Ex Parte Oh

Patent Trial and Appeal Board

Dec 19, 2012

11786854 (P.T.A.B. Dec. 19, 2012)

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.
11/786,854 04/13/2007 Suk Kan Oh ZIN-002 1011
7590 12/19/2012
Imperium Patent Works
P.O. Box 587
Sunol, CA 94586
EXAMINER
CHEUNG, CHUN HOI
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
12/19/2012 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 SUK KAN OH
____________________

Appeal 2010-012486
Application 11/786,854
Technology Center 3700
____________________

Before: JOHN C. KERINS, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/786,854

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1, 9, 16, and 19 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. An apparatus comprising:
a rolled bedding article that has a first roll portion and a
second roll portion, wherein the first roll portion has a first roll
axis and the second roll portion has a second roll axis, wherein
the first roll axis is separated from the second roll axis, and
wherein the rolled bedding article is taken from the group
consisting of: a rolled memory foam mattress, and a rolled
memory foam mattress topper; and
a container that contains the rolled bedding article,
wherein the container has a width, a depth and a height,
wherein the depth extends in a depth dimension, and wherein
the depth is smaller than the width and is smaller than the
height.

REJECTIONS
1. Claims 1-7 and 9-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dextraze (US 6,901,722 B2; iss. Jun. 7, 2005), Leeds (US
2007/0179864 A1; pub. Aug. 2, 2007), and Ciske (US 5,535,467; iss. Jul.
16, 1996);
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Dextraze, Leeds, Ciske, and Kuske (US 6,318,555 B1; iss. Nov. 20, 2001);
and
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3. Claims 16-21 are are rejected under 35 U.S.C. § 103(a) as being
unpatentable over VanCalbergh (US 7,100,780 B1; iss. Sep. 5, 2006),
Dextraze, and Ciske.

OPINION
Claims 1-7 and 9-15
Claims 1 and 9 each recite a container having a width, a depth, and a
height, with the depth being smaller than the width and the height. The
Examiner finds that the container (shipping carton 50) in Dextraze “has a
width, a depth and a height, wherein the depth extends in a depth dimension,
and wherein the depth is smaller than the width and is smaller than the
height (Figure 9).” Ans. 3.
We agree with Appellant that the packaging shown in Figure 9 of
Dextraze does not appear to have a depth that is smaller than both the width
and the height. See Reply Br. 8-9.
Therefore, we cannot sustain the rejection of claims 1-7 and 9-15.

Claim 8
Claim 8 depends from claim 1. The stated basis for the rejection of
claim 8 does not remedy the deficiency set forth above regarding the
rejection of claim 1. Therefore, we do not sustain the rejection of claim 8
for similar reasons.

Claims 16-21
Claim 16 recites a structure including a retail store merchandise shelf
and first and second containers containing rolled bedding articles disposed
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on the shelf, with “the first container [being] disposed on the shelf in front of
the second container such that the second container is aligned with the first
container in the depth dimension.”
The Examiner finds that “VanCalberg[h] discloses a retail-store
merchandise shelf (20) . . . wherein the first container [30] is disposed on the
shelf in front of the second container [30] such that the second container is
aligned with the first container in the depth dimension (Figure 1).” Ans. 6.
The Examiner acknowledges that VanCalbergh does not disclose the
containers 30 containing rolled bedding articles and finds that “Dextraze
discloses the container (50) contains a rolled bedding article (12) and Ciske
discloses a rolled bedding article comprises a first roll portion and a second
roll portion (Figure 5).” Id. The Examiner then determines that
It would have been obvious . . . to modify . . . VanCalbergh
with containers contain[ing] rolled bedding article[s] . . . as
taught by Dextraze and the rolled items can be rolled with a
first roll portion and second roll portion taught by Ciske to have
a system of display for merchandising the bedding article
packaging with less width while shipping said package.
Id.
In response, Appellant initially argues that “neither Dextraze nor
Ciske teaches a rolled mattress or mattress topper with two roll portions.”
App. Br. 15. However, the Examiner does not find that either Dextraze or
Ciske individually discloses a rolled mattress or mattress topper with two
roll portions. The Examiner relies on the combination of Dextraze and
Ciske for the proposed modification to Dextraze to include the two roll
portions shown in Ciske. Pointing out that neither of the two references
individually teaches the claim limitation is not persuasive of
nonobviousness. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck
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& Co., 800 F.2d 1091 (Fed. Cir. 1986) (nonobviousness cannot be
established by attacking references individually where rejections are based
on combinations of references).
The Examiner explains that Dextraze and Ciske would have been
combined to provide packaged bedding with reduced dimensions and that
Dextraze and Ciske would have been further combined with VanCalbergh
“to have a system of display for merchandising the bedding article
packaging.” Ans. 6. Appellant attacks this rationale, arguing that
The Examiner’s rationale . . . provides no apparent reason why
a person of ordinary skill in the art of displaying bedding
articles as merchandise would have modified a packaging
method of Dextraze using the teachings of Ciske relating to a
thin strip of foam that can be wrapped around the waist or used
to hold an ice pack.
App. Br. 15-16.
As shown in Figure 5, Ciske teaches a bedding article in the form of a
pillow (see Title) including a “cushion body 30 . . . [with] edges [that are]
consecutively rolled substantially parallel to the length to form two spiral
rolls of equal size that meet in the center.” Col. 4, line 65 – Col. 5, line 1.
The Examiner relies on Figure 5 of Ciske showing the pillow with the first
and second roll portions for the proposed modifications to Dextraze (Ans. 6),
not the cushion body 30 being “wrapped around the waist or used to hold an
ice pack” as suggested by Appellant (App. Br. 15-16). Therefore, we do not
find Appellant’s arguments persuasive.
Appellant additionally contends that “VanCalbergh relates to a
warehouse storage rack as opposed to the recited ‘retail-store merchandise
shelf’” and does not teach retail-store merchandise shelves because “[t]he
storage rack taught in VanCalbergh is an H-frame rack commonly used in
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large, high-ceilinged home improvement stores, such as warehouse stores.
(See VanCalbergh, 1:10-15; 3:42-44).” Reply Br. 11. We disagree.
VanCalbergh explicitly includes retail-store shelves, noting that “[t]he H-
frame rack 20 is commonly used in high-ceilinged, retail-warehouse type
stores.” Col. 3, ll. 42-44 (emphasis added).
Appellant’s remaining arguments are directed to the dimensions of the
rolled bedding articles and containers. See App. Br. 16-18 and Reply Br. 11-
12. However, these arguments are not persuasive because neither claim 16
nor claim 19 includes any specific relationship between the width, depth,
and height of the bedding articles or containers. Further, neither claim 16
nor claim 19 recites any relation between the shelf depth and the dimensions
of the bedding articles or containers. Claims 16 and 19 only require that the
shelf depth extends in a depth dimension and that “the first container is
disposed on the shelf in front of the second container such that the second
container is aligned with the first container in the depth dimension.” As
noted above, the Examiner correctly finds that VanCalbergh teaches that
“the first container [30] is disposed on the shelf in front of the second
container [30] such that the second container is aligned with the first
container in the depth dimension (Figure 1).” Ans. 6.
For these reasons, Appellant has not apprised us of Examiner error
and we sustain the rejection of claims 16 and 19. Claims 17 and 18 depend
from claim 16 and claims 20 and 21 depend from claim 19. Claims 17, 18,
20, and 21 have not been argued separately and thus fall with claims 16 and
19.
DECISION
We REVERSE the Examiner’s decision to reject claims 1-15.
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We AFFIRM the Examiner’s decision to reject claims 16-21.
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

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