Ex Parte WilkinsonDownload PDFPatent Trial and Appeal BoardFeb 28, 201311041758 (P.T.A.B. Feb. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/041,758 01/24/2005 John Wilkinson MPL-4173 4968 5409 7590 03/01/2013 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER CONLEY, FREDRICK C ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 03/01/2013 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 JOHN WILKINSON ____________________ Appeal 2011-001079 Application 11/041,758 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and WILLIAM A. CAPP, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-001079 Application 11/041,758 2 STATEMENT OF THE CASE John Wilkinson (Appellant) filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated February 20, 2013, of our decision mailed December 20, 2012 (hereinafter “Decision”). In that Decision, we affirmed the Examiner’s rejections of claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over Schulman, Gronsman, and Brown; claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over Schulman, Gronsman, Brown, and Smith; and claims 17-20 under 35 U.S.C. § 103(a) as unpatentable over Gronsman and Schulman. OPINION Appellant asserts that the Board’s Decision overlooked or failed to address arguments made in Appellant’s Reply Brief. See Request, pp. 2-6 (citing arguments made at Reply Br., p. 4). Appellant is correct that the Board did not address the arguments made in the Reply Brief, filed August 18, 2010. However, these arguments were not addressed because the Reply Brief was not entered and considered. The Examiner did not acknowledge entry of the Reply Brief as provided in 37 C.F.R. § 41.43(a)(1). Rather, on October 19, 2010, the Examiner issued an Office communication informing Appellant that Appendix A in the Reply Brief “is considered new evidence. A Reply Brief shall not include . . . any new or non-admitted affidavit or other evidence.” The Image File Wrapper for the present application includes an entry on “10-19-2010” entitled “Notice of Non-Entry of Reply Brief” and the Transaction History includes an entry dated “10-19-2010” entitled “Mail Advisory of Non-Entry of Reply Brief.” See Public Pair (available at http://portal.uspto.gov/pair/PublicPair). Thus, pursuant to 37 C.F.R. § 41.41(b), Appellant was notified that the Reply Brief filed August 18, Appeal 2011-001079 Application 11/041,758 3 2010, is not in compliance with 37 C.F.R. § 41.41(a) and is not entered. There is no indication in the electronic record for the present application that Appellant filed a petition under 37 C.F.R. § 1.181 requesting review of the Examiner’s decision not to enter the Reply Brief. Consequently, the Board did not consider the Reply Brief. See 37 C.F.R. § 41.41(b) (stating that “[a] reply brief that is not in compliance with paragraph (a) of this section will not be considered”); § 41.41(a)(2) (stating that “[a] reply brief shall not include . . . any new or non-admitted affidavit or other evidence”). Thus, Appellant’s Request does not persuade us that we erred in not considering the arguments in the Reply Brief. Moreover, in any event, Appellant’s arguments on pages 2-6 of the Request fail to take into account that the resilient envelope of the modified cell of Schulman takes on the helical shape imparted to it by the helical coil spring, and that the Examiner finds the “resilient” and “port” features in Schulman (Ans. 5), and does not rely on Brown for these features. These arguments therefore do not convince us that we erred in affirming the Examiner’s rejections. The Request also asserts that the Board misapprehended the problem solved by Appellant’s invention, and instead confused the problem with the solution reached by Appellant, resulting in an incorrect analysis of analogous art and an incorrect conclusion that Brown is analogous prior art. Request, p. 8. Appellant’s invention is directed toward preventing soft tissue damage to patients confined to bed for long periods of time (see Request, p. 8; Spec., p. 2). However, other prior art systems already addressed that problem. See Spec., p. 3 (discussion of typical pressure relief support systems). Appellant’s invention really seeks to address problems, or disadvantages, of Appeal 2011-001079 Application 11/041,758 4 those prior art systems. One such problem or disadvantage exhibited by the prior art systems is that “during power outages, these mattresses lose pressure leaving a patient on a hard surface to develop pressure sores if action is not taken.” Id. Consequently, a problem addressed by Appellant’s invention is providing a cell having a reforming element to cause the cell to return to its original form when an external load is removed from the cell, even in power outages. Spec., pp. 3-4, 9-10, 11, 15. To the extent that the statement “[a] problem addressed by Appellant’s invention is providing a cell having a reforming element with a spring bias to cause the cell to return to its original form when an external load is removed from the cell” (Decision, p. 5), may have articulated that problem too narrowly, we hereby modify that sentence of our Decision by omitting the phrase “with a spring bias.” As noted in our Decision (p. 5), Brown addresses the same problem by providing a helical structure manufactured to have a memory urging it toward either an expanded position or a contracted position to reform the bellows. For the above reasons, Appellant’s Request does not convince us that we reached an incorrect conclusion that Brown is analogous prior art. DECISION Appellant’s Request has been granted to the extent that we have reconsidered our Decision in light of the arguments in Appellant’s Request, but is denied with respect to our making any modification to the Decision, aside from the modification of the sentence stating the problem addressed by Appellant, as indicated supra. Appeal 2011-001079 Application 11/041,758 5 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED hh Copy with citationCopy as parenthetical citation