Ex Parte Fingerer et alDownload PDFPatent Trial and Appeal BoardMay 16, 201612644389 (P.T.A.B. May. 16, 2016) Copy Citation 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. 12/644,389 12/22/2009 Clarissa Fingerer 99997.029811 6273 21967 7590 05/16/2016 HUNTON & WILLIAMS LLP INTELLECTUAL PROPERTY DEPARTMENT 2200 Pennsylvania Avenue, N.W. WASHINGTON, DC 20037 EXAMINER DENNIS, MICHAEL DAVID ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 05/16/2016 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 CLARISSA FINGERER, MOSES E. FINGERER, and ISAAC C. FINGERER ________________ Appeal 2014-003406 Application 12/644,389 Technology Center 3700 ________________ Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Clarissa Fingerer et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, and 5–7. Claims 3, 4, and 8–22 are withdrawn.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify the real party in interest as Exciting Unlimited LLC. Appeal Br. 1. 2 See Response to Restriction Requirement dated May 2, 2012 and Response dated December 20, 2011. Appeal 2014-003406 Application 12/644,389 2 THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A child activity device comprising: a main portion, wherein the main portion is capable of being worn by a caregiver; a plurality of playthings for engaging a child, wherein at least one of the plurality of playthings comprises an electronic mechanism and at least another one of the plurality of playthings comprises one or more of stuffed animal, children’s plastic chew toy, child-safe mirror and baby rattle and wherein each of the plurality of playthings is attached to a lower portion of the main portion to enable each of the plurality of playthings to hang from the main portion so that the plurality of playthings hang below the lower portion of the main portion and engage the child; and one or more attachment mechanisms to couple the one or more playthings with the lower portion of the main portion, wherein the one or more attachment mechanisms are easily removably attachable. THE REJECTIONS Claims 1, 2, 6, and 7 stand rejected under 35 U.S.C. § 102(e) as anticipated by Dolberg (US 8,189,844 B2; iss. May 29, 2012). Claim 5 stands rejected under 35 U.S.C. § 112, fourth paragraph, for failing to specify a further limitation of the subject matter claimed. ANALYSIS Claims 1, 2, 6, and 7 — Anticipation Regarding independent claim 1, the Examiner finds, inter alia, that Dolberg discloses “a plurality of playthings 23 for engaging a child, wherein Appeal 2014-003406 Application 12/644,389 3 at least one of the plurality of playthings comprises . . . a plastic chew toy.” Final Act. 3. The Examiner finds that Dolberg’s ear buds 23 meet the claim limitation of the children’s plastic chew toy because each ear bud 23 is “a plastic element that is capable of being chewed on by a child.” Ans. 4. Appellants argue, inter alia, that the Examiner’s interpretation of the term “children’s plastic chew toy” is unreasonably broad. Appeal Br. 7–9; Reply Br. 4–6. Appellants further argue that “one skilled in the art would not consider an ear bud of a headphone to be . . . something for the child to chew.” Appeal Br. 9. Appellants assert that the Examiner’s interpretation “essentially eliminates the meaning of ‘children’s plastic chew toy’ by applying this claim term to an ear bud of a headphone.” Id. Claim 1 requires the child activity device to include a plurality of playthings for engaging a child wherein “one of the plurality of playthings comprises one or more of stuffed animal, children’s plastic chew toy, child- safe mirror and baby rattle.” Appeal Br. 13, Claims App. An ordinary definition of the claim term “toy” is “something designed for amusement or diversion rather than practical use” (WEBSTER’S THIRD NEW INTER’L DICTIONARY, 2419 (1993)), and claim 1 further limits the claim term “toy” to something designed for amusement for children by chewing. An ear bud is not something designed to amuse children by being chewed upon. Thus, we agree with Appellants that the Examiner erred in finding that Dolberg discloses a children’s plastic chew toy as required by claim 1. Accordingly, we do not sustain the rejection of independent claim 1 and claims 2, 6, and 7 depending therefrom. Appeal 2014-003406 Application 12/644,389 4 Claim 5 — Section 112 Appellants do not present any arguments regarding the 35 U.S.C. § 112, fourth paragraph, rejection. See Appeal Br. 1. Therefore, we summarily sustain this rejection. DECISION We REVERSE the Examiner’s rejection of claims 1, 2, 6, and 7. We AFFIRM the Examiner’s rejection of claim 5. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation