Jessica KellDownload PDFPatent Trials and Appeals BoardJun 21, 20212021000210 (P.T.A.B. Jun. 21, 2021) 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. 15/617,141 06/08/2017 Jessica Joy Kell 4298 153927 7590 06/21/2021 John Swingle Kaleo Legal 4456 Corporation Lane Suite 135 Virginia Beach, VA 23462 EXAMINER HICKS, VICTORIA J ART UNIT PAPER NUMBER 3786 MAIL DATE DELIVERY MODE 06/21/2021 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 JESSICA JOY KELL Appeal 2021-000210 Application 15/617,141 Technology Center 3700 Before ANNETTE R. REIMERS, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, 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 claim 1. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the inventor, Jessica J. Kell, as the real party in interest. Appeal Br. 3. Appeal 2021-000210 Application 15/617,141 2 CLAIMED SUBJECT MATTER The application is titled “Dynamic Infant Head Support.” Spec. 1. We reproduce sole claim 1, below: 1. A dynamic head support system comprising: a) a pillow with a central opening adapted to receive the head of a patient with portions of the pillow surrounding the opening adapted to support the head of the patient; b) a plurality of barriers disposed at spaced intervals about an interior of said pillow to divide the pillow into a plurality of inflatable compartments; c) a plurality of valves; d) a pump for introducing pressurized fluid into said interior of said pillow for distribution into one or more of said plurality of inflatable compartments; and e) a controller configured to operate said plurality of valves in a predetermined sequence to inflate and deflate selected ones of said plurality of inflatable compartments, so as to periodically gently lift and turn slightly the head of the patient to prevent, or alleviate, head deformation. Appeal Br. 7 (Claims App.) (emphasis added). REFERENCE The Examiner relies on US Patent Publication Number 2007/0061976 A1, published on March 22, 2007, to Bazargani (“Bazargani”). Final Act. 4. REJECTION Claim 1 stands rejected under 35 U.S.C. § 102(e) as anticipated by Bazargani. Appeal 2021-000210 Application 15/617,141 3 OPINION a. Examiner’s Rejection In rejecting claim 1 as anticipated by Bazargani, the Examiner cites to Bazargani’s Figure 4 (see Final Act. 4), which we reproduce, below: Figure 4 is a cross-sectional view of a therapeutic support system. Bazargani ¶¶ 19, 21. Specifically, Figure 4 depicts support structure 10 with five independently inflatable chambers 12, 13, 14, 15, and 16. See id. ¶ 23 (referencing Figure 1). Figure 4 also shows head supporting surfaces 17, 18, which face each other and diverge from the rear edge of lower chamber 12. See id. ¶ 27. Between surfaces 17, 18 is gap or region 21, which is “dimensioned such that when the sleeper’s head rests upon the upper surface Appeal 2021-000210 Application 15/617,141 4 of chamber 12, lateral head support is provided.” See id. ¶ 27 (bold emphasis omitted). The Examiner finds that Bazargani discloses a pillow with a central opening (gap or region 21) adapted to receive the head of a patient with portions of the pillow surrounding the opening adapted to support the head of the patient. Final Act. 4 (citing Bazargani ¶ 27, Fig. 4). As to the claimed “plurality of valves,” “pump,” and “controller configured to operate said plurality of valves in a predetermined sequence to inflate and deflate,” the Examiner cites in part to Bazargani’s Figure 1 (Final Act. 4), which we reproduce, below: Appeal 2021-000210 Application 15/617,141 5 Figure 1 is a block schematic diagram illustrating Bazargani’s 5-chambered therapeutic support system. Bazargani ¶ 18. In particular, Figure 1 depicts control unit 20 with microprocessor 22 for operating pump relay 23 and air pressurization pump 24. Id. ¶ 24. Air is delivered into chambers 12–16 by way of five-valve manifold 28. Id. Valve controller 34, under the control of microprocessor 22, establishes fluid communication between one or more chambers 12–16 and pump 24. Id. The Examiner finds that Bazargani discloses pump 24 for introducing pressurized fluid into the interior of the pillow with controller 34 configured to operate (by controlling) said plurality of valves (five-valve manifold 29) in a predetermined (inasmuch as it is predetermined during the design of the device) sequence to inflate . . . and deflate . . . selected ones of said plurality of inflatable compartments . . . so as to periodically gently lift and turn slightly the head of the patient to prevent, or alleviate, head deformation (capable of gently lifting and turning slightly the head of the patient to prevent, or alleviate, head deformation when the patient’s head is positioned on therapeutic cushion. Final Act. 4–5 (citing Bazargani ¶ 24). The Examiner further finds that Bazargani “teaches adjustment of the size and/or firmness of each chamber to dynamically adjust the position of the user’s head.” Id. at 5 (citing