Ex Parte PERRIN et alDownload PDFPatent Trial and Appeal BoardAug 28, 201814737070 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/737,070 06/11/2015 Thomas M. PERRIN 101562 7590 08/30/2018 GARDNER GROFF GREENWALD & VILLANUEVA, PC 2018 POWERS FERRY ROAD SUITE 800 ATLANTA, GA 30339 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2K08.l-233 7495 EXAMINER NGUYEN, CHI Q ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 08/30/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patent@gardnergroff.com kidsiilegal@kidsii.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS M. PERRIN and STEPHEN R. BURNS Appeal 2017-011374 Application 14/737,070 Technology Center 3600 Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection2 of claims 1-75. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM and designate our affirmance of claims 1-74 under 35 U.S.C. § 103 as a NEW GROUND OF REJECTION, pursuant to our authority under 37 C.F.R. § 41.50(b). 1 As Applicant, Appellants state that the real party in interest is Kids II, Inc. Appeal Br. 2. 2 Appeal is taken from the Final Office Action dated October 5, 2016. Appeal 2017-011374 Application 14/737,070 STATEMENT OF THE CASE Claims 1, 42, and 75, the independent claims on appeal, reproduced below, are exemplary of the subject matter on appeal. 1. A child supporting device comprising: a support frame defining a periphery within which the support frame rests on a supporting surface, the support frame periphery having a length L and a width W; and a child resting portion supported by the support frame at a height H above the supporting surface; wherein a length-to-width aspect ratio (L / W) of the support frame periphery is between about 0.8 to about 2.2. 42. A child supporting device comprising: a support frame defining a periphery within which the support frame rests on a supporting surface, the support frame periphery having a length between about 19" to about 31" and a width of between about 14" and 23"; and a child resting portion supported by the support frame at a height of about 21" to about 36" above the supporting surface. 7 5. A child supporting device for positioning on a support surface and nearby a standard sofa or dining table, the device compnsmg: a support frame defining a periphery within which the support frame rests on the supporting surface; and a child resting portion supported by the support frame at a height above the supporting surface of about 21" to about 36" above the supporting surface, wherein a child supported on the child resting portion is within about 12" to 36" of an adult seated on the standard sofa when the child supporting device is positioned adjacent the sofa, and wherein a line of sight between a child supported therein and an adult seated at the standard dining table about 40" - 60" from the child supporting device is between about OQ - 30Q relative to horizontal. 2 Appeal 2017-011374 Application 14/737,070 THE REJECTIONS I. Claims 1-75 stand rejected on the ground of non-statutory obviousness-type double patenting as unpatentable over "claims 1-34 of copending Application No. 14/453,209," which application has issued to Perrin et al. on September 12, 2017 as U.S. Patent 9,756,962 B2 (hereinafter "Perrin"). II. Claims 1-75 stand rejected under 35 U.S.C. § 103 as unpatentable over Lopes et al. (US 2005/0241064 Al; published on Nov. 3, 2005) (hereinafter "Lopes"). ANALYSIS Rejection I The Examiner determines that claims 1-75 are unpatentable over the claims of Perrin on the ground of non-statutory obviousness-type double patenting. Appellants submit that a terminal disclaimer will be filed to address this rejection. See Appeal Br. 4, fu 2. Accordingly, we summarily sustain the rejection of claims 1-75 as unpatentable over the claims of Perrin on the ground of non-statutory obviousness-type double patenting. Rejection fl Independent claiJn 1 and dependent claiJns 2----41 Appellants argue claims 1-41 as a group. Appeal Br. 5. We select independent claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Claims 2-41 stand or fall with claim 1. Regarding independent claim 1, the Examiner finds, inter alia, that Lopes discloses a child supporting device (i.e., infant care apparatus l) comprising a suppmi frame (i.e., changing table frame 12) defining a 3 Appeal 2017-011374 Application 14/737,070 periphery within which the support frame rests on a supporting surface, the support frame periphery having a length and a width, and a child resting pmiion (i.e., removable caffier 8) supported by the support frame at a height H above the supporting surface, as claimed. Final Act. 3 ( citing Lopes ,r 63, Figs. 1A-2B). The Examiner determines that although Lopes does not disclose a length-to-width aspect ratio of the support frame periphery between about 0.8 to about 2.2, as claimed, it would have been obvious "to have different aspect ratios of length to width ... to provide a comfort size for an infant ... , since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art." Id. at 3-4 ( citation omitted); see also Ans. 2-3. Appellants argue that the Examiner's reasoning is "conclusory," noting that "the purpose of [the] claimed length-to-width aspect ratio of the frame does not even re late to 'comfort size for an infant."' Appeal Br. 5; Reply Br. 2. Appellants also argue that the claimed aspect ratio is not a result-effective variable subject to routine optimization, "because the claimed features are not directed to a result that is identified by the Lopes reference or otherwise known to have been sought previously in the field of children's furniture or accessories." Appeal Br. 7; Reply Br. 2. