Ex Parte Tidwell

Patent Trial and Appeal Board

May 13, 2013

11458083 (P.T.A.B. May. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KRISTIN A. TIDWELL
____________________

Appeal 2010-007251
Application 11/458,083
Technology Center 3600
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Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “support pillows that may be
manipulated to different configurations and automatically spring back to
their original shape.” Spec. 1, para. [0002]. Claims 1, 10, 17, 21, and 22 are
the independent claims on appeal. Claim 1 is reproduced below and is
illustrative of the appealed subject matter.
1. A support pillow, comprising:
a pillow body having a medial region and
two opposing arms that form a well region, a first
side and a second side, wherein a center plane
bisects the pillow body between the first side and
the second side so as to form a center line midway
between the first side and the second side, wherein
the pillow body further includes an outer periphery
and an inner periphery outlining the well region,
wherein the pillow body further comprises a fill
material and a cover enveloping the fill material,
wherein the cover comprises:
a main section that extends about the first
and second sides and the outer periphery, and a
center panel coupled to the main section so as to be
located along the inner periphery, wherein the
center panel is constructed of a woven fabric
having two grain directions that are generally
perpendicular to each other and a bias, wherein the

1 Appellant identifies the real party in interest as The Boppy Company, LLC.
App. Br. 3.
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woven fabric is generally non-stretchable in at
least one of the grain directions, and wherein the
center panel is coupled to the main section such
that the bias of the center panel is substantially
aligned with the center line.

REJECTIONS
Appellant seeks review of the following rejections:
(1) claims 1-17 and 22 under 35 U.S.C. § 103(a) as unpatentable over
Matthews (US 6,279,185 B1, iss. Aug. 28, 2001) and “scrapquilts.com,
Understanding Fabric Grain, accessed at http://www.scrapquilts.com/
fabric_grain.html, published Mar. 26, 2006 (hereinafter “Scrapquilts”) (Ans.
3-12);
(2) claims 18-20 under 35 U.S.C. § 103(a) as unpatentable over
Matthews, Scrapquilts, and Matthews Brown (US 6,453,493 B1, iss. Sep.
24, 2002) (Ans. 12-13); and
(3) claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Matthews, Scrapquilts, and Southworth (US 4,669,991, iss. Jun. 2, 1987)
(Ans. 13-16).
ANALYSIS
Rejection (1)
Claims 1-17
Appellant argues claims 1-17 as a group. App. Br. 10-13. We select
independent claim 1 as the representative claim, and claims 2-17 fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Matthews discloses substantially all of the
limitations of claim 1 except for disclosing “that the woven fabric
[comprising the center panel 44] has two grain directions that are generally
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perpendicular to each other and a bias” and “that the bias of the center panel
is substantially aligned with the center line [formed by a center plane
bisecting the pillow body 10].” Ans. 3-4. The Examiner also found that
Scrapquilts teaches woven fabrics have perpendicular grain directions and
that fabric is more stretchable along the bias. Id. at 4 (citing Scrapquilts,
paras. 3, 7-8). The Examiner concluded that since Matthew’s center panel
44 extends along the center line (central position of center panel 44), “it
would have been obvious [to] have the bias substantially aligned with the
center line so that the center panel [44] might stretch along with the opening
of the arms [18, 20] of the pillow [10] to ensure that the center panel [44] is
not damaged during opening, since scrapquilts.com teaches that a fabric is
more stretchable along the bias.” Id. at 4-5 (citing Matthews, figs. 4-6).
Appellant first contends that:
[t]here is simply no rationale given in the Office Action that
one of skill in the art would have been taught to [align the bias
of a woven fabric along the center line], other than the
assertion that it would have been obvious to do so to allow the
center panel to stretch along with the opening of the arms.

