MATTEL, INC.

Patent Trials and Appeals Board

Mar 18, 2020

13682215 - (D) (P.T.A.B. Mar. 18, 2020)

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.
13/682,215 11/20/2012 Ryan BUYNAK 16996(1) 1055
92231 7590 03/18/2020
Edell, Shapiro & Finnan LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
03/18/2020 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN BUYNAK and MICHAEL WEINSTEIN
Appeal 2019-004407
Application 13/682,215
Technology Center 3700
Before JEREMY M. PLENZLER, GEORGE R. HOSKINS, and
MICHAEL L. WOODS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–11, 13–20, 22, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Mattel, Inc.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to toy packaging. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A packaging assembly for a toy, comprising:
a backing sheet; and
a blister pack attached to the backing sheet, the blister pack
comprising:
a body portion,
an insert positioned within the body portion, the
insert comprising a first and second cavity,
a light source positioned within the first cavity of
the insert, and
a product positioned within the second cavity of the
insert so the light source illuminates the product when
actuated, wherein the product contains a photochromatic
portion that is responsive to the light produced from the
light source.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yu US 7,392,906 B2 July 1, 2008
Schmidt US 2007/0128972 A1 June 7, 2007
REJECTION
Claims 1, 3–11, 13–20, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt and Yu.
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OPINION
Appellant argues claims 1, 3–11, 13–20, 22, and 23 as a group.2 We
select claim 1 as representative. Claims 3–11, 13–20, 22, and 23 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Schmidt teaches a toy set as required by
claim 1, but fails to teach a packaging assembly. Final Act. 3. The
Examiner finds that Yu teaches a packaging assembly. Id. at 3–4. The
Examiner reasons that “[i]t would have been obvious . . . to have packaged
the product 300 and the light source 110 of Schmidt, in the packaging
assembly of Yu” to “allow[] the product to be tried prior to purchasing to
educate a potential purchaser about the product as taught by Yu.” Id. at 4
(citing Yu 1:27–30).
In the Answer, the Examiner clarifies that
the primary reference used in the rejection is Schmidt and . . .
[t]he Yu reference is only used to show that at the time of the
invention, it was well known to package a light source and a
product to be activated by the light source within a blister
package for allowing a user to try the light source and the product
prior to purchasing.
Ans. 3. The Examiner finds that “Yu . . . is already designed to
accommodate two products (a light source and reflector i.e., a device to be
activated by the light source).” Id. at 5.
The Examiner’s rejection is largely unrebutted. Appellant’s
contention that “replac[ing] the reflector 24 of Yu with one of the photo-

2 Appellant notes that claim 11 includes similar features to claim 1, and also
reproduces the language of claim 11 with general allegations that those
features are not taught by the references (Appeal Br. 18, 22–24), which does
not amount to separate argument (See 37 C.F.R. § 41.37(c)(1)(iv)).
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chromic toys 100, 300, 400 of Schmidt . . . would change the principle of
operation of the invention of Yu” (Appeal Br. 18–19) does not address the
Examiner’s rejection. As noted above, the Examiner does not propose
modifying Yu’s teachings. Rather, the Examiner cites Yu in support of a
finding that “it was well known to package a light source and a product to be
activated by the light source within a blister package for allowing a user to
try the light source and the product prior to purchasing” (Ans. 3), which
Appellant does not rebut.3
Appellant further contends that “Yu clearly discloses that the
‘product’ is the flashlight, not the reflector 24, and one of ordinary skill in
the art would never interpret the reflector 24 of the shell 11 of the package
10, 50, 80 of Yu as the ‘product’ of Yu.” Appeal Br. 21. Appellant
contends that “instead of replacing Yu’s reflector 24 with one of Schmidt’s
non-reflective photo-chromic toys 100, 300, 400 . . . one of ordinary skill in
the art would replace only the ‘product’ of Yu (i.e., the flashlight F) with the
‘products’ of Schmidt.” Id. at 22. Again, as noted above, “[t]he Yu
reference is only used to show that . . . it was well known to package a light
source and a product to be activated by the light source within a blister
package.” Ans. 3. Regardless of whether or not reflector 24 is the “product”
of Yu, there is no dispute that the package of Yu provides for “reflector 24
. . . [being] in a position so as to receive light output from a flashlight light
source.” Yu 3:1–2. The Examiner’s proposed modification simply provides
a blister package for Schmidt’s product and light source that allows
Schmidt’s product to be illuminated while in the package. The Examiner is

3 Appellant did not file a Reply Brief in response to the Examiner’s Answer.
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proposing packaging Schmidt’s product and light source, and is not
modifying the products packaged in Yu.
Appellant also contends that “the combination fails to teach, suggest,
or disclose the feature of ‘an insert positioned within the body portion, the
insert comprising a first and second cavity’ where ‘a product is positioned
within the second cavity.’” Appeal Br. 23–24. As Appellant acknowledges,
however, Yu has a “receiving contour 54 . . . that is L-shaped and extends
partially through a front surface of the insert 52 and the top surface of the
insert 52.” Id. at 24. Appellant contends that because the legs of the “L-
shaped” contour are not separated from one another, they cannot be
considered separate cavities (i.e., the “first and second cavity” recited in the
claims). Id.
Appellant does not identify anything in the claim or the Specification
requiring such a limited reading of the claim. Based on the record before us,
we see no reason why the two distinct regions of the “L-shaped” contour
(each leg) cannot properly be considered the “first and second cavity”
required by the claims. Indeed, this is consistent with Appellant’s Figure 3,
which is reproduced below.
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Appellant’s Figure 3 is a front perspective view of the blister pack insert.
Figure 3 illustrates first cavity 146 and second cavity 152, which are part of
the same shaped contour (i.e., wall portions 142, 148 and surface 144).
Spec. ¶ 41.
For at least the reasons set forth above, Appellant does not apprise us
of error. Accordingly, we sustain the Examiner’s decision to reject claims 1,
3–11, 13–20, 22, and 23.
CONCLUSION
The Examiner’s rejection is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–11,
13–20, 22,
23
103(a) Schmidt, Yu 1, 3–11,
13–20, 22,
23

TIME PERIOD FOR RESPONSE
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