10544721 (P.T.A.B. Jan. 30, 2013)

Ex Parte Yamada et al

Patent Trial and Appeal BoardJan 30, 2013

10544721 (P.T.A.B. Jan. 30, 2013)

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. 10/544,721 08/05/2005 Toshiaki Yamada KKI-0107 2324 23353 7590 01/31/2013 RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON, DC 20036 EXAMINER DENNIS, MICHAEL DAVID ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 01/31/2013 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 TOSHIAKI YAMADA and MASANORI KIBA ________________ Appeal 2010-001211 Application 10/544,721 Technology Center 3700 ________________ Before STEVEN D.A. McCARTHY, JOHN W. MORRISON and NEIL T. POWELL, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1 final decision rejecting claims 1 and 14-27 under 35 U.S.C. § 103(a) as 2 being unpatentable over Mote (US 3,303,604, issued Feb. 14, 1967) and 3 Zheng (US 6,116,981, issued Sep. 12, 2000). Claims 2-13 are cancelled. 4 We have jurisdiction under 35 U.S.C. § 6(b). 5 1 The Appellants identify the real party in interest as Tadatorayohsiten Co., Ltd. of Osaka, Japan. Appeal 2010-001211 Application 10/544,721 2 We REVERSE.2 1 Claims 1, 14 and 15 are independent. Claim 14 recites: 2 14. A set of building blocks comprising: 3 a first piece (P1) which includes a flat plane (S) and a top 4 side paralleled to the flat plane (S), 5 wherein, at a center of the top 6 side, a V-shaped groove (G) whose 7 two surfaces (Ga, Ga) are tilted 8 symmetrically from a reference plane 9 (H) orthogonal to the flat plane (S) or 10 a plane (S) including the flat plane 11 (S), 12 an angle formed by each of the 13 two surfaces (Ga, Ga) and the 14 reference plane (H) being 15 approximately 45 degrees, and 16 whose bottom (Gb) extends 17 parallel with the flat plane (S), is 18 formed; 19 a second piece (P2) having at least a corner 20 edge (A) to be engaged with the groove (G) of the 21 first piece (P1), so that one side (Af) of the corner 22 edge is brought substantially in face contact with 23 the groove (G), 24 wherein a first width (WS) of 25 the flat plane (S) is greater than a 26 second width (WG) of the groove (G) 27 along the direction perpendicular to 28 the reference plane (H), and 29 a center of the first width (WS) 30 of the flat plane (S) is coincided with 31 2 The Examiner on page 13 of the Answer withdrew a previously-entered rejection of claims 1 and 14-27 under the second paragraph of 35 U.S.C. § 112. Appeal 2010-001211 Application 10/544,721 3 a center of the second width (WG) of 1 the groove (G); and 2 wherein the first piece (P1) has a portion 3 capable of supporting a third piece thereon. 4 Claims 1 and 15 each also claim a set of building blocks. The sets of 5 building blocks recited in claims 1 and 15 each include first and second 6 pieces. The first piece has a flat plane (S) and a V-shaped groove (G). 7 Claims 1 and 15, like claim 14, each recite “wherein a first width (WS) of 8 the flat plane (S) is greater than a second width (WG) of the groove (G) 9 along the direction perpendicular to the reference plane (H)”. 10 Mote describes a building toy including structural units or blocks 11 made from empty milk cartons. (Mote, col. 1, ll. 9-11). The structural unit 12 15 depicted in Figures 1-3 of Mote consists of a parallelepiped having a 13 planar bottom surface of square cross-section and elongated sides. The 14 upper end portion of the structural unit is cut at 45° angles relative to the 15 sides of the structural unit so as to form a right-angled, V-shaped groove 16 extending from one upper corner to a diagonally opposite upper corner. 17 (Mote, col. 3, ll. 17-42 and figs. 1-3). 18 The Examiner finds that the structural unit 15 depicted in Figures 1-3 19 of Mote satisfies the limitation “wherein a first width (WS) of the flat plane 20 (S) is greater than a second width (WG) of the groove (G) along the 21 direction perpendicular to the reference plane (H).” This finding appears to 22 be premised on the fabrication of the structural unit from a carton with a 23 rectangular, rather than a square, cross-section. (See Ans. 7-8). The 24 Appellants disagree. (See App. Br. 15-16, 18 and 20). 25 The structural unit 15 depicted in Figures 1-3 of Mote has a square 26 cross-section. For example, Mote describes a preferred milk carton for use 27 Appeal 2010-001211 Application 10/544,721 4 in fabricating the structural unit as having a “conventional rectangular 1 parallelepiped shape.” (Mote, col. 2, ll. 53-57). In view of the depiction of 2 the structural units in the drawing, the “conventional rectangular 3 parallelepiped shape” described by Mote has a square cross-section and 4 elongated (that is, rectangular) sides. Mote goes on to teach that “milk 5 cartons of other shapes (so long as they have square cross-sections) are 6 equally applicable for the indicated purpose.” (Mote, col. 2, ll. 57-62). 7 Mote claims only structural units with square cross-sections. (See Mote, col. 8 9, ll. 22-23 (claim 1)). Mote does not appear to expressly describe structural 9 units having cross-sections other than square. While Mote also teaches that 10 it is not essential “that the cross-sectional areas of the units be equal, and 11 [the cross-sectional areas] can vary in this respect if desired” (Mote, col. 2, 12 ll. 30-32; see also Ans. 8), this teaching does not imply reason to fabricate 13 Mote’s structural units from milk cartons of other than square cross-section. 14 In view of Mote’s express teaching to fabricate the structural units 15 from cartons having square cross-sections, one of ordinary skill in the art 16 would not have had apparent reason to fabricate the structural units from 17 available cartons or blanks having other than square cross-sections as 18 suggested by the Examiner at page 8 of the Answer. Likewise, the Examiner 19 has not explained persuasively on page 8 of the Answer why one of ordinary 20 skill in the art might have understood a carton of rectangular cross-section to 21 have greater stability than a carton of square cross-section having a side 22 width equal to the longest side width of the rectangular carton. Therefore, 23 the Examiner has not shown that Mote describes structural units “wherein a 24 first width (WS) of the flat plane (S) is greater than a second width (WG) of 25 the groove (G) along the direction perpendicular to the reference plane (H).” 26 Appeal 2010-001211 Application 10/544,721 5 Neither has the Examiner shown that one of ordinary skill in the art would 1 have had an apparent reason to modify Mote’s structural limitations to meet 2 this limitation. We do not sustain the rejection of claims 1 and 14-27 under 3 § 103(a) as being unpatentable over Mote and Zheng. 4 5 DECISION 6 We REVERSE the Examiner’s decision rejecting claims 1 and 14-27. 7 8 REVERSED 9 10 11 12 tkl 13 14