Ex Parte SongDownload PDFPatent Trial and Appeal BoardDec 15, 201513021339 (P.T.A.B. Dec. 15, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/021,339 02/04/2011 85444 7590 12/16/2015 Bay Area Technolgy Law Group PC 2171 E. Francisco Blvd., Suite L San Rafael, CA 94901 FIRST NAMED INVENTOR Wonjung Song 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. 545.195 4300 EXAMINER HUSON, JOSHUA DANIEL ART UNIT PAPER NUMBER 3644 MAILDATE DELIVERY MODE 12/16/2015 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 WONJUNG SONG Appeal2013-003276 Application 13/021,339 1 Technology Center 3600 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant's claimed invention relates to "a bedding product which is ideally suited for use as a pet bed." (Spec. 1.) 1 According to Appellant, the real party in interest is Worldwise, Inc. (Appeal Br. 1.) Appeal2013-003276 Application 13/021,339 Claim 1 is the sole independent claim and is reproduced below (emphasis added): 1. A pet bed comprising an upper fabric layer, lower fabric layer and a peripheral edge joining said upper and lower fabric layers defining the shape of said pet bed, proximate said upper fabric layer is located a casing, said casing enclosing chopped memory foam and proximate said lower fabric layer is located a sheet of open cell foam having an undulating surface next to said lower fabric layer such that said undulating surface creates dimples on said lower fabric layer. REJECTIONS Claims 1-3 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jakubowski (US 2006/0021583 Al, pub. Feb. 2, 2006) and Lamstein (US 2007/0220676 Al, pub. Sept. 27, 2007). Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Jakubowski, Lamstein, and Dunn (US 2006/0272582 Al, pub. Dec. 7, 2006). FINDINGS OF FACT \Ve rely on the Examiner's findings of fact stated in the Final Office Action and Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The§ 103 Rejection based on Jakubowski and Lamstein Claims 1-3 Independent claim 1 recites, in relevant part, "said casing enclosing chopped memory foam." 2 Appeal2013-003276 Application 13/021,339 The Examiner finds that "Jakubowski teaches proximate the upper fabric layer is located a casing (Fig. 5 #24), the casing enclosing foam (Claim 5)." (Final Action 2-3.) The Examiner acknowledges that "Jakubowski fails to teach the casing enclosing chopped memory foam" and relies on Lamstein for teaching this limitation. (Id. at 3, citing Lamstein, Abstract.) The Examiner concludes that it would have been obvious to have provided Jakubowski's casing enclosing foam with the foam being chopped memory foam as taught by Lamstein "to provide the pet bed with a supportive fill that more readily conforms and supports the body of the animal laying on top of the bed." (Id. at 3.) Appellant argues that the combination of Lamstein with Jakubowski would not render obvious the claimed invention because one of ordinary skill would not substitute the chopped memory foam of Lamstein into Jakubowski. (See Appeal Br. 3--4; see also Reply Br. 1-2.) In particular, Appellant asserts that Jakubowski's "second layer" is intended to be composed of cedar wood chips which has [sic] insect repellant qualities [0014] [0016]. This cedar wood chip material is used "similar to a box spring" under a "mattress" [0016]. Thus, Jakubowski never intends there to be two different bedding materials which can be used as contemplated herein. (Appeal Br. 3--4.) The Examiner responds that "Jakubowski teaches an animal bedding comprising two different supportive materials 20, 24" and further "'wherein the upper layer is a foam material and the lower layer is comprised partly of foam material and partly of replaceable material,' (Claim 5)." (Answer 3.) According to the Examiner, "[t]he combination is not replacing the cedar 3 Appeal2013-003276 Application 13/021,339 wood chips. The combination is replacing Jakubowski's second layer 'foam material' with Lamstein et al's 'chopped memory foam."' (Id. at 4.) Appellant replies that the Examiner's reliance on claim 5 is misplaced for two reasons. (Reply Br. 2.) According to Appellant, "when materials of claim 5 are recited in the specification, they are restricted to 'cedar wood chips,"' (id., citing Jakubowski i-fi-f 14, 16 and claims 2, 13, 23, 25, 27, 28, 31, 32, 33, 36, 37), and "the