HOMTEX, INC.

Patent Trials and Appeals Board

Dec 3, 2020

2020002936 (P.T.A.B. Dec. 3, 2020)

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.
13/857,115 04/04/2013 Gerald E. Wootten Jr. HOMT-49407US1 1429
16375 7590 12/03/2020
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
EXAMINER
ADEBOYEJO, IFEOLU A
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
12/03/2020 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):
admin-docketing@medleybehrens.com
nlewis@medleybehrens.com
tbehrens@medleybehrens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD E. WOOTTEN
Appeal 2020-002936
Application 13/857,115
Technology Center 3600
Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 7–9, 11, 12, and 21. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Homtex, Inc. Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A customizable pillow comprising:
a first insert representing a maximum amount;
a second insert representing a first intermediate amount
that is not equal to a minimum amount or the maximum amount;
a third insert representing a third amount that is lower than
the first intermediate amount and representing the minimum
amount; and
an outer fabric shell layer having an opening for receiving
one or more of the first, second and third inserts,
wherein the combination of inserts provides adjustability
in equal increments from the minimum amount to a combined
amount equal to the sum of the minimum amount, the maximum
amount, and the first intermediate amount,
wherein one or more of the inserts may be used at a given
time by a user, wherein the amount is a characteristic of the
insert, with the first, second, and third insert amounts being the
same characteristic, and the characteristic is weight or thickness,
said inserts and shell alone defining a thickness of the pillow,
wherein the incremental amounts are provided from the
minimum amount to the maximum amount with a combination
of inserts as follows:
the minimum amount is provided by the third insert when
used alone, a first middle amount is provided by the second insert
when used alone, a second middle amount is provided by a
combination of the second and third inserts, a third middle
amount is provided by the first insert when used alone, a fourth
middle amount is provided by a combination of the first and third
inserts, a fifth middle amount is provided by a combination of
the first and second inserts, and the maximum amount is
provided by a combination of the first, second and third inserts,
and a difference in amount between the minimum amount and
the first middle amount substantially equals a difference in
amount between the first middle amount and the second middle
amount, a difference in amount between the first middle amount
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and the second middle amount substantially equals a difference
in amount between the second middle amount and the third
middle amount, a difference in amount between the second
middle amount and the third middle amount substantially equals
a difference in amount between the third middle amount and the
fourth middle amount, a difference in amount between the third
middle amount and the fourth middle amount substantially
equals a difference in amount between the fourth middle amount
and the fifth middle amount, and
a difference in amount between the fourth middle amount
and the fifth middle amount substantially equals the difference in
amount between the fifth middle amount and the highest amount,
wherein the first intermediate amount is double the
minimum amount and the maximum amount is double the first
intermediate amount, and
wherein the first, second, and third inserts have
substantially the same overall shape when viewing a top side
thereof, but with different weights and/or thicknesses.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Buck US 5,953,777 Sept. 21, 1999
Peters US 6,430,764 B1 Aug. 13, 2002
England US 6,918,146 B2 July 19, 2005
Firestone US 2007/0000060 A1 Jan. 4, 2007
Murray US 2008/0235877 A1 Oct. 2, 2008

