DISNEY ENTERPRISES, INC.

Patent Trials and Appeals Board

Dec 11, 2020

2020001925 (P.T.A.B. Dec. 11, 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.
14/505,408 10/02/2014 Robert Scott Trowbridge DISNEY-0790-US 2245
60226 7590 12/11/2020
DISNEY ENTERPRISES, INC
Patents Department
500 S. Buena Vista Street
Mail Stop 1332
Burbank, CA 91521
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/11/2020 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):
corp.patent.docketing@disney.com
narine.khachatryan@disney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCOTT TROWBRIDGE and AKHIL MADHANI
Appeal 2020-001925
Application 14/505,408
Technology Center 3700
Before JENNIFER D. BAHR, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Disney Enterprises,
Inc., which is a wholly owned subsidiary of The Walt Disney Company.
Appeal Br. 2.
Appeal 2020-001925
Application 14/505,408

2
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention is directed to a puppet control
mechanism. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An apparatus comprising:
a puppet device;
a control mechanism operably connected to the puppet
device to control movement of the puppet device, the control
mechanism comprising a material having a material index of
refraction that substantially matches a fluid index of refraction
of a fluid in which the puppet device and the control
mechanism are positioned such that the control mechanism is
rendered invisible.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Greenberg US 4,223,471 Sept. 23, 1980
Kohner US 4,591,345 May 27, 1986
Atobe US 6,814,646 B2 Nov. 9, 2004
Harris US 2009/0071137 A1 Mar. 19, 2009
Smoot US 2011/0066239 A1 Mar. 17, 2011
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.
Claims 1–20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite.
Claims 1, 2, 4, 8, and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kohner and Smoot.
Appeal 2020-001925
Application 14/505,408

3
Claims 1, 4, and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Atobe and Smoot.
Claims 14 and 16–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Harris and Smoot.
Claims 2 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Atobe, Smoot, and Kohner.
Claims 14 and 16–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Atobe, Smoot, and Harris.
Claims 3 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kohner, Smoot, and Greenberg.
Claims 3 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Atobe, Smoot, and Greenberg.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Atobe, Smoot, and Greenberg.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Harris, Smoot, and Greenberg.
Claims 5–7 and 11–13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kohner, Smoot, and Harris.
Claims 5–7 and 11–13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Atobe, Smoot, and Harris.
OPINION
Indefiniteness
The Examiner determines that “substantially” is a relative term that
renders the claims indefinite because it is not defined in the claim and the
Specification does not provide a standard for ascertaining the requisite
degree. Final Act. 5. According to the Examiner, it is unclear “what the
Appeal 2020-001925
Application 14/505,408

4
term ‘substantially matching’ is intended to mean, since the [S]pecification
is sparse, and the only examples are materials that are 20% and 50% apart
from matching, apparently not ‘substantially matching.’” Id.
The Examiner also determines “it is further unclear what ‘invisible’ is
intended to mean, since the [S]pecification is also sparse on this term, and
the term ‘invisible’ means incapable of being seen.” Final Act. 5.
According to the Examiner, “all of the materials used in [Appellant’s]
invention are capable of being seen, therefore, it is exceedingly unclear what
‘invisible’ is intended to mean.” Id.
Appellant argues that the example of acrylic (for the control
mechanism or tube) and water (for the fluid) in the Specification “provides a
clear standard for ‘substantially matches,’ as recited by the pending claims.”
Appeal Br. 8; see Spec. ¶ 18 (stating that acrylic has a substantially similar
index of refraction as water). Appellant adds that “the claim terminology
itself, in addition to the instant Specification, provides clear guidance to one
of ordinary skill in the art that substantial matching occurs when the control
mechanism is rendered invisible.” Appeal Br. 9. Thus, according to
Appellant, “based on the approximate range and the guidepost of rendered
invisibility, one of ordinary skill in the art would clearly understand the
metes and bounds of what is meant by ‘substantially matches,’ as recited by
the pending claims.” Id.
Appellant contends that invisibility, as discussed in the Specification,
and as recited in the claims, is not a material property but, rather, “is a
functional property describing whether something can be seen by an
observer (i.e., is visible) in a particular environment.” Appeal Br. 7.
Appellant submits that, in order to explain or illustrate invisibility,
Appeal 2020-001925
Application 14/505,408

