Ex Parte Haaf

Patent Trial and Appeal Board

Jul 30, 2018

12903447 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/903,447 10/13/2010
85444 7590 07/30/2018
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
David Haaf
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.
545.208 3974
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
07/30/2018 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 ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteDAVID HAAF
Appeal 2017-011196 1
Application 12/903,4472
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuantto35U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 7-12. We have jurisdiction over the
appeal under 3 5 U.S. C. § 6(b ).
We AFFIRM.
1 Throughout this Opinion, unless indicated otherwise, we refer to the
Appellant's Appeal Brief ("Appeal Br.," filed Jan. 6, 2017), Reply Brief
("Reply Br.," filed Aug. 19, 2017), and Specification ("Spec.," filed Oct. 13,
2010), and to the Examiner's Answer ("Ans.,"mailed Aug. 8, 2017) and
Final Office Action ("Final Act.," mailed Nov. 29, 2016).
2 According to the Appellant, the real party in interest is Worldwise, Inc.
Appeal Br. 1.
Appeal 2017-011196
Application 12/903,447
STATEMENT OF THE CASE
The application before us was the subject of a previous decision of the
Board(Ex parte Haaf, Appeal No. 2013-007774 (PTAB Feb. 26, 2016))
(hereinafter "Previous Decision").
Subject Matter on Appeal
The Appellant's "invention is directed to a pet amusement device[,]
and particularly to a device [that] is ideally suited to facilitate cat scratching.
The device is easy to construct and inexpensive to maintain[,] and is thus
ideally suited for use by domestic cat owners." Spec. 1, 11. 4---6.
Claims 7 and 12 are the independent claims on appeal. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A pet amusement device comprising a base, stem emanating
from said base and a plurality of cardboard discs nesting onto
said stem which collectively provide a corrugated surface.
Rejection
Claims 7-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kimmel (US 2011/0036303 Al, published Feb. 17, 2011), Frank
(US 4,611,556, issued Sept. 16, 1986), and Diep (US 7,011,043 B2, issued
Mar. 14, 2006).
ANALYSIS
The Appellant argued claims 7-12 as a group. See Appeal Br. 3--4;
Reply Br. 1-2. We select claim 7 as the representative claim for this group.
Claims 8-12 stand or fall with claim 7. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on Kimmel to teach a pet amusement device,
including a base (flat base 130) and a stem (post 120) emanating from the
base 130. Final Act. 2; Kimmel, Fig. 2. Kimmel's stem holds a replaceable
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Application 12/903,447
hollow cartridge 140, "which may be made with cardboard covered in
friction-abrasive surface 144 (sandpaper)." Kimmel if 29; see id. at Abstract
("A cat claw trimming and exercise device is disclosed herein, the device
permitting a cat to physically exercise both its legs and trim its claws
simultaneously."). The Examiner fmds that Kimmel does not teach "a
plurality of cardboard discs nesting onto said stem which collectively
provide a corrugated surface," as recited in claim 7. See Final Act. 2-3.
The Examiner relies on Frank to teach a pet device having a plurality
of discs nesting onto a stem. See id. at 3. The Examiner fmds "Frank
teaches a cat scratching post ( wherein the cylinder is in sections of plurality
of discs) comprising a plurality of discs (20)." Id. The Examiner
determines:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the cylinder of the
pet amusement device of Kimmel to include a plurality of discs
with the features as taught by Frank, in order to allow adjustment
of the height of the scratching device so as to be more suitable
for smaller cats or kittens.
Id. at 3--4 ( emphasis added).
The Examiner relies on Diep to teach a pet device having a corrugated
cardboard surface. Id. at 4. The Examiner fmds "Diep teaches an apparatus
for dulling animal claws comprising a plurality of cardboard with
corrugations extending to the outer surface of said apparatus." Id. ( citing
Diep, Figs. 1, 5, 9, 17). The Examiner determines:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to include corrugations
extending to the outer surface as taught by Diep in the cardboard
of the pet amusement device of Kimmel as modified by Frank,
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Application 12/903,447
Id.
in order to provide a better dulling or trimming the animal's
claws.
The Appellant acknowledges "Kimmel teaches a sandpaper
scratcher," "Frank teaches a cork-based scratcher," and "Diep discloses a
number of configurations of cat scratching apparatus which includes
corrugated cardboard" (Appeal Br. 4). The Appellant argues "Frank actually
teaches away from using cardboard as a scratching surface." Id. at 3 ( citing
Frank, col. 1, 11. 40-43). The Appellant's argument is not persuasive.
The relevant portion of Frank describes:
