Ex Parte Pearson

Board of Patent Appeals and Interferences

Jan 26, 2007

10775634 (B.P.A.I. Jan. 26, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JON D. PEARSON
__________

Appeal No. 2006-1667
Application No. 10/775,634
___________

ON BRIEF
___________

Before OWENS, CRAWFORD and BAHR, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-18, which are
all of the pending claims.
THE INVENTION
The appellant claims an apparatus and method for adjusting
the firmness, support or sag of a mattress. Claims 1 and 13 are
illustrative:
1. Apparatus for adjusting firmness, support, or sag of a
mattress, comprising:

a) a substantially convex cross-sectional shape that is
thicker in the center region and gradually thinner
toward the edges;

Appeal No. 2006-1667
Application No. 10/775,634

2
b) a material and constitution for maintaining the convex
shape under the weight of the mattress and a person;
and

c) a set of dimensions large enough to adjust firmness,
support, or sag for the majority of an area of the
mattress used by the person.

13. A method of providing adjustability of firmness,
support, or sag to a mattress comprising the steps of:

a) providing an inflatable apparatus and inflating it
so that it attains a substantially convex shape;

b) inflating the apparatus to a desired degree for a
desired level of firmness, support, or sag to the
mattress;

c) placing the apparatus under the mattress; and

d) positioning the apparatus so that it supports the
majority of an area of the mattress used by a
person.

THE REFERENCES
Pepe 5,787,531 Aug. 4, 1998
Reeder et al. (Reeder) 6,460,209 Oct. 8, 2002
Gordon 6,665,898 Dec. 23, 2003

THE REJECTIONS
The claims stand rejected as follows: claims 1-3, 7-9
and 13-18 under 35 U.S.C. § 102(e) as anticipated by Gordon;
claims 4, 5, 10 and 11 under 35 U.S.C. § 103 as obvious over
Gordon in view of Reeder; and claims 6 and 12 under
35 U.S.C. § 103 as obvious over Gordon in view of Pepe.
Appeal No. 2006-1667
Application No. 10/775,634

3
OPINION
We reverse the rejection of claims 1-3 and 7-9 under
35 U.S.C. § 102(e), affirm the rejection of claims 13-18 under
35 U.S.C. § 102(e), affirm the rejections under 35 U.S.C. § 103,
and remand the application to the examiner to consider rejecting
claims 1-3 and 7-9 under 35 U.S.C. § 103.
Claims 1-3 and 7-9
We need to address only the independent claims among
claims 1-3 and 7-9, i.e., claims 1 and 7. Claim 1 requires an
apparatus for adjusting the firmness, support or sag of a
mattress, comprising a material and construction capable of
maintaining, under the weight of a mattress and a person, a
convex shape that is thicker in the center region and gradually
thinner toward the edges. Claim 7 requires an apparatus for
adding adjustability of firmness, support or sag to a mattress,
comprising a plurality of inflatable chambers, wherein the
apparatus has a substantially convex cross-sectional shape, after
inflation, that is thicker in the center region and gradually
tapers toward the edges, and the chambers have an arrangement and
shape that renders them capable of maintaining the convex shape
under the weight of a mattress and a person.
Gordon discloses a device “configured to be placed under the
center region of a sagging or new mattress, after which the
Appeal No. 2006-1667
Application No. 10/775,634

4
device is inflated to correct the sagging portion, or to provide
additional support” (col. 1, lines 41-44). The device includes a
bladder (24) that is inserted into the center region (20) between
a mattress (18) and a box spring (16), and then is inflated until
any dip or sagging in the center region essentially disappears
(col. 3, lines 1-5). Figure 3B shows the inflated bladder
between the mattress and box spring as having a convex shape in
the longitudinal direction. The bladder can have multiple,
independently inflatable lobes to correct side-to-side sag
variation and provide increased sag compensation for the overall
center region (col. 3, line 16 – col. 4, line 15; figures 5-8).
The examiner argues that Gordon discloses “a material and
constitution for maintaining the convex shape under the weight of
the mattress and a person (Figure 3B)” (answer, page 3). That
figure shows a convex bladder shape only under the weight of a
mattress, not under the weight of a mattress and a person.
The examiner argues that “[a]s seen in Figure 3B and
disclosed in column 2 at lines 38 through 44 and column 3 at
lines 3 through 6, the mattress [i.e., inflatable bladder]
maintains its shape under the weight of a mattress. Furthermore,
the apparatus shown by Gordon ‘898 is capable of being inflated
to a degree that it will maintain its shape under the additional
weight of a person” (answer, page 8). The examiner is arguing
Appeal No. 2006-1667
Application No. 10/775,634

5

that Gordon’s bladder inherently is capable of being inflated
sufficiently that it maintains a convex shape under the weight of
a mattress and a person. When an examiner relies upon a theory
of inherency, “the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). Inherency “may not be
established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances
is not sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
Pat. App. & Int. 1986). The examiner has not provided the
required facts and/or technical reasoning showing that Gordon’s
inflatable bladder necessarily is capable of maintaining a convex
shape under the weight of a mattress and a person.
The declaration under 37 CFR § 1.132 of Jon Pearson (filed
Jan. 25, 2005), the inventor, relied upon in the brief (pages 6-
11), states that Gordon’s inflatable bladder has nothing to
create or maintain a convex shape (¶ 11).1 Gordon’s figure 3B

1 Pearson’s supplemental declaration (filed July 18, 2005) was not entered by
the examiner (answer, page 9). The appellant presents an argument in the
reply brief (page 2) as to why the supplemental declaration should be entered.
That argument is not well taken because the examiner’s refusal to enter the
supplemental declaration is a petitionable issue, not an appealable issue
before the board. See Manual of Patent Examining Procedure
§ 1002.02(c)(3)(d)(8th ed., rev. 2, May 2004). Consequently, we have not
Appeal No. 2006-1667
Application No. 10/775,634

6

shows that a convex shape is created. The declaration is
correct, however, in stating that Gordon does not disclose
anything (such as the appellant’s pieces of flexible material
(figures 4A-4C), hollow chambers (figures 5A-5C) or multiple
chambers of varying diameters (figures 6A-6D)) for maintaining
the convex shape under the weight of both a mattress and a
person. The examiner argues that the declaration is ineffective
because “a declaration under 37 CFR 1.132 can only be used to
overcome a provisional rejection under 35 USC § 102(e) to show
that the claimed invention is not by another” (answer, page 9).
The examiner is incorrect. Rule 132 (65 FR 57057, Sep. 20, 2000)
states that “[w]hen any claim of an application or a patent under
reexamination is rejected or objected to, any evidence submitted
to traverse the rejection or objection on a basis not otherwise
provided for must be by way of an oath or declaration under this
section.” Thus, that rule is not limited in the manner argued by
the examiner. The examiner’s argument, therefore, is not
effective for refuting the statement in the declaration that
Gordon’s device has nothing to maintain the convex shape under
the weight of a mattress and a person.
For the above reasons we find that the examiner has not
carried the burden of establishing a prima facie case of

considered the supplemental declaration in reaching our decision.
Appeal No. 2006-1667
Application No. 10/775,634

7
anticipation of the invention claimed in the appellant’s
claims 1-3 and 7-9.
Claims 13-18
The appellant argues, regarding claims 13-18, that Gordon’s
“mattress support at least must have a substantially convex
cross-sectional shape overall and maintain the convex cross-
sectional shape under the weight of the mattress and a person…”
(brief, pages 4-5). Those claims merely require that a
substantially convex shape is attained. They do not require that
the convex shape is maintained under the weight of either a
mattress or a person.
The appellant argues that claims 13-18 require that “the
apparatus must also support the majority of an area of the
mattress used by the person” (brief, page 5). Those claims are
open to the manner of use being lying on one’s side. The bladder
(24B) in Gordon’s figure 5 is shown as being sufficiently large
in relation to the size of the box spring (16) that it would
support the majority of an area of the mattress used by a person
lying on his or her side.
We therefore are not convinced of reversible error in the
examiner’s rejection of claims 13-18.

Appeal No. 2006-1667
Application No. 10/775,634

8
Claims 4, 5, 10 and 11
Reeder discloses a mattress structure that is customized for
the individual user and can be assembled by the user from a kit
or can be assembled at the factory or some assembly location
based upon the user’s reaction to a test mattress at the point of
sale (col. 1, lines 16-25). The core (88) of the mattress
structure can include an air bladder (96) having I-beams (218,
219) therein with varied heights forming varied air pocket (224,
224’) heights that provide additional support and firmness for
the portions of the user’s body adjacent to the taller air
pockets (col. 22, lines 36-63; col. 23, lines 17-23 and 44-51;
figures 12, 14 and 15).
The appellant argues that customized areas of support is not
the problem solved by the appellant (brief, page 15). To
establish a prima facie case of obviousness, references need not
be combined for the purpose of solving the problem solved by the
appellant. See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688,
693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert.
denied, 500 U.S. 904 (1991). Reeder would have fairly suggested,
to one of ordinary skill in the art, using Reeder’s I-beams
having varied heights in Gordon’s bladder to provide the benefit
Appeal No. 2006-1667
Application No. 10/775,634

9
of the I-beams disclosed by Reeder, i.e., more firmness and
support adjacent to the taller air pockets (col. 22, lines 59-63;
col. 23, lines 20-23 and 44-51). Thus, contrary to the
appellant’s argument (brief, page 15), impermissible hindsight is
not required in combining the teachings of Gordon and Reeder.
The appellant argues that Gordon and Reeder would not have
suggested an inflatable mattress support having a substantially
convex cross-sectional shape that is thicker in the center region
and gradually thinner toward the edges (brief, page 15). Gordon
discloses an inflatable bladder that is convex at least from the
center region to the front and back regions (figure 3B), and
Reeder discloses a longitudinally convex series of air pockets
(col. 18, line 64 – col. 19, line 2). Reeder would have fairly
suggested, to one of ordinary skill in the art, using
longitudinally varied height air pockets in Gordon’s inflatable
bladder to obtain the benefits of the varied height air pockets
disclosed by Reeder, i.e., additional firmness and support at
longitudinal zones adjacent to the taller air pockets (col. 22,
lines 59-63). Moreover, Gordon’s teaching that the greatest
portion of a sleeper’s weight is in the center region of a
mattress rather than at the edges (col. 2, lines 38-42) would
have fairly suggested, to one of ordinary skill in the art,
making Reeder’s I-beams taller in the center region than at the
Appeal No. 2006-1667
Application No. 10/775,634

10
side edges of Gordon’s bladder to provide greater firmness and
support in the center region relative to the side edges to
accommodate the relatively high sleeper’s weight in the center
region.
Accordingly, we are not convinced of reversible error in the
examiner’s rejection of claims 4, 5, 10 and 11.
Claims 6 and 12
Pepe discloses an inflatable pad or mattress having
contiguous air cells, a portion of which span the central region
and have a gradation in at least one dimension relative to air
cells of the foot and/or head region such that the heavier
portions of a persons body contact the higher cells while the
lighter portions contact shorter air cells (abstract; col. 1,
lines 54-64; col. 4, lines 45-47; col. 5, lines 50-57; figures 1,
8 and 9). Pepe thereby achieves a reasonably constant pressure
distribution over the length of the mattress (col. 2, lines 58-
65). Preferably, when a person lies on the mattress some fluid
in the central region shifts to the end regions to allow the
mattress to conform to the person’s back and buttocks, thereby
providing essentially contiguous surface area engagement between
the person’s skin and the mattress and relatively uniform
pressure on the person’s skin over the area of the person’s body
being supported (col. 4, line 63 – col. 5, line 9).
Appeal No. 2006-1667
Application No. 10/775,634

11
The appellant argues that Pepe does not disclose or suggest
a mattress support having a substantially convex cross-sectional
shape that is thicker in the center region and gradually thinner
towards the edges (brief, page 17). Gordon discloses a mattress
support having a convex shape at least from the center region
toward the front and back edges (figure 3B). Pepe’s inflatable
pad is convex in the length direction (figure 1). Pepe,
therefore, would have fairly suggested, to one of ordinary skill
in the art, using Pepe’s convex series of air cells in Gordon’s
inflatable bladder to provide the benefit of the air cells
disclosed by Pepe, i.e., achieving a reasonably constant pressure
distribution over its length (col. 2, lines 61-64). Moreover, in
view of Gordon’s teaching that the center portion of a mattress
tends to sag first because that is where the greatest portion of
the sleeper’s weight is located (col. 2, lines 40-42), Gordon and
Pepe would have fairly suggested, to one of ordinary skill in the
art, making Gordon’s inflatable bladder convex from the center
portion, where the sleeper’s weight is the greatest and,
therefore, the greatest thickness is needed, to the side edges
where there is less sleeper’s weight and, therefore, less need
for bladder thickness.