REJECTIONS
Claims 1, 3, 8, 9, and 12 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable in view of the combined teachings of Buck
and Firestone.
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Claims 7 and 21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable in view of the combined teachings of Buck, Firestone,
and England.
Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable in view of the combined teachings of Buck, Firestone, and
Peters or Murray.
OPINION
Claims 1, 3, 8, 9, and 12
In the Final Rejection, the Examiner finds that Buck discloses a
customizable pillow having each element of claim 1, including a plurality of
different sized inserts. Final Act. 5–6 (citing Buck Fig. 1). The Examiner
notes that Buck does not specifically describe the relative sizes of its inserts,
but the Examiner cites Firestone for its disclosures of inserts that satisfy the
relative sizes of the first, second, and third inserts, as claimed. Final Act. 6–
7 (citing Firestone ¶ 27). Specifically, the Examiner cites Firestone’s
disclosures of inserts with thicknesses of ¼”, ½”, and 1” as disclosing inserts
with the relative “amounts” recited in claim 1, and the Examiner determines
that it would have been obvious to a person of ordinary skill to select insert
sizes of the claimed relative amounts in accordance with the teachings of
Buck and Firestone. Final Act. 7.
Appellant acknowledges that it was known in the prior art to have
adjustable pillows by providing a variety of inserts. Br. 8. Appellant
contends that although the prior art teaches incremental adjustability,
“incremental adjustability is different from equal increment adjustability”
and “Firestone does not teach the claimed element that requires the first
intermediate amount to be double the minimum amount and the maximum
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amount to be double the first intermediate amount.” Br. 12. Appellant
further argues that Firestone does not recite the claimed relative amounts
because Firestone discloses an insert of ¾” in addition to its disclosure of
inserts of ¼”, ½”, and 1”, noting that ¾” is not double ½”. Br. 12.
According to Appellant, the Examiner erred in citing only Firestone’s
disclosures ¼”, ½”, and 1” inserts while disregarding Firestone’s disclosure
of a ¾” insert. Br. 12–13.
We disagree with Appellant. As an initial matter, Appellant’s claims
are not limited to a pillow having only three inserts, and the fact that the
cited example in Firestone discloses a fourth insert does not amount to error
in the Examiner’s rejection. To the contrary, we agree with the Examiner
that it would have been obvious to a person of ordinary skill to implement
Buck’s invention with inserts satisfying the claimed relative dimensions,
such as the ¼”, ½”, and 1” thicknesses suggested by Firestone’s example.
See Ans. 10 (noting that Firestone’s values are exemplary); accord Gardner
v. TEC Syst., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (explaining that
where the only difference between the prior art and a claim is a recitation of
relative dimensions of the claimed device and a device having the claimed
relative dimensions would not perform differently than the prior art device,
the claimed device is not patentably distinct from the prior art).
Accordingly, having considered the Examiner’s rejection of claim 1 in
light of each of Appellant’s arguments and the evidence of record, we
disagree with Appellant and agree with the Examiner that claim 1 would
have been obvious in view of the combined teachings of Buck and Firestone.
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Appellant relies on the same arguments for claims 32, 8, 9, and 12, and we
agree with the Examiner’s rejection for the same reasons.
Claims 7 and 21
Claim 7 depends from claim 1 and additionally recites an outer shell
that includes a closure for closing and opening the outer shell, with the
opening positioned along one or more of the length side of the pillow or the
width side of the pillow. Independent claim 21 is similar to claim 1, but
claim 21 additionally describes the first, second, and third inserts by the
relative weight of each insert.
The Examiner determines claims 7 and 21 would have been obvious
in view of the teachings of Buck and Firestone as discussed for claim 1, in
addition to the teachings of England, which cites a customizable cushion
having an outer shell that includes a closure. Final Act. 9–10. Regarding
the recited relative weights, the Examiner further states that a change in the
size of each insert would proportionally impact the weight of the insert.
Final Act. 9.
Addressing the rejection of claims 7, Appellant “does not dispute that
the [use] of a closure with a pillowcase is known,” and Appellant states that
“the allowability of claim 7 . . . rests with claim 1.” Br. 15. Regarding
claim 21, Appellant relies on arguments equivalent to those addressed above
regarding the combination of Buck and Firestone as cited in the rejection of
claim 1. Br. 14–16 (noting the similarity between claim 1 and claim 21 and
arguing the rejection of claim 21 “as discussed above in connection with

2 Although Appellant notes that dependent claim 3 recites that the inserts of
claim 1 are either ½”, 1”, and 2” or 5, 10, and 20 ounces, Appellant relies on
the language of independent claim 1 for the patentability of claim 3. Br. 14.
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Buck and Firestone”; further noting that “England was only cited as teaching
a closure”).
For the same reasons discussed for claim 1, we disagree with
Appellant and agree with the Examiner that claims 7 and 21 would have
been obvious in view of the combined teachings of Buck, Firestone, and
England.
Claim 11
Claim 11 depends from claim 1 and additionally recites “a scented,
removable sheet positioned between one of the outer shell, the first insert,
the second insert, and the third insert.” In addition to the rejection of
claim 1, the Examiner determines that claim 11 would have been obvious in
further view of the scented removable sheet disclosed by either of Peters or
Murray. Final Act. 10–11.
Appellant argues Murray does not disclose a scented sheet. Br. 16.
Further, Appellant argues Peters discloses that its scent comes from
materials inside a pouch, rather than a sheet, which could render the pillow
lumpy at places. Br. 16.
We disagree with Appellant and sustain the Examiner’s rejection of
claim 11 as obvious in view of Buck, Firestone, and Peters. Among other
things, Peters discloses providing scents in a pillow by injecting essential
oils into a fabric “pouch member” via a syringe. Peters 3:40–52, 3:58–4:10.
Peters further depicts the “pouch member” as a small, flat piece disposed
between portions of a pillows cushions. Peters, Figs 2, 3. We agree with the
Examiner that Peters’s flat fabric “pouch member” satisfies the “scented
removable sheet,” as claimed, and we agree with the Examiner that claim 11
would have been obvious in view of the combined teachings of Buck,
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Firestone, and Peters.. Because we sustain the Examiner’s rejection of claim
11 in view of Buck, Firestone, and Peters, we do not address the Examiner’s
additional rejection of claim 11 in view of Buck, Firestone, and Murray.
CONCLUSION
The Examiner’s rejections are sustained. Specifically, we sustain the
Examiner’s rejections of claims 1, 3, 8, 9, and 12 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable in view of the combined teachings of Buck
and Firestone; claims 7 and 21 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable in view of the combined teachings of Buck, Firestone, and
England; and claim 11 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable in view of the combined teachings of Buck, Firestone, and
Peters or Murray.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 8, 9, 12 103(a) Buck, Firestone,
England
1, 3, 8, 9, 12
7, 21 103(a) Buck, Firestone,
England
7, 21
11 103(a) Buck, Firestone,
Peters or Murray
11
Overall
Outcome
1, 3, 7–9,
11, 12, 21

TIME PERIOD FOR RESPONSE
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).
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AFFIRMED