Ex Parte Oh

Patent Trial and Appeal Board

Jan 3, 2013

12589961 (P.T.A.B. Jan. 3, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/589,961 10/30/2009 Suk Kan Oh ZIN-007-1C 9815
47713 7590 01/04/2013
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
01/04/2013 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 2011-010635
Application 12/589,961
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
DEBORAH KATZ, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 21-27 and 31-41. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method of forming a foam mattress
containing green tea. Claim 21 is illustrative:
21. A method comprising:
Appeal 2011-010635
Application 12/589,961

2
(a) mixing polyol raw materials together, wherein the
polyol raw materials are used to make foam;
(b) adding green dye to the polyol raw materials mixed
together in (a);
(c) adding green tea to the polyol raw materials mixed
together in (a);
(d) adding a catalyst to the polyol raw materials, the
green tea [sic] dye and the green tea to make a green tea foam;
and
(e) making a foam layer of a mattress using the green tea
foam.
(Claims App. at Br. 20.)
The Examiner rejects, and Appellant appeals, the following rejections
under 35 U.S.C. § 103(a):
A. The rejection of claims 21-27, 32, 35-37, 39, and 41 as obvious over
Okamoto1 in view of Lin2;
B. The rejection of claims 31 and 38 over Okamoto in view of Lin, and
further in view of O’Donnell3;
C. The rejection of claims 32 and 33 over Okamoto in view of Lin, and
further in view of Hochschild4;
D. The rejection of claim 34 over Okamoto in view of Lin, further in
view of Hochschild, and further in view of de Simone5; and
E. The rejection of claim 40 over Okamoto in view of Lin, and further in
view of Dell’Accio6.

1 Okamoto et al., US 6,869,681 B2 patented Mar. 22, 2005.
2 Lin et al., US 2007/0032561 A1 pub. Feb. 8, 2007.
3 O’Donnell, US 5,484,195 patented Jan. 16, 1996.
4 Hochschild, US 7,191,483 B2 patented Mar. 20, 2007.
5 de Simone et al., US 5,610,207 patented Mar. 11, 1997.
Appeal 2011-010635
Application 12/589,961

3
In accordance with 37 C.F.R. § 41.37(c)(1)(vii), for each rejection we
select a single claim as representative for resolving the issues on appeal
unless Appellant argues a claim or group of claims separately. For Rejection
A, Appellant argues independent claims 21 and 32 together (Br. 6-13). We
select claim 21 as representative. With regard to the dependent claims,
Appellant argues claim 41 separately, but otherwise, relies upon the
arguments presented against the independent claims (Br. 13-14). Therefore,
we consider claim 41 separately. With regard to Rejections B and C, we
select the claim argued by Appellant as representative, i.e., claims 31 and 32,
respectively.
OPINION
With regard to Rejection A, the issue on appeal with respect to
representative claim 21 is: Has Appellant identified a reversible error in the
Examiner’s finding that Okamoto in combination with Lin provide a reason
to form the green tea molding composition of Okamoto into a foam layer
capable of being used in a mattress?
After review of Appellant’s arguments (Br. 6-13; Reply Br. 4-10), and
the evidence as a whole, we determine that Appellant has not identified such
an error.
Okamoto teaches forming articles, which the reference terms
“functional moldings,” from a resin composition having deodorizing and
antimicrobial properties due to the presence of a functional component (A)
that may be green tea (Okamoto, col. 1, ll. 9-15; col. 3, l. 60 to col. 4, l. 8;
col. 4, l. 25). The resin (R) to which the green tea can be added that can
take a wide variety of forms including forming resins, painting resins,

6 Dell’Accio, US 2008/0083069 A1 patented Apr. 10, 2008.
Appeal 2011-010635
Application 12/589,961

4
coating resins, ink resins, sealing resins, and cosmetic resins (col. 8, ll. 43-
56). The resins can be melt forming resins, solution forming resins or
emulsion forming resins (col. 9, ll. 12-15). The chemical nature of the resin
is also wide ranging and includes polyurethane resins (col. 9, ll. 21-62,
particularly, col. 9, l. 24). The methods of forming the resins are also wide
ranging (col. 9, ll. 17-20). Okamoto suggests a wide range of end uses
including various types of moldings (col. 13, ll. 32-45).
Appellant’s claim 21 recites a step of making a foam layer of a
mattress (Claim 21, step (e)). Initially, we note that claim 21 is not directed
to forming a mattress, but only making a foam layer. In terms of structure,
the claim merely requires a foam layer having a structure capable of being
used as a layer of a mattress. Given that the claim is not directed to forming
a mattress, we agree with the Examiner that the use of the foam layer in a
mattress is merely an intended use for the foam layer (Ans. 11). Claim 21
does not require that the foam layer actually be placed in a mattress.
Okamoto discloses forming a polyurethane foam article, i.e., a
polyurethane foam article said to be suitable as, for example, a cosmetic puff
and a filter (col. 23, ll. 37-49).
Lin teaches forming polyurethane memory foam into such products as
mattresses, pillows, cushions of office chairs, etc. (Lin ¶¶ [0002] and
[0029]).
Given the breath of resins to which the green tea component of
Okamoto can be added and the disclosure of using it within a polyurethane
foam article, we agree with the Examiner that a preponderance of the
evidence supports a conclusion of obviousness. Combining the known green
tea composition with polyurethane resin to form memory foam mattresses
Appeal 2011-010635
Application 12/589,961

5
and layers associated with mattresses would have been merely the
combination of known compositions and materials for their known benefits,
i.e., the deodorizing and antimicrobial benefits of the green tea composition
with the benefits of memory foam mattress material.
Appellant has not identified a reversible error in the Examiner’s
finding that Okamoto in combination with Lin provides a reason to form the
green tea molding composition into a foam layer capable of being used in a
mattress.
Claim 41 depends from claim 21 and recites “wherein the foam layer
of the mattress is a layer of the mattress upon which a user directly rests.”
The Examiner finds that this is a further intended use of the product of
claim 21 and does not result in a structural difference between the claimed
invention and the prior art (Ans. 6). Appellant disagrees because “the
molding filaments of Okamoto are not structurally identical to the recited
foam layer of a mattress upon which a user directly rests.” (Br. 13.)
Appellant’s contention is based upon a faulty reading of Okamoto.
Okamoto is not limited to forming filaments, but teaches forming a wide
range of molded articles including polyurethane foam articles. We cannot
say that Appellant has identified a reversible error in the Examiner’s
rejection of claim 41.
With regard to the rejection of claims 31 and 38, Appellant focuses on
claim 31, therefore, we do the same. Claim 31 depends from claim 21 and
recites “wherein the foam layer is green colored, further comprising: (f)
displaying the green-colored foam layer in a cut-away display sample of the
mattress.”
Appeal 2011-010635
Application 12/589,961

6
Appellant contends that none of the references relied upon by the
Examiner teaches coloring the foam, and the Examiner cannot rely upon
Official Notice to supply the missing teaching (Br. 15). However, Appellant
does not specifically traverse the well-known nature of coloring that which
one desires to color with a colorant. Therefore, Appellant’s argument is not
persuasive.
Appellant’s other arguments fail to address the specific combination
made by the Examiner.
With regard to the rejection of claims 32 and 33, Appellant confines
the arguments to claim 32. The relevant issues arising have already been
addressed above. We are not persuaded of reversible error in the rejection.
With regard to the rejections of claims 34 and 40, Appellant does not
address the specific rejections made by the Examiner. We cannot say that
Appellant has identified a reversible error in either rejection.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).

AFFIRMED

sld