Ex Parte Ross et al

Patent Trial and Appeal Board

Dec 15, 2015

12079831 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/079,831 03/28/2008
29889 7590 12/17/2015
OLIVE & OLIVE, PA
500 MEMORIAL STREET
POBOX2049
DURHAM, NC 27702
FIRST NAMED INVENTOR
Emily Elizabeth Ross
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.
BUB05001 3233
EXAMINER
BALDOR!, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/17/2015 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
rcrandall@oliveandolive.com
erall@oliveandolive.com
emailboxpatent@oliveandolive.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILY ELIZABETH ROSS and JANE HOPE ROSS
Appeal2013-006602
Application 12/079,831
Technology Center 3700
Before NEALE. ABRAMS, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Emily Elizabeth Ross and Jane Hope Ross (Appellants) seek review,
under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-20
and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate the affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
Appeal2013-006602
Application 12/079,831
The disclosed subject matter "relates to an educational toy, and more
particularly to a toy that facilitates developmental skills associated with
buckling and unbuckling." Spec. 1, 11. 9--10. 1 Claims 1, 20, and 22 are
independent. Claim 1 is reproduced below with emphasis added:
1. An educational stuffed toy for facilitating
development skills associated with buckling and
unbuckling, said educational toy comprising: (a) a
resilient body with a multidimensional exterior
surface; and (b) a plurality of belts, each
compnsmg:
i) a pair of ribbons, each of said pair of
ribbons comprising:
( 1) a first ribbon having a first ribbon
connecting end at one end that is attached to
said body and a first ribbon buckle end at an
opposite end; and
(2) a second ribbon having a second
ribbon connecting end at one end that is
attached to said body and a second ribbon
buckle end at an opposite end;
ii) a buckle comprising:
( 1) a first cooperating buckle member
having a first cooperating buckle end that is
attached to said first ribbon buckle end, and
a first cooperating matching end at an
opposite end; and
(2) a second cooperating buckle
member having a second cooperating buckle
end that is attached to said second ribbon
1 Although the Specification does not provide line numbers, we
identify passages by line number for ease of reference.
2
Appeal2013-006602
Application 12/079,831
buckle end, and a second cooperating
matching end at an opposite end, said first
cooperating buckle member and said second
cooperating buckle member being releasably
attachable one to the other, said first ribbon
and said second ribbon forming a periphery
about said body when said first cooperating
buckle member and said second cooperating
buckle member are attached one to the
other; and
iii) each of said pair of ribbons having
unique matching indicia such that said first ribbon
and said second ribbon visually associate one to
the other, said unique matching indicia differing
from each of said pair of ribbons to each of said
pair of ribbons such that each of said pair of
ribbons is distinguishable one from the other, said
unique matching indicia thus correlating said first
cooperating buckle member and said second
cooperating buckle member one to the other[.]
REJECTIONS ON APPEAL 2
1. Claims 1-15, 17, 18, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Guttman (US 7,090,500 Bl, issued August 15,
2006) and Sisler (US 6,280,283 B 1, issued August 28, 2001 ).
2. Claims 16 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guttman, Sisler, and Pestonji (US 6,461,217 B 1, issued
October 8, 2002).
2 Relying on 35 U.S.C. § 132(a), the Examiner objected to an
amendment, filed February 1, 2012, as introducing new matter. See Final
Act. 2 (mailed June 29, 2012). In the Answer, the Examiner withdraws this
objection. See Ans. 12.
3
Appeal2013-006602
Application 12/079,831
3. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Guttman and Park (US 4,734,075, issued March 29, 1988).
