Ex Parte Stjerna

Patent Trial and Appeal Board

Sep 13, 2016

10579069 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/579,069 0210912007
30593 7590 09/15/2016
HARNESS, DICKEY & PIERCE, PLC
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Nils Eric Stjerna
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.
10400C-000234/US 3299
EXAMINER
CUOMO, PETER M
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
dcmailroom@hdp.com
pshaddin@hdp.com
jcastellano@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NILS ERIC STJERNA
Appeal 2015-000019 1,2
Application 10/579,069
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, "[t]he ... invention relates to a spring
mattress of the kind wherein the springs are enclosed in covers, known as a
1 Our decision references Appellant's Specification ("Spec.," filed May 11,
2006), Appeal Brief ("Appeal Br.," filed Jan. 8, 2014), and Reply Brief
("Reply Br.," filed Sept. 23, 2014), as well as the Non-Final Action
("Action," mailed Aug. 8, 2013) and the Examiner's Answer ("Answer,"
mailed July 23, 2014).
2 According to Appellant, "[t]he real party in interest ... is Stjemfjadrar
AB." Appeal Br. 3.
Appeal2015-000019
Application 10/579,069
pocket-spring mattress, and to a method and [an] apparatus for
manufacturing a mattress of this kind." Spec. 1, 11. 2-5. Claims 1, 11,
and 17 are the only independent claims. See Appeal Br., Claims App. We
reproduce claim 1, below, as representative of the appealed claims.
Id.
1. A spring mattress with longitudinal strings, the
spring mattress comprising:
a plurality of interconnected coil springs enclosed in
covers, and
a plurality of parallel strings arranged side by side and
interconnected by a surface attachment between abutting
surfaces of adjacent strings,
wherein a slit is provided between at least two coil springs
located adjacent to one another within the same string, the slit in
combination with the surface attachment allowing an increased
interjacent separation distance to be formed between said
adjacent coil springs.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1-16 and 24--30 under 35 U.S.C. § 103(a) as unpatentable over
Meutsch (US 1,455,847, iss. May 22, 1923) and Stumpf (US 4,578,834, iss.
Apr. 1, 1986 (hereinafter "Stumpf '834")); and
claims 17-23, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable
over Stumpf(US 4,986,518, iss. Jan. 22, 1991 (hereinafter "Stumpf '518")),
Meutsch, and Stumpf' 834.
See Action 2---6; see Answer 2.
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Application 10/579,069
ANALYSIS
Independent claim 1 recites "a plurality of parallel strings arranged
side by side and interconnected by a surface attachment between abutting
surfaces ofadjacent strings." Appeal Br., Claims App. (emphasis added).
Appellant argues that the rejection of claim 1 is in error because there is no
motivation to combine Meutsch and Stumpf '834 to provide such an
arrangement. In identifying a reason that would have prompted a person of
ordinary skill to combine prior art teachings, the Examiner must provide an
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). In this case, we determine that the Examiner has not done so.
Meutsch discloses folded strips 8, each of which includes a number of
pockets 10. Each pocket includes an elongated slit 13, through which a coil
spring 12 is inserted into each pocket 10. After insertion of the springs into
the pockets, the folded strips 8 are connected to each other by threading
lacing 18 through slots 16 formed between pockets 10. The mattress is so-
constructed by the purchaser, at the place where the mattress is to be used,
rather than being constructed by the manufacturer. See Meutsch, Figs. 2--4;
p. 2, 11. 60---80, 107-122; p. 3, 11. 4--36; see Appeal Br. 6---7.
The Examiner finds that Meutsch teaches substantially all of the
limitations of claim 1, except a plurality of parallel strings arranged side by
side and interconnected by a surface attachment between abutting surfaces
of adjacent strings. See Action 2. The Examiner finds that Stumpf '834
discloses the claimed attachment. See id. More specifically, the Examiner
finds that Stumpf' 834 teaches "' [ e Jach string is defined by a series of coil
springs connected and encased by a fabric cover. The strings are connected
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Application 10/579,069
to each other by an adhesive applied between the lines of tangency of
adjacent coil springs.'" Id. The Examiner's reasons for using Stumpf '834's
adhesive with Meutsch's arrangement is that "[o]ne of ordinary skill ...
would have recognized that adjacent strings of Meutsch could be adhered as
