Ex Parte Babbidge et al

Board of Patent Appeals and Interferences

Apr 27, 2010

10794092 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALEXANDER A. BABBIDGE
and CHRISTOPHER L. BRIGHAM
____________________

Appeal 2009-001798
Application 10/794,092
Technology Center 3700
____________________

Decided: April 27, 2010
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Alexander A. Babbidge and Christopher L. Brigham (Appellants) seek
our review under 35 U.S.C. § 134 of the final rejection of claims 1, 4-13,
17-19, 26-28, and 30. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-001798
Application 10/794,092

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SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention pertains to mobiles associated with
colleges, universities, and professional sporting institutions. Spec. 1, para
[0001]. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A mobile comprising:
a central support member;
a plurality of arms radiating from said central support
member;
means for supporting said central support member;
at least one figure adorned with indicia selected from the
group consisting of a particular sports team, and a particular
institution;
said at least one figure comprising a replica of a team
mascot;
means for attaching said at least one figure to at least one
of said arms;
means for playing a song associated with said particular
sports team, said particular institution, or a particular sport; and
said at least one song playing means being positioned
between said central support member and said supporting
means.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:

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Application 10/794,092

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Marcus US 4,430,818 Feb. 14, 1984
Reynolds et al. US 5,989,098 Nov. 23, 1999
Khamphilavong et al. US 2001/0055931 A1 Dec. 27, 2001
Norman US 6,475,057 B1 Nov. 5, 2002

Before us for review is the Examiner’s rejection of claims 1, 4-13,
17-19, 26-28, and 30 under 35 U.S.C. § 103(a) as being unpatentable over
either of Norman, Marcus or Khamphilavong in view of Reynolds.

OPINION
Appellants’ independent claims 1 and 30 each contain elements
expressed in means-plus-function format. Claim 1, for example, recites:
“means for supporting,” “means for attaching,” and “means for playing a
song.” As explained in In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir.
1994), the PTO must treat means-plus-function limitations in accordance
with the statutory mandate of 35 U.S.C. § 112, paragraph 6, which reads:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
“[T]he ‘broadest reasonable interpretation’ that an examiner may give
means-plus-function language is that statutorily mandated in paragraph six
[of section 112].” Donaldson, 16 F.3d at 1194-95. “Accordingly, the PTO
may not disregard the structure disclosed in the specification corresponding
to such language when rendering a patentability determination.” Id. at 1195.
Appellants have called into question the Examiner’s interpretation of
the means-plus-function limitations and the application of the prior art to
Appeal 2009-001798
Application 10/794,092

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those limitations. App. Br. 12-13. Appellants suggest that the Examiner has
disregarded the corresponding structures of the Specification and assert
that the Examiner has failed to make explicit findings as to how the cited
references disclose the corresponding structures or their equivalents. Id.
at 13.
We agree that the Examiner has not adequately set forth legal
conclusions and factual findings that would allow us to sustain the rejection.
The Examiner, in response to Appellants’ argument that the Examiner has
not performed a proper examination of the means-plus-function elements,
states:
the Examiner has properly interpreted the corresponding
structure in the Appellant’s disclosed specification and the
“equivalents thereof” of the means plus function claimed. The
structural limitation that goes into the means plus function is
self-evident in Appellant’s disclosed specification and the prior
art cited.
Ans. 6. The Examiner then addresses the supporting means element as an
“example.” Id. However, particularized findings regarding, at least, the
attaching means element are necessary because without such findings we
cannot determine whether the Examiner did indeed perform a proper § 112,
paragraph 6, analysis.
According to Appellants, the corresponding structure disclosed in the
Specification for the attaching means is:
a slot 24 at an end 26 of the arm 22, remote from the central
support member 20 (Figures 5 and 8 and page 3, lines 17-20).
The figure 28 or 30 may be attached to the arm 22 by a length
of material 32, such as a string having a knot 34 at one end and
attached at another end 38 to the figure 28 or 30 in any suitable
manner known in the art, such as stitching or gluing (Figures 5
and 8 and page 3, lines 20-26).
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App. Br. 7. In contrast to Appellants’ fairly detailed description of the
element, the Examiner merely points to one figure in each of the primary
references. Ans. 4. The citation to a figure is not, in this case, adequate to
indicate the Examiner’s understanding of the corresponding structure for the
attaching means or which specific prior art features were found to be either
identical to or the equivalent of that structure.
In Norman’s Figure 2, there does not appear to be any structure
between the plush toy 36 and the elongate strap 38 (which the Examiner
found to be the recited arm, Ans. 3-4). It is not clear from Marcus’s Figure 1
how the objects 16 are attached to support arms 18. Khamphilavong’s
Figure 1 shows a snap hook 140 located between the animal figure 20 and
the ribbon 130 (found to be the arm, Ans. 3), but the depicted structure is not
identical to Appellants’ structure and the Examiner does not indicate
whether or how Khamphilavong’s structure is a § 112, paragraph 6,
equivalent.
In light of the above discussion, we cannot affirm the rejection.

DECISION
The decision of the Examiner to reject claims 1, 4-13, 17-19, 26-28,
and 30 is reversed.

REVERSED

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