DISCUSSION
As to the two independent claims in Rejection 1 (claims 1 and 22), the
Examiner finds that Guttman discloses all of the recited limitations except
for "the feature of the toy being stuffed and resilient of claim 1" (Ans. 4) and
"the body having stuffed, resilient, and a non-planar exterior surface," as
recited in claim 22 (id. at 8). The Examiner relies on Sisler as teaching an
educational toy both "having a stuffed and resilient body" (id. at 4 (claim 1))
and "having a stuffed, resilient, and non-planar exterior surface" (id. at 8
(claim 22)). See also Sisler, col. 1, 11. 59---62, col. 2, 11. 47--49, and Fig. 1
(cited for each finding). For both claims, the Examiner states that "[i]t
would have been obvious to one having ordinary skill in the art to have
provided the educational fastening toy of Guttman with the" relied-upon
features of Sisler "for the purpose of using a body that is a well[ -]known and
popular form as taught by Sisler (column 1 lines 20-21 ), making the device
more attractive to the users." Id. at 4, 8. 3
For independent claim 20 in Rejection 3, the Examiner finds that
Guttman teaches all the recited limitations except "the features of the toy
being stuffed and resilient." See Ans. 11. The Examiner finds, however,
that Park teaches "a resilient and stuffed toy body." Id. (citing Park, Figs. 1-
6 and col. 2, 11. 50-55). According to the Examiner, "[i]t would have been
obvious to one having ordinary skill in the art to have provided the
3 Claims 2-19 depend from claim 1. This group includes the
dependent claims in Rejection 1 and both claims in Rejection 2.
4
Appeal2013-006602
Application 12/079,831
educational toy of Guttman with the" relied-upon features of Park "for the
purpose of incorporating an already known and liked body (stuffed animal)
[in ]to the device, making the device more attractive to the user." Id.
First, Appellants contend that the combinations of Guttman and Sisler
(for Rejections 1 and 2) and of Guttman and Park (for Rejection 3) "are not
proper since the proposed modification to Guttman would change the
principle of operation of the reference." Appeal Br. 9 (discussing In re
Ratti, 270 F.2d 810 (CCPA 1959)). According to Appellants, "[t]he body of
the present invention, like the seal in Ratti, requires resiliency whereas
Guttman specifically teaches a rigid 'body' (i.e., the game board)." Appeal
Br. 9. 4 Appellants argue that "[ t ]he suggested combination[ s] would thus,
'require a substantial reconstruction and redesign of the elements shown in
[the primary reference] as well as a change in the basic principle under
which the [primary reference] construction was designed to operate."' Id. at
9--10 (quoting Ratti, 270 F.2d at 813).
The Examiner responds that "[ s ]imply using a stuffed body would not
change the operation of the primary reference; it would operate exactly the
same as with the board of Guttman." Ans. 13.
We are not apprised of error based on Appellants' arguments.
Although Appellants have identified a difference between game board 16 in
Guttman and the "resilient body" recited in the independent claims,
Appellants have not persuasively demonstrated that modifying Guttman by
replacing game board 16 with the identified "resilient bod[ies ]" disclosed in
Sisler and Park, as proposed, would change the basic principle under which
4 Claims 1, 20, and 22 all recite "a resilient body."
5
Appeal2013-006602
Application 12/079,831
Guttman operates-i.e., allowing a user to manipulate the straps as shown,
for example, in Figure 2 of Guttman. See Ratti, 270 F.2d at 813.
Second, Appellants argue that "the terms 'multidimensional' and
'non-planar' as claimed are a significant structural limitation and novel
distinction when compared to Guttman." Appeal Br. 10. 5 According to
Appellants, "the top of [the] game board" in Guttman "is flat and not
multidimensional or non-planar." Id.
We are not apprised of error based on Appellants' second set of
arguments. For claim 22, the Examiner relies on Sisler-not Guttman-to
satisfy the recited "resilient body having a non-planar exterior surface."
Ans. 11. Thus, Appellants do not address the rejection as articulated. As to
claims 1 and 20, the Examiner clearly relies on Sisler (claim 1) and Park
(claim 20) to provide the "resilient body" recited in the limitations at issue
(see Ans. 4 (claim 1) 11 (claim 20)), but seems to rely on Guttman to satisfy
the "multidimensional exterior surface" of the "resilient body" (id. at 2
(claim 1); id. at 10 (claim 20)). Here, we find that the "resilient body" from
Sisler (claim 1) and the "resilient body" Park (claim 20) each provides a
"multidimensional exterior surface," as recited in claims 1 and 20.