disclosed in Stumpf ['834] in order to provide Meutsch with the predictable
established function of adhesive (which is to keep strings of a mattress
together)." Id.
Thus, as set forth above, the Examiner's reason for adhering
Meutsch's folded strips 8 to one another, when folded strips 8 are already
connected to one another by lacing 18, is that they "could be adhered" to one
another "to keep [the] strings of [the] mattress together." We determine that
the Examiner's reason for including Stumpf '834' s adhesive in Meutsch' s
arrangement lacks the required rational underpinning. For example, as
Appellant points out, the surfaces of folded strips 18 which would be
adhered to one another are the locations of elongated slits 13. See Appeal
Br. 9. As Appellant further points out, the assembly of Meutsch's mattress
would be complicated by the use of adhesive. See id. at 8-9. For example,
it appears that a user might be required to otherwise fully assemble
Meutsch's mattress, by placing springs 12 into folded strips 8, and threading
lacing 18 through slots 16, to ensure that the desired final shape is achieved,
and then the user might be required to loosen lacing 18 (for example) to
place adhesive between adjacent folded strips, while endeavoring to avoid
flowing adhesive into slits 13 that are on the faces of the folded strips being
adhered. Still further, it is not apparent to us that there would be any great
advantage resulting from the use of Stumpf '834' s adhesive in Meutsch' s
mattress. See id. Thus, based on the foregoing, we conclude that the
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Application 10/579,069
Examiner's reason for using Stumpf '834's adhesive lacks the required
rational underpinnings, and, therefore, we do not sustain the rejection of
claim 1.
Inasmuch as independent claim 11 recites a similar limitation, we also
do not sustain the obviousness rejection of claim 11. Further, we do not
sustain the obviousness rejection of claims 2-10, 12-16, and 24--30, which
depend from claims 1 and 11, and which the Examiner rejects based on a
combination of Meutsch and Stumpf '834.
With respect to claim 17, the claim recites "means (or providing a slit
between at least two coil springs located adjacent to one another within a
same string such that the slit in combination with the surface attachment
allows an increased interjacent separation distance to be formed between the
adjacent coil springs." Appeal Br., Claims App. (emphasis added). The
Examiner finds that Stumpf '518 discloses substantially all of the limitations
of claim 1 7, except for surface attachment of parallel strings (which, the
Examiner finds is taught by Stumpf '834) and the above-referenced slits.
See Action 5. Appellant argues that the rejection is in error because there is
no motivation to modify Stumpf '518 to provide Meutsch's slits. See
Appeal Br. 13-14. In identifying a reason that would have prompted a
person of ordinary skill to combine prior art teachings, the Examiner must
provide an articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (2007). In
this case, we determine that the Examiner has not done so.
The Examiner's reasoning for adding Meutsch' s slits to Stumpf '518' s
arrangement is that "[ o ]ne of ordinary skill ... would have recognized that
slits (and the associated machinery needed to create them) such as Meutsch's
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Application 10/579,069
could be added to the apparatus of Stumpf(' 518) to provide Stumpf with the
predictable established function of the slits (which is to allow the springs to
flex in relation to one another)." Action 5. We note, however, that the
Examiner does not present any evidence, such as a citation to any portion of
the applied references, establishing that adding Meutsch's slits would "allow
the springs to flex in relation to one another." See Appeal Br. 13-14; see
Reply Br. 6-7. Instead, as discussed above, Meutsch discloses that slits 13
are used to assemble the mattress by use of lacing 18. See Appeal Br. 8-9.
Thus, based on the foregoing, we conclude that the Examiner's reason
for using Meutsch' s slits in Stumpf '518' s mattress lacks the required
rational underpinnings, and, therefore, we do not sustain the rejection of
claim 17. Further, we do not sustain the obviousness rejection of claims 18-
23, 31, and 32, which depend from claim 17, and which the Examiner rejects
based on the same combination of references as claim 1 7.
DECISION
We REVERSE the Examiner's obviousness rejections of claim 1-32.
REVERSED
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