Ex Parte Heimbrock et al

Patent Trial and Appeal Board

Feb 27, 2014

12046666 (P.T.A.B. Feb. 27, 2014)

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.
12/046,666 03/12/2008 Richard H. Heimbrock N1-17257 1553
63565 7590 02/27/2014
HILL-ROM SERVICES, INC.
Legal Dept., Mail Code K04
1069 State Road 46 East
BATESVILLE, IN 47006
EXAMINER
CUOMO, PETER M
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
02/27/2014 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 RICHARD H. HEIMBROCK, DAVID W. HORNBACH,
CRAIG MCNEELY, DAVID C. NEWKIRK,
MICHAEL Z. SLEVA, and KEITH A. HUSTER
____________

Appeal 2012-002594
Application 12/046,666
Technology Center 3600
____________

Before: STEFAN STAICOVICI, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the rejection of
claims 1-8, 10, 13-20, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
Appellants’ invention relates to beds with siderails. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A bed, comprising:
a frame;
a deck connected to the frame;
a siderail having a base supported by either of the frame
and the deck, and an extension having a retraced position
adjacent the base and at least one deployed position spaced
further from the base; and
a lock comprising mutually engageable components on
the base and the extension, the lock components having
a disengaged state for enabling translation of the
extension relative to the base; and
an engaged state in which the mutually engageable
components are engaged with each other inside the base
for resisting translation of the extension relative to the
base.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1-3, 6-7, 18, 20, and 28 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Heimbrock.
Heimbrock
Stryker
Smith
US 6,751,815 B2
US 2006/0090260 A1
US 2006/0130239 A1
Jun. 22, 2004
May 4, 2006
Jun. 22, 2006
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2. Claims 1, 3-6, 8, 10, 13-14, 16-17, and 19 are rejected under 35
U.S.C. § 102(b) as being anticipated by Stryker.
3. Claims 1 and 13-15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Smith.1

OPINION
Anticipation by Heimbrock
Claims 1-3, 18, 20, and 28
Appellant argues claims 1-3, 18, 20, and 28 as a group. App. Br. 12.
We select claim 1as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Heimbrock discloses all of the limitations of
claim 1. Ans. 4-5. In particular, the Examiner finds that the lock
components are engaged with each other inside the base. Id.
Appellants argue that the engaged components do not reside inside
either the upper or lower brackets. App. Br. 12-13. Appellants argue that
the latching bar and selected slot are exposed below the bottom of the upper
bracket. App. Br. 13. Appellants argue that the Specification describes the
lock as occupying the bore such that “inside the base” refers to a condition
of interiority. App. Br. 14. In response, the Examiner states that
Heimbrock’s lock components do reside inside the base. Ans. 8, citing
Heimbrock, Figs. 8 and 10-13.
The parties’ disagreement requires us to construe what it means for
components to be engaged with each other “inside the base.” During

1 In the Answer, the Examiner withdrew the rejection of claims 30-33
under 35 U.S.C. § 112, 1st paragraph and the rejection of claims 30-33 under
35 U.S.C. § 112, 2nd paragraph. Ans. 4.
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examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the Specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Therefore, we look to
the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Appellants do not direct us to any language in the Specification that
provides a definition of “inside” that departs from its ordinary and
customary meaning. Instead, Appellants urge us to consider the differences
in the meanings of “between” and “inside” from ROGET’s Thesaurus. App.
Br. 14. However, we are not concerned with the definition of “between;”
only the broadest reasonable interpretation of “inside” that is consistent with
the Specification.
The Examiner’s finding that Heimbrock’s latch and slot are “inside”
the base is reasonable given the depictions in Figures 10-13 of Heimbrock.
See Heimbrock, Figs. 10-13.2 Under the broadest reasonable construction of
“inside,” a component can reside “inside” a structure without being fully
enclosed or enveloped by the structure. Although Appellants’ preferred
embodiment may exhibit fully enveloped components, a particular
embodiment appearing in the written description may not be read into the