5
Appellant’s Specification discloses the example that a puppet in a water
tank can appear to move by itself in a realistic manner because the control
mechanisms that activate movements of the puppet limbs and the hydraulic
fluid delivered to those limbs appear invisible. Id. (citing Spec. ¶ 21).
The objective of Appellant’s invention is to provide a puppet control
device for causing movement of the puppet limbs in an invisible and realistic
manner to provide a realistic puppetting performance for the observer. See
Spec. ¶ 7. One of ordinary skill in the art would appreciate that, by
“invisible,” the Specification means that an observer watching the
puppetting performance will not notice the puppet control device (i.e.,
control mechanisms 104) as it causes movement of the limbs. See id. ¶ 17
(describing control mechanisms 104 for controlling movement of the
puppet). Thus, the puppet will appear to be moving by itself. The term
“invisible” in this context does not necessarily mean that the control
mechanisms cannot be detected by the human eye. Rather, a person having
ordinary skill in the art would understand from the Specification that the
control mechanisms 104 are considered to be “invisible” when they go
essentially unnoticed by the observer during the puppetting performance.
Appellant’s invention achieves this level of invisibility by fabricating control
mechanisms 104 “from a material that has an index of refraction that
substantially matches the index of refraction of the fluid environment 102.”
Id. ¶ 18.
“As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’
indicates, claims are required to be cast in clear—as opposed to ambiguous,
vague, indefinite —terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014) (citation omitted).
Appeal 2020-001925
Application 14/505,408

6
At the same time, this requirement is not a demand for
unreasonable precision. The requirement, applied to the real
world of modern technology, does not contemplate in every
case a verbal precision of the kind found in mathematics. Nor
could it do so in a patent system that actually works, in practice,
to provide effective protection for modern-day inventions.
Rather, how much clarity is required necessarily invokes some
standard of reasonable precision in the use of language in the
context of the circumstances.
Id.
In light of the above, the Specification provides sufficient guidance
both as to the metes and bounds of the term “invisible” and the scope of the
term “substantially matches” to satisfy the definiteness requirement of
35 U.S.C. § 112 (b). In particular, the material index of refraction of the
control mechanism (claim 1), actuator (claim 8), or tube (claim 14) is
considered to “substantially match” the fluid index of refraction when the
indices are sufficiently close to one another that the control mechanism,
actuator, or tube is rendered invisible (i.e., would go essentially unnoticed by
the observer during the puppetting performance). Further, Appellant’s
Specification provides an example of a pairing of control
mechanism/actuator/tube material (acrylic) and fluid (water) having indices
of refraction that are sufficiently close to satisfy this standard. Spec. ¶ 18.
For the above reasons, we do not sustain the rejection of claims 1–20
under 35 U.S.C. § 112(b) as indefinite.
Written Description and Enablement
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 112(a) as
failing to comply with the written description and enablement requirements
are predicated on the Examiner’s position that Appellant’s “[S]pecification
provides no standard for defining what material ‘substantially matches’ the
Appeal 2020-001925
Application 14/505,408

