Patricia Chan et al.

Patent Trials and Appeals Board

Mar 26, 2020

14262239 - (D) (P.T.A.B. Mar. 26, 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.
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.
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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.

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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),
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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
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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
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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
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Application 14/262,239

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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