2 Together, bottom rail 112, lower brackets 142, and the unnumbered
plate-like structure in Figures 10-13 extending vertically from rail 112 and
interposed between lower bracket 142 and 144 (See Figs. 11-13) and also
perpendicular to and spanning between lower brackets 142 (See Fig. 10)
form a sufficiently enclosed “base” that latch bar 146 and safety release
paddle 150 may properly be considered to reside “inside” the base. See
Heimbrock, Figs. 10-13.
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claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004), see also
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed.
Cir. 2003)( it is improper to read a limitation from the specification into the
claims).
We find the Examiner’s findings of fact to be supported by a
preponderance of the evidence and we sustain the Examiner’s anticipation
rejection of claims 1-3, 18, 20, and 28 over Heimbrock.
Claims 6 and 7
In traversing the rejection of claim 6, Appellants argue that
Heimbrock’s latching bar 146 is not a cam. In response, the Examiner states
that Heimbrock’s latching bar 146 performs a wedging influence and,
therefore, may be reasonably construed as a cam. Ans. 11. We do not
follow the Examiner’s logic. While a cam may provide a wedging influence
on another component, it does not follow that every mechanical component
that is capable of providing a wedging influence on another component is a
cam. A person of ordinary skill in the art would generally understand a cam
to be an eccentrically shaped rotating component that transfers rotational
motion of the cam to linear motion in a follower. The Examiner has not
identified anything in the intrinsic record in this case that would lead a
person of ordinary skill in the art to view Heimbrock’s latching bar 146 as a
cam. See Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341,
1351 (Fed.Cir.2004) (the proper definition of a claim term is the "definition
that one of ordinary skill in the art could ascertain from the intrinsic
evidence in the record").
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We do not sustain the anticipation rejection of claim 6 over
Heimbrock, neither do we sustain the rejection of claim 7 that depends
therefrom.
Anticipation by Stryker
Claims 1, 4, 16, and 19
Appellant argues claims 1, 4, 16, and 19 as a group. App. Br. 16. We
select claim 1as representative. The Examiner finds that Stryker discloses
all of the limitations of claim 1, particularly, that the lock components
exhibit engaged and disengaged states. Ans. 6.
In traversing the rejection, Appellants argue that Stryker’s rack and
pinion system does not have engaged and disengaged states that resist and
enable movement. App. Br. 17. Appellants argue that Stryker’s rack and
pinion components are always engaged to enable motion. Id. Appellants
argue that the Examiner’s position does not conform to any reasonable
interpretation of “engaged” and “disengaged.” App. Br. 18
In response, the Examiner states that claim 1 only requires a
disengaged state for enabling movement and an engaged state for resisting
movement. Ans. 12. In essence, the Examiner finds that, since Stryker’s
extension can be raised and lowered and can retain its position after being
either raised or lowered, it inherently exhibits an engaged state for resisting
movement and a disengaged state for enabling movement. Ans. 12-15.3

3 “Because Stryker et al.'s movable cam resists movement of the
extension as well as enables movement of the extension, Stryker et al.'s cam
inherently include a "locking position" (which resists movement of the
extension) and an "unlocking position" (which enables movement of the
extension).” Ans. 15.
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Appellants offer neither evidence nor technical reasoning to rebut the
Examiner’s position that Stryker inherently exhibits engaged and disengaged
states, a position that we consider reasonable in view of Stryker Figures 1-5
and accompanying description in the Specification. See Stryker, paras.
[0105] - [0110]; see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)
(“where 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”).
We sustain the anticipation rejection of claims 1, 4, 16, and 19 over
Stryker.
Claim 3
Claim 3 depends from claim 1 and adds the limitation: “wherein the
lock is a rotary lock.” Clms. App’x. Appellants argue that Stryker does not
describe any component or assembly that rotates “to achieve a condition of
engagement or disengagement.” App. Br. 18. In response, the Examiner
states that the claim does not literally require that a component or assembly
rotate “to achieve a condition of engagement or disengagement.” Ans. 13.
The Examiner states that Stryker’s pinion gears 85 and 90 rotate. Id. Thus,
according to the Examiner, Stryker discloses a rotary lock. Ans. 14.
The Examiner has the better position here. Claim 1 merely requires
that the lock components have a disengaged state and an engaged state.
Clms. App’x. Claim 3 merely requires a “rotary lock.” Id. There is no
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requirement that rotation of any particular component or assembly
“achieves” the engaged or disengaged states.
We sustain the rejection of claim 3.
Claims 5 and 17.
Appellant argues claims 5 and 17 together. App. Br. 19. We select
claim 5 as representative. Claim 5 depends from claim 4 and adds the
limitation: “wherein the lock components are on the base and on exactly one
extension leg.” Clms. App’x.
Appellants argue that Stryker’s lock(s) reside on two support
stanchions, not just one. App. Br. 19. In response, the Examiner points out
that claim 1, from which claims 3, 4, and 5 depend, is an open ended claim
with a “comprising” transition. Ans. 14. The Examiner’s position is correct.
See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997)
(comprising transition means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim).
We sustain the rejection of claims 5 and 17.
Claims 6 and 8.
Appellants argue that the rejection of claim 6 is improper because
Stryker does not exhibit a “cam.” We agree. The Examiner’s analysis and
conclusion that a rack and pinion device is necessarily a cam because it
exhibits a “wedging action” is not correct. See Ans. 14; see also discussion
of claim 6 rejection over Heimbrock, supra.

