Ex Parte Sclare et al

Patent Trial and Appeal Board

Sep 11, 2017

13243570 (P.T.A.B. Sep. 11, 2017)

United States Patent and Trademark Office
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.
13/243,570 09/23/2011 Jacob Sclare 2K08.1-621 9234
101562 7590 09/25/2017
GARDNER GROFF GREENWALD & VILLANUEVA, PC
2018 POWERS FERRY ROAD
SUITE 800
ATLANTA, GA 30339
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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 JACOB SCLARE, JOHN MATTHEW THOMSON,
CARY COSTELLO, and PETER JACKSON
Appeal 2016-002275
Application 13/243,5701
Technology Center 3600
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jacob Sclare et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-3 and 5-30. Final
Office Action (May 12, 2015) (hereinafter “Final Act.”).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Kids II, Inc. as the real party in interest. Appeal
Brief 2 (August 12, 2015) (hereinafter “Appeal Br.”).
2 Claim 4 is canceled.
Appeal 2016-002275
Application 13/243,570
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “infant support pillows.”
Spec. 1,1. 6. Claims 1,21, and 22 are the independent claims on appeal.
Claim 1 is reproduced below.
1. A support pillow, comprising:
a resilient fill material; and
a fabric shell at least partially enclosing the fill material,
wherein the resilient fill material and the fabric shell
define a first arm, a second arm, and a medial region that
connects the first arm to the second arm,
wherein the first arm, the second arm, and the medial
region at least partially surround and collectively define a well;
wherein the first arm, the second arm, and the medial
region define a first laterally-extending support surface with a
continuously arcuate and convex configuration and an opposing
second laterally-extending support surface with a substantially
planar configuration, the medial region having a greater lateral
cross-sectional area than a lateral cross-sectional area of each of
the first arm and the second arm.
Appeal Br. 42 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Hogan et al.
(“Hogan”)
US D33,543 Nov. 13, 1900
Varaney US 4,173,048 Nov. 6, 1979
Selton US 5,754,998 May 26, 1998
Simon US 5,664,828 Sept. 9, 1997
Chuang US 6,026,330 Feb. 15,2000
Kelly US 6,052,848 Apr. 25, 2000
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Matthews et al. US 6,038,720 Mar. 21,2000
(“Matthews ’720”)
Matthews US 6,279,185 B1 Aug. 28, 2001
(“Matthews ’185”)
Wamock
O’Connell
US 2007/0256242 Al
US D673,410 S
Nov. 8, 2007
Jan. 1, 2013
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1, 2, 6, 9, 20, 22, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Varaney, Selton, and Hogan.
2. Claims 3, 7, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Varaney, Selton, Hogan, and Simon.
3. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Varaney, Selton, Hogan, Simon, and Matthews ’185.
4. Claims 8 and 12-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Varaney, Selton, Hogan, and Matthews ’720.
5. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Varaney, Selton, Hogan, and Chuang.
6. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Varaney, Selton, Hogan, Simon, and Chuang.
7. Claims 16-19, 24, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Varaney, Selton, Hogan, and Kelly.
8. Claims 28-30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Varaney, Selton, Hogan, and O’Connell.
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9. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wamock and Hogan.
10. Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wamock, Hogan, and Simon.
ANALYSIS
First Ground of Rejection: Claims 1, 2, 6, 9, 20, 22, and 27 as unpatentable
over Varaney, Selton, and Hogan
The Examiner finds that Varaney discloses a support pillow
substantially as set forth in claim 1, except that “Varaney is silent to a first
laterally-extending support surface with a continuously arcuate and convex
configuration and an opposing second laterally-extending support surface
with a substantially planar configuration.” Final Act. 2. The Examiner finds
that Selton discloses a pillow having the claimed support surfaces. Id.
(citing Selton, Fig. 1). The Examiner determines that it would have been
obvious for one having ordinary skill in the art at the time of the invention
“to employ an outwardly directed contour and opposing planar configuration
for the support pillow as taught by Selton yielding predictable results that
provide therapeutic support for the user.” Id. at 2-3 (citing Selton, col. 4,
11. 11-22). The Examiner proposes to further modify Varaney’s pillow,
based on the teachings of Hogan, such that the medial region has a greater
lateral cross-sectional area than a lateral cross-sectional area of each arm.
Id. at 3.3
3 The Examiner relies on the same findings and reasoning for the rejection of
independent claim 22, which is directed to a method for forming a support
pillow. Final Act. 3.