Another scratching post assembly is disclosed by Mullin, U.S.
Pat. No. 3,993,027 [(issued Nov. 23, 1976),] wherein the
scratching post consists of a plurality of vertically stacked
corrugated cardboard sheets. A major disadvantage of this
device is that cardboard is easily shredded and mutilated by the
cat's claws thereby necessitating frequent replacement thereof.
Frank, col. 1, 11. 37--43. Frank suggests that Mullin's corrugated cardboard
sheets have a disadvantage, namely, being easily shredded and requiring
frequent replacement. However, because Frank refers to Mullin's cat
scratching post, Frank also teaches that corrugated cardboard is usable and
has been used as a material for a cat scratching post. See In re Gurley, 27
F.3d 551,553 (Fed. Cir. 1994) ("[a] known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use"). Indeed, in one
embodiment, Mullin teaches a self-supporting and multi-dimensional
scratching device, which includes flat base 84, scratching post 86, and
replaceable scratching element 88 made of corrugated cardboard. See
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Application 12/903,447
Mullin, col. 5, 11. 18-24, 49---62, Fig. 1 O; see also id. at col. 2, 11. 45---66, col.
4, 1. 57---col. 5, 1. 17, Figs. 1, 2, 9.
Further, a skilled artisan would consider multiple factors in choosing a
material for a cat scratching post, e.g., a cat claw trimming and exercise
device. "[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will mandate a
fmding of nonobviousness. Likewise, a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (citing Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)). Kimmel suggests that a factor in
choosing a material is a cat's preference of material so as to increase the
likelihood that a cat uses the claw trimming and exercise device. See
Kimmel ,r 29 ("Many pet owners fmd they have to experiment with different
surfaces to fmd one that their cats 160 will scratch reliably. Cats 160 may
prefer sisal or corrugated cardboard surfaces .... "). One example in the
prior art of the selection of corrugated cardboard is Diep' s apparatus for
dulling animal claws. See Final Act. 4. Similarly, the Specification of the
instant application - specifically, the Background of the Invention section
- explains that "cats enjoy cardboard because the corrugations have the
appropriate feel to satisfy their natural scratching tendencies." Spec. 1,
11. 24--26. Other factors include material cost and availability, potential to
harm a pet, durability, etc. See Mullin, col. 1, 11. 10-20; Spec. 1, 11. 26-28.
The Appellant asserts that Kimmel teaches away from carpet and
honeycomb cardboard because they do not effectively trim a cat's claws.
Reply Br. 2 ( citing Kimmel ,r 8). The Appellant's assertion is not
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Application 12/903,447
persuasive. As discussed above, multiple factors may be considered in
choosing a material. Although corrugated cardboard may not be as effective
as sandpaper for trimming/ dulling a cat's claws, such does not suggest that
the use of corrugated cardboard was beyond that which was known in the
art. See Ans. 2-3; Previous Decision 6 ("[ a ]ccording to the Appellant, ...
Diep 'uses cardboard (alone) as a material for dulling animal claws."')
(citing Appeal Br. 4, filed Jan. 7, 2013).
The Appellant argues that "there is no teaching to combine Frank and
Kimmel," and "Kimmel is devoid of any teaching or suggestion for the use
of a corrugated cardboard scratching cylinder, pod[,] or discs." Appeal
Br. 3. The Appellant's argument is not persuasive. The Examiner
articulates adequate reasoning with rational underpinning for modifying
Kimmel's cylinder with Frank's teaching of a plurality of discs-i.e., to
allow adjustment of the height of the scratching device so as to be more
suitable for smaller cats or kittens. Final Act. 3--4; Ans. 3, 4; see In re Kahn,
441 F.3d 977,988 (Fed. Cir. 2006) ("[R]ejections on obviousness
grounds . . . [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.") ( cited with
approval in KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
The Appellant argues that "[ r ]eplacing Kimmel' s cardboard tube with
the cork segments of Frank would not make either economic or structural
sense." Appeal Br. 4. The Appellant's argument is not persuasive as the
Examiner's rejection does not seek to modify Kimmel's device to use cork
as a material. As explained by the Examiner, "Frank was merely relied on
for having the device with a plurality of discs instead of one integral stem as
in Kimmel." Ans. 3.
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Application 12/903,447
Thus, we sustain the Examiner's rejection of claims 7 as unpatentable
overKimmel, Frank,andDiep. Claims 8-12fall with claim 7. See37
C.F.R. § 4I.37(c)(l)(iv).
DECISION
We AFFIRM the Examiner's decision rejecting claims 7-12.
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)(l)(iv).
AFFIRMED
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