Ex Parte Sundberg et al

Patent Trial and Appeal Board

Aug 15, 2014

11003639 (P.T.A.B. Aug. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN C. SUNDBERG, JORGE TOMAS, and
J. MICHAEL TREEN
____________________

Appeal 2012-004300
Application 11/003,639
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
EDWARD A. BROWN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian C. Sundberg et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 60–62, 68, 71–74, 77, and 78.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Claims 74 and 68, reproduced below, are independent, and are
illustrative of the claimed subject matter.

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74. A child bath seat assembly comprising
a mounting member for attachment to an upper surface of
a side wall of a bath tub in which a child seat is to be located,
a telescoping support extending downwardly from the
mounting member into the tub toward the bottom thereof,
a child seat having a child seat surface,
the telescoping support being adjustable to provide the
child seat to rest on the bottom of the tub, and
a child retainer extending upwardly from and disposed
above the child seat surface and at least partially surrounding
the torso of a child in the seat.

68. A child bath seat assembly comprising
a mounting member for attachment to the rim of a bath
tub in which a child seat is to be located,
a telescoping support that extends downwardly from the
mounting member into the tub toward the bottom thereof,
a child seat having a child seat surface,
the telescoping support being adjustable to provide the
child seat to rest on the bottom of the tub, and
a child retainer extending upwardly from and disposed
above the child seat surface and at least partially surrounding
the torso of a child in the seat.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Schuette
Hayden
Smith
Mace
Bernstein
US 2,177,998
US 3,022,518
US 4,391,006
US 4,472,844
US 5,158,460
Oct. 31, 1939
Feb. 27, 1962
July 5, 1983
Sept. 25, 1984
Oct. 27, 1992
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REJECTIONS1
Claim 74 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 68, 60, 71–74, 77, and 78 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hayden.
Claims 61 and 62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hayden and Bernstein.
Claims 68, 60–62, 71–74, 77, and 78 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schuette, Smith, and Bernstein.
Claims 60 and 77 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schuette, Smith, Bernstein, and Mace.

OPINION
Indefiniteness
According to the Examiner, it is “unclear as to whether the ‘bath tub’
is intended to be part of the claimed combination since structure of the ‘seat
assembly’ is defined as being structurally related thereto (lns. 4-5), but no
positive structural antecedent basis therefor has been defined,” and it is
“unclear as to the relationship between the ‘child seat’ on line 6, and the
‘child seat’ on line 3 thereof.” Final Action 6 (Mar. 24, 2010).
With respect to the first point, we do not agree with the Examiner that
it is unclear whether the “bath tub” is part of the claimed combination.

1 The Examiner’s statements that “[t]he rejection set forth in the Final Office
action mailed 2/22/11 is incorporated herein” (Ans. 4, 5, 6) are misleading,
because the Final Office Action mailed February 22, 2011, merely
incorporates the rejections “from the previous office action.” Final Action 4,
5, 6 (Feb. 22, 2011). We look to the Final Office Action mailed March 24,
2010, for an explanation of the rejections before us in this appeal.
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Lines 4 and 5 of claim 74 recite “a telescoping support extending
downwardly from the mounting member into the tub toward the bottom
thereof.” As recognized by the Examiner, this recitation requires a tub.
There is no ambiguity; the claim limitation cannot be satisfied without the
presence of a tub.2 Rather than reciting, for example, “a telescoping support
extending downwardly from the mounting member for extending into the tub
toward the bottom thereof,” lines 4 and 5 positively recite a telescoping
support extending into the tub. Compare lines 4 and 5 with lines 2 and 3 (“a
mounting member for attachment to an upper surface of a side wall of a bath
tub” (emphasis added)).
The Examiner is correct that claim 74 does not positively recite the
bath tub prior to the recitation in lines 4 and 5. The recitation “a mounting
member for attachment to an upper surface of a side wall of a bath tub in
which a child seat is to be located” in lines 2 and 3 does not require the
mounting member to be attached to a bath tub; the bath tub is recited in line
2 merely as part of the intended use of the mounting member. Thus, claim
74 requires the telescoping support to extend into the tub, but does not
require the mounting member to be attached to the upper surface of a side
wall of the tub. We appreciate and agree with the Examiner’s position that
claim 74 could be drafted more precisely. Final Action 6 (Feb. 22, 2011).
However, despite the lack of positive antecedent basis for “the tub” recited