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). As the facts of Aller illustrate, this rule may apply even where the prior art does not disclose either an example falling within the recited range, or a range overlapping or touching the recited range. One exception to this rule is that the discovery of the optimum or workable range of a variable will not be 4 Appeal 2017-011374 Application 14/737,070 deemed to have been obvious unless the variable was known to be "result- effective." See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). The proof required to find that a variable was known to be "result-effective" is not high: "In cases in which the disclosure in the prior art was insufficient to find a variable result-effective, there was essentially no disclosure of the relationship between the variable and the result in the prior art." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). The Examiner bears the burden of proving a sufficient factual underpinning to support the conclusion that the subject matter of the appealed claims would have been obvious. On the other hand, the Appellants bear the burden of proving that the recited ranges are critical, so as to fall within the exception to the rule of Aller. See Aller at 456; see also In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en bane) (The Appellant bears the burden of proving unexpected results in order to overcome a prima facie case of obviousness). As set forth supra, claim I requires the support frame to define a periphery within which the support frame rests on a suppmiing surface (i.e., a ground surface), wherein the length-to-width aspect ratio of the support frame periphery is within a claimed range. See. e.g., Spec.,, 12, 25, Fig. 2). In other words, the length-to-width aspect ratio represents the square or rectangular footprint of the support frame resting on the floor. We cannot find a disclosure in the Specification that explains why selecting the claimed length-to-width aspect ratio range of between about 0.8 to about 2.2 is critical or provides unexpected results. The Specification more generally explains that the invention "is optimized for access to and interaction with the infant or child by a parent or caregiver." Spec. , 2 (emphasis added). 5 Appeal 2017-011374 Application 14/737,070 Notwithstanding, we agree with Appellants that Lopes is silent regarding whether the length-to-width aspect ratio of the rectangular periphery of frame 12, within which frame 12 rests on the floor, is recognized as a result-effective variable, and therefore, the Examiner's rejection lacks sufficient factual underpinning to support a conclusion of obvious. However, we find that Goldberg3 is evidence that it was well known at the time of Appellants' invention that the length-to-width aspect ratio of leg members defining a rectangular periphery within which a frame rests on the floor is a variable that affects the resulting stability of the device, in the art of child supporting devices. See Goldberg 2:65-67 ("the leg members are well spread out to insure that the center of gravity will remain within the area defined by the legs"). Thus, we are not apprised of error in the Examiner's findings and reasoning that clairn 1 is obvious in view of Lopes. lv1oreover, Appellants have not provided any argument or evidence that the claimed range of the length-to-width aspect ratio of the support frame periphery is critical or provides new and unexpected results. Accordingly, we sustain the Examiner's rejection of independent claim l and claims 2-41 fall therewith. Because we rely on evidence that is not relied on by the Examiner (i.e., Goldberg), we designate our affinnance as a NE\V GROUND OF REJECTION to give Appellants a fair opportunity to respond. 3 US 3,759,539 (issued Sept. 18, 1973), a reference cited by the Examiner in the Notice of References Cited on July 9, 2015. 6 Appeal 2017-011374 Application 14/737,070 Rejection JI Independent claim 42 and dependent clairns 43----74 Appellants argue claims 42-74 as a group. Appeal Br. 5. We select independent claim 42 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Claims 43-74 stand or fall with claim 42. Regarding independent claim 42, the Examiner finds, inter alia, that Lopes discloses a child supporting device (i.e., infant care apparatus l) comprising a support frame (i.e., changing table frame 12) defining a periphery within which the support frame rests on a suppmiing surface, the support frame periphe1y having a length and a width, and a child resting portion (i.e., removable carrier 8) supported by the support frame at a height H above the supporting surface, as claimed. Final Act 6. The Examiner reasons that although Lopes does not disclose a specific length and width for the periphery within which Lopes' frame 12 rests on the floor, or that Lopes' removable carrier 8 is supported by frame 12 at a specific height, it would have been obvious "to have different heights [ and] aspect ratios of length to width ... to provide a comfort size for an infant and ... to accommodate caregiver height, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art." Id. at 7 (citation omitted). In support, the Examiner finds that Lopes discloses that infant care apparatus 