Ex Parte Song

Patent Trial and Appeal Board

Dec 15, 2015

13021339 (P.T.A.B. Dec. 15, 2015)

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."
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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
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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).
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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
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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.
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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
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