2 Appellants’ argument that “[i]t should be clear that ‘bath tub’ in claim 74 is
not a claimed element, rather it describes the claimed features in terms of
function with respect to well known structure (i.e., a bath tub)” (Reply Br.
1–2) might evince the intent of the drafter of the claim, but it ignores the
explicit language in the claim. As stated by our reviewing court in In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game
is the claim.”
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in line 4, a person having ordinary skill in the art would understand that the
bath tub is part of the claimed invention.
Turning now to the second point, we also disagree with the Examiner
that the relationship between the “child seat” on line 6 and the “child seat”
on line 3 is unclear. The phrase “in which a child seat is to be located” in
lines 2 and 3 of claim 74 is not a positive recitation of a child seat; rather,
this is part of an intended use recitation. Line 6 is a positive recitation of the
child seat.
For the above reasons, we do not sustain the rejection of claim 74
under 35 U.S.C. § 112, second paragraph.
Anticipation by Hayden
Appellants argue that Hayden does not disclose a “telescoping
support being adjustable to provide the child seat to rest on the bottom of the
tub,” as called for in independent claims 68 and 72. Appeal Br. 5. The
Examiner asserts that “the structure of the Hayden seat is capable of being
adjusted to position the seat surface . . . to rest on the bottom surface of the
tub (via telescopic support), depending upon the adjustment of the
telescoping support.” Ans. 7. This assertion is incorrect. As pointed out by
Appellants, Hayden’s telescoping support (which includes pipes 11 and 18)
“separates the bath seat from the tub floor such that it is impossible for the
bath seat to rest on the bottom of the tub.” Reply Br. 2.
Appellants have shown error in the Examiner’s rejection of
independent claims 68 and 74 and of their dependent claims 60, 71–73, 77,
and 78. Accordingly, we do not sustain the rejection.
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Obviousness based on Hayden and Bernstein
The Examiner’s application of the teachings of Bernstein’s infant bath
seat, in rejecting claims 61 and 62, which depend from claim 68, does not
overcome the above-noted deficiency in the Examiner’s findings regarding
Hayden. Moreover, it is not apparent why a person of ordinary skill in the
art would have been prompted to modify Hayden’s seat to provide a ring as
taught by Bernstein “to facilitate child securement,” as proposed by the
Examiner. Final Action 10 (Mar. 24, 2010). Hayden’s apparatus is
designed to assist elderly adults, who have limited mobility, maneuver
themselves into and out of a bath tub. Hayden, col. 1, ll. 10–13; col. 2, ll.
28–30. The modification proposed by the Examiner would hinder the ability
of such an adult to get into and out of the seat, and thus would not be
desirable for use by the elderly, as disclosed by Hayden. Moreover, it is not
apparent why a person of ordinary skill in the art would mount a child seat
as taught by Bernstein on the support assembly of Hayden, which, as
discussed above, is not designed to rest the child seat on the bottom of the
tub, as taught by Bernstein, but, rather, is designed to permit people to
maneuver themselves into and out of the tub, not to permit others to place a
child into the tub. See Reply Br. 3 (discussing the safety interest in placing
the child at or near the bottom of the tub to avoid possible falls).
For the above reasons, we do not sustain the rejection of claims 61
and 62 as being unpatentable over Hayden and Bernstein.
Obviousness based on Schuette, Smith, and Bernstein
Appellants argue that the Examiner’s rejection does not “provide a
proper explanation” for how the proposed combination would arrive at the
invention called for in claims 68 and 74, including, in particular, “the
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telescoping support being adjustable to provide the child seat to rest on the
bottom of the tub.” Appeal Br. 13. We agree. The Examiner considers
Schuette’s loop 12, upwardly extending leg portions 13, curved portions 14,
upwardly bent rod portion 15, and horizontal portions 16 to be a “support.”
Final Action 12 (Mar. 24, 2010) (finding that Schuette “discloses . . . a
support 12–16”). Those elements are designed to rest on the floor of the tub
and to support girdle 28 above (not on) the bottom of the tub “whereby the
girdle may be placed around the waist of a child sitting on the bottom of the
tub.” Schuette, col. 2, ll. 18–25. In view of the teachings of Smith, the
Examiner proposes modifying Schuette “to associate telescoping adjustment
with the Schuette support in order to accommodate bath tubs of different
depths.” Final Action 12 (Mar. 24, 2010). We understand this to mean that
the Examiner proposes to modify upwardly extending leg portions 13 to
provide them with a telescoping adjustment. Providing such a telescoping
adjustment would not accommodate bath tubs of different depths, as
contended by the Examiner, to rest the child seat on the bottom of the tub, as
called for in claims 68 and 74. Rather, a telescoping adjustment on
extending leg portions 13 would permit adjustment of the height of the
girdle, or child retainer, relative to the bottom of the tub.
We do not sustain the rejection of claims 68, 60–62, 71–74, 77, and
78 as being unpatentable over Schuette, Smith, and Bernstein.
Obviousness based on Schuette, Smith, Bernstein, and Mace
The Examiner’s application of Mace does not make up for the
deficiency in the Examiner’s rejection of claims 68 and 74, from which
claims 60 and 77 depend, as unpatentable over Schuette, Smith, and
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Bernstein. Thus, we also do not sustain the rejection of claims 60 and 77 as
being unpatentable over Schuette, Smith, Bernstein, and Mace.
DECISION
The Examiner’s decision rejecting claims 60–62, 68, 71–74, and 77,
and 78 is reversed.
REVERSED

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