Ex Parte Oh

Patent Trials and Appeals BoardJan 30, 2019

13780100 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/780,100 02/28/2013 Suk Kan Oh 47713 7590 01/30/2019 IMPERIUM PATENT WORKS P.O. BOX607 Pleasanton, CA 94566 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. ZIN-028 9342 EXAMINER KURILLA, ERIC J ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 01/30/2019 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 Exparte SUK KAN OH 1 Appeal2017-011050 Application 13/780, 100 Technology Center 3600 Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. Â§ 134 of the rejection of claims 1-8 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF THE DECISION We REVERSE. 1 According to Appellant, the real party in interest is Zinus, Inc. (App. Br. 1 ). Appeal2017-011050 Application 13/780,100 THE INVENTION The Appellant's claimed invention is directed to a zoned foam mattress (Spec., para. 1 ). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A mattress comprising: an upper foam layer with a wavy lower side having a top upside-down hill; and a lower foam layer with a wavy upper side, a center plane, a top and a bottom, wherein the wavy lower side of the upper foam layer is adjacent to the wavy upper side of the lower foam layer, wherein the lower foam layer has a top lateral valley, a middle lateral valley and a bottom lateral valley, wherein the top upside-down hill of the upper foam layer fits into and is adjacent to the top lateral valley of the lower foam layer, wherein the top lateral valley has a minimum located between twelve and eighteen inches from the top of the lower foam layer, wherein the bottom lateral valley has a minimum located within eighteen inches of the bottom of the lower foam layer, and wherein the center plane intersects the lower foam layer at a minimum of the middle lateral valley. THE REJECTIONS The following rejections are before us for review: 1. Claims 1-5 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Persicke (US 3,026,544, issued Mar. 27, 1962). 2. Claims 1-8 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Apperson (US 2006/0260060 Al, published Nov. 23, 2006). 2 Appeal2017-011050 Application 13/780,100 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 2 ANALYSIS The Appellant argues that the rejection of claim 1 under Persicke is improper because the cited prior art does not teach: (i) a mattress whose upper foam layer has a wavy lower side that is adjacent to a wavy upper side of a lower foam layer, or (ii) a lower foam layer of a mattress with its top lateral valley located within 12-18 inches of the top of the foam layer of the mattress (App. Br. 5, Reply Br. 5). The Appellant argues that Persicke in Fig. 1 does not teach a mattress but rather a method of making a structure and the completed upholstery structure shown in Fig. 3 (App. Br. 6). The Appellant also argues that Persicke does not teach the specifically claimed distance of 12-18 inches between the top of the foam layer and its top lateral valley (App. Br. 10-15). In contrast, the Examiner had determined that the rejection of record is proper (Non-Final Act. 5-8, Ans. 2-6). The Examiner has determined that there is "no criticality for using the claimed range of 12-18 inches" and that this range does not provide any unexpected results or benefits (Ans. 4). We agree with the Appellant that the disclosure of Persicke does not show a mattress with its upper foam layer having a wavy lower side that is adjacent to a wavy upper side of a lower foam layer. Persicke's disclosure 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) ( explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2017-011050 Application 13/780,100 in Figure 1 is an intermediate production step but not the completed upholstery product. Regardless, the Examiner has also determined that the claimed dimension of 12-18 inches has "no criticality" and is a range where the dimensions are obvious changes in size (Ans. 5). However, the Specification at paragraph 27-30 sets forth reasons for the particular claimed dimensions of the foam layers, and the limitation is given patentable weight. Further, Persicke is directed to "upholstery structures" and not specifically a mattress, and it is unclear that such a large distance of at least 12 inches would be required for "upholstery". That is, it is unclear that there would be a reason to modify "upholstery" (such as chairs and sofas) to have such a large claimed distance within "12-18 inches" in the cited rejection. Here, the rejection of record made under 35 U.S.C. Â§ 103(a) as unpatentable over Persicke lacks rational underpinnings with articulated reasoning without impermissible hindsight, and the rejection of record is not sustained. The Appellant makes similar arguments for the rejection of claim 1 made under the Apperson reference (App. Br. 18-21 ). We have reviewed the rejection of record made using the Apperson reference, and we agree with the Appellant's arguments in this regard as well. We have fully considered the Examiner's rationale set forth in the Answer at pages 6-8 but do not deem the rejection of record to be proper. Apperson at Figure 3, for instance, does disclose an upper foam layer with a wavy lower side that is adjacent to a wavy upper side of a lower foam layer. The Specification at paragraph 27-30 as noted above does set forth reasons for particular dimensions of the foam layers and the limitation is given patentable weight. However, Apperson at paragraph 3 discloses it is related to a "mattress topper system ... for customized installation over a sleeping 4 Appeal2017-011050 Application 13/780,100 mattress," and it is unclear that such a large particular claimed depth of 12- 18 inches would be used in such a mattress topper. Here, the rejection of record made under 35 U.S.C. Â§ 103(a) as unpatentable over Apperson lacks rational underpinnings with articulated reasoning without impermissible hindsight, and this rejection of record is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-5 under 35 U.S.C. Â§ 103(a) as unpatentable over Persicke. We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-8 under 35 U.S.C. Â§ 103(a) as unpatentable over Apperson. DECISION The Examiner's rejection of claims 1-8 is reversed. REVERSED 5