Ex Parte Samaras et alDownload PDFPatent Trial and Appeal BoardDec 18, 201714222872 (P.T.A.B. Dec. 18, 2017) 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. 14/222,872 03/24/2014 GREGORY SAMARAS HVR.50592CON-NY 2269 5409 7590 12/20/2017 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER BURGESS, MARC R ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 12/20/2017 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): AZ5409@IPLAWUSA.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY SAMARAS, EDWARD J. BOLL, and JASON D. MICHAEL* 1 Appeal 2017-001638 Application 14/222,872 Technology Center 3600 Before JAMES P. CALVE, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Action rejecting claims 1—20. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 ITS Innovations, LLC is identified as the real party in interest. Appeal Br. 1. Appeal 2017-001638 Application 14/222,872 CLAIMED SUBJECT MATTER The claims recite a tom turkey decoy having a head and neck with a comparable size to a mature tom turkey but a body shape of a diminished size compared to a live turkey. See Spec. 3, 11. Claims 1, 9, and 14 are independent, with representative claim 1 reproduced below. 1. A tom turkey decoy comprising: an outer surface enclosing a three-dimensional body shape having a substantial volume, said three-dimensional body shape being dwarfed and having a diminished size when compared to a body of a normal sized live mature tom turkey; a neck extending from the three-dimensional body shape, the neck being of comparable size and having comparable features to the neck of the normal sized live mature tom turkey; and a head extending from the neck, the head being of a comparable size and having comparable features to the head of the normal sized live mature tom turkey, wherein the head and the neck are positioned on the body in an erect position. Appeal Br. 16 (Claims Appendix). REJECTIONS Claims 1, 2, 4—10, 12—18, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nicks (US 4,590,699, iss. May 27, 1986) and McPherson (US 2009/0307958 Al, pub. Dec. 17, 2009).2 Claims 3,11, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nicks, McPherson, and O’Dell (US 2007/0151139 Al, pub. July 5, 2007). Claims 1—20 are rejected on the ground of nonstatutory double patenting over claims 1—15 of Patent No. US 8,707,611 B2 to Samaras. 2 The caption of this rejection lists claims 1—10, 12—18, and 20, but findings are provided only for claims 1,2, 4—10, 12—18, and 20. Final Act. 3—5. 2 Appeal 2017-001638 Application 14/222,872 ANALYSIS Claims 1, 2, 4—10, 12—18, and 20 Rejected Over Nicks and McPherson Appellants argue 1, 2, 4—10, 12—18, and 20 as a group. Appeal Br. 9— 14. We select claim 1 as representative, with claims 2, 4—10, 12—18, and 20 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Nicks teaches a tom turkey decoy with outer surface 42 having a three-dimensional body shape of diminished size when compared to a body of a normal size, live, mature tom turkey (Figs. 1—5), a neck 66 and head 68 of comparable size and features to a normal size, live, mature tom turkey, as recited in claim 1, but outer surface 42 does not fully enclose the three-dimensional body shape. Final Act. 2—4. The Examiner finds that McPherson teaches a decoy with collapsible frame 14 that is fully enclosed by three-dimensional body 12. Id. at 4. The Examiner determines it would have been obvious to modify the decoy of Nicks by enclosing the collapsible frame completely, as taught by McPherson, to give the decoy a more life-like appearance from all angles when deployed. Id. at 4—5; Ans. 5. Appellants argue Nicks does not disclose a three-dimensional body with a volume and combining McPherson’s three-dimensional duck-on-a- stick with Nicks’s full-size, two-dimensional, profile decoy would not be obvious. Appeal Br. 10—11. Appellants also argue that Nicks teaches a two- dimensional surface that lacks a substantial volume as claimed. Reply Br. 5. We agree with the Examiner that outer surface 42 of Nicks encloses a three-dimensional body with a substantial volume as claimed. Final Act. 3. Figure 2 of Nicks shows outer surface 42 extending with a height and width. Figures 1 and 3 show outer surface 42 extending along a depth. Ans. 6. 3 Appeal 2017-001638 Application 14/222,872 The Examiner’s findings that the drawings of Nicks illustrate outer surface 42 extending in three dimensions to enclose portions of a three- dimensional body shape is supported by a preponderance of evidence. See Ans. 5—6; Final Act. 3 (“Nicks discloses ... an outer surface 42 with a three- dimensional body shape having a substantial volume”). Nicks also discloses that outer surface 42 has a generally spherical curvature (i.e., a depth) to “keep[] the body and tail areas of the decoy from having an unnatural, flat appearance.” Nicks, 2:54—62, Figs. 1, 3. Appellants recognize that outer surface 42 of Nicks is not “enclosing a three-dimensional body shape.” Reply Br. 5. The Examiner does as well. See Final Act. 4 (“Nicks does not teach that the outer surface fully encloses the three-dimensional body shape.”) (emphasis added). The Examiner relies on McPherson to teach a decoy with collapsible frame (coil spring) 14 that is fully enclosed by a three-dimensional body 12. Id. The Examiner reasons it would have been obvious to modify outer surface 42 of Nicks to enclose the collapsible frame completely, as McPherson teaches, so the decoy appears more life-like from all angles when it is deployed. Id. at 4—5; Ans. 5. The Examiner’s reason for combining these teachings of McPherson with Nicks is supported by a rational underpinning. Nicks teaches that the decoy simulates an erect front body, neck, and head of a wild turkey to look lifelike whenever the decoy is in use. Nicks, 3:1—6. The Examiner proposes to enhance the lifelike appearance of Nicks by extending outer surface 42 to enclose the three-dimensional body/frame of the decoy completely, as taught by McPherson, which, like Nicks, also is a collapsible decoy. Appellants’ arguments that the Examiner’s rationale is problematic and teaches away from the claimed invention (Appeal Br. 13; Reply Br. 8) is not persuasive. 