Ex Parte Davis

Patent Trial and Appeal Board

Aug 16, 2017

13144525 (P.T.A.B. Aug. 16, 2017)

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.
13/144,525 07/14/2011 Nicholas John Stratton Davis 348-241 6638
1009 7590 08/18/2017
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
u spto @ iplaw 1. net
laura @ iplaw 1. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS JOHN STRATTON DAVIS
Appeal 2016-001167
Application 13/144,5251
Technology Center 3600
Before LINDA E. HORNER, WILLIAM V. SAINDON, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1 and 3-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION.
1 According to Appellant, the real party in interest is Frontier Plastics
Limited. App. Br. 3 (filed Apr. 23, 2015).
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Application 13/144,525
CLAIMED SUBJECT MATTER
The claims are directed to “an inflatable mattress for use in supporting
a patient on a surface and, particularly but not exclusively, for use when
transferring a patient from one area to another.” Spec. 1:2—4. Claims 1 and
17 are the only independent claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A mattress for supporting a patient in a generally lying
position comprising:
a flexible lowermost layer providing a low friction surface
for sliding the mattress whilst a patient is lying thereon;
one or more inflatable elements located or locatable above
the lowermost layer, the or each element comprising a flexible
water vapour permeable material; and
an upper layer of water vapour permeable material joined
at least at edge portions to the lowermost layer to form a flexible
and openable bag into which the or each inflatable element is
insertable.
App. Br. 18, Claim Appendix (filed June 26, 2015).
EVIDENCE RELIED ON BY THE EXAMINER
Miller US 3,790,753 Feb. 5, 1974
Scales US 5,090,074 Feb. 25, 1992
Wortman US 5,794,289 Aug. 18, 1998
Barry US 5,807,290 Sept. 15, 1998
Davis US 2006/0213010 A1 Sept. 28, 2006
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 4-11, and 16-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Davis, Scales, and Barry.
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2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis, Scales, Barry, and Wortman.
3. Claim 12-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis, Scales, Barry, and Miller.
OPINION
Rejection 1 — The rejection of claims 1, 4 11, and 16—21
under 35 U.S.C. § 103(a)
Independent claims 1 and 17
A. The Examiner’s Position
The Examiner finds that the combination of Davis, Scales, and Barry
teaches an inflatable mattress for supporting a patient as described by the
claims. In particular, the Examiner finds that Davis teaches a low friction
lowermost layer and an air mattress. Final Act. 2. Scales teaches “an upper
layer of water vapor material (col. 3 lines 50-57) joined to a lower portion to
form an openable cover/bag . . . and the mattress support portion having a
vapour-permeable sheet of material that is attached on the inside of the bag
(col. 3 lines 55-60T” Id. Additionally, the Examiner finds that Barry
teaches a water vapor permeable material that can be used with inflatable
elements. Id. at 3. Further, the Examiner finds that a person having
ordinary skill in the art would have been led to combine their teachings
because connecting an upper layer of water vapor material to the low-
friction layer taught by Davis would yield the predictable result of a mattress
cover capable of preventing build-up of water between the user’s skin and
the mattress and one of ordinary skill in the art would also combine the
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water vapor permeable layer of Barry with the combination of the layers in
Davis and Scales to achieve the predictable result of pressure distribution
and breathability in a mattress. Id. at 2.
B. Appellant’s Position
Appellant argues that the Examiner erred in rejecting the claims
because the combination of Davis, Scales, and Barry would not have led one
having ordinary skill in the art to both the inflatable element and the upper
layer of the bag comprising a water vapor permeable material. App. Br. 10-
15 (filed Apr. 23, 2015). Specifically, Appellant asserts that the Examiner’s
interpretation of Scales as teaching a “vapour permeable material within a
bag/cover ... is either a mischaracterization or a misunderstanding of
Scales.” Id. at 11 (Appellant arguing that “the sheet 7 of water vapour
permeable material is not on the inside of the cover” in Scales).
Appellant further argues that the Examiner’s rejection “simply lists a
quality of the material of Barry without establishing why use of such a
material with such a quality would be obvious in the combination of
Davis/Scales.” Appellant further asserts that the Examiner’s proposed
combination does not address why one having ordinary skill in the art would
modify Davis with the teachings of Scales and Barry to result in the
inflatable element insertable within the bag in the specific manner claimed.
Id. at 13-14. Appellant argues that the advantages of water vapor material
in Scales and Barry are limited to conditions in which the patient’s skin
contacts the material, and because the inflatable elements of the claims are
located within the bag and not in contact with the patient’s skin, the
advantages disclosed in Scales and Barry are irrelevant to the claimed
inflatable elements. Id. at 14-15.
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C. The Examiner’s Answer
The Examiner responds that “[cjontrary to the Appellant’s arguments,
none of the claims on appeal require ‘a mattress support portion having a
vapor-permeable sheet of material that is attached on the inside of the bag’
and the Appellant’s arguments are not commensurate with the scope of the
claims.” Ans. 8. Further, the Examiner states that the “[cjlaims more
accurately require ‘an upper layer of water vapour permeable material joined
at edge portions to a lowermost layer to form a flexible and openable bag.’”
Id. The Examiner also states that the claims require “‘inflatable elements
located above the lowermost layer comprising a flexible water vapour
permeable material.’” Id.
The Examiner explains further that “Davis explicitly recites that ‘the
mattress support portion comprises a sheet of vapour-permeable material
that may be attached to the inside of the cover/bag’ (col. 3 lines 55-60).” Id.
(Italics added). The Examiner finally adds that “[cjontrary to the
Appellant’s mischaracterization, the combination of Davis and Scales clearly
teaches . . . ‘the mattress support portion comprises a sheet of vapour-
permeable material that may be attached to the inside of the cover/bag’ and
therefore sealed within the internal chamber of the cover/bag.” Id. at 8-9.
C. Discussion
In reviewing the Final Action and Examiner’s Answer, it appears that
there is some confusion as to how the Examiner reads the claim limitations
onto the subject matter disclosed by the references. The Examiner’s
rejection states that Scales teaches an upper layer of a mattress cover
includes a water vapor permeable material that is attached on the inside of
the cover. Final Act. 2. Neither claim 1 nor claim 17 requires a mattress
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cover having a water vapour permeable material attached to the inside of the
cover. See supra claim 1; see also App. Br. 20 (Claims Appendix). Further,
the Examiner makes the statement that the arguments put forth by Appellant
are not commensurate in scope to the claimed invention with regard to this
limitation; however, the Examiner then goes on to state that the mattress
cover of “Davis explicitly recites that ‘the mattress support portion
comprises a sheet of vapour-permeable material that may be attached to the
inside of the cover/bag.” Ans. 8. It is noted that Scales was relied upon in
the rejection as teaching this limitation and not Davis. Further, even if
Scales were to teach this limitation, it is irrelevant because the claims do not
require this limitation.
Given the Examiner’s contradictory statements made with regards to
the vapour permeable material, it is not clear how the references are being
applied in the rejection. The Examiner states that the vapour permeable
material is attached inside the cover of Scales. This is not a requirement of
the claims. Although Barry is relied upon as teaching an inflatable mattress
with a water vapour permeable material, the Examiner has not made clear
where all of the limitations of the claims may be found within the references.
We agree with Appellant that the rejection relies upon Scales alone as
disclosing the location of the water vapour permeable membrane material as
being within the cover or bag.
Further, the Examiner cites Scales as teaching a mattress support and
also a mattress support portion. See Final Act. 2. (“Scales discloses an
upper layer of water vapor material (col. 3 lines 50-57) joined to a lower
portion to form an openable cover/bag for allowing a mattress support to be
sealed inside of the cover/bag.”). The Examiner goes on to state that “the
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mattress support portion having a vapour-permeable sheet of material that is
attached on the inside of the bag (col. 3 lines 55-60).” (Underlining omitted,
italics added). Id. In reviewing Scales, however, the mattress support
portion is part of the mattress cover and not the mattress inserted into the
cover. See Scales 3:44-50. (“The cover may comprise an upper portion . . .
comprising] a support portion.”). Therefore, the mattress support portion of
Scales is a part of the cover and is not inserted into the cover. The rejection
is thus not clear as to the elements of the references and how they are being
applied to the claim limitations. Accordingly, the rejection of claims 1 and
17 will not be sustained.
For claims 3-16 and 18-21, which depend from either claim 1 or 17,
the Examiner relies on the same deficient findings and conclusions with
regard to Scales and Davis as discussed above with regard to claims 1 and
17. Thus, for the same reasons discussed above, we also do not sustain the
rejections of claims 3-16 and 18-21.
New Grounds of Rejection
Although we reverse the Examiner’s rejection above, for the reasons
that follow, we enter new grounds of rejection of the claims based on the
combined teachings of Davis, Scales, and Barry, alone or in further
combination with Wortman or Miller.
Claims 1, 4-10, and 16-21
We enter a new ground of rejection of claims 1, 4-10, and 16-21
under 35 U.S.C. § 103(a) as unpatentable over Scales, Barry, and Davis.
With regard to claim 1, Scales in Figure 2 discloses a mattress for
supporting a patient in a generally lying position having a mattress cover 4
with an upper layer 5 of water vapour permeable material 7 joined at least at
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edge portions to the lowermost layer 6 to form a flexible and openable bag
into which a mattress is insertable. See Scales 3:55-57 and 4:58-61 (“The
support portion may comprise a sheet or film of vapour-permeable
material.”). See also id. at 5:1-5, 14, 25-26 and 5:55-58 (“[a] modified
construction is illustrated in FIG. 2; components similar to those illustrated
in FIG. 1 have the same reference numerals as the corresponding
components shown in FIG. 1.”). Scales’s mattress is made of foam, not
inflatable elements, and the mattress cover does not include a lowermost
friction layer. Id. 4:58-61, 5:58-62.
Barry teaches the use of a mattress made of one or more inflatable
elements with each element comprising a flexible water vapour permeable
material. See Barry 1:56-58 (“Accordingly in one aspect this invention
provides an inflatable support means formed of a breathable or vapour
permeable material capable of sustaining an inflated state.”). See also id. at
3:15-16 (“Referring to FIG. 2, the support mattress 20 is formed of
thermoplastic polyester urethane film to provide cells 21.”).
Davis teaches that a person having ordinary skill in the art would
appreciate that an air mattress can be substituted for a foam mattress. See
Davis 18. (“Mattress 5 may comprise a simple pad, a spring and padding
internal construction, an air-filled mattress, or a solid foam core, as are
known in the art.”). Davis further teaches that a flexible lowermost layer
can be a layer providing a low friction surface for sliding the mattress whilst
a patient is lying thereon. See id. 19. (“The Teflon® coating covers the
outer side of bottom surface 22 so as to provide a low coefficient of friction
surface that is suitable for dragging sled panel 8 on a typical hospital or long
term care floor.”).
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Accordingly, based upon the evidence in Davis, the use of an
inflatable mattress, such as taught in Barry, in place of the foam mattress of
Scales is nothing more than the simple substitution of one known mattress
for another to achieve predictable results. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) (“when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result”). Further, one having ordinary skill in the art would have
been led to further modify Scales to incorporate a sliding lowermost layer to
enable easy movement of patients as further taught by Davis. Id. at 417 (“if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognized that it would improve similar device in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill”).
Claim 4 depends from claim 1 and recites that a plurality of inflatable
elements are in fluid communication with each other. Barry discloses that
the inflatable cells are in fluid communication. See Barry 2:12-14 (“In some
applications, there may be a valve means for controlling the flow between
said cells whereby the volume or pressure within a cell may be adjusted to a
required level.”).
Claim 5 depends from claim 1 and claims 6 and 7 depend sequentially
therefrom. The claims call for: an inflatable element formed from sheet
plastics material that is permeable to water vapour when inflated, sheet
plastics is an extruded polyurethane film, and the polyurethane film permits
the transmission of sufficient water vapor to prevent the build-up of liquid
from perspiration. Barry discloses the inflatable elements of the mattress
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use a water vapor permeable plastic, polyurethane film, formed by extrusion.
Id. at 1:64-2:7.
Claim 8 depends from claim 1. Claim 8 recites vapour transmission
rates for the material. See App. Br. 19. (“water vapour permeability of the
inflatable elements is in the range of about 50 to 400 grams per metre
squared per 24 hours, or about 100 to 300 grams per metre squared per 24
hours or about 200 grams per metre squared per 24 hours.”). Barry also
discloses specific water vapor transmission rates falling with the ranges
claimed by Appellant, see Barry at 4:24-28.
Claim 9 depends from claim 5 and sets forth the thickness of the
plastic sheet is 50 to 80 pm. Barry teaches the use of the same thickness of
material. Barry, 2:3-5.
Claim 10 depends from claim 1 and further includes flexible handles
attached to the edge portions. Davis teaches the use of handles 46 and 50 to
be used by an attendant to drag the slide panel 8 and mattress 5 off the bed
frame 70 if an emergency arises. Davis]} 21. It would have been obvious to
further modify Scales to add the handles of Davis to facilitate moving
patient in case of an emergency. Davis ]f 8. (“In an emergency . . . [i]f the
non-ambulatory patient needs to be moved in a hurry . . . [the] handle is then
grabbed so as to drag the curled mattress.”).
Claim 16 sets forth that the lowermost layer may be PTFE. Davis
states that the lowermost layer is made of Teflon®. A person having
ordinary skill in the art would know that polytetrafluorethylene or PTFE is
sold under the brand name Teflon®.
Claim 17 is independent but similar in scope to claim 1 and includes
the limitation of one or more inflatable elements running longitudinally
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along the mattress. As set forth with respect to claim 1, Scales, Davis, and
Barry teach the combination of limitations, and Barry shows one or more
inflatable elements that run longitudinally. See Barry Figure 2, cells 21
positioned on the sides of the mattress.
Claim 18 depends from claim 17 and claims 19 and 20 depend
sequentially therefrom. These claims call for: a plurality of inflatable
elements, the elements run from a first longitudinal end of the mattress to a
second longitudinal end of the mattress, and the plurality of inflatable
elements are parallel to each other. As shown in Barry Figure 2, the
inflatable elements include a plurality of parallel elements that run the
longitudinal length of the mattress.
Claim 21 depends from claim 1 and recites that the inflatable element
is sealed within an internal chamber of the openable bag. Scales teaches an
openable bag for the mattress. See Scales 5:25-27 (“The upper and lower
portions 5 and 6 of the cover are releasably joined together by a sliding-clasp
fastener 11 which extends around the cover.”).
Claim 3
We enter a new ground of rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Scales, Barry, Davis, and Wortman. Claim 3
depends upon claim 1 and recites that the upper layer includes an aperture of
a size that allows a patient lying on the mattress to contact the inflatable
element or elements. Wortman teaches an aperture that allows a patient
lying on the mattress to make contact with the inflatable elements. See
Wortman 7:44-54. It would have been obvious to one having ordinary skill
in the art at the time of Appellant’s invention to further modify Scales, as
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modified by Barry and Davis, with the teachings of Wortman to prevent
pressure ulcers. Id. (“Cut-outs 72 may be placed to correspond to the hip,
shoulder, and feet areas to allow more direct patient contact with the
cushions in those areas where pressure ulcers may mainly occur.”).
Claims 12-14
We enter a new ground of rejection of claims 12-14 under 35 U.S.C.
§ 103(a) as unpatentable over Scales, Barry, Davis, and Miller. Claims 12-
14 depend from claim 1, either directly or through each other. Claim 12
calls for a heater for the mattress, claim 13 further recites that the heater
comprises electrical resistance positioned beneath the inflatable mattress,
and claim 14 adds the limitation that the electrical resistance is a plurality of
electrical conductors formed into a flexible mat inserted between the
inflatable elements and the lowermost layer. All of the elements of claims
12-14 are present in Miller. Miller teaches the use of an electric heater 22 in
the form of a mat positioned on a bed frame such that it will be below a
lowermost surface of a mattress. See Miller Figures 1 and 2 and also 3:40-
44 and 66-67.
Claims 11 and 15
With respect to claims 11 and 15, although we decline to reject every
claim under our discretionary authority under 37 C.F.R. § 41.50(b), we
emphasize that our decision does not mean the remaining claims are
patentable. Rather, we merely leave the patentability determination of these
claims to the Examiner. See Manual of Patent Examining Procedure
§ 1213.02.
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DECISION
The Examiner’s decision to reject claims 1 and 3-21 under 35 U.S.C.
§ 103 is reversed.
We reject claims 1, 4-10, and 16-21 under 35 U.S.C. § 103 as
unpatentable over Scales, Barry, and Davis.
We reject claim 3 under 35 U.S.C. § 103 as unpatentable over Scales,
Barry, Davis, and Wortman.
We reject claims 12-14 under 35 U.S.C. § 103 as unpatentable over
Scales, Barry, Davis, and Miller.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
REVERSED; 37 C.F.R, § 41.50(b)
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