Bazargani ¶ 15). b. Analysis In contesting the rejection, Appellant argues that Bazargani does not disclose “a controller configured to operate said plurality of valves in a predetermined sequence to inflate and deflate selected ones of said plurality of inflatable compartments, so as to periodically gently lift and turn slightly the head of the patient to prevent, or alleviate, head Appeal 2021-000210 Application 15/617,141 6 deformation.” See Appeal Br. 4. Appellant explains that “Bazargani teaches adjusting a therapeutic cushion to change a sleeper’s head position when snoring sounds are detected via microphone.” Id. (citing Bazargani ¶ 29). Appellant asserts that the “Office Action presented no evidence or reasoning why one of ordinary skill in the art would interpret the phrase ‘configured to’ as merely denoting an intended use.” Id. at 5. In response to Appellant’s argument, the Examiner explains that Bazargani discloses that its microprocessor executes an algorithm to operate its valve controller, and that “[a]n algorithm is a predetermined program and therefore, execution of the algorithm of Bazargani functions to operate the valves (five-valve manifold 29) via valve controller 34 in a predetermined order of events (or sequence).” Ans. 6. The Examiner further explains that “one should note that the device of Bazargani at a high level functions to combat snoring utilizing a predetermined system to detect snoring and consequently inflate and deflate chambers as necessary to move the user’s head and alleviate snoring.” Id. (citing Bazargani ¶ 15, Abstr.). As to the term “predetermined,” the Examiner explains that “Bazargani can be considered to be ‘predetermined’ inasmuch as the operation of the therapeutic cushion of Bazargani was established in advanced, or predetermined, during the design of the invention.” Id. at 7. As to the claim language, “so as to periodically gently lift and turn slightly the head of the patient to prevent, or alleviate, head deformation,” the Examiner explains that “a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.” Id. The Examiner further explains that “the Appeal 2021-000210 Application 15/617,141 7 device of Bazargani is capable of changing (or, moving) a user’s head position. Said movement of a user’s head is capable of being performed gently to lift and turn slightly the head of the patient, which can prevent, or alleviate, head deformation.” Id. (citing Bazargani ¶ 15, Abstr.). We agree with the Examiner. Even if Bazargani discloses that its control algorithm changes the sleeper’s head position based upon the detection of snoring (see Appeal Br. 4 (citing Bazargani ¶ 29)), Bazargani’s therapeutic support system nevertheless satisfies the claimed limitations. Bazargani’s microprocessor 22 and controller 34—when executing its algorithm—is configured to operate pump relay 23, valve manifold 28, and pump 24 in a predetermined order of events to inflate and deflate its plurality of inflatable compartments 12, 13, 14, 15, and 16. See Bazargani ¶ 24. We find this disclosure as satisfying the claimed “controller configured to operate said plurality of valves in a predetermined sequence to inflate and deflate selected ones of said plurality of inflatable components.” As to the claimed, “so as to periodically gently lift and turn slightly the head of the patient to prevent, or alleviate, head deformation,” we agree with the Examiner that this is merely an intended use of the device. See Ans. 7. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Casey, 370 F.2d 576, 580 (CCPA 1967) (the manner in which a device is to be used is not germane to the issue of patentability of the device itself). As stated in Schreiber: Appeal 2021-000210 Application 15/617,141 8 [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Schreiber, 128 F.3d at 1478; see also Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates”). In the present case, Bazargani’s therapeutic pillow “change[s] a sleeper’s head position . . . by automatic adjustments in the inflation of one or more chambers.” Bazargani ¶ 29; see also id. ¶ 15 (“A chamber adjustment system . . . is operative to independently adjust the size and/or firmness of each chamber so as to dynamically adjust the position of the user’s head”). In adjusting the position of a sleeper’s head, we agree with the Examiner that Bazargani’s system is capable of performing the function of “periodically gently lift[ing] and turn[ing] slightly the head of the patient to prevent, or alleviate, head deformation.” See Ans. 7. For the foregoing reason, Appellant’s arguments do not persuade us of Examiner error in the rejection of claim 1. CONCLUSION We affirm the rejection of claim 1 as anticipated by Bazargani. Appeal 2021-000210 Application 15/617,141 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 102(e) Bazargani 1 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). AFFIRMED Copy with citationCopy as parenthetical citation