4 Appeal 2017-001638 Application 14/222,872 The Examiner explains how Nicks has a body shape with a substantial volume but diminished size that is shallower than the body of a live turkey as shown in the drawings. Ans. 6—7. Figure 1 of Nicks shows how the body of the decoy extends only partially rearward in truncated fashion. Nicks also discloses only a front of the turkey body 66. Nicks, 3:1—2, Figs. 1—3. Nicks further discloses that the decoy simulates the front of a turkey body and neck 66 and the head of a wild turkey 68 to look lifelike. Id. at 3:1—6, Figs. 1—5. Thus, we agree with the Examiner that Nicks teaches a turkey decoy with a neck and a head of comparable size and features to a live tom turkey and a body shape with a substantial volume that nonetheless is a diminished size, as claimed. Nicks discloses a diminished size in two ways. First, body 66 is truncated with only an upper front shown. Id. Second, the body of the decoy extends only partially to the rear of the turkey (in a direction opposite to head 68) as shown in the plan view of Figure 1. As the Examiner finds, it “more shallow” than the body of a live turkey. Ans. 6. Appellants disclose their invention as addressing a need for decoys to have body parts that are not proportionate or to scale to body parts of live, mature animals but other body parts like the head and neck that are normal size. Spec. H 3, 4, 11—12. Claim 1 reflects this subject matter as a body shape of “diminished size” and a normal size neck and head. Nicks discloses a turkey decoy with this configuration. Appellants do not dispute that the head and neck of Nicks are normal sizes, as claimed. Appellants disclose that a diminished body 101 “is a fraction of the size of a normal mature turkey.” Id. ]f 12. We agree with the Examiner that Nicks teaches a decoy body that is shallow, i.e., a fraction of a normal size of a live turkey, and therefore of “a diminished size,” as claimed. 5 Appeal 2017-001638 Application 14/222,872 Appellants’ argument that the Examiner’s rationale teaches away from the claimed invention, which “specifically require[s] a decoy that is not life like in appearance, at least as relates to body size” (Appeal Br. 13) is not persuasive because the claims effectively require the decoy to be “life-like.” They recite that the neck and head have comparable size and features of a normal sized turkey, but the body shape is diminished in size. Appellants disclose that the body size is smaller than a “normal” mature tom turkey but still must appear lifelike enough to attract a real tom turkey that “becomes confident of over powering the decoy 100 through aggression.” Spec. 112. The claimed decoy is to appear as a real turkey in an aggressive posture with the colors of a sexually aroused real tom turkey in competition for breeding rights {id. H 13—14) (claims 2, 3) but a smaller body that encourages a live tom turkey to attack the smaller decoy, expecting to overpower it {id. 112). Nicks discloses a decoy with a neck and head of comparable size and appearance to a normal live tom turkey, as claimed, as discussed above. As modified by McPherson’s teachings, Nicks has an outer surface that encloses its undersized body completely so the decoy appears as a live turkey when it is viewed from all angles. Ans. 5. This combination is supported by rational underpinnings because the fully enclosed decoy body improves the lifelike appearance of the Nicks decoy. Both decoys are collapsible, and McPherson can be a turkey. Nicks, 1:5—12; McPherson H 1,15. Appellants’ arguments do not apprise of error in this rationale. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice in Ex parte Frye of requiring appellants to identify error in an examiner’s rejection); Ex parte Frye, 2010 WF 889747, *4 (BPAI 2010) (precedential) (a panel reviews rejections for error based on the issues identified by an appellant). 6 Appeal 2017-001638 Application 14/222,872 Because both references teach collapsible decoys and the Examiner only proposes to extend the outer surface of Nicks’ decoy to cover the entire body of the decoy, we are not persuaded by Appellants’ arguments that the proposed modification would destroy the principle of operation of Nicks. Appeal Br. 13—14; Reply Br. 8—9. Appellants’ argument is based on a belief that Nicks has a two-dimensional body (Appeal Br. 13—14; Reply Br. 8—9). This belief is not supported in the record, either in the Examiner’s findings or Nicks’s disclosure, as discussed above. Appellants have not explained persuasively how the proposed modification would change the operation of Nicks when the Examiner merely proposes to enclose the entire decoy body as McPherson teaches for a similar three-dimensional decoy. Thus, we sustain the rejection of claims 1, 2, 4—10, 12—18, and 20. Claims 3, 11, and 19 Rejected Over Nicks, McPherson, and O ’Dell Appellants argue that claims 3,11, and 19 are patentable for the same reasons as independent claims 1, 9, and 14. Appeal Br. 14. This argument is not persuasive in view of our affirmance of the rejection of claims 1, 9, and 14. Thus, we sustain the rejection of claims 3,11, and 19. Claims 1—20 Rejected For Nonstatutory Double Patenting The Examiner rejected claims 1—20 on the ground of nonstatutory double patenting over claims 1—15 of Patent No. US 8,707,611 B2 to Samaras. Final Act. 2—3. Appellants do not present arguments for this rejection.3 Therefore, we summarily sustain this rejection. 3 Appellants filed a Terminal Disclaimer on March 3, 2015. The Terminal Disclaimer was reviewed and disapproved on March 16, 2015. 7 Appeal 2017-001638 Application 14/222,872 DECISION We affirm the rejections of claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation