Ex Parte PiontekDownload PDFBoard of Patent Appeals and InterferencesAug 17, 201210534837 (B.P.A.I. Aug. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MANFRED PIONTEK ____________________ Appeal 2010-005306 Application 10/534,837 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and JOHN W. MORRISON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005306 Application 10/534,837 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1 and 3, 4, and 6-9.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a headrest for a patient-bearing surface. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A headrest for a patient-bearing surface, comprising: a rigid support shell, the support shell having an approximately horseshoe-shaped form; and a support cushion releasably connectable with the support shell; wherein the support shell includes a central section for supporting the rear or forehead of a head of a patient and having a support surface of approximately spherical shell shape, two side sections spaced from one another, the side sections each having a support surface of approximately a common cylindrical shape whose axis runs parallel to a line of symmetry of the support shell, and a cheekbone support on each of the side sections, each cheekbone support projecting toward the other side section. REJECTION Claims 1, 3, 4 and 6-9 are rejected under 35 U.S.C. § 103 (a) as being unpatentable over Mazzei (6,490,737 B1, Dec. 10, 2002) in view of Bruckner (4,279,038, Jul. 21, 1981). Ans. 3. 1 The rejection of claim 5 as being obvious over Mazzei has been withdrawn. Ans. 3. Appeal 2010-005306 Application 10/534,837 3 OPINION Claims 1 and 9, the only independent claims involved in this appeal, each require a “support shell having an approximately horseshoe-shaped form.” The Examiner contends “said horseshoe term is broadly interpreted by the examiner to be as having u-shaped structure as shown in figures 9-11, the shape is shown to have approximately horseshoe shape.” Ans. 3. [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Appellant’s drawings2, like the Specification, may be consulted to assist in interpreting the meaning of claim terms. In re Miskinyar, 6 F.3d 787 (Fed. Cir. 1993) (nonprecedential) (citing Autogiro Co. of Am. v. U.S., 384 F.2d 391(Ct. Cl. 1967)). Appellant’s Figures 1 and 5 are exemplary of the type of structure one of ordinary skill in the art would understand to be “approximately horseshoe-shaped” in light of Appellant’s disclosure. 2 Appellant’s drawings do not appear to be properly indexed in the Image File Wrapper (“IFW”). The only figures indexed as Appellant’s drawings are those from WO 01 76403, Mazzei’s international application. We will make reference to Appellant’s figures which are at least attached to WO 2004/045481 (PCT/EP2003/010719) in the IFW, from which Appellant claims priority. Correction should be made in any further prosecution. Appeal 2010-005306 Application 10/534,837 4 The Examiner makes reference to a U-shaped structure as shown in figures 9-11 without any further indication as to what the Examiner regards as “approximately horseshoe shaped.” Mazzei’s figure 9 depicts the cushion and not the shell (col. 6, l. 54), so it is unclear how that figure is relevant. Figure 10 is a cross section of the cushion and the shell (col. 6, ll. 56-60) which appears to be U-shaped. However, the claim calls for the shell to have an approximately horseshoe-shaped form. To the extent it is the Examiner’s position, we cannot agree that one of ordinary skill in the art would consider the shell to be approximately horseshoe-shaped simply because it has a horseshoe shaped cross section at a particular location. Turning to Figure 11, there appears to be a horseshoe-shaped aperture 29. But, again, to the extent it is the Examiner’s position, we cannot agree that one of ordinary skill in the art would consider the shell to have an approximately horseshoe-shaped form simply by virtue of having a horseshoe-shaped opening. Our analysis is unchanged by the presence of the term “approximately.” Contra Ans. 6-7. While this term allows for some deviation from a horseshoe shape it does not alleviate the requirement that the shell’s form bear some resemblance to a horseshoe. We will not further speculate as to the Examiner’s position and it is not Appellant’s burden to do so either. In re Jung, 637 F. 3d 1356, 1365 (Fed. Cir. 2011)(citations omitted)(“It is well-established that the Board is free to affirm an examiner’s rejection so long as appellants have had a fair opportunity to react to the thrust of the rejection.” ); In re Oetiker, 977 F.2d 1443, 1444 (Fed. Cir. 1992)(The Examiner bears the initial burden of establishing a prima facie case of obviousness.). Since the Examiner has failed to establish that Mazzei discloses a “support shell having an approximately horseshoe-shaped form” as alleged Appeal 2010-005306 Application 10/534,837 5 in support of the Examiner’s conclusion of obviousness, we cannot sustain the Examiner’s rejection. DECISION The Examiner’s rejection of claims 1, 3, 4, and 6-9 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation