Ex Parte Benitez

Patent Trial and Appeal Board

Oct 17, 2018

14295446 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/295,446 06/04/2014
44088 7590
Kaufhold Dix Patent Law
P. 0. BOX 89626
SIOUX FALLS, SD 57109
10/19/2018
FIRST NAMED INVENTOR
Jose Benitez
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SK10437 7293
EXAMINER
DAVISON, LAURAL
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
j ason@kaufboldlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE BENITEZ
Appeal 2018-003711
Application 14/295,446
Technology Center 3700
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's rejection of claims 1, 4, 5, and 8-13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the invention "pertains to a new game device
for allowing a user to play the game of hopscotch in a sprinkler." Spec. 1,
1 According to Appellant, the real party in interest is Jose Benitez. Br. 2.
Appeal 2018-003711
Application 14/295,446
11. 13-14. Claims 1 and 13 are the independent claims on appeal. Below,
we reproduce claim 1 as illustrative of the appealed claims.
1. A water game assembly configured to allow a user
to play the game of hopscotch in a sprinkler, said assembly
compnsmg:
a mat configured to be positioned on a support surf ace,
said mat having indicia printed thereon in the convention of the
game of hopscotch, said mat having an outer edge extending
between a top surface and a bottom surface of said mat, an upper
bound of said outer edge being exposed and flush with said top
surface of said mat wherein said outer edge is configured for
inhibiting accumulation of fluid on said mat by facilitating
passage of fluid over said outer edge, said mat being elongated;
and
a sprinkler coupled to said mat such that said bottom
surface of said mat is positionable flat on the support surface
such that a bottom bound of said outer edge fully abuts the
support surface, said sprinkler being coupled to a fluid source
such that said sprinkler delivers the fluid onto said mat, said
sprinkler being one of a pair of said sprinklers, an innermost one
of a pair of rails of each of said pair of sprinklers being movably
coupled to an associated one of a first lateral side and a second
lateral side of said outer edge of said mat such that each of said
pair of sprinklers is coextensive with said associated first and
second lateral sides of said outer edge of said mat.
REJECTION AND PRIORART2
The Examiner rejects claims 1, 4, 5, and 8-13 under 35 U.S.C.
§ I03(a) as unpatentable over Thayer (US 2011/0183767 Al, pub. July 28,
2011), Rudell et al. (US 5,672,123, iss. Sept. 30, 1997) ("Rudell"), Jepson
2 In the Answer, the Examiner withdraws an enablement rejection made in
the Final Office Action. Answer 2; Final Action 2-3.
2
Appeal 2018-003711
Application 14/295,446
(US 2,914,255, iss. Nov. 24, 1959), and Carrier (US 2,982,547, iss. May 2,
1961 ).
ANALYSIS
We have carefully reviewed the record, including the Examiner's
Answer and Final Office Action, and Appellant's Appeal Brief. Based on
our review, Appellant does not persuade us that the Examiner errs in finding
that claims 1, 4, 5, and 8-13 are obvious based on Thayer, Rudell, Jepson,
and Carrier. Thus, for the following reasons, we sustain the rejection.
Appellant first argues that the rejection of claim 1 is erroneous
because the Examiner addresses certain claim recitations in the Final Office
Action's Response to Arguments section, rather than in the Claim Rejections
section. Br. 6-7. Appellant does not persuade us of error, however.
All that is required by the Examiner to establish a prima facie case is
to set forth the statutory basis of the rejection, and the reference or
references upon which the Examiner relies, in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Specifically,
the statute states that the Examiner must "notify the applicant," "stating the
reasons for [the] rejection," "together with such information and references
as may be useful in judging the propriety of continuing prosecution of his
application." 35 U.S.C. § 132; see also In re Jung, 637 F.3d 1356 (Fed.
Cir. 2011). The Examiner has done so in this case (see, e.g., Final Action 3-
6, 11-12), as seemingly acknowledged by Appellant, albeit in a different
section of the Final Office Action than expected by Appellant (see Br. 7 ("It
is acknowledged that the [Final Office Action's] response to [Appellant's]
prior arguments makes reference to [the disclosure of certain claim
3
Appeal 2018-003711
Application 14/295,446
recitations by Thayer's] Figure 13, but the response to arguments is not
incorporated into and expressed in the actual rejection of the claims provided
in the [O]ffice [A]ction.")).
Appellant next argues that the Examiner errs in rejection claim 1
because Thayer does not disclose the claim's recitation of "a bottom bound
of said outer edge fully abuts the support surface." Br. 7. Appellant does
not persuade us of error, however. We note that Thayer's Figure 13
discloses an embodiment, upon which the Examiner relies (see, e.g.,
Answer 2--4), in which tab element 202 is disposed below waterslide 12-
i.e., tab element 202 is disposed between waterslide 12 and the ground
(Thayer Fig. 13, ,r 53). We further note that Thayer's Figure 8 discloses an
embodiment, upon which the Examine alternatively relies (see, e.g.,
Answer 4), in which a portion of each anchoring device 10 is disposed
below waterslide 12-that is, anchoring devices 10 are disposed between
waterslide 12 and the ground (Thayer Figs. 1-8). Thus, we agree with
Appellant that in "Thayer ... the securing clips attach to the top and bottom
[ of the sheet,] which prevents the [entire] bottom bound of the sheet from
contacting the support surface." Br. 7.
Claim 1 recites, however, that "a bottom bound of said outer edge
fully abuts the support surface," not that the entire bottom bound of the outer
edge fully abuts the support surface. Br., Claims App. (Claim 1) (emphasis
added). Restated, we do not agree with Appellant that for Thayer to teach
the argued recitation, the entire bottom bound of the outer edge must fully
abut the support surface. Instead, we agree with the Examiner that it is
sufficient that Thayer discloses at least one bottom bound (i.e., at least one
bottom edge) that fully abuts the support surface, which, as the Examiner
4
Appeal 2018-003711
Application 14/295,446
points out, Thayer's Figure 8 discloses. Answer 4 ("Thayer ... teaches a
bottom bound (e.g., at least along the front outer edge of the mat at 106 in
Fig[ ure] 8 which does not include any anchoring devices) that fully abuts the
support surface.").
Finally, Appellant argues that the Examiner errs because "Thayer does
not contemplate or provide for a device which lays flat and fully abuts the
support surface as claimed." Br. 4. Claim 1 does recite that "said mat is
positionable flat on the support surface." Id. at Claims App. (Claim 1).
Appellant does not persuade us, however, through the submission of
evidence or a line of technical reasoning, that Thayer's waterslide 12 is not
"positionable flat" on the ground because waterslide 12 includes either
anchoring device 10 or tab elements 202 disposed underneath, between the
waterslide and the ground. Further, for the reasons discussed above, we do
not agree with Appellant that claim 1 requires that the entire bottom bound
of the outer edge fully abuts the support surface.
DECISION
We AFFIRM the Examiner's obviousness rejection of claims 1, 4, 5,
and 8-13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
5