1 has ''legs [that] are adjustable ... for adjusting the height in order to accommodate different caregiver heights." Ans. 3 (citing Lopes Figs. 2A, 2B). Appellants argue that the Examiner's reasoning is conclusory because the Examiner fails to provide evidence that the clairned length and width of 7 Appeal 2017-011374 Application 14/737,070 the periphery, and height of the child resting portion, are recognized in the art as result-effective variables. Appeal Br. 5, 7; Reply Br. 3. \Ve determine, as set fmih supra with respect to independent claim 1, that Goldberg provides evidence that the length and width of the periphery within which a support frame of a child supporting device rests on the floor is recognized in the art of child supporting devices as a result-effective variable. .Again, Appellants do not provide any argument or evidence that the claimed ranges of the length and width of the support frame periphery are critical or provide new and unexpected results. We are also not apprised of error in the Examiner's reliance on Lopes as evidence that the height of removable carrier 8 (which is placed on changing table surface) relative to the floor is recognized in the art of child supporting devices as a result-effective variable. See, e.g., Lopes 153 ("[c]hanging table surface 16 is supported by changing table frame 12 and arranged within aperture 14"); id. ir 66 ('"[r]emoval of the removable carrier 8 exposes the changing table surface"); id., Figs. 2A, 2B, 3A, 3B. Indeed, Lopes discloses that "frame 12 includes means for adjusting the height 'h' of the changing table surface 16 above the floor'' (id. 1 63) and that "[t]he frarne enables both functions ( changing and sleeping) to be perforrned at a comfortable height" (id.~· 30). Appellants do not provide any argument or evidence that the claimed range of the height of the child resting portion above the suppmiing surface is critical or provides new and unexpected results. To the contrary, the Specification discloses that "the present invention relates to an access-optimized infant support device ... whereby the lower support frame maintains the seat ... at a height of about 21" to 8 Appeal 2017-011374 Application 14/737,070 about 36" above a support surface." Spec. ,r 9 ( emphasis added). Thus, we are not apprised of effor in the Examiner's findings and reasoning. Accordingly, we sustain the Examiner's rejection of independent claim 42, and claims 43-74 fall therewith. Because we rely on evidence not relied on by the Examiner (i.e., Goldberg), we designate our affirmance of claims 42-74 under 35 U.S.C. § 103 as unpatentable over Lopes as a NE\V GROUND OF REJECTION to allow AppeUants a fair opportunity to respond. Independent claim 75 Regarding independent claim 75, the Examiner finds, inter alia, that Lopes discloses a child supporting device (i.e., infant care apparatus 1) comprising a suppmi frame (i.e., changing table frame 12) defining a periphery within which the support frame rests on a supporting surface, and a child resting portion (i.e., removable cmTier 8) supported by the support frame at a height H above the supporting surface, as claimed. The Examiner determines that Lopes does not disclose that (i) Lopes' removable caffier 8 is supported by frame 12 at a specific height above the floor; (ii) a child supported on removable carrier 8 is within about 12" to 36" of an adult seated on a nearby standard sofa; and (iii) a line of sight between a chi1d suppmied in the child supporting device and an adult seated at a nearby standard dining table about 40" ---- 60" from the child supporting device is between about 09 ---- 30q relative to horizontal. Id. at 8. The Examiner reasons that "[t]hese limitations [are] functional limitations or intended of use of the device since these limitations are not positively combined and claimed." Id. 9 Appeal 2017-011374 Application 14/737,070 Appellants con-ectly argue that the claimed height of the child resting portion supported by the support frame is "positively recited." Appeal Br. 6. However, for the reasons stated supra with respect to independent claim 42, we determine that the claimed height limitation represents optimization of an art-recognized, result-effective variable. Regarding the limitations reciting dimensions relative to a nearby standard sofa or dining table, we agree with the Examiner that such recitations are directed to the use of the child supporting device and therefore, are not entitled to any patentable weight. Appellants have not identified any structure of the claimed child supporting device that is required to meet the distance limitation, as recited in the first wherein clause, or to meet the line of sight limitations, as recited in the second wherein clause. Accordingly, we sustain the Examiner's rejection of independent claim 75. DECISION The Examiner's decision rejecting claims 1-75 on the ground of non- statutory obviousness-type double patenting is AFFIRMED. The Examiner's decision rejecting claims 1-75 under 35 U.S.C. § 103 as unpatentable over Lopes is AFFIRMED, and we designate our affirmance of claims 1-74 as a NEW GROUND OF REJECTION. FINALITY OF DECISION This decision contains new grounds of rejection as permitted under 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection 10 Appeal 2017-011374 Application 14/737,070 pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. § 4I.50(b) 11 Copy with citationCopy as parenthetical citation