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We do not sustain the rejection of claim 6, neither do we sustain the
rejection of claim 8 that depends therefrom.
Claim 10
Claim 10 depends directly from claim 1 and adds the limitation:
“wherein the lock components include an oblong member having a
periphery with teeth occupying at least a portion of the periphery.” Clms.
App’x. Appellants do not argue for the separate patentability of claim 10
apart from arguments advanced with respect to claim 6. App. Br. 16, 19-20.
The issues and analysis here are essentially identical to that of our discussion
of Stryker’s rack and pinion system with respect to claim 1 above and, for
the same reasons, we sustain the rejection of claim 10.
Claim 13
Claim 13 depends directly from claim 1 and adds the limitation:
“wherein the engaged state is a default state and the disengaged state is
achieved through operator intervention.” Clms. App’x. Appellants argue
that there is no disclosure in Stryker of a lock being in a default state. App.
Br. 20. Appellants argue that there is no disclosure of one state being
distinguishable from another by virtue of requiring operator intervention to
achieve it. Id.
In response, the Examiner states that Styker’s “engaged state” is the
default state because without any operator intervention, the siderail and lock
maintains its position. Ans. 15. Similarly, the Examiner states that a
“disengaged state” is achieved through operator intervention, because an
operator necessarily effects movement of the siderail and lock. Id.
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Appellants offer neither evidence nor technical reasoning to rebut the
Examiner’s position that operator action necessarily effects movement of the
siderail and the lock. We think the Examiner’s reasoning is sufficient to
shift the burden of proof to Appellants. Swinehart, supra at 213.
Appellants failed to satisfy their burden.
We sustain the rejection of claim 13.
Claim 14
Claim 14 depends from claim 13 and adds the limitation: “wherein a
force biases the lock to the engaged state, and requires an operator action to
overcome the force to achieve the disengaged state.” Clms. App’x.
Appellants traverse the rejection arguing that there is no disclosure in
Stryker of a force for biasing the lock which must be overcome by an
operator. App. Br. 20-21.
In response, the Examiner states that Styker inherently discloses a
default state and operator intervention state. Ans. 16. According to the
Examiner, the siderail must maintain its position when either raised or
lowered. Id. Furthermore, operator intervention is necessarily required to
effect movement of the siderail. Id. Thus, Stryker necessarily discloses a
default state and an operator intervention state. Id.
Appellants offer neither evidence nor technical reasoning to rebut the
Examiner’s position that Stryker inherently discloses a default state and an
operator intervention state and that force is required to overcome inertia in
the default state. We think the Examiner’s reasoning is sufficient to shift the
burden of proof to Appellants. Swinehart, supra at 213. Appellants failed
to satisfy their burden.
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We sustain the rejection of claim 14.
Anticipation of Claims 1 and 13-15 by Smith
Appellant argues claims 1 and 13-15 as a group. App. Br. 21. We
select claim 1 as representative. The Examiner finds that Smith discloses all
of the limitations of claim 1. Ans. 7-8. In particular, the Examiner finds that
Smith element 20 is a siderail, elements 66, 90, and 110 constitute a base,
and that elements 24 and/or 26 constitute an extension that retracts and
deploys relative to the base. Ans. 7.
Appellants argue that Smith element 20 is not a siderail. App. Br. 21.
Appellants argue that a “siderail,” as such term is used in the art, is a device
that has at least an “up” and a “down” position. Id. The Examiner responds
that element 20 is a rail that extends along the side of a bed and, therefore,
may reasonably be construed as a siderail. Ans. 16.
Appellants cite no evidence to support their contention that a siderail
is not a siderail unless it can assume at least two vertical positions.
Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir.
2005) (unsubstantiated attorney argument is no substitute for competent
evidence). The Examiner’s finding that a rail extending along the side of a
bed may properly be considered a siderail, even if it is fixed in a single
vertical position, is supported by a preponderance of the evidence.
Appellants next argue that Smith elements 66 and 90 are merely
components of a mounting bracket and cannot properly be considered as a
base. App. Br. 23. Appellants contend that Smith’s mounting bracket does
not have an up and a down position and, therefore, cannot properly be
characterized as the base of a siderail. Id. We have previously indicated our
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agreement with the Examiner that a siderail can be fixed vertically.
Appellant’s argument is not persuasive for the reasons discussed above with
respect to whether Smith exhibits a siderail.
We sustain the anticipation rejection of claims 1 and 13-15 over
Smith.
DECISION
The decision of the Examiner to reject claims 1-3, 18, 20, and 28 as
anticipated by Heimbrock is AFFIRMED.
The decision of the Examiner to reject claims 6 and 7 as anticipated
by Heimbrock is REVERSED.
The decision of the Examiner to reject claims 1, 3-5, 10, 13, 14, 16,
17, and 19 as anticipated by Stryker is AFFIRMED.
The decision of the Examiner to reject claims 6 and 8 as anticipated
by Stryker is REVERSED.
The decision of the Examiner to reject claims 1 and 13-15 as
anticipated by Smith 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)(1)(iv).

AFFIRMED-IN-PART

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