App. Br. 11. Separating pillow arms without tearing fabric was a known
problem in the prior art. Matthews, col. 5, ll. 3-5. Scrapquilts teaches that
“cuts with their edges along the bias are quite stretchy.” Scrapquilts, para. 7.
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art to align the bias with the center line since “when the arms [of
the pillow] are opened to receive the torso of the individual, . . . the
stretching of the fabric would be along the center line” and aligning the bias
with the center line would “utiliz[e] the inherent stretching ability of the
fabric along the bias.” Ans. 16, 17; see KSR Int’l Co. v. Teleflex, Inc., 550
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U.S. 398, 418 (2007) (“the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”). We are not persuaded that the
Examiner’s rejection lacks articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. See KSR, 550
U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appellant secondly contends that Scrapquilts teaches away from
aligning the bias with the center line because there are several disadvantages
associated with such alignment—e.g., reduction in the ability of the arms to
spring back to their original position, an increase in labor and required
fabric, and difficulty in stitching. App. Br. 12; Reply Br. 2, 3. Appellant’s
arguments suggest that the proposed modification involves tradeoffs;
however, such considerations do not necessarily prevent the proposed
combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). There are advantages to aligning the bias with the center line.
For example, the fabric is stretchier along the center line, which is the
direction in which the arms of the pillow must be opened or stretched to
receive the torso of an individual. Ans. 16. Scrapquilts also discusses
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particular scenarios where it would be advantageous to use a biased fabric.
Id. at 18 (citing Scrapquilts, para. 10). For example, Scrapquilts teaches that
“[u]sing stretchy bias strips makes it easy to apply binding to a quilt with
curved edges” and that “[b]ias cuts can be turned under easier for some
applique shapes.” Scrapquilts, para. 10. The disadvantages, such as reduced
springiness, do not necessarily outweigh the advantage of increased
stretchiness, and we are unpersuaded by these arguments.
Appellant thirdly contends that the Examiner did not properly
consider its submitted Declarations and rebuttal evidence as to secondary
considerations. App. Br. 13; Reply Br. 3. The Examiner indicates that the
submitted Declarations did not conclusively provide a nexus between market
sales and the merits of the claimed invention. Ans. 18. Thus, we consider
anew the issues of obviousness under 35 U.S.C. § 103, carefully evaluating
and weighing both the evidence relied upon by the Examiner and the
evidence provided by Appellant. See In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984); Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983). The Declaration of Nancy Bartley (hereinafter “Bartley
Declaration”) and the Declaration of Kristin A. Tidwell (hereinafter
“Tidwell Declaration”) explain that the claimed invention solves a long-felt
need of preventing inside pillow seams from ripping when pillow arms are
stretched wide. Bartley Declaration, paras. 4, 7; Tidwell Declaration, para.
4.
Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. See
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In re Gershon, 372 F.2d 535, 538 (CCPA 1967). The relevance of long-felt
need and the failure of others to the issue of obviousness depends on several
factors. First, the need must have been a persistent one that was recognized
by those of ordinary skill in the art. See Orthopedic Equip. Co. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983); see also
In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Second, the long-felt need
must not have been satisfied by another before the invention by applicant.
See Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988)
(“[O]nce another supplied the key element, there was no long-felt need or,
indeed, a problem to be solved….”) Third, the invention must in fact satisfy
the long-felt need. See In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971)
(One must also show that the others who failed had knowledge of the critical
prior art.). “[L]ong-felt need is analyzed as of the date of an articulated
identified problem and evidence of efforts to solve that problem.” Texas
Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir. 1993).
Neither the Bartley Declaration nor Tidwell Declaration provide
evidence of the efforts and resources expended during the time
corresponding to the length of need in attempts to solve the problem, or that
others have specifically tried and failed to solve the problem. See Railroad
Dynamics, Inc. v. Stuki Co., 579 F. Supp. 353, 363 (E.D. Pa. 1983), aff’d
727 F.2d 1506 (Fed. Cir. 1984), cert. denied 105 U.S. 220 (1984). In other
words, the Bartley Declaration does not provide evidence that the need was a
persistent one that was recognized by those of ordinary skill in the art. In
addition, although the Bartley Declaration and Tidwell Declaration suggest
that the use of elastic or stretchable fabric to address the problem of ripping
inside pillow seams is cost-prohibitive (Bartley Declaration, para. 4; Tidwell
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Declaration, para. 4), Matthews teaches that arms may be separated without
tearing fabric by removing the center panel “with the top and bottom pieces
being gathered at the mid-plane,” such that the need was satisfied before the
invention by Appellant. Matthews, col. 5, ll. 1-3; id. at col. 4, l. 64-col. 5, l.
5; see Newell, 864 F.2d at 768. As such, Appellant failed to provide
objective evidence sufficient to establish the existence of a long-felt need or
to establish that Appellant’s claimed invention satisfied any such long-felt
need.
Next, we consider Appellant’s objective evidence of commercial
success. The Bartley Declaration presents evidence (i) that sales of the
pillows “have increased nearly 1%” after products containing the claimed
stretch panel design were on the market despite “a 20% wholesale (25%
retail) price increase at the same time the new product design was
introduced” and (ii) in the form of three product reviews. Bartley
Declaration, paras. 8(a), 8(c). An applicant who is asserting commercial
success to support its contention of nonobviousness bears the burden of
proof of establishing a nexus between the claimed invention and evidence of
commercial success. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996)
(evidence related solely to the number of units sold without providing any
indication of whether this represents a substantial quantity in the relevant
market provides a very weak showing of commercial success, if any).
Appellant’s assertion regarding an increase in sales is not persuasive because
the assertion is not “placed in a meaningful context, e.g., market share.”
Huang, 100 F.3d at 137. Additionally, it is unknown if the increased sales
were attributable to the claimed features, since Appellant’s product review
evidence itself suggests other reasons that purchasers select the “Boppy”
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pillow—e.g., machine washable pillow and slip covers and the feature of
reducing back stress by supporting baby during nursing. Bartley
Declaration, para. 8(c). Declarations fail in their purpose when they merely
make unsupported conclusory statements. See in re Wright, 999 F.2d 1557,
1563 (Fed. Cir. 1993) and In re Brandstadter, 484 F.2d 1395, 1405 (CCPA
1973). Based on the conclusory nature of the averment in paragraph 8(c),
the Bartley Declaration is entitled to but little weight. Accordingly, we find
that Appellant has not carried the burden of establishing a nexus between the
claimed invention and the evidence of commercial success. See Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (the lack
of nexus between the claimed subject matter and the commercial success
renders the proffered objective evidence uninformative).
While we have weighed the evidence offered by Appellant in an effort
to prove long-felt need and commercial success, we conclude that the
Examiner’s evidence of obviousness outweighs Appellant’s evidence of
nonobviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the
court balanced the Patent Office’s case against the strength of appellant's
objective evidence of non-obviousness); see also Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“given the strength
of the prima facie obviousness showing, the evidence on secondary
considerations was inadequate to overcome a final conclusion that [the
claimed subject matter] would have been obvious”). For the foregoing
reasons, we sustain the rejection of claims 1-17 as unpatentable under 35
U.S.C. § 103(a) over Matthews and Scrapquilts.
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Claim 22
Appellant separately argues the patentability of claim 22 which recites
that “the center panel is coupled to the main section using stitching having a
stitch count in the range from about 5 to about 9 stitches per inch.” Claims
App’x.; App. Br. 13-14; Reply Br. 3-4. Appellant contends that “[t]he
general conditions of this limitation are clearly not found in the Matthews
patent nor the UFG Reference [Scrapquilts] and such a stitch count is not
simply an optimal or workable range.” App. Br. 14. The Examiner
responds that “the amount of stitches per inch . . . is considered a design
consideration within the art where the general conditions of a claim are
disclosed in the prior art, [and] discovering the optimum or workable ranges
involves only routine skill in the art.” Ans. 18.
We do not agree with the Examiner that it would have been obvious to
a person of ordinary skill in the art to optimize the number of stitches to
reach the claimed range. First, the general conditions of the claim are not
disclosed in the prior art as neither Matthews nor Scrapquilts discloses a
range for a number of stitches. In re Aller, 220 F.2d 454 (CCPA 1955).
Second, the Examiner has failed to sufficiently explain how Matthews or
Scrapquilts provides guidance to optimize the number of stitches such that
discovery of the claimed stitch range would appear to involve more than
routine experimentation. Id. For the foregoing reasons, we do not sustain
the rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Matthews and Scrapquilts.
Rejection (2)
Claim 18 recites “placing a slipcover over the support pillow, wherein
the slipcover includes a central panel [that] is constructed of a woven fabric
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having . . . a bias . . . , and wherein the central panel is coupled to the main
section so as to be substantially on the bias.” Claims App’x. The Examiner
acknowledges that although Matthews Brown discloses a slipcover, it “does
not disclose the slip cover includes a central panel that is coupled to the
main section so as to be substantially on the bias.” Ans. 12-13. The
Examiner concludes that:
it would have been obvious . . . to include a central panel on the
slip cover having the characteristics of the center panel of the
cover of the support pillow . . . so that the slip cover cooperates
with the cover of the support pillow to ensure that the central
panel and the center panel stretch together in order to avoid
damage during opening of the arms.