7
index of refraction of the fluid, or evidence that [Appellant] has produced
such a device” and that the single example disclosed in Appellant’s
Specification does not produce actual invisibility. Final Act. 3, 4. The
Examiner points out that the illustrative material and fluid indices of
refraction given in the Specification “do not match.” Id. (emphasis omitted).
Further, the Examiner asserts that all of the materials disclosed in the
Specification are visible, and, thus, “an ‘invisible’ control mechanism is not
supported in the [S]pecification.” Id. at 4.
Further, the Examiner states that “[s]ince acrylic is not invisible in
water or air, it would require undue experimentation . . . to produce an
invention with the claimed ‘invisible’ control mechanism.” Final Act. 4.
According to the Examiner, “[a] single example, not producing actual
invisibility[,] is not sufficient to support such a claim,” and “no other
direction [is] provided by the inventor in the [S]pecification in order to
enable an invisible control mechanism.” Id. Thus, the Examiner concludes
that “the term ‘invisible’ as it applies in these claims, is not enabled by the
disclosure.” Id.
The Examiner’s bases for both the written description and enablement
rejections are unsound. Notably, Appellant’s claims do not require that the
material index of refraction match the fluid index of refraction; rather, as
discussed above, claims 1, 8, and 14 recite that the material index of
refraction “substantially matches” the fluid index of refraction. Appeal
Br. 18, 19 (Claims App.). Further, Appellant’s Specification provides a
standard for measuring the degree of matching necessary to constitute
“substantially matching,” as discussed above, and gives an example of a
pairing of control mechanism/actuator/tube material (acrylic) and fluid
Appeal 2020-001925
Application 14/505,408

8
(water) having indices of refraction that are sufficiently close to satisfy this
standard, thereby providing an enabling description of the claimed invention.
Spec. ¶ 18.
For the above reasons, we do not sustain the rejection of claims 1–20
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement or the rejection of claims 1–20 under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement.
Obviousness—Kohner and Smoot
Appellant presents arguments for claim 1, and then submits that the
rejections for claims 2, 4, 8, and 9 should be reversed for the reasons
presented for claim 1. Appeal Br. 9–12. We decide the appeal of this
rejection on the basis of claim 1, and claims 2, 4, 8, and 9 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a
single claim to decide the appeal as to a single ground of rejection of a group
of claims argued together).
The Examiner finds that Kohner discloses an apparatus comprising a
puppet device (toy figure 1) and a control mechanism (actuating rod 41),
wherein the control mechanism comprises a material that is transparent.
Final Act. 6 (citing Kohner, Fig. 6, 6:6–8); see Kohner 6:7–8 (disclosing that
“actuating rods 41, 42 and 43 are transparent to conceal their existence”).
The Examiner finds that “Kohner fails to teach the substantially matching
indices of refraction and invisibility of claim 1.” Final Act. 6.
Relying on Smoot’s teaching to make a component of a material
having a material index of refraction substantially matching the fluid index
of refraction of a surrounding fluid to render the component invisible, the
Examiner determines it would have been obvious to substantially match the
Appeal 2020-001925
Application 14/505,408

9
indices of refraction of the components that Kohner wishes to conceal and
the surrounding fluid in order to achieve Kohner’s objective of concealing
these components, thereby “making the device more aesthetically pleasing,
and more attractive to the users.” Final Act. 6 (citing Smoot, Abstr., ¶¶ 10,
14; Kohner 6:6–9).
Appellant asserts that the rejection “fails to state a prima facie case
of obviousness” because it “does not even identify which components
specifically the rejection refers to” and fails to “provide anything but a
conclusory statement of why the combination, or what part of the
combination, would be aesthetically pleasing or more attractive.” Appeal
Br. 9–10. Appellant’s argument is not persuasive. We find it sufficiently
clear from the Examiner’s rejection that the Examiner proposes modifying
Kohner to match the indices of refraction of the components (i.e., the
actuating rods) that Kohner wishes to keep concealed and the fluid in which
the toy figure and actuating rods are disposed, so that the actuating rods
cannot be observed as the toy figure is actuated to simulate dancing
movements, thereby making the device more aesthetically pleasing and
attractive to users. In other words, rendering the actuating rods invisible so
they cannot be seen, thereby giving the impression that the toy figure is
dancing on its own, would make the device more aesthetically pleasing and
attractive to the user.
Appellant argues that Smoot’s index-matching technique “would not
successfully substitute into any part of the non-liquid environment of
Kohner” and that Appellant is not aware of a suitable material for Kohner’s
actuating rod “that has an index of refraction approaching that of air.”
Appeal Br. 10. This argument is not persuasive. The Examiner
Appeal 2020-001925
Application 14/505,408

