Written by: Mark Terry

The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a)-obviousness rejection statute indicates that a patent may not be obtained if it would have been obvious to someone practicing ordinary skill in the “art” at the time of the invention. The wording of the statute clearly leaves room for subjective interpretation, and as a Miami-based Patent Attorney I constantly stay abreast of new holdings that can strengthen my clients’ positions in pursuing a patent application. The holding in this case illustrates the importance of attacking a 103(a) rejection from several different angles to show why the patent examiner did not meet the burden of proof in issuing an obviousness rejection.

In Ex Parte McManamy, the appellants (patent applicants) claimed an invention for a composite mattress constructed with a clear polymeric covering specifically designed for use in confinement facilities to help prevent concealment of contraband. The patent application further describes in detail an advanced polymeric material that is flame retardant, anti-microbial, and resistant to fluids and UV light to be used for the covering.
A patent examiner will typically attempt to connect all aspects of an applicant’s invention under review with a prior invention or inventions in an attempt to reject the patent application. If this goal can be convincingly achieved, the BPAI will uphold the rejection. Here, the patent examiner attempted to combine the claims of two different existing patents to obviate the McManamy invention.

First, the examiner pointed to a reference (Hicks, GB 772,025, April 10, 1957) where a “demonstration mattress” covered with a “transparent flexible, tear resistant material comprising sheet polyvinyl chloride covering…” was described. However, as the BPAI pointed out, the reference did not disclose actual use of the demonstration mattress as a consumer product for sleeping, citing the reference, “…it would not be wise to use the sheet polyvinyl for the surface of a mattress for normal use…” Second, the examiner cited the Karafa (US 6,351,864 B1, published March 5, 2002) reference, which disclosed mattresses to be used in correctional facilities. However, the BPAI again indicated in its analysis that Karafa never disclosed a clear plastic covering on the mattress, nor did it disclose that the mattress would be useful in preventing the concealment of contraband.

To the layperson it would appear that the Hicks and Karafa references might fully encompass McManamy, however the missing link is not simply the fact that Karafa did not disclose a clear vinyl covering for its correctional facility mattresses, but also that the Hicks demonstration mattress with the clear covering as described was not disclosed for use as bedding. The BPAI looks for a preponderance of evidence to support the supposition that someone skilled in the design of an invention would have anticipated the invention under review. Here, the evidence did not support sufficient links between the cited references to sustain a finding that the mattress described in McManamy was adequately disclosed. As icing on the cake, the BPAI also pointed out that in 1957 Hicks never could have disclosed the advanced polymeric covering described in McManamy because the technology to produce such a polymer did not exist at the time.