Appeal No. 2006-1667
Application No. 10/775,634

12
The appellant argues that the examiner’s motivation to
combine Gordon and Pepe to achieve a constant pressure
distribution over the length of the mattress is not the problem
solved by the appellant (brief, page 17). As pointed out above,
establishing a prima facie case of obviousness does not require
that references be combined for the purpose of solving the
problem solved by the appellant. The references would have
fairly suggested, to one of ordinary skill in the art, combining
their teachings to provide a relatively constant pressure
distribution over the length or width of Gordon’s inflatable
bladder (Pepe, col. 2, lines 61-65). Hence, contrary to the
appellant’s argument (brief, page 17), combining the references
does not require impermissible hindsight.
The appellant argues that Pepe does not disclose a material
and constitution for maintaining the convex shape under the
weight of a mattress and a person, and that “merely achieving
constant pressure distribution over the length of the mattress is
insufficient to produce and maintain the claimed convex shape
under the weight of the mattress and a person” (brief, page 17).
What is required by the independent claims from which claims 6
and 12 depend is maintaining a substantially convex cross-
sectional shape. Pepe discloses that even with a person lying on
the inflatable pad, the cells in the central region are higher
Appeal No. 2006-1667
Application No. 10/775,634

13

than the cells at the ends (col. 5, lines 46-53; figure 16).2
Hence, the pad still has a substantially convex overall shape,
tapering from the central region toward the ends. Thus, it
reasonably appears that Pepe’s inflatable pad would maintain its
convex shape at least under the weight of a lightweight mattress
and a lightweight person such as an infant.
We therefore are not convinced of reversible error in the
examiner’s rejection of claims 6 and 12.
Remand
We remand the application for the examiner and the appellant
to address on the record whether the combined disclosures of
Gordon, Reeder and Pepe would have rendered obvious to one of
ordinary skill in the art under 35 U.S.C. § 103 the subject
matter of claims 1-3 and 7-9.
DECISION
The rejection of claims 1-3, 7-9 and 13-18 under
35 U.S.C. § 102(e) over Gordon is reversed as to claims 1-3
and 7-9 and affirmed as to claims 13-18. The rejections under
35 U.S.C. § 103 of claims 4, 5, 10 and 11 over Gordon in view of
Reeder, and claims 6 and 12 over Gordon in view of Pepe, are

2 Pepe states, regarding figure 16, that “[t]he cell upper surface is shown at
52 without any body weight thereon, and numeral 53 indicates the cell upper
surface contour when deflected downwardly by body weight” (col. 5, lines 47-
50). Numeral 53 is omitted from figure 16. It reasonably appears that
numeral 53 should correspond to the curve in figure 16 with less convexity
Appeal No. 2006-1667
Application No. 10/775,634

14

affirmed. The application is remanded to the examiner.
In addition to affirming the examiner's rejection of one or
more claims, this decision contains a remand. 37 CFR § 41.50(e)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004))
provides that
[w]henever a decision of the Board includes a remand, that
decision shall not be considered final for judicial review.
When appropriate, upon conclusion of proceedings on remand
before the examiner, the Board may enter an order otherwise
making its decision final for judicial review.

Regarding any affirmed rejection, 37 CFR § 41.52(a)(1)
provides "[a]ppellants may file a single request for rehearing
within two months from the date of the original decision of the
Board."
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed rejections
are overcome. If the proceedings before the examiner do not
result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Board of Patent
Appeals and Interferences for final action on the affirmed
rejections, including any timely request for rehearing thereof.

below the curve having more convexity indicated by numeral 52.
Appeal No. 2006-1667
Application No. 10/775,634

15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART and REMANDED

TERRY J. OWENS
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
MURRIEL E. CRAWFORD ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Appeal No. 2006-1667
Application No. 10/775,634

16
Aquilla Patents & Marks, PLLC
221 Coe Hill Road
Center Harbor, NH 03326-3605

TJO/ki