10
acknowledges that Kohner is silent as to the fluid medium in which toy
figure 1 is disposed in Figure 6. Ans. 27. As the Examiner explains,
however, even assuming Kohner contemplates disposing the toy figure in
air, rather than filling Kohner’s container (hollow housing 2) with a liquid, it
would have been well within the skill of the art to use the specific fluid and
plastic materials taught in Smoot instead of air and the actuating rod material
of Kohner in order to conceal the actuating rods as taught by Smoot. See
Ans. 27; Kohner 6:7–8 (expressing a desire to conceal the actuating rods);
Smoot, Abstr (teaching shell, liquid, and inner sphere having “matching
indices of refraction such that interfaces between the components are not
readily observed”), ¶ 14 (teaching that the liquid index of refraction is
“substantially matched” (e.g., within 10 percent or less) to the indices of
refraction of the outer shell and an inner component disposed in the liquid);
¶ 32 (teaching that substantially matching the indices of refraction of the
outer shell, liquid, and inner body “such that there is little or no refraction or
diffraction at each material/component interface . . . may create an effect
where the body . . . and liquid . . . are nearly invisible to an observer”). As
the Examiner points out, “[i]t is not a complicated substitution, particularly
in this case, where the doll and control mechanisms of Kohner are already
disclosed to be inside of a container for actuation from outside of the
container.” Ans. 27.
Appellant contends that the Examiner’s stated rationale, if anything,
would lead one to use electromagnetic actuation as taught by Smoot, rather
than mechanical actuation, but asserts that “even that outcome is mere
speculation.” Appeal Br. 10. Alternatively, Appellant submits that one
possible result of combining Kohner and Smoot would be retrofitting
Appeal 2020-001925
Application 14/505,408

11
Kohner’s animatronic device with an animatronic eye assembly having a
rear-mounted camera as taught by Smoot, but Appellant argues that doing so
would not have been obvious. Id. at 11.
These arguments are unavailing because they appear to presume
a bodily incorporation of Smoot’s structure into Kohner, and are not
responsive to the modification set forth in the rejection. “It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted). “Rather, the test for obviousness is what the combined teachings
of the references would have suggested to those having ordinary skill in the
art.” Id. at 1333. The Examiner relies on Smoot only “to teach matching
material properties for substantial invisibility.” Ans. 26 (emphasis omitted).
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as unpatentable over Kohner and Smoot. Accordingly,
we sustain the rejection of claim 1, and of claims 2, 4, 8, and 9, which fall
with claim 1, as unpatentable over Kohner and Smoot.
Obviousness—Atobe and Smoot
Appellant presents arguments for claim 1, and submits that the
rejections of claims 4 and 8 should be reversed for similar reasons to those
presented for claim 1. Appeal Br. 13–14. We decide the appeal of this
rejection on the basis of claim 1, and claims 4 and 8 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Atobe discloses an apparatus comprising a
puppet device (figure object 2) and a control mechanism (threads 41, 42)
connected to the puppet device to control movement of the puppet device,
Appeal 2020-001925
Application 14/505,408

12
wherein the control mechanism comprises a material that does not visually
stand out from a fluid in which the puppet device and control device are
positioned such that the control mechanism is not visually apparent. Final
Act. 9 (citing Atobe, Figs. 1–3; 2:60–4; 4:11–15). The Examiner finds that
“Atobe fails to teach the features of substantially matching indices of
refraction and invisibility of claim 1.” Id. The Examiner determines it
would have been obvious to provide Atobe’s animated device “with the
feature of substantially matching indices of refraction for invisibility
between components and fluid . . . for the purpose of further hiding
components of the device not desired to be observed as taught by Smoot,”
which Atobe discloses as the purpose of the transparent components (i.e.,
threads), thereby “making the device more aesthetically pleasing, and more
attractive to the users.” Final Act. 10 (citing Smoot, Abstr., ¶ 10; Atobe
4:11–15).
Appellant argues that Atobe “fails to recognize the improvement
provided by selecting materials for both the threads and the surrounding
fluid that have substantially matching indices of refraction.” Appeal Br. 13.
This argument is unavailing because it attacks Atobe individually, rather
than the combination. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant also argues that the combination of Atobe and Smoot
“would at most suggest forming some part of the puppeted mechanism in
Atobe (e.g., the toy) with an index-matching material, but not the thread
itself.” Appeal Br. 13. Appellant’s argument is unsound. Atobe discloses
Appeal 2020-001925
Application 14/505,408

