Ex Parte Fazio

Patent Trial and Appeal Board

Apr 24, 2018

13677666 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/677,666 11115/2012
23413 7590 04/26/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Gary Fazio
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.
SSB0395US2 1020
EXAMINER
HARE, DAVID R
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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 GARY FAZI0 1
Appeal2017-003132
Application 13/677 ,666
Technology Center 3600
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 4---6, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Dreamwell, Ltd. ("Appellant") is the Applicant as provided in
37 C.F.R. 1.46 and is identified as the real party in interest. Br. 2.
Appeal2017-003132
Application 13/677,666
THE CLAIMED SUBJECT MATTER
Claim 4, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
4, A non-adjustable foundation for supporting a mattress
compnsmg:
a non-adjustable rectangu1ar shaped frame defined by a
pair of1ongitudina1 side assernb1ies) and a pair of transverse end
assemblies, wherein corresponding adjacent ends of each side
assembly and each end assembly are secured together;
a non-adjustable rigid planar support surface defining a
bottommost surface of the foundation and configured to support
a mattress, the non-adjustable rigid planar support surface
spanning a length and width of the rectangular shaped frame is
of a single-piece construction and along with the rectangular
shaped frame is spaced apart from a ground surface;
suppmi legs for elevating the rectangular shaped frarne
and the non-adjustable rigid planar support surface relative to the
ground surface; and
at least one electrical outfot mounted on the non-adiustab1e
rigid planar support surface underneath the foundation and facing
towards the ground surface,
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hooper
Cl en et
US 6,948,199 B2
US 2011/0247138 Al
THE REJECTION
Sept. 27, 2005
Oct. 13, 2011
Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hooper and Clenet. Final Act. 2--4.
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OPINION
The Examiner relies on Hooper for teaching all of the claim
limitations except for an "electrical outlet mounted on the non-adjustable
rigid planar support surface underneath the foundation and facing towards
the ground surface.~' Final Act 2-3. The Examiner turns to Clenet fbr the
teaching of an electrical out1et on a bed support structure having support legs
(id at 3 (citing C1enet Figs. 2, 4)) and concludes that it would have been
obvious to include an electrical outlet on Hooper's bed support so as "to
provide any flat bed with Clenet's predictable established function to allow
outlets othervvise blocked by a bed to power a lamp on a nightstand~~ (id).
As to the electrical outlet being mounted specifically "unden1eath the
foundation and facing towards the ground surface,'' as dairned, the
Examiner concludes that it would been obvious '\o mount an electrical
outlet on an underside surfaceL] as opposed to a side surface[,] since it has
been held that rearranging parts of an invention involves only routine skill in
the art." Id at 4 (citing Jn re Japikse, 181F.2d1019 (CCPA 1954)).
Ahematively, the Examiner reasons that one of ordinary skill in the art
would have been led to mount the electrical outlet on an underside surface,
instead of a side surface, of a bed frame to "reduc[ e J a tripping hazard ...
from adjacent electrical cords plugged into a side facing outlet" or "for
aesthetic reasons.'' Ans. 9.
Appellant argues that the "Examiner fails to provide sufficient reasons
that would have prompted a person of ordinary skill in the art to combine the
elements in the way that the patented invention does." Br. 5. Appellant
does not specifically address or point out any flaw in the Examiner's
reasoning for (i) adding an electrical outlet to a bed frame so as to provide an
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Application 13/677,666
outlet for a lamp on a nightstand that might otherwise be blocked by the bed
and (ii) mounting the electrical outlet on the underside of the bed frame to
reduce tripping hazards or for aesthetic reasons. Appellant's general
assertion does not persuasively explain how the Examiner's articulated
reasoning in support of the conclusion of obviousness lacks rational
underpinnings. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited
with approval in KSRint'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
("[R ]ejections on obviousness grounds ... [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness."). Moreover, Appellant does not identify any knowledge
relied upon by the Examiner that was gleaned only from Appellant's
disclosure and that was not otherwise within the level of ordinary skill at the
time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). As such, we disagree with Appellant's assertion that the Examiner
relied on improper hindsight (Br. 5, 7) in reaching the determination of
obviousness of the claimed subject matter.
Appellant also argues that Clenet is non-analogous art. Br. 5-6. The
established precedent of our reviewing Court sets up a two-fold test for
determining whether art is analogous: "['](1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved."' In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(quoting In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)). The "field of
endeavor" prong asks if the structure and function of the prior art is such that
it would be considered by a person of ordinary skill in the art because of the
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Application 13/677,666
similarity to the structure and function of the claimed invention as disclosed
in the application. Bigio, 381 F.3d at 1325-27.
