Ex Parte Lee

Patent Trial and Appeal BoardAug 8, 2017

12927654 (P.T.A.B. Aug. 8, 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. 12/927,654 11/19/2010 Youn Jae Lee ZIN-023 7541 47713 7590 08/08/2017 IMPERIUM PATENT WORKS P.O. BOX 607 Pleasanton, CA 94566 EXAMINER ADEBOYEJO, IFEOLU A ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 08/08/2017 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 YOUN JAE LEE ___________ Appeal 2016-006551 Application 12/927,654 Technology Center 3600 ____________ Before ALLEN R. MACDONALD, CARL W. WHITEHEAD JR., and BRADLEY W. BAUMEISTER, Administrative Patent Judges. Opinion for the Board filed by WHITEHEAD JR., Administrative Patent Judge. Opinion Concurring-In-Part Dissenting-In-Part filed by BAUMEISTER, Administrative Patent Judge. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant is appealing the Non-Final Rejection of claims 1–20 under 35 U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Appeal 2016-006551 Application 12/927,654 2 Introduction The invention is directed to a zoned mattress having alternating lateral regions of HD (High Density) foam and Memory foam. Spec., Title. Illustrative Claim (disputed limitations emphasized) 1. A mattress comprising: an upper foam layer with a lower side; and a zoned foam layer with an upper side and a head end, wherein the lower side of the upper foam layer is adjacent to the upper side of the zoned foam layer, wherein the zoned foam layer has a first lateral region, a second lateral region and a third lateral region, wherein the first lateral region is disposed at the head end of the zoned foam layer, wherein the second lateral region is disposed between the first lateral region and the third lateral region, wherein the first and third lateral regions are formed from high-density polyurethane foam, wherein the second lateral region is formed from visco-elastic polyurethane foam, and wherein each of the first, second and third lateral regions has the same indentation load deflection (ILD). Rejections on Appeal Claims 1, 2, 6, 10–12, 15–17, 19, and 20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, 35 U.S.C. § 103 (a) as obvious over McKay (US Patent 7,240,386 B1; issued July 10, 2007). Non-Final Action 2–6. Claims 3, 4, 5, 9, 12, 13, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKay and Torbet (US Patent 7,036,172 B2; issued May 2, 2006). Non-Final Action 6–8. Claims 7, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McKay and Swartzburg (US Patent 7,334,280 B1; issued February 26, 2008). Non-Final Action 8. Appeal 2016-006551 Application 12/927,654 3 ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed February 24, 2016), the Reply Brief (filed June 19, 2016), the Non-Final Action (mailed December 3, 2015) and the Answer (mailed June 6, 2016) for the respective details. ANTICIPATION REJECTION Appellant argues the Examiner’s anticipation rejection of claim 1 and independent claim 10 is erroneous because McKay does not teach a mattress with multiple regions wherein the first and third regions are composed of the same material whereas the second region is composed of a different material wherein all three regions have the same ILD as required in independent claims 1, 10, and 16. Appeal Brief 6–8, 10–11. The Examiner finds McKay teaches a mattress having three regions where the first and third regions are formed from the same material (polyurethane foam) whereas the second region is formed of a different material (viscoelastic foam). Non-Final Action 4–5 (citing McKay, column 4, lines 49–61). The Examiner finds McKay further teaches the IFD rating for region 1 is 20–45, region 2 is 10– 20 and region 3 is 20–45. Non-Final Action 5–6 (citing McKay, column 4, lines 49–61). The Examiner finds, “[t]he customizable mattress of McKay clearly discloses in column 4 lines 50–61 that three adjacent regions of different kinds of foam can have the same ILD of 20 in a particular customized design.” Answer 7. Appellant argues that McKay teaches against having adjacent regions with the same firmness (IFD). Appeal Brief 8 (citing McKay, column 2, lines 46–47; column 3, lines 42–43; column 4, lines 27–29). Appeal 2016-006551 Application 12/927,654 4 We find Appellant’s arguments persuasive. McKay teaches “where one of the mattress layers may be further comprised of a plurality of sections and the sections are comprised of different types of materials, which have varying firmnesses and feel” and “it should be appreciated that the number of zones and the material forming each of these zones may be changed to achieve different firmnesses and feel.” McKay, column 1, lines 37–40; column 2, lines 45–48. Although McKay teaches the IFD firmness rating for the three mattress regions may have a common rating of 20; McKay does not teach the three regions have the same firmness rating at the same time, as require by claims 1, 10, and 16.1 We reverse the Examiner’s anticipation of independent claims 1 and 10, as well as, dependent claims 2, 6, 11, 12, 15, 17, 19, and 20. OBVIOUSNESS REJECTION Appellant argues the obviousness rejection of independent claims 1, 10, and 16 is improper because “McKay’s teaching that section 30a has an IFD of 20-45, section 30b has an IFD of 10-20, and section 30c has an IFD of 20-45 is meant to convey that section 30b is softer than sections 30a and 30c” and, therefore, the Examiner’s “statement that McKay discloses adjacent first, second and third lateral regions all having an IFD of 20 is incorrect.” Appeal Brief 12. Appellant further argues, “McKay repeatedly teaches against adjacent zones that have the same firmness.” Appeal Brief 12. 