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Application 13/243,570
Appellants assert, inter alia, that the Examiner erred in finding that
Selton discloses a support surface that is “continuously arcuate and convex.”
Appeal Br. 20. Appellants contend that Selton’s therapeutic mattress­
covering pad 10 includes “two elongated ridges 14, 16 and a central region
22 that is generally flat.” Id. (citing Selton, col. 4,11. 2—4, Fig. 2A).
The Examiner responds:
Selton includes two elongate portions (14, 16) that define a first
laterally-extending support surface with a continuously arcuate
and convex configuration and an opposing second laterally-
extending support surface with a substantially planar
configuration (fig. 1). Once again the combination of references
as a whole would suggest to one having ordinary skill in the art
to employ an outwardly directed contour and opposing planar
configuration for the support pillow as explicitly taught by Selton
to yield predictable results that provide therapeutic support for
the user (col. 4 lines 11-22).
Ans. 15.
Selton describes that the therapeutic support provided by its mattress
pad 10 is achieved by its nesting feature which includes convex elongated
ridges 14, 16 having outwardly directed concave surfaces 71, 72, a flat body
portion 22 between the ridges, and concave regions 23, 24 defined between
the ridges and the body portion. Selton, col. 4,11. 11-24 (describing that the
concave regions “cradle a user’s back to provide support and a sense of
security for comfort during use” and that the ridges “invade the sleep area to
provide therapeutic support for a user”). Based on the Examiner’s stated
reason to modify Varaney with the teachings of Selton to “provide
therapeutic support for the user,” and the fact that the therapeutic support is
disclosed as being provided by the contours of Selton’s top support surface,
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we understand the Examiner to be proposing to modify Varaney’s pillow to
include the top support surface of Selton.
The question before us is whether Varaney’s pillow, as modified to
include the top support surface of Selton, would result in a first laterally-
extending support surface with a continuously arcuate and convex
configuration, as claimed.4 This question turns on the interpretation of the
phrase “continuously arcuate and convex.” We look to Appellants’
Specification to discern the phrase’s meaning. The Specification does not
employ this exact phrase in describing the claimed invention. Rather, the
Specification describes that “the first support surface 112 may define a
lofted, arcuate, or otherwise rounded configuration . . ., as illustrated in FIG.
2.” Spec. 6,11. 22-24; see also id. at 7,11. 1-3. Figure 2 is reproduced
below:
FIG. 2
Figure 2 illustrates a front view of the support pillow of the invention.
Id. at 4,1. 20. As depicted in Figure 2, support surface 112 is rounded on
4 Claims 1 and 22 recite that the claimed support surface is defined by first
arm, second arm, and the medial region. Appeal Br. 42, 48 (Claims
Appendix).
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Application 13/243,570
both lateral ends (left and right sides) and appears to become less rounded
near the top center. In contrast, the pillow shown in Figure 3 appears to be
more continuously rounded along its upper surface. Figure 3 is reproduced
below:
FiG. 3
Figure 3 illustrates a back view of the support pillow of the claimed
invention. Spec. 4,1.21.
Because the written description does not define or use the phrase
“continuously arcuate and convex,” we look to the ordinary meaning of the
words in this phrase. The word “continuously” immediately precedes and,
thus, modifies “arcuate.” An ordinary meaning of “continuous” is “marked
by uninterrupted extension in space, time, or sequence.” Merriam-Webster
on-line dictionary (www.merriam-webster.com/dictionary/continuous, last
accessed on September 1, 2017). An ordinary meaning of “arcuate” is
“curved like a bow.” Merriam-Webster on-line dictionary (www.merriam-
webster.com/dictionary/arcuate, last accessed on September 1, 2017). An
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ordinary meaning of “convex” is “curved or rounded outward like the
exterior of a sphere or circle.” Id. (www.merriam-webster.com/dictionary/
convex, last accessed on September 1, 2017). The shape of the laterally-
extending support surface shown in at least Figure 3 of Appellants’
Specification comports with the ordinary meaning of “continuously arcuate
and convex,” insofar as the top surface of the pillow of Figure 3 is curved
outwardly and in an uninterrupted manner in the shape of a bow. We
interpret the phrase “continuously arcuate and convex,” when the words of
the phrase are interpreted based on their ordinary meanings and in light of
the Figures, to mean that the first laterally extending support surface defined
by the first arm, the second arm, and the medial region is configured such
that it is curves outwardly and in an uninterrupted manner along the surface
in the shape of a bow.