Third, Appellants contend that "Guttman does not teach or suggest
belts 'forming a periphery about' a body." Appeal Br. 11. 6 According to
5 Claims 1 and 20 both recite "a resilient body with a
multidimensional exterior surface" and claim 22 recites "a resilient body
with a non-planar exterior surface."
6 Claims 1, 20, and 22 all recite "said first ribbon and said second
ribbon forming a periphery about said body when said first cooperating
buckle member and said second cooperating buckle member are attached
one to the other."
6
Appeal2013-006602
Application 12/079,831
Appellants, "[t]he belts of the claimed invention reach around th[e] body and
are to be secured to it by buckling" whereas "[ t ]he straps of Guttman do not
reach around a body, and Guttman does not teach that the straps should be
formed in a manner that would, once buckled, be sufficiently close to the
body as to form a periphery about any part of it." Id.; see also Reply Br. 3
(stating that "'periphery,' refers to the outer limits or edge of an object").
The Examiner finds that Guttman alone satisfies the limitations at
issue. Ans. 3 (claim 1 ), 8 (claim 22), 11 (Claim 20), 14 ("item 16 of
Guttman is clearly a body, and Figure 2 of Guttman clearly shows the straps
forming a periphery about the front of the body"); see also Guttman, col. 2,
11. 48--49 and Figs. 2, 5 (cited in each finding).
We are not apprised of error based on Appellants' arguments because
the modified devices proposed by the Examiner satisfy the limitations at
issue. Here, we find that the "first ribbon," "second ribbon," "first
cooperating buckle member," and "first cooperating buckle member,"
identified from Guttman (see Ans. 3 (claim 1), 8 (claim 22), 11(Claim20))
would interact with the "body" from Sisler (claims 1 and 22) and the "body"
from Park (claim 20) in the manner recited in the limitations at issue.
Finally, we need not address Appellants' arguments that "Applicant's
invention does not teach the same functions as the cited art" and that "[t]he
differences of Applicant's invention are not mere 'design choices' or 'shape
configuration differences' but are functional differences" (Appeal Br. 10;
see also id. at 11-12) because those arguments relate to alternate reasoning
for modifying Guttman with Sisler (for Rejections 1 and 2) and Guttman
7
Appeal2013-006602
Application 12/079,831
with Park (for Rejection 3). See Ans. 4--5 (claim 1 ), 8-9 (claim 22), 12
(claim 20). 7
For the reasons discussed above, we sustain the Examiner's decision
to reject independent claims 1, 20, and 22. Because Appellants do not
separately argue claims 2-19, which depend from claim 1, we also sustain
the decision to reject claims 2-19. Because our fact findings differ from
those of the Examiner as outlined supra, we designate our affirmance as a
new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants
with a full and fair opportunity to respond to the rejections as modified.
CONCLUSION
For the reasons set forth above, we AFFIRM the decision to reject
claims 1-20 and 22 under 35 U.S.C. § 103(a), designating our affirmance as
a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b).
7 Further, in the Reply Brief, Appellants discuss documents allegedly
showing "the new and unique manipulative challenges presented by the
inventive toy." Reply Br. 4. We do not address the related arguments for
procedural reasons. See 37 C.F.R. § 41.41(b)(2) (2012) ("Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown."). Appellants
do not address positions first provided in the Answer and have not shown
good cause for failing to provide these arguments in the Appeal Brief.
8
Appeal2013-006602
Application 12/079,831
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that "new ground[s] of rejection
pursuant to this paragraph shall not be considered final for judicial review."
That section also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
37 C.F.R. § 41.50(b).
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; 37 C.F.R. § 41.50(b)
rvb
9