Ex Parte Rucker

Board of Patent Appeals and Interferences

Jan 17, 2003

09157705 (B.P.A.I. Jan. 17, 2003)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOHN R. RUCKER
______________
Appeal No. 2001-2451
Application 09/157,705
_______________
ON BRIEF
_______________
Before OWENS, WALTZ and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision from an appeal of the examiner’s final
rejection of claims 1 through 15, which are the only claims
pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a
multi-component mattress and furniture insulator pad where the
pad is formed with a polyurethane core foam sheet, a stiffening
layer attached to each side of the core foam sheet, and outer
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Application 09/157,705
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polyurethane foam sheets adjacent to the top surface of each
stiffening layer (Brief, page 2). Appellant states that claims
13 to 15 are separately patentable from claims 1 to 12 (Brief,
page 4) and provides reasonably specific, substantive reasons for
the separate patentability of these claims on pages 12-13 of the
Brief. Accordingly, we select one claim from each group of
rejected claims and decide the grounds of rejection on the basis
of these claims alone, with additional consideration of claims
13-15 to the extent they have been separately argued. See In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir.
2002), and 37 CFR § 1.192(c)(7)(1997). A copy of illustrative
independent claim 1 is attached as an Appendix to this decision.
The examiner has relied upon the following references as
evidence of unpatentability:
Lappala 2,999,041 Sep. 5, 1961
Wiegand 3,923,293 Dec. 2, 1975
Fracalossi et al. (Fracalossi) 4,385,131 May 24, 1983
Quinn 5,429,852 Jul. 4, 1995
Claims 1 and 3-7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lappala (Answer, page 3). Claims 8-9 and 13-15
stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Lappala (id.). Claim 2 stands rejected under 35 U.S.C. § 103(a)
as unpatentable over Lappala in view of Fracalossi (Answer, page
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Application 09/157,705
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5). Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wiegand in view of Fracalossi and Quinn (id.).
We affirm the examiner’s rejection under section 102(b) over
Lappala and the rejection of claims 8-9 under section 103(a) over
Lappala. All other rejections on appeal are reversed.
Accordingly, the examiner’s decision to reject the claims on
appeal is affirmed-in-part. Our reasoning follows.
OPINION
A. The Rejection under § 102(b)
The examiner finds that Lappala discloses a composite
material comprising an inner foam core and two outer foam layers
where a reinforcing scrim or netting is disposed between the
inner foam core and each of the outer foam layers (Answer, page
3). The examiner further finds that the foam layers may all
comprise polyurethane foam while the reinforcing scrim or netting
may comprise polyethylene fibers, with the scrim or netting
bonded to the foam by means of an adhesive (id., citing col. 2,
ll. 34-40; ll. 49-51; ll. 55-57; col. 3, ll. 9-23, Fig. 3; and
col. 5, ll. 74-75). Accordingly, the examiner finds that Lappala
teaches the claimed structure (Answer, page 7).
Appeal No. 2001-2451
Application 09/157,705
1 We note that outer resin film layers 15 and 21 in Figure 3
of Lappala are not required by claim 1 on appeal but are not
excluded from the claim by the “comprising” language recited in
the preamble of claim 1. See Vehicular Techs. v. Titan Wheel
Int’l, Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir.
2000).
4
A rejection based on section 102(b) for anticipation or lack
of novelty must establish that every limitation of the claimed
subject matter is described, either expressly or under the
principles of inherency, by a single reference. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997). The examiner, as discussed above, has found that Lappala
describes layers corresponding to each layer or component recited
in claim 1 on appeal.1 Appellant argues that Lappala does not
show a structure with stiffening layers and does not relate to
mattress and furniture pads that have sufficient stiffness to
resist bending and telegraphing (Brief, page 5; Reply Brief, page
1). Appellant further argues that Lappala’s unwoven multi-
filamentary rovings 19 or strands 13 are not the “stiffening
layers” required in claim 1 on appeal (Brief, page 6).
Appellant’s arguments are not persuasive. Lappala
specifically teaches that “care must be taken to provide an
adequate number of grids or screens for reinforcement of the
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Application 09/157,705
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material [the polyurethane foam].” Col. 5, ll. 68-71, italics
added. The “stiffening layers” required by claim 1 on appeal
may be any material with stiffness that will offer dimensional
stability to the insulator pad (specification, page 9, ll.
20-21). See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997)(the examiner must apply to the claim
language the broadest reasonable meaning of the words in their
ordinary usage as they would be construed by one of ordinary
skill in the art, when read in light of the specification). The
“stiffening layers” required by claim 1 on appeal may be the same
material disclosed by Lappala (compare claim 3 on appeal with
Lappala, col. 2, ll. 35-41). Finally, the result of using the
stiffening layers as recited in claim 1 on appeal is to form a
pad “with a sufficient stiffness to resist bending and
telegraphing.” As correctly argued by the examiner (Answer, page
7), the claim is not specific to any degree of stiffness or
resistance to bending and therefore the material of Lappala meets
this limitation since the composite of Lappala would possess at
least some degree of resistance to bending and telegraphing.
For the foregoing reasons and those recited in the Answer,
we determine that the examiner has established that Lappala
describes every limitation recited in claim 1 within the meaning
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Application 09/157,705
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of 35 U.S.C. § 102(b). Accordingly, we affirm the examiner’s
rejection of claim 1, and claims 3-7 which stand or fall with
claim 1, under 35 U.S.C. § 102(b) as anticipated by Lappala.
B. The Rejection under § 103(a) over Lappala
The examiner incorporates the findings from Lappala as
discussed above (Answer, page 3). With regard to claims 8-9,
the examiner takes notice that both heat activatable adhesives
or layers joined by flame lamination are “well known and
conventional means of bonding foam layers.” Id. Appellant does
not contest the examiner’s statement (Brief, pages 4-7).
Accordingly, we adopt the examiner’s statement as a fact and
affirm the rejection of claims 8-9 under 35 U.S.C. § 103(a) as
obvious over Lappala.
With regard to claims 13-15, the examiner admits that the
stiffness modulus of the foam composite material is not disclosed
by Lappala (Answer, page 4). However, the examiner finds that
the stiffness modulus of the composite material would be
dependent, at least in part, upon the thickness of the foam core,
and therefore it would have been obvious to have optimized the
stiffness modulus of the pad by controlling the thickness of the
pad. Id.
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Appellant argues that making a very flexible material
thicker will not cause the material to become significantly
stiffer (Brief, page 12). Appellant also argues that the denier
disclosed by Lappala relates to thickness and mass, not rigidity,
and there is no suggestion in Lappala of a stiffness modulus as
high as 100 psi as required by claims 13-15 (Brief, pages 12-13;
Reply Brief, page 3).
We agree with appellant that the examiner has not met the
initial burden of proof in establishing a prima facie case of
obviousness, namely the examiner has failed to establish that
thickness is directly related to stiffness and is a result
effective variable. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Given the flexibility
desired by Lappala for the composite material, the examiner has
not presented any convincing evidence or reasoning as to why a
high stiffness modulus such as required by claims 13-15 would
have been desired by one of ordinary skill in the art, nor why
one of such skill would have increased the thickness when Lappala
teaches that the foam thickness must not be too great (col. 5,
ll. 65-73).
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness for the
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Application 09/157,705
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subject matter of claims 13-15 in view of the reference evidence.
Accordingly, we reverse the examiner’s rejection of claims 13-15
under section 103(a) over Lappala.
C. The Rejection of claim 2 under § 103(a)
The examiner applies Lappala as discussed above and cites
Fracalossi for the teaching that rebonded polyurethane foams are
“especially useful because these foams have improved flame
resistance.” Answer, page 5. Accordingly, the examiner
concludes that it would have been obvious to have used the foams
of Fracalossi in the composite of Lappala in order to enhance the
flame resistance of the composite material. Id.
It is well settled that when a combination of references is
used to support a rejection, it is incumbent upon the examiner to
show clear and particular evidence of a motivation, suggestion or
reason to combine the references as proposed. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). As correctly argued by appellant (Brief, page 8; Reply
Brief, page 4), Lappala and Fracalossi are not directed to the
same field of invention and Lappala does not disclose or suggest
any problem with flame resistance. Accordingly, there is no
evidence in the art presented by the examiner of a motivation,
suggestion or reason to substitute the bonded polyurethane of
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Application 09/157,705
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Fracalossi for the polyurethane foam of Lappala. Furthermore,
the examiner has not presented any evidence or reasoning that the
bonded polyurethane of Fracalossi, useful for cushioning or
seating structures, would be acceptable or desirable in the uses
of Lappala, i.e., that bonded polyurethane would have the desired
properties such as flexibility to be useful as a convertible top,
insulating material, soundproofing material, or construction
material as taught by Lappala.
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view of
the reference evidence. Accordingly, we cannot sustain the
rejection of claim 2 under section 103(a) over Lappala in view of
Fracalossi.
D. The Rejection of claims 10-12 under 35 U.S.C. § 103(a)
The examiner finds that Wiegand teaches a mattress and
furniture pad comprising an inner foam core, with stiffening
layers of a polyethylene or polypropylene netting attached to
both the first and second surfaces of the inner foam core, and an
outer layer of a cushioning material such as a foam may be bonded
to the upper surface of the foam core (Answer, pages 5-6). The
examiner further finds that Wiegand does not teach using
polyurethane as the inner foam core but applies Fracalossi for
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the teaching that rebonded polyurethane foams are especially
useful in cushions since these foams have improved flame
resistance (Answer, page 6). Finally, the examiner finds that
Wiegand does not teach bonding a layer of polyurethane foam to
the bottom of the composite and applies Quinn for the teaching
that forming a bottom foam layer on a cushioning pad keeps the
pad from slipping during use (id.). From these findings, the
examiner concludes that it would have been obvious to use the
rebonded foams of Fracalossi in the material of Wiegand, as well
using a bottom foam layer on the cushioning pad of Wiegand as
taught by Quinn (id.). We disagree.