Although Selton’s elongated ridges 14, 16 are arcuate and convex,
Selton’s support surface also includes a flat central portion 22 having
concave regions 23, 24 that lie between the flat central portion 22 and the
ridges 14, 16. Selton, Fig. 2A. As such, Selton’s support surface is not
continuously arcuate and convex. If one skilled in the art were motivated to
modify the pillow of Varaney to provide therapeutic support in the manner
taught by Selton, as suggested by the Examiner, then the resulting pillow
would contain convex ridges, a flat body portion between the ridges, and
concave regions defined between the ridges and the body portion. Such a
support surface does not have a continuously arcuate and convex
configuration. For these reasons, we do not sustain the rejection of
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independent claims 1 and 22, and dependent claims 2, 6, 9, 20, and 27, under
35 U.S.C. § 103(a) as unpatentable over Varaney, Selton, and Hogan.
Second Through Eighth Grounds of Rejection
The second through eighth grounds of rejection of dependent
claims 3, 5, 7, 8, 10-19, 23-25, and 28-30 similarly rely on the proposed
modification of the Varaney with the teachings of Selton to render obvious
the subject matter of claims 1 and 22, from which these rejected claims
depend. For the reasons set forth above, this combination is insufficient to
support a determination of obviousness of claims 1 and 22. Accordingly, we
likewise do not sustain the second through eighth grounds of rejection under
35 U.S.C. § 103(a).
Ninth Ground of Rejection: Claim 21 as unpatentable over Warnock and
Hogan
Independent claim 21 is directed to a support pillow and recites that
an outer portion of each of the first and second arms comprises an
indentation, and each indentation is disposed opposite a concave portion of
each arm proximate the well to facilitate bending of each arm. Appeal
Br. 47 (Claims Appendix). The Examiner finds that Warnock discloses the
claimed support pillow but is silent as to the concave portions and the
indentations as recited in claim 21. Final Act. 10. The Examiner finds that
Hogan discloses concave portions and indentations (defined by reverse
curves 4) in first and second arms as claimed. Id. (citing Hogan, Figs. 1, 2).
The Examiner determines that “[i]t would have been obvious for one having
ordinary skill in the art at the time of the invention to employ a reverse curve
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as taught by Hogan yielding predictable results that provide an alternative
design.” Id. at 10-11.
Appellants argue that the Examiner’s reasoning, based on mere design
choice, is insufficient. Appeal Br. 27. We agree with Appellants. As noted
by Appellants, “the pillow 10 disclosed in Wamock is particularly
configured to correct a cranial deformation of a child’s head.” Id. at 28
(citing Wamock 129). The Examiner has failed to articulate an adequate
reason that would have led one having ordinary skill in the art to modify the
shape of Wamock’s medical device configured to correct a cranial
deformation based on the teachings of Hogan’s ornamental design for an air
cushion.
Appellants further argue that even if Wamock’s pillow were modified
based on the design of Hogan, the modified pillow would not render obvious
the claimed pillow. Appeal Br. 27. We again agree with Appellants. In
Hogan’s air cushion, the concave edges 4 are not disposed opposite the
concave portions proximate hole 6. Hogan, Fig. 1. Rather, in Hogan, the
shanks 3,3, contain the concave edges 4 on the outer side of each shank, and
the inner portions of shanks 3, 3 that lie next to passage 5 are substantially
straight. As such, even if one having ordinary skill in the art were led to
modify Wamock’s pillow with the ornamental design of Hogan, the
resulting pillow would not contain indentations “oppositely disposed” with
respect to concave portions of each arm proximate the well.
For these reasons, we do not sustain the rejection of claim 21 under
35 U.S.C. § 103(a) as unpatentable over Wamock and Hogan.
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Tenth Ground of Rejection
The tenth ground of rejection of dependent claim 26 similarly relies
on the proposed modification of Wamock’s pillow with the teachings of
Hogan to render obvious the subject matter of claim 21, from which claim
26 depends. For the reasons set forth above, this combination is insufficient
to support a determination of obviousness of claim 21. Accordingly, we
likewise do not sustain the tenth grounds of rejection of claim 26 under
35 U.S.C. § 103(a).
DECISION
The decision of the Examiner rejecting claims 1-3 and 5-30 is
reversed.
REVERSED
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