1 Anticipation requires the presence in a single prior art reference disclosure of each and every element of the claimed invention, arranged as in the claim. Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed. Cir. 1983); SSIH Equip. S.A. v. USITC, 718 F.2d 365 (Fed. Cir. 1983). Appeal 2016-006551 Application 12/927,654 5 We find Appellant’s arguments unpersuasive because it is well established that when claimed ranges overlap or lie inside ranges disclosed by the prior art for every component in a claim, a prima facie case of obviousness is typically established. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). Furthermore, “a reference must be considered for everything that it teaches.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). It is also well established that a reference is not limited to its examples or preferred embodiments; see Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious). McKay discloses “where one of the mattress layers may be further comprised of a plurality of sections and the sections are comprised of different types of materials, which have varying firmnesses and feel” and “it should be appreciated that the number of zones and the material forming each of these zones may be changed to achieve different firmnesses and feel.” McKay, column 1, lines 37–40; column 2, lines 45–48 (emphasis added). Appellant has not shown that McKay teaches away from having the same firmness rating for the 3 regions.2 We find McKay discloses the 2 “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Appeal 2016-006551 Application 12/927,654 6 firmness ratings for the different materials overlaps at 20 and, therefore, it would have been obvious to one of ordinary skill in the art to have a mattress formed from different materials having the same firmness rating.3 We sustain the Examiner’s obviousness rejection of independent claims 1 and 10, as well as, dependent claims 2, 6, 11, 12, 15, 17, 19, and 20. OBVIOUSNESS REJECTION CLAIMS 3, 4, 5, 9, 12, 13, AND 18 Appellant contends: Because neither McKay nor Torbet teaches a lateral region formed from one foam type disposed between two other lateral regions formed from another foam type for which all three regions have the same indentation load deflection (ILD), and because there would have been no apparent reason combine McKay and Torbet such that adjacent foam zones have the same ILD, the § 103(a) rejections of claims 4-5, 9, 12-13 and 18 should be reversed. Appeal Brief 17. We do not find Appellant’s arguments persuasive because we find McKay disclosure of firmness ratings for the different materials overlaps at 20 and, therefore, it would have been obvious to one of ordinary skill in the art to have a mattress formed from different materials having the same Cir. 2006) (citations and internal quotation marks omitted). See also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives). 3 “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appeal 2016-006551 Application 12/927,654 7 firmness rating. We sustain the Examiner’s obviousness rejection of claims 4, 5, 12, 13, and 18 not separately argued. See Appeal Brief 17. OBVIOUSNESS REJECTION CLAIMS 7, 8, AND 14 Appellant contends, “[b]ecause neither McKay nor Swartzburg teaches the three recited regions of a zoned foam layer formed from different kinds of foam but having the same indentation load deflection (ILD), the § 103(a) rejection of claims 7-8 and 14 should be reversed.” Appeal Brief 17. We do not find Appellant’s arguments persuasive because we find McKay disclosure of firmness ratings for the different materials overlaps at 20 and, therefore, it would have been obvious to one of ordinary skill in the art to have a mattress formed from different materials having the same firmness rating. We sustain the Examiner’s obviousness rejection of claims 7, 8, and 14 not separately argued. See Appeal Brief 17. DECISION The Examiner’s anticipation rejection of claims 1, 2, 6, 10–12, 15–17, 19, and 20 is reversed. The Examiner’s obviousness rejections of claims 1–20 are 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). See 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED Appeal 2016-006551 Application 12/927,654 8 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOUN JAE LEE ___________ Appeal 2016-006551 Application 12/927,654 Technology Center 3600 ____________ Before ALLEN R. MACDONALD, CARL W. WHITEHEAD JR., and BRADLEY W. BAUMEISTER, Administrative Patent Judges. Concurring-In-Part Dissenting-In-Part Opinion by BRADLEY W. BAUMEISTER, Administrative Patent Judge. Appeal 2016-006551 Application 12/927,654 9 I join the Majority in reversing the anticipation rejection. Unlike the Majority, though, I also would reverse the obviousness rejections. I agree with the Majority (see Majority Opinion 4) that that a prima facie case of obviousness typically is established when claimed ranges overlap or lie inside ranges disclosed by the prior art. “Generally speaking, there is nothing unobvious in choosing [‘one’] among ‘many’ indiscriminately.” In re Lemin, 332 F.2d. 839, 841 (CCPA 1964). As such, the Examiner shifted the burden to Appellant to show that the claimed invention would not have been obvious. Peterson, 3156, F.3d 1325, 1330. Turning to the present facts, I further agree with the Majority that McKay discloses ranges of firmness for each zone