Ex Parte Smithson

Patent Trial and Appeal Board

Feb 12, 2016

13290317 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/290,317
7590
Morland C. Fischer
Suite 1300
2030 Main Street
Irvine, CA 92614
FILING DATE FIRST NAMED INVENTOR
11/07/2011 Alan F. Smithson
02/12/2016
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.
HDSS-101 4934
EXAMINER
SOSNOWSKI, DAVIDE
ART UNIT PAPER NUMBER
3673
MAILDATE DELIVERY MODE
02/12/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN F. SMITHSON
Appeal2013-010600
Application 13/290,317
Technology Center 3600
Before: CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
JASON W. MELVIN, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2013-010600
Application 13/290,317
The claims are directed to a bed pad with insect repellant. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An insect-repelling pad upon which to sit or lay, said pad
being manufactured from a porous material and having at
least one chamber within which an insect-repelling
substance is contained, said pad being responsive to a
compressive force applied thereto for correspondingly
causing said chamber to be squeezed and some of the,
insect-repelling substance to be blown from said chamber
and through the porous material, said insect-repelling
substance that is contained by said at least one chamber
including particles that are sized to pass from said chamber
and through the porous material of said pad, and said porous
material having spaces formed therein that are sized to
accommodate the passage of the particles of said insect
repelling substance from the inside of said chamber to the
outside of said pad when said pad is compressed and said
chamber is correspondingly squeezed so that said particles
are blown through said spaces to be deposited around said
insect-repelling pad, the particles of said insect repelling
substance having a scent that is adapted to drive away
insects.
REJECTIONS
Claims 1-11 and 13-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Antinoro (U.S. 2003/0115670 Al, pub. Jun. 26,
2003).
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Antinoro in view of Lee (U.S. 5,581,829, iss. Dec. 10, 1996).
OPINION
Claims 1, 3-5, and 7 are argued as a group for which we select claim
1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2013-010600
Application 13/290,317
We agree with and adopt as our own the Examiner's factual findings,
legal reasoning, and conclusions concerning the rejection of claim 1. See
Final Act. 2-3. Appellant raises two issues with regard to the Examiner's
rejection of claim 1. The first is based on arguing unrecited limitations,
namely that "nowhere does Antinoro intend or disclose blowing solid
particles." App. Br. 3-6 (emphasis added); see also Ans. 3. With respect to
the recited "insect-repelling substance," which may be cedar according to
Appellant's Specification, the Specification discloses both a "fumigant" or
"aroma[ tic]" embodiment (para. 21) and a "dust" embodiment (para. 22).
Claim 1 is drawn broad enough to cover both and there is no dispute that
Antinoro clearly discloses the former. Appellant chose to draft claims broad
enough to encompass multiple embodiments from the Specification and we
will not now import limitations from the Specification to limit the claims to
a narrower embodiment. See SuperGuide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) ("[A] particular embodiment appearing
in the written description may not be read into a claim when the claim
language is broader than the embodiment.") (citation omitted).
Appellant's second argument pertains to Antinoro' s characterization
of the disclosed pad as "shape-retaining." App. Br. 5. As the Examiner
correctly reasons, this description is relative to a pad that does not have inner
chambers. Interpreting Antinoro' s language in this regard to mean an
incompressible pad is clearly unreasonable. As the structure of Antinoro' s
pad and that claimed is the same, their behaviors upon compression are also
reasonably expected to be so.
We adopt as our own the Examiner's analysis of Appellant's
arguments pertaining to claim 1. See Ans. 2---6.
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Appeal2013-010600
Application 13/290,317
Turning to claims 8 and 9, Appellant contends that Antinoro fails to
disclose a "fold line" or a "seam," respective, at which the pad can be
folded. These limitations of claims 8 and 9 use different terms to ultimately
refer to the same structure: stitching 9 connecting the sides of the pad to
create chambers 7. See Spec. para. 18. The Examiner has pointed to an
identical structure in Antinoro: stitching 19. Although Antinoro's stitching
may not extend to the pad's extremities, the flowability of Antinoro's fill
material would reasonably be expected to be partible on folding even in
areas without stitching. As the Examiner correctly points out (Ans. 6),
neither the degree of foldability nor the specific length or location of the
recited fold line or seam is specified in the claims. It is again reasonably
expected that the nearly identical structure of Antinoro would allow for the
same function, the capability of folding, as recited in claims 8 and 9.
Appellant contends the Examiner's rejection of claim 10 is erroneous
because Antinoro does not describe porosity and therefore would not select
the recited "burlap" material. In order for Antinoro' s pad to have aromatic
properties, as discussed above, in must be porous, at least to gases or
fumigants. Appellant does not apprise us of any differences in Antinoro
preferred material, muslin, as compared to burlap, other than the source of
origin being jute versus cotton, respectively. We agree with the Examiner's
conclusion that such substitution would have been obvious to one having
ordinary skill in the art. We are not apprised of any language in the claim
requiring any particular degree of loss of the insect-repelling material as
argued by Appellant. Limitations not appearing in the claims cannot be
relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
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Appeal2013-010600
Application 13/290,317
Appellant argues claims 11, 14, 15, and 18 as a group, for which we
select claim 11 as representative. In addition to making similar arguments as
those presented regarding claim 1, Appellant contends "Antinoro is totally
devoid of any showing or suggestion of a box spring and a mattress of a bed
and a bed pad located between the mattress and the box spring at which to be
responsive to a compressive force, whereby solid particles of an insect-
repelling substance are blown from the inside of the bed pad to the outside
so as to leave a deposit of such insect-repelling particles at the interface of
the box spring and the mattress." App. Br. 9. It is not clear from this
statement whether the point of contention involves the absence of the
mattress and box spring in Antinoro or the absence of the migration and
deposit of solid particles. The only additional supporting statement in this
section of the brief relates to the latter, but we address each possible
argument in tum. First, the Examiner recognizes that Antinoro does not
disclose a mattress or box spring. Final Act. 4. Each and every element
need not be found in a single prior art reference to support a rejection under
§ 103. The Examiner determined that locating a pad in this manner was
known in the art and the Examiner's determination in that regard stands
uncontroverted. As to the second portion of Appellant's argument, we agree
with the Examiner's analysis that once this obvious combination were made,
the functional recitations pertaining to the migration and deposit of aromatic
particles in the immediate vicinity of the pad would necessarily follow.
Again, the claims do not specify any particular particle size or state of matter
or any particular porosity. We sustain the rejection of claim 11.
Regarding claim 12, Appellant correctly points out that the claim
requires having porous compartments containing an insect-repelling
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Appeal2013-010600
Application 13/290,317
substance attached to flexible extensions sized to locate the porous
compartments below the box spring of the bed. Reply Br. 10 (emphasis
added); see also Fig. 5. Even if obvious to include extensions in light of
Lee, we are not apprised of how the combination proposed by the Examiner
in rejecting claim 12 would result in a structure satisfying the claim
language related to compartments on those extensions. As this claim
language does not appear to be addressed by the Examiner, the rejection
must be reversed.
DECISION
The Examiner's rejection of claims 1-11 and 13-18 is affirmed.
The Examiner's rejection of claim 12 is reversed.
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-IN-PART
rvb
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