Id. at 13. Appellant contends that the Examiner’s conclusion is “hindsight
reconstruction.” App. Br. 14.
We agree with Appellant that the Examiner appears to have resorted
to a hindsight reconstruction to supply deficiencies in the cited references
with respect to the slip cover including a center panel, for example. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand. . . . A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art. In making this evaluation, all facts must be considered. The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.”); see also Reply Br. 4. More particularly,
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the Examiner’s legal conclusion of obviousness is not supported by facts
since the Examiner has not pointed to any of Matthews, Scrapquilts, and
Matthews Brown as disclosing or suggesting a slip cover including a central
panel constructed of a woven fabric having a two grain direction that are
perpendicular to each other and a bias, wherein the central panel is coupled
to the main section so as to be substantially on the bias. See Ans. 12-13, 19.
Rather, the Examiner has merely concluded, based upon the disclosure in
Appellant’s Specification, that it would have been obvious to provide such a
central panel for the slip cover of Matthews Brown. Because the Examiner’s
conclusion of obviousness is not supported by facts, it cannot stand. For the
foregoing reasons, we do not sustain the rejection of claim 18, nor claims 19
and 20 which depend therefrom, as unpatentable under 35 U.S.C. § 103(a)
over Matthews, Scrapquilts, and Matthews Brown.
Rejection (3)
Claim 21 is similar to claim 22 in reciting “wherein the center panel is
coupled to the main section using non-stretchable stitching having a stitch
count in the range from about 5 to about 9 stitches per inch.” Claims App’x.
The Examiner’s rejection of claim 21 relies on the same reasoning that the
claimed range of stitches is merely the discovery of optimum or workable
ranges (Ans. 15), and the Examiner does not point to anything in Southworth
which cures the deficiencies of the Examiner’s conclusion as explained
supra in connection with claim 22. Accordingly, for similar reasons to those
discussed above with respect to claim 22, we do not sustain the Examiner’s
rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Matthews, Scrapquilts, and Southworth.

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DECISION
The Examiner’s rejections of claims 1-17 under 35 U.S.C. § 103(a)
are AFFIRMED.
The Examiner’s rejections of claims 18- 22 under 35 U.S.C. § 103(a)
are 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)(1)(iv).

AFFIRMED-IN-PART

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