Patricia Chan et al.Download PDFPatent Trials and Appeals BoardMar 26, 202014262239 - (D) (P.T.A.B. Mar. 26, 2020) 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. 14/262,239 04/25/2014 Patricia CHAN 17376(1) 1206 92231 7590 03/26/2020 Edell, Shapiro & Finnan LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 EXAMINER BALDORI, JOSEPH B ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 03/26/2020 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 PATRICIA CHAN, GUO LIN ZHOU, and STEVEN D. RYNIKER Appeal 2018-004327 Application 14/262,239 Technology Center 3700 ____________ Before EDWARD A. BROWN, ANNETTE R. REIMERS, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, 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 (entered Apr. 12, 2017, “Final Act.”) to reject claims 1– 11, 13, 14, 16–19, and 21–23 (all the claims on appeal). Claims 12, 15, and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mattel, Incorporated. Appeal Br. 3. Appeal 2018-004327 Application 14/262,239 2 CLAIMED SUBJECT MATTER The disclosed subject matter relates “to a toy doll, insofar as ‘toy doll’ includes any toy figurine, that has one or more movable portions that are movable in response to actuation of a trigger included on the toy doll.” Spec. ¶ 2. Claims 1, 13, and 18 are independent. We reproduce claim 1 below as an example of the claimed subject matter on appeal with emphasis added to the recited language that is central to Appellant’s argument. 1. A toy doll, comprising: a first portion including a trigger; a garment with a first end and a second end, the first end being hingedly coupled to the first portion so that the garment is movable relative to the first portion between a first configuration and a second configuration and the second end including at least one engagement portion configured to releasably couple the garment to the first portion; and an engagement assembly movably coupled to the first portion and including a retractable rod that is movable between an engaged position and a disengaged position, wherein the at least one engagement portion included at the second end of the garment is coupleable to the engagement assembly to retain the garment in the first configuration when retractable rod is in the engaged position, and moving the retractable rod to the disengaged position causes the at least one engagement portion included at the second end of the garment to disengage from the engagement assembly and allows the garment to move to the second configuration, the retractable rod moving to the disengaged position upon actuation of the trigger. Appeal 2018-004327 Application 14/262,239 3 EVIDENCE Name Reference Date Jung US 2010/0093254 A1 Apr. 15, 2010 Lawley US 6,857,930 B1 Feb. 22, 2005 Mcmahan US 2006/0281387 A1 Dec. 14, 2006 Bauer US 4,107,873 Aug. 22, 1978 REJECTIONS Claims 1–6, 10, 11, 13, 14, 16–19, and 21–23 are rejected under 35 U.S.C. § 103(a) as obvious over Jung and Lawley. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as obvious over Jung, Lawley, and Mcmahan. Claim 9 is rejected under 35 U.S.C. § 103(a) as obvious over Jung, Lawley, and Bauer. ANALYSIS Appellant questions whether “the Examiner has made a clear error in rejecting independent claims 1, 13 and 18 under 35 U.S.C. § 103 because the primary combination (Jung and Lawley) fails to teach each and every element of independent claims 1, 13, and 18, as required under 35 U.S.C. § 103.” Appeal Br. 18. Specifically, Appellant argues that the combined teachings of Jung and Lawley are missing “an engagement portion included at a second end of the garment [that] releasably couples the garment to the first portion and that movement of the retractable rod to the disengaged position causes the second end to disengage from the engagement assembly.” Id. at 18–19. “In fact, Appellant[] submit[s] that even if the structural equivalencies put forth by the final Office Action are utilized, the features of Jung (even when modified or replaced by features of Lawley), Appeal 2018-004327 Application 14/262,239 4 fail to teach at least these features of independent claim 1.” Id. at 19. Appellant argues that the same is true for claims 13 and 18 because they likewise recite features substantially similar. See id. at 18, 22, 23. For the following reasons, we find Appellant’s argument both persuasive and dispositive of this appeal. Each independent claim recites a “garment” or “softgoods portion” having “a first end” and “a second end” for which the first end is “hingedly coupled” to the “first portion” or “body” of a toy doll and the second end has an “engagement portion” configured to “releasably couple” or “removeably engage” it to the first portion/body via a “retractable rod” when the rod is “in the engaged position.” See Appeal Br. 27, 29, 30 (Claims App.). The Examiner identifies items 30 and 32 from Jung as disclosing the recited garment and softgoods portion. Final Act. 2, 6, 8–9 (citing Jung, Figs. 1–6). For the hingedly coupled first end of the garment/softgoods portion, the Examiner identifies the “portion of garment at hinge, shown close up in [Figure] 34” of Jung. Id. at 3, 6, 8–9. For the engagement portion at the second end of the garment/softgoods portion, the Examiner identifies the “loop of fabric of garment distal to hinge, [Figure] 34 e.g. item 1030, also see [Figure] 9” of Jung. Id. at 3, 6, 9. The Examiner explains that “[t]he second end of the garment has, broadly interpreted, an engagement assembly at its second end (garment fold connecting it to items 90/92 at the distal end of the garment)” and that “this engagement assembly is removably connected to the body and to the engagement assembly/detent via components 90/92, 140/142, 126/128, and 124.” Id. at 13. In response to Appellant’s argument that the garment/softgoods portion in Jung lacks the Appeal 2018-004327 Application 14/262,239 5 recited engagement portion at the second end, the Examiner stands by the above evidence and reasoning. See Ans. 12–14. We do not find this evidence and reasoning sufficient, however, to establish by a preponderance of the evidence that the garment/softgoods portion in Jung has the recited engagement portion at the second end. Initially, we note that the Examiner states that the “second end of the garment has, broadly interpreted, an engagement assembly at its second end,” but fails to set forth the broad interpretation or any support from the claims or Specification to demonstrate the breadth being relied upon by the Examiner to support the rejection. Final Act. 13; Ans. 12–13 (emphasis added). This deficiency causes some ambiguities with how the Examiner understood the scope of the claims and how the Examiner is relying on the prior art to disclose the identified claim limitations. Nevertheless, it is not apparent that any reasonable construction would encompass the structure from Jung that the Examiner identifies to disclose the recited engagement assembly at the second end of the garment/softgoods portion. As noted above, each independent claim in this appeal recites a garment/softgoods portion with two separate ends that couple to the toy doll. The description of Figures 2, 5A, 5B, 6A, 6B, 7A, and 8A in the Specification further informs and supports this interpretation. Spec. ¶¶ 30– 32, 35–43, 49. Although not entirely clear, the Examiner appears to rely on a single coupling between the toy and the garment/softgoods portion taught by Jung to show the two separate and distinct couplings that the independent claims recite. The Examiner identifies the “portion of garment at hinge, shown close up in [Figure] 34” of Jung as disclosing the hindgedly coupled end, but fails Appeal 2018-004327 Application 14/262,239 6 to identify all of the structure that forms the hinged coupling. Final Act. 3, 6, 8–9 (emphasis added). Notably, although the Examiner refers to the garment “at hinge,” the hinge shown is formed by a support member coupled to rack and gear assembly, which corresponds to components 90/92, 140/142, 126/128, and 124. Jung ¶¶ 83–88, 117, 125, Figs. 9–11, 32, 34. It is further notable that Jung describes the detent lock 134 mechanism as being part of the hinge assembly that functions to block the hinging functionality and lock the support members in the wings position. Id. ¶ 90. To couple the portion of garment 30/32 at this hinge, Jung teaches that the layers of the garment are stitched together to form a receptacle into which the support member is inserted and retained. Id. ¶¶ 62, 125. The problem is that, for the claimed coupling at the second end of the garment, the Examiner identifies the same structures that form the hinge, albeit the portion of the garment “distal” to the hinge. This was error. The claims unambiguously recite a garment/softgoods portion that has a second and separate coupling mechanism (i.e., “engagement portion”) configured to “releasably couple” or “removeably engage” a second separate portion of the garment to the toy. None of the evidence presented by the Examiner supports a finding that Jung discloses coupling a garment to the toy at a second location, nor does it disclose a second coupling different than those disclosed for the hinged connection. As a result, the rejection of independent claims 1, 13, and 18 is deficient because it lacks sufficient evidence to support the Examiner’s factual findings regarding Jung’s disclosure of a garment/softgoodsoftgoods portion with an engagement portion at its second end that is configured to releasably couple or removeably engage the body/first portion of a toy. The Appeal 2018-004327 Application 14/262,239 7 Examiner does not rely on the remaining prior art (i.e., Lawley, Mcmahan, and Bauer) to cure this deficiency. Therefore, we do not sustain the Examiner’s rejection of claims 1–11, 13, 14, 16–19, and 21–23. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 10, 11, 13, 14, 16–19, 21–23 103 Jung, Lawley 1–6, 10, 11, 13, 14, 16– 19, 21–23 7, 8 103 Jung, Lawley, Mcmanah 7, 8 9 103 Jung, Lawley, Bauer 9 Overall Outcome 1–11, 13, 14, 16–19, 21–23 REVERSED Copy with citationCopy as parenthetical citation