As discussed above, it is well settled that when a
combination of references is employed to support a rejection, it
is incumbent upon the examiner to present a compelling
motivation, suggestion or reason to combine the references as
proposed. See In re Dembiczak, supra. We determine that the
examiner has not presented any convincing evidence to support the
proposed combination of references.
Contrary to the examiner’s assertion (Answer, page 10),
Wiegand does not teach that polyethylene is the “preferred” foam
over polyurethane but teaches that polyethylene has the “strength
and structural rigidity required for a spring insulator which the
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ordinary foam cushioning plastics such as polyurethane foam do
not possess” (col. 1, ll. 59-64). Any teaching away from the
claimed subject matter must be considered in an obviousness
analysis. See In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130,
1131 (Fed. Cir. 1994). Although Wiegand teaches that the plastic
net will reinforce the polyethylene foam sheet (col. 2, ll.
54-60), the examiner has not presented any evidence or reasoning
why one of ordinary skill in this art would have expected the
rebonded polyurethane of Fracalossi to have sufficient strength
and rigidity, even in conjunction with plastic netting, to be
useful in the composite of Wiegand, especially in view of the
teaching away from conventional polyurethane foam in Wiegand.
Additionally, we note that Wiegand teaches that the plastic
netting will “tend to prevent any creeping of the [polyethylene]
sheet within the spring cushion assembly” (col. 2, ll. 57-59),
and the examiner has not stated why the foam layer of Quinn would
be necessary to keep the Wiegand pad from slipping during use.
Finally, we note that the examiner finds that Wiegand discloses
an outer layer of a cushioning material (such as a polyurethane
foam) may be bonded to the first major surface of the foam core
(Answer, sentence bridging pages 5-6, see col. 2, ll. 38-42).
However, claims 10-12 also require the pad of claim 1, including
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Application 09/157,705
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five layers, in combination with springs and a furniture cushion
(see claim 10 on appeal). Contrary to the examiner’s assertion
(Answer, page 10), Wiegand does not teach several layers of
cushioning material as required by these claims on appeal.
For the foregoing reasons and those set forth in the Brief
and Reply Brief, we determine that the examiner has failed to
establish a prima facie case of obviousness in view of the
reference evidence. Accordingly, we cannot sustain the
examiner’s rejection of claims 10-12 under 35 U.S.C. § 103(a)
over Wiegand in view of Fracalossi and Quinn.
E. Other Issues
Upon return of this application to the jurisdiction of the
examiner, the examiner and appellant should reconsider the
patentability of the claims in view of Burke, U.S. Patent No.
4,758,299, issued Jul. 19, 1988, previously made of record (see
Figure 2; col. 1, ll. 42-55; and col. 3, ll. 4-48).
F. Summary
The examiner’s rejection of claims 1 and 3-7 under 35 U.S.C.
§ 102(b) over Lappala is affirmed. The rejection of claims 8-9
under 35 U.S.C. § 103(a) over Lappala is also affirmed.
The rejection of claims 13-15 under 35 U.S.C. § 103(a) over
Lappala is reversed. The rejection of claim 2 under 35 U.S.C.
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Application 09/157,705
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§ 103(a) over Lappala in view of Fracalossi is reversed. The
rejection of claims 10-12 under 35 U.S.C. § 103(a) over Wiegand
in view of Fracalossi and Quinn is reversed.
The decision of the examiner is affirmed-in-part.
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
Terry J. Owens )
Administrative Patent Judge )
)
)
)
Thomas A. Waltz ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Catherine Timm )
Administrative Patent Judge )
TAW/cam
Appeal No. 2001-2451
Application 09/157,705
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APPENDIX
1. A dimensionally stable mattress and furniture insulator
pad, comprising:
a polyurethane core foam sheet having an upper surface and a
lower surface;
a first stiffening layer having an upper face and a lower
face, wherein the lower face is attached to the upper surface of
the core foam sheet;
a second stiffening layer having an upper face and a lower
face wherein the upper face is attached to the lower surface of
the core foam sheet;
a first outer polyurethane foam sheet attached adjacent to
the top face of the first stiffening layer so that the first
stiffening layer is substantially completely covered by the outer
foam sheet; and
a second outer polyurethane foam sheet attached adjacent to
the bottom face of the second stiffening layer so that the second
stiffening layer is substantially completely covered by the outer
foam sheet;
so that the core foam sheet with first and second stiffening
layers and first and second outer foam sheets attached thereto
forms the dimensionally stable mattress and furniture insulator
pad with a sufficient stiffness to resist bending and
telegraphing.
Appeal No. 2001-2451
Application 09/157,705
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CONNOLLY, BOVE, LODGE & HUTZ, LLP
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