disclosed in Maier (App. 20
Br. 18-20). Thus, the Appellants argue that the Examiner’s rejection of 21
claims 1-30 as unpatentable over Maier and Agulnick is inappropriate (App. 22
Br. 20). We disagree. 23
We initially note that the test for obviousness is what the combined 24
teachings of the references would suggest to those of ordinary skill in the art. 25
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In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 1
425 (CCPA 1981). In addition, while there may not be explicit teachings in 2
Maier and/or Agulnick to combine these references in the manner suggested 3
as argued by the Appellants, such explicit teachings is not required. KSR, 4
127 S.Ct. at 1741; see also In re Kahn, 441 F.3d at 988; Dystar, 464 F.3d at 5
1368. 6
In the present case, Maier discloses a modular mattress support 7
assembly like that of the Appellants’ invention except for the air permeable 8
air pockets on the cover (FF 1, 3 and 4; Ans. 3-7). As noted by the 9
Examiner, the modular mattress support assembly of Maier uses a 10
combination of foam and air technologies to provide pressure relief in order 11
to reduce the occurrence of sores which can develop on patients confined to 12
beds in hospitals, nursing homes, or private residences (FF 2; Ans. 7). 13
Agulnick discloses a mattress cover for mattresses in hospitals, nursing 14
homes and residences, the mattress cover having air permeable air pockets to 15
massage and cool the body so as to reduce the occurrence of bed sores (FF 5 16
and 6; Ans. 7). 17
Thus, the Appellants’ claimed invention is merely a combination of 18
the familiar elements disclosed in Maier and Agulnick that yields the 19
predictable result of further reducing the occurrence of bed sores. KSR, 127 20
S.Ct. at 1739. We note that these two differing techniques described in 21
Maier and Agulnick for reducing occurrence of bed sores are not mutually 22
exclusive in that one technique does not preclude the use of the other, i.e., 23
use of the mattress of Maier does not preclude the use of the mattress cover 24
of Agulnick, or vice versa. It would have been obvious to one of ordinary 25
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skill in the art that further reduction in the occurrence of bed sores can be 1
attained by utilizing the cover of Agulnick on the mattress of Maier. This 2
apparent reason for combining the known elements of Maier and Agulnick 3
together in the fashion now claimed by the Appellants was articulated by the 4
Examiner and we find it to be sufficient for supporting a conclusion of 5
obviousness (Ans. 3, 4 and 8). See KSR, 127 S.Ct. at 1741. 6
The Appellants’ additional argument that Agulnick teaches away from 7
using the disclosed cover in a mattress system (such as that of Maier) 8
because Agulnick refers to anchoring the cover to a conventional mattress 9
(App. Br. 19 and 20) also fails to persuade us of error in the Examiner’s 10
rejection. Both Maier and Agulnick are directed to the same field of 11
technology (i.e., bed support surfaces), address the same problem of bed 12
sores, and suggest the desirability of preventing bed sores (Ans. 8; FF 2 and 13
6). Moreover, these references also specifically disclose the same 14
environments in which the inventions are used, i.e., in hospitals, nursing 15
homes, or private residences (Ans. 8; FF 2 and 6). These facts run counter 16
to the Appellants’ assertion that Agulnick teaches away from using the 17
disclosed cover in a mattress system such as that of Maier. 18
In addition, the portions of Agulnick cited by the Appellants do not 19
support the Appellants’ “teaching away” argument (App. Br. 19 and 20). 20
More specifically, these cited portions of Agulnick primarily relate to 21
securing/anchoring the cover in order to prevent slippage of the mattress 22
cover (because the cover is retro-fitted to existing mattresses), not to 23
whether the cover should only be used on certain types of mattresses (App. 24
Br. 19). 25
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Therefore, in view of the above, we disagree with the Appellants’ 1
contention that the Examiner failed to establish a prima facie case of 2
obviousness in rejecting claims 1-30 as unpatentable over Maier and 3
Agulnick. 4
5
Claims 2, 12, 21, 25 and 30 6
With respect to claims 2, 12, 21, 25 and 30, the Appellants contend 7
that neither Maier nor Agulnick discloses air pockets in which air is 8
transferable between adjacent pockets because the air pockets of Agulnick 9
only allow transfer of air between alternate ribs (App. Br. 20 and 21). Thus, 10
the Appellants contend that the Examiner erred in rejecting these claims 11
based on Maier and Agulnick (App. Br. 22). We disagree. 12
Initially, as noted by the Examiner, the term “adjacent” can mean 13
close to or near (Ans. 9), and does not necessarily require objects to be 14
“adjoining” or immediately next to or following one another. In this regard, 15
we note that during prosecution, claims are to be given their broadest 16
reasonable construction in light of the specification as it would be 17
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. 18
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Moreover, “[a]bsent claim 19
language carrying a narrow meaning, the PTO should only limit the claim 20
based on the specification or prosecution history when those sources 21
expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325 22
(Fed Cir. 2004). In the present case, there does not appear to be a specific 23
definition of “adjacent”, or a disclaimer of the broader definition of 24
“adjacent”, within the Specification. Therefore, when broad construction of 25
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the term “adjacent” is applied, pockets 23A and 23C of Agulnick satisfy the 1
recited limitation because the pockets are clearly in close proximity to one 2
another as noted by the Examiner (Ans. 9). 3
Moreover, even assuming, arguendo, a narrower construction of the 4
term “adjacent” were warranted so as to require air transfer between 5
adjoining air pockets or air pockets that are not separated by other air 6
pockets, for example, we find such an implementation of air pockets to be a 7
predictable variation of the air pockets disclosed in Agulnick that yields a 8
predictable result. See KSR, 127 S.Ct. at 1739-40. In particular, one of 9
ordinary skill in the art would appreciate that the cover disclosed in 10
Agulnick can be readily implemented so that all of the disclosed air 11
permeable air pockets communicate with each other so that the pockets 12
inflate together as a single group rather than in two groups as described in 13
Agulnick. 14
Thus, for the foregoing reasons, the Appellants have not shown that 15
the Examiner erred in rejecting claims 2, 12, 21, 25 and 30 as unpatentable 16
over Maier and Agulnick. 17
18
Claims 10, 19, 20 and 28 19
The Appellants disagree with the Examiner’s position that perimeter 20
bolsters which are less compressible than a pressure dispersion cushion are 21
well known (App. Br. 23). The Appellants also contend that neither Maier 22
nor Agulnick discloses this feature recited in these claims (App. Br. 23). 23
However, the Appellants’ arguments are without merit. As the Examiner 24
notes, Maier itself discloses perimeter bolsters made of a relatively denser 25
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material as compared to the less dense material of the foam topper (i.e., 1
pressure dispersion cushion) (Ans. 9 and 10; FF 4). 2
Therefore, the Appellants have not shown that the Examiner erred in 3
rejecting claims 10, 19, 20 and 28 as unpatentable over Maier and Agulnick. 4
5
CONCLUSION 6
The Appellants have not shown that the Examiner erred in rejecting 7
claims 1-30 as unpatentable over Maier and Agulnick. 8
9
ORDER 10
The Examiner’s rejection of claims 1-30 is AFFIRMED. 11
No time period for taking any subsequent action in connection with 12
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2007). 14
15
AFFIRMED 16
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vsh 21
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DORITY & MANNING, P.A. 23
POST OFFICE BOX 1449 24
GREENVILLE SC 29602-1449 25
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