13
making threads 41, 42 “of a material that does not visually stand out in the
liquid.” Atobe 4:10–11. Smoot teaches the technique of forming a body of
a material having a material index of refraction substantially matching that
of the liquid in which the body is disposed, such that the interfaces between
the body and the liquid are not readily observed, in order to render the liquid
and the body nearly invisible to an observer. Smoot, Abstr., ¶ 32. Thus, the
combined teachings of Atobe and Smoot would have suggested forming the
components that Atobe desires not to visually stand out in the liquid (i.e.,
threads 41, 42) of a material having an index of refraction substantially
matching that of the liquid.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as unpatentable over Atobe and Smoot. Accordingly,
we sustain the rejection of claim 1, and of claims 4 and 8, which fall with
claim 1, as unpatentable over Atobe and Smoot.
Obviousness—Harris and Smoot
The Examiner’s rejection of claim 14 as unpatentable over Harris and
Smoot is predicated in pertinent part on the Examiner’s determination that it
would have been obvious to provide Harris’s animated device with the
feature of substantially matching indices of refraction for invisibility
between components and fluids as taught by Smoot in order to further hide
components of Harris’s device not desired to be observed, as taught by
Smoot, “making the device more aesthetically pleasing, and more attractive
to the users.” Final Act. 9. Appellant argues that “Harris does not suggest
any need or benefit from rendering the tubing invisible, or direction to place
the tube in a fluid” and alleges that the Examiner’s conclusion of
Appeal 2020-001925
Application 14/505,408

14
obviousness is predicated on hindsight. Appeal Br. 13. For the reasons that
follow, Appellant’s arguments are persuasive.
Harris is directed, broadly, “to a fluid transmission for the
transmission of force, of particular use in hydraulic or pneumatic actuators.”
Harris ¶ 2. In the embodiment of Figure 20 cited by the Examiner (Final
Act. 8), Harris discloses a particular application of such an actuator. Figure
20 illustrates a tableau of movable manikins having hollow leg segments
each enclosing a hydraulically driven bag 286. Harris ¶ 121. Harris’s bags
286 are coupled in series to driver bag 290 by tube 288. Id. When a user
depresses driver bag 290 with a finger, fluid is forced along tube 288 into
bags 286, causing bags 286 to expand and activate the leg segments, causing
the manikin to bob up and down. Id. Harris does not express any desire to
make tube 288, driven bags 286, or driver bag 290 invisible, nor is it readily
apparent why a person having ordinary skill in the art would have been
prompted to do so. Driver bag 290 should be visible to the user to enable the
user to depress it to actuate the leg segments of the manikins. Bags 286 are
disposed inside the leg segments of the manikins and, thus, making them
invisible would not provide any ostensible benefit. Further, unlike Kohner,
which discloses a toy figure enclosed in a housing in which a liquid could be
contained, or Atobe, which discloses a figure object disposed in a liquid
container, Harris does not disclose placing the manikins or the tubes and
bags for actuating the manikins in a liquid container. Thus, the applicability
of Smoot’s teachings would not be readily apparent to those having ordinary
skill in the art, absent hindsight gleaned from Appellant’s Specification.
Likewise, it is not apparent why a person having ordinary skill in the art
Appeal 2020-001925
Application 14/505,408