or section such that the upper firmness limit of 20 IFD for one section is equal to the lower firmness limit of 20 IFD for an adjacent region. McKay, col. 4, l. 49–col. 5, l. 10. However, relying on this passage of McKay’s disclosure, alone, reads this teaching out of context. McKay’s primary and overall goal is to provide a mattress layer that is “comprised of a plurality of sections and the sections are comprised of different types of materials, which have varying firmnesses and feel.” McKay, Abstract. This point is made repeatedly throughout McKay’s disclosure: McKay’s Background-of-the-Invention section explains that “[a]lthough [prior-art customized] mattresses are customized to meet user preferences with respect to hardness or firmness for each of the users, these mattresses are not customized to meet user preferences with respect to the different areas of the body for each of the respective users.” McKay, col. 1, ll. 19–24. McKay’s Summary-of-the-Invention section further explains that invention as follows: “the present invention is directed to a breathable Appeal 2016-006551 Application 12/927,654 10 mattress including a plurality of layers, where one of the mattress layers may be further comprised of a plurality of sections and the sections are comprised of different types of materials, which have varying firmnesses and feel.” Id. at col. 1, ll. 35–40. McKay’s Detailed-Description section reinforces this idea that the various sections are to have different firmnesses: “[w]hile [one disclosed] embodiment includes seven zones, it should be appreciated that the number of zones and the material forming each of these zones may be changed to achieve different firmnesses and feel and air circulation qualities.” Id. at col. 2, ll. 44–48 (emphasis added). “The benefits of using different foam types is that the contour layer 24 and the mattress 20 may include a plurality of zones associated with each of these section 30, where each of these zones possess a different firmness and feel.” Id. at col. 3, ll. 56–60. To create a breathable mattress 20 that has a plurality of zones having varying firmnesses, which correspond to different parts of a user’s body, the contour layer 24 includes a plurality of sections 30 that extend from the left side 24c of the contour layer 24 to the right side 24d of the contour layer 24. Id. at col. 3, ll. 42–46. “As mentioned above, the contour layer 24 includes a plurality of zones, for each of the zones posses[s] a different firmness and feel.” Id. at col. 4, ll. 27–29. It is within this context that McKay explains that sections 30a, 30c, 30e, and 30g may be composed of polyurethane foam having a firmness rating of between 20 to 45 IFD; while interleaved sections 30b, 30d, and 30f may be made of a viscoelastic foam having a firmness rating of between 10– 20 IFD. Id. at col. 4, l. 49–col. 5, l. 10. When McKay is considered for everything it teaches (see Majority Opinion 5), it is reasonably clear that McKay goes to the trouble of switching materials for respective mattress Appeal 2016-006551 Application 12/927,654 11 sections specifically for the purpose of changing the sections’ respective firmnesses. Appellants, in contrast, specifically recognizes additional characteristics of ILD foam in relation to HD foam: it is not at all intuitive that a person’s shoulder would sink deeper, for example, into second lateral region 19 than into first lateral region 18 or third lateral region 20 if all three regions have the same ILD. [High density (HD)] foam and memory foam, however, support a sleeping person’s shoulder differently than they support a cold 8-inch diameter metal disk as specified by the ISO 2439 standard. First, a person’s shoulder is more pointed than an 8-inch disk, and a point sinks deeper into memory foam than into HD foam. Second, memory foam is heat sensitive and has a lower ILD at higher temperature. As a person lies on memory foam, the foam becomes softer, more pliant and more elastic. Thus, over time, a sleeping person’s shoulder sinks deeper into memory foam than into HD foam having the same initial ILD. Third, memory foam has a higher elasticity than does HD foam. Consequently, memory foam provides better support because memory foam hugs the body shape closer than does HD foam of the same ILD. Spec. 9–10. Neither the Examiner nor the Majority explains why one of ordinary skill, having read the entirety of McKay in context and for all of its teachings, would have been motivated to maintain the same firmness for respective mattress sections after going to the effort and expense of changing the compositions for the respective sections. Certainly the Examiner has not provided sufficient rationale or motivation. See, e.g., Answer 7 (merely noting that McKay discloses “that three adjacent regions of different kinds of foam can have the same ILD of 20 in a particular customized design”). Just because the same ILD firmnesses can be selected, it does not follow that Appeal 2016-006551 Application 12/927,654 12 one of ordinary skill would have had any reason or motivation to select the same thicknesses. The present record reasonably indicates that Appellant has rebutted sufficiently the Examiner’s prima facie case of obviousness. The present record further indicates that the only reasonably inferable basis for the Examiner selecting the same firmnesses for the different materials is that the Examiner engaged in improper hindsight, using Appellant’s disclosure and claims as a roadmap.