Ex Parte Bruder

Patent Trial and Appeal Board

Apr 21, 2017

13749173 (P.T.A.B. Apr. 21, 2017)

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.
74875 4981
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
13/749,173 01/24/2013
7590
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
Paul Heinz BRUDER
04/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL HEINZ BRUDER
Appeal 2015-008145
Application 13/749,1731
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1—20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, “[t]he real party in interested is BRUDER
SPIELWAREN GMBH & CO. KG.” Appeal Br. 1.
Appeal 2015-008145
Application 13/749,173
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1,13, and 16 are the independent claims on appeal. Claim 1,
reproduced below with added paragraphing, is illustrative.
1. A coupling for connecting two toy components, the coupling
comprising:
a first coupling part connected to one of the two toy
components
a second coupling part connected to the other of the two
toy components,
wherein the two coupling parts are connected to one
another along a connecting axis such that said two coupling parts
are rotatable relative to one another about said connecting axis,
wherein one of the coupling parts comprises
a receiving coupling part and said receiving
coupling part comprises at least one locking guide
receiving portion, said at least one locking guide receiving
portion having a locking receiver extending in a peripheral
direction about the connecting axis through more than
180°,
wherein the other of the