15
would have considered invisible tubes to be more aesthetically pleasing or
attractive to the user.
The Examiner responds by explaining that it would have been
“obvious to provide [components of materials having substantially matching
indices of refraction as taught by Smoot] so that the superfluous components
of [Harris] not desired to be seen (control components and not the doll itself)
would be less visible, improving the aesthetics of the device.” Ans. 28. The
Examiner also insists that the lack of a specific teaching in Harris to make
the tubing invisible does not obviate the rejection because the motivation for
this modification “was provided by both [Smoot] and by knowledge
available to one having ordinary skill in the art.” Id. This reasoning lacks
rational underpinnings because, although Smoot teaches a technique for
rendering components in a liquid nearly invisible to an observer, Harris
provides no indication that invisibility of any of the components is desired.
For the above reasons, we do not sustain the rejection of claim 14, or
of claims 16–20, which depend from claim 14, as unpatentable over Harris
and Smoot.
Obviousness—Kohner and Smoot in view of either Greenberg or Harris
In contesting the rejections of claims 3, 5–7, and 10–13 under
35 U.S.C. § 103 as unpatentable over Kohner, Smoot, and either Greenberg
or Harris, Appellant relies solely on the arguments presented against the
rejection of claim 1 as unpatentable over Kohner and Smoot. Appeal
Br. 15–16. For the reasons discussed above, these arguments fail to apprise
us of error in the rejection of claim 1 as unpatentable over Kohner and
Smoot, and, likewise, fail to apprise us of error in the rejections of claims 3,
5–7, and 10–13 based on the same combination further in view of either
Appeal 2020-001925
Application 14/505,408

16
Greenberg or Harris. Accordingly, we sustain the rejection of claims 3 and
10 as unpatentable over Kohner, Smoot, and Greenberg, and the rejection of
claims 5–7 and 11–13 as unpatentable over Kohner, Smoot, and Harris.
Obviousness—Atobe and Smoot in view of one of Kohner, Greenberg, or
Harris
In contesting the rejections of claims 2, 3, 5–7, and 9–20 under
35 U.S.C. § 103 as unpatentable over Atobe, Smoot, and one of Kohner,
Greenberg, or Harris, Appellant relies solely on the arguments presented
against the rejection of claim 1 as unpatentable over Atobe and Smoot.
Appeal Br. 14–16. For the reasons discussed above, these arguments fail to
apprise us of error in the rejection of claim 1 as unpatentable over Atobe and
Smoot, and, likewise, fail to apprise us of error in the rejections of claims 2,
3, 5–7, and 9–20 based on the same combination further in view of one of
Kohner, Greenberg, or Harris. Accordingly, we sustain the rejection of
claims 2 and 9 as unpatentable over Atobe, Smoot, and Kohner; the
rejections of claims 5–7, 11–14, and 16–20 as unpatentable over Atobe,
Smoot and Harris; and the rejections of claims 3, 10, and 15 as unpatentable
over Atobe, Smoot, and Greenberg.
Obviousness—Harris, Smoot, and Greenberg
The Examiner’s application of Greenberg in rejecting claim 15 does
not make up for the aforementioned deficiency in the combination of Harris
and Smoot in regard to claim 14, from which claim 15 depends. See Final
Act. 17 (relying on Greenberg for a teaching to use acrylic). Accordingly,
we do not sustain the rejection of claim 15 as unpatentable over Harris,
Smoot, and Greenberg.
Appeal 2020-001925
Application 14/505,408

17
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–20
1–20 112(a) Written
Description
1–20
1–20 112(a) Enablement 1–20
1, 2, 4, 8, 9 103 Kohner, Smoot 1, 2, 4, 8, 9
1, 4, 8 103 Atobe, Smoot 1, 4, 8
14, 16–20 103 Harris, Smoot 14, 16–20
2, 9 103 Atobe, Smoot,
Kohner
2, 9
14, 16–20 103 Atobe, Smoot,
Harris
14, 16–20
3, 10 103 Kohner, Smoot,
Greenberg
3, 10
3, 10 103 Atobe, Smoot,
Greenberg
3, 10
15 103 Atobe, Smoot,
Greenberg
15
15 103 Harris, Smoot,
Greenberg
15
5–7, 11–13 103 Kohner, Smoot,
Harris
5–7, 11–13
5–7, 11–13 103 Atobe, Smoot,
Harris
5–7, 11–13
Overall
Outcome
1–20

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).
Appeal 2020-001925
Application 14/505,408

18
AFFIRMED