specification is devoid of any description of 'a lower layer ... comprised partially of foam material and partially of replaceable material."' (id.). Jakubowski discloses "[a] multi-layer pet bed having at least an upper support layer of a first predetermined compression resistance," and "a lower support layer a portion of which is replaceable material that has a second predetermined compressive resistance." (Jakubowski i17, emphasis added.) Jakubowski discloses that upper layer 20 is preferably egg crate foam material. (Id. i-f 16.) Jakubowski also discloses that the material of the lower layer 24 may have portions 30 and 32, such that "the pet owner has the option of using replaceable material in one or both of the portions 30 and 32." (Id. i-f 17; see also id. at Fig. 4.) Claim 5 discloses that the lower layer may be "comprised partly of foam material and partly of replaceable material." (Id. at claim 5.) Paragraph 14 discloses that the replaceable material is "preferably cedar wood chips." (Id. i-f 14.) Appellant does not persuasively explain why the Examiner erred in finding that it would have been obvious to replace the foam portion of Jakubowski's lower layer with Lamstein's chopped memory foam (see Answer 4). 4 Appeal2013-003276 Application 13/021,339 Based on the foregoing, we sustain the Examiner's rejection of independent claim 1 as unpatentable over Jakubowski and Lamstein. Appellant relies on substantially the same arguments for dependent claim 3 (see Appeal Br. 4) and presents no additional substantive arguments for dependent claim 2 (see id. at 3-5). Therefore, for the same reasons, we are unpersuaded that the Examiner erred in rejecting claims 2 and 3 as unpatentable over Jakubowski and Lamstein. Claim 5 Claim 5 depends from claim 1 and recites, "wherein said pet bed can reside upon a horizontal surface with either said upper fabric layer or lower fabric layer in contact with said surface to present the lower fabric layer and upper fabric layer, respectively, as the surface to receive a pet for lounging thereon." Appellant argues: Jakubowski does not teach that either the upper fabric layer or lower fabric layer can be in contact with this surface to present the lower fabric layer or upper fabric layer, respectively, as the surface to receive a pet for lounging thereon. Jakubowski is quite clear that it is only his egg crate foam layer 20 that is intended to be the material for receiving a pet for lounging thereon. (Appeal Br. 4.) The Examiner finds that Jakubowski' s device as modified by Lamstein is capable of being used as recited. (See Answer 4.) Specifically, the Examiner responds, [t]he device is perfectly capable of being placed on the ground as an animal bedding with either the egg crate foam or the memory foam as the upper animal support surface. The modified reference is capable of supporting an animal 5 Appeal2013-003276 Application 13/021,339 regardless of its orientation when placed on a horizontal surface. (Id.) The claim language at issue recites an intended use of the pet bed. As such, the prior art device need only be capable of the recited intended use. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Appellant does not persuasively explain why Jakubowski's device as modified by Lamstein would be incapable of the intended use. Therefore, we sustain the Examiner's rejection of claim 5 as unpatentable over Jakubowski and Lamstein. The § 103 Rejection based on Jakubowski. Lamstein. and Dunn Appellant does not present any arguments for the separate patentability of dependent claim 4, except that Dunn does not teach the limitations of claim 1 (see Appeal Br. 5). For the reasons discussed above, we are not persuaded that the combination of Jakubowski and Lamstein articulated by the Examiner fails to teach the limitations of claim 1. Thus, we are unpersuaded that the Examiner erred in rejecting claim 4 as unpatentable over Jakubowski, Lamstein, and Dunn. DECISION The Examiner's rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over Jakubowski and Lamstein is affirmed. The Examiner's rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Jakubowski, Lamstein, and Dunn is affirmed. 6 Appeal2013-003276 Application 13/021,339 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED mls 7 Copy with citationCopy as parenthetical citation