The Examiner defines Appellant's field of endeavor as "(bed)
foundations whose primary purpose is to facilitate a recumbent user" and
determines that Clenet is analogous art because it is in the same field of
endeavor. Ans. 6 (emphasis omitted). The Examiner takes the position that
although "the foundations of Hooper and Clenet may be of different types,
the aspect of these inventions being either adjustable or non-adjustable does
not change the fact that the devices are intended for use by resting
individuals." Id. Appellant seeks to more narrowly define the field of
endeavor of the claimed invention as relating specifically to non-adjustable
bed foundations. Br. 5. Appellant asserts that "[a]djustable foundations are
markedly different from non-adjustable foundations." Id. (emphasis
omitted). In particular, Appellant asserts that adjustable foundations already
"can include a power source to a motor for articulating adjustable
components" and generally have "open interior region" into which "[a]
separable structural frame ... is mounted." Id. In contrast, non-adjustable
foundations would not already include a power source and would have a
"rigid planar support surface configured to [directly] support a mattress." Id.
at 5---6.
We compare the structure and function of the claimed "non-adjustable
foundation for supporting a mattress" (Br. 9 (Claims App.)) and Clenet's
"bed frame ... for an adjustable bed" (Clenet Abstract). Regarding
structure, both the claimed foundation and Clenet's bed frame include a
rectangular shaped frame defined by a pair of longitudinal side assemblies
and a pair of transverse end assemblies (see element 20 of Clenet Figs. 2, 4)
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Application 13/677,666
and support legs for elevating the rectangular shaped frame relative to the
ground (see element 22 of Clenet Figs. 2, 4). Regarding function, both the
claimed foundation and Clenet's bed frame, directly or indirectly, support a
mattress for facilitating a person to lay down in a reclining position.
Although we agree with Appellant that non-adjustable mattress foundations
generally do not include a motor for articulating adjustable components, nor
a power source for such a motor (as adjustable bed frames do), and generally
directly support a mattress (rather than supporting a separate structural frame
for a mattress as adjustable bed frames do), we are not persuaded that these
distinctions overcome the similarity of structure and function described
above. Accordingly, we are not persuaded that Clenet and the claimed "non-
adjustable foundation for supporting a mattress" are in different fields of
endeavor. To the extent Appellant is comparing the relevance of the
references to each other, this is not the required legal test and is not
persuasive of error. See Br. 4 (arguing that the rejection "involv[ed] the
combination of two disparate references: Hooper in view of Clenet").
Appellant also argues that "[ m ]odifying Cl en et to include Appellant's
featured rigid planar support surface would frustrate the purpose of Clenet."
Br. 6. This argument, however, is not persuasive as Clenet is not the prior
art invention being modified. Instead, the Examiner proposes to modify
Hooper based on the teachings of Clenet.
Appellant additionally argues that Clenet's electrical outlet is located
in a sidewall of the bed frame so as to provide "a more convenient
connection point." Br. 7 (citing Clenet i-f 33) (emphasis omitted). Appellant
asserts that, "[g]iven this disclosure, there is no disclosure nor would there
be any suggestion to one of ordinary skill in the art of ... at least one
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electrical outlet mounted ... underneath the foundation and facing towards
the ground surface." Id. This argument is not persuasive. To the extent
Appellant is suggesting that one of ordinary skill would not be led to move
Clenet's electrical outlet from its sidewall location because a different
location would be a less convenient connection point, we reiterate that the
Examiner's rejection is based on the modification of Hooper, not on the
modification of Clenet. To the extent Appellant is suggesting that Clenet
teaches away from an electrical outlet located underneath the foundation and
facing the ground surface, we note that prior art does not teach away from
claimed subject matter merely by disclosing a different solution unless the
prior art also criticizes, discredits, or otherwise discourages the solution
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
Appellant does not point to, nor do we find, any disclosure in Clenet that
criticizes, discredits, or otherwise discourages locating an electrical outlet
underneath the foundation and facing the ground surface. The fact that
paragraph 33 suggests that the sidewall may be a convenient connection
point does not constitute a teaching away. Clenet simply discloses one
particular solution for locating an electrical outlet. Moreover, Appellant's
argument is unconvincing because it fails to address specifically the
Examiner's articulated reasoning for mounting the electrical outlet
underneath the foundation-namely, to avoid a tripping hazard and to
improve aesthetics. See Ans. 9.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of independent claim 4 is rendered
obvious by Hooper and Clenet. We sustain the rejection of claim 4, and
claims 5 and 6 for which Appellant relies on the same arguments and
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reasoning, under 35 U.S.C. § 103(a) as unpatentable over Hooper and
Cl en et.
DECISION
The Examiner's decision to reject claims 4---6 under 35 U.S.C.
§ 103(a) as unpatentable over Hooper and Clenet is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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