Ex Parte DeFranks et al

Patent Trial and Appeal BoardOct 31, 2016

12806723 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/806,723 08/19/2010 Michael S. DeFranks 23413 7590 11/02/2016 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SSB0047US2 3526 EXAMINER DA VIS, RICHARD G ART UNIT PAPER NUMBER 3644 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAELS. DEFRANKS and RAHUL KIRTIKAR Appeal2014-007808 Application 12/806,723 Technology Center 3600 Before JOHN C. KERINS, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-007808 Application 12/806,723 CLAIMED SUBJECT MATTER The claims are directed to systems and methods for manufacturing springs with foam characteristics. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cushion construction having a spring coil assembly and configured to mimic the compression characteristics of foam, compnsmg a plurality of rows of a first set of encased springs, wherein each spring of the first set of springs is in a partially compressed state within an encasement, and a plurality of rows of a second set of springs, wherein each row of the second set of springs is positioned between the rows of the first set of encased springs, such that the rows of the first set of springs and the rows of the second set of springs are arranged in alternating rows, wherein each spring of the second set of springs is in [an] uncompressed state and has a free length less than an encased height of one or more springs in the first set of encased springs. Appeal Br. 16 (Claims App.) (emphasis added). 1 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Grothaus Barber De Franks US 6,898,813 B2 US 6,966,091 B2 US 2006/0075567 Al REJECTIONS May 31, 2005 Nov. 22, 2005 Apr. 13, 2006 (I) Claims 1---6, 8, 9, 12, 13, and 15 are rejected under U.S.C. Â§ 102(b) as anticipated by Barber. 1 It appears that claim 8 (Appeal Br. 17 (Claims App.)), which depends from claim 1, recites a limitation that contradicts the requirement in claim 1 for the second set of springs to be in an uncompressed state. 2 Appeal2014-007808 Application 12/806,723 (II) Claim 7 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Barber. (III) Claims 10 and 11 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Barber and Grothaus. (IV) Claim 14 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Barber and DeFranks. OPINION Rejection (I) The Examiner finds that Barber discloses all the features recited in claim 1, and, with respect to the second set of springs in an uncompressed state required by claim 1, refers to column 12, lines 35--47 of Barber. Final Act. 2-3. In this regard, the Examiner states, "[ u ]tilizing the disclosure of Barber and decreasing the pre-compression of one set of coil springs to zero is within the level of ordinary skill in the art[ ] . Id. at 3. Appellants assert that Barber does not disclose a first set of springs in a compressed state and a second set of springs in an uncompressed state. See Appeal Br. 9-11. Specifically, Appellants contend "Barber discloses pre-compressing (i.e., pre-loading) each and every spring, which is not the same (as is required for a proper anticipation rejection) and is markedly different." Id. at 9. In response, the Examiner finds Barber discloses decreasing the pre- load of springs 104 and further finds "this [to be] a disclosure of decreasing the preloading to as near to no preloading as possible." Ans. 4. The Examiner further finds that Appellants' disclosed springs must bear some small amount of weight because they are encased, and, therefore, Appellants' springs are preloaded to a small extent. Id. Therefore, 3 Appeal2014-007808 Application 12/806,723 according to the Examiner, "this inherent small amount of preloading falls within the range of Barber's disclosure of decreasing the preloading of springs 104 as desired to adjust firmness." Id. We are persuaded by Appellants' arguments. Claim 1 requires a set of springs in an uncompressed state. As noted by Appellants, Barber compresses all of its springs. See, e.g., Barber, col. 9, 11. 45--47. Further, we do not agree that the mass of the encasement, which is described in Appellants' Specification as optional and comprisingfabric (Spec. 3, 11. 5-7, 20-23), provides pre-loading as that term would be understood in light of the Specification. In this regard, we note that the pre-loading described in the Specification relates to the comfort of a user of a mattress (see, e.g., Spec. 2, 1. 18-3, 1. 9), and we find that the de minimis amount of weight added by the fabric encasement of the spring does not provide pre-loading in this context. Thus, we do not agree that Barber's disclosure of decreasing the amount of preloading of a set of springs satisfies the requirement in claim 1 for a set of springs in an uncompressed state. In other words, the broadest reasonable interpretation of the term "uncompressed" as it is used in the claims excludes the pre-loading performed by Barber. Accordingly, we reverse the Examiner's rejection of claim 1 and claims 2---6, 8, 9, 12, and 13 depending therefrom as anticipated by Barber. Independent claim 15 recites similar features to those discussed above regarding claim 1 (Appeal Br. 18 (Claims App.)), and for the same reasons discussed above, we reverse the Examiner's rejection of claim 15 as anticipated by Barber. Rejection (II) Claim 7 depends from claim 1 and recites specific ranges of spring rates for the first and second sets of springs. Appeal Br. 17 (Claims App.). 4 Appeal2014-007808 Application 12/806,723 The Examiner rejects claim 7 as unpatentable over Barber, relying on the doctrine of design choice for meeting the requirement in claim 7 for specific ranges of spring rates. Final Act. 5---6. As the Examiner does not address whether it would have been obvious to provide a set of springs in an uncompressed state as required by claim 1, we reverse the Examiner's rejection of claim 7. Rejections (111) and (IV) The Examiner's use of Grothaus and DeFranks does not remedy the deficiency discussed above in Rejection (I). See Final Act. 6-7. Accordingly, we reverse the Examiner's rejection of claims 10 and 11 as unpatentable over Barber and Grothaus and the Examiner's rejection of claim 14 as unpatentable over Barber and DeFranks. DECISION The Examiner's rejection of claims 1-15 is reversed. REVERSED 5