Ex parte Young

• Decision Date: 01 November 2012
• Docket Number: Appeal 2010-010692
• Parties: Ex parte OLIVER YOUNG, JOHN F. NATHAN, and H. WINSTON MAUE Application 11/553, 623 Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte OLIVER YOUNG, JOHN F. NATHAN, and H. WINSTON MAUE Application 11/553, 623 Technology Center 3600

Appeal 2010-010692

United States Patent and Trademark Office, Patent Trial and Appeal Board

November 1, 2012

FILING DATE 10/27/2006

Before: CHARLES N. GREENHUT, SCOTT E. KAMHOLZ, and BARRY L. GROSSMAN, Administrative Patent Judges.

DECISION ON APPEAL

KAMHOLZ, Administrative Patent Judge.

STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 4-9, and 27. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm and enter a new ground of rejection.

THE CLAIMED SUBJECT MATTER

The claimed subject matter is directed to a dynamic headrest. Claim 1, reproduced below, is illustrative of the claimed subject matter:

1. A dynamic headrest for use with a vehicle seat having an occupant, the headrest comprising

an inflexible, rigid shell configured to support a head of the occupant

an actuator configured to move the shell forwardly, the actuator having a rotary motion resulting in linear displacement of the shell

wherein the actuator includes a rotary member configured to rotate about a central axis in order to provide the rotary motion and a cam follower configured to move forwardly away from the central axis against a front face of the shell in order to impart the linear displacement; and

wherein the rotary member includes a cam configured to rotate about an end of the cam follower such that the rotary motion of the cam causes the cam to engage the cam follower in such as manner as to impart the linear displacement to the shell

REFERENCES

The prior art relied upon by the Examiner in rejecting the claims on appeal is:

Buss DE 199 46 404 A1 Apr. 5, 2001

REJECTIONS

Appellants seek our review of the following rejections:

Claims 1, 4-9, and 27 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 4.

Claims 1, 4, and 5 are rejected under 35 U.S.C. § 102(b) as being anticipated by Buss.

ANALYSIS

1. Written Description

The Examiner found that the claim recitation "inflexible, rigid shell" lacks adequate written description support in the Application as filed. Ans. 4. Appellants argue that "one skilled in the art would readily understand the illustrated headrest shell 18 to be inflexible and rigid due to the use of the illustrated vertically and horizontally extending support structures." Br. 4. Appellants point to Figures 2 and 3 as originally filed to show that headrest 18 has "inflexible, rigid supports that provide structural integrity to the shell 18" that "cause the shell 18 to be similarly inflexible and rigid." Appellants provide a "Declaration under 37 C.F.R. § 1.132" by John F. Nathan in support of this argument.

In response, the Examiner finds that the Specification does not disclose that the support structures are inflexible and rigid, and that even if they were so described, it does not necessarily follow that the shell is also inflexible and rigid. Ans. 5-6. The Examiner observes that "[t]he capacity exists for an inflexible and rigid support to be enclosed by a flexible and non-rigid shell" (Ans. 6) and that "the term 'inflexible' is a relative term" (Ans. 7).

"The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required 'to recount his invention in such detail that his future...