Board of Patent Appeals Reverses 103(a) Obviousness Rejection

MARK TERRY, ESQ.

Ex parte McManamy involved a composite mattress with a clear polymeric covering intended for confinement facilities and designed to reduce concealment of contraband. The examiner combined two prior-art references to reject the claims as obvious.

One reference described a transparent demonstration mattress but cautioned against using its surface for normal bedding. The other concerned mattresses used in correctional facilities but did not disclose a clear covering or the claimed contraband-prevention function.

The Board found that the cited references did not supply the necessary factual link between the claimed features. It also noted that the advanced polymeric material described by the applicant was not available when the older reference was published.

The decision shows that an applicant can attack an obviousness rejection from several directions: identify missing claim elements, challenge the proposed reason to combine, explain incompatible purposes, and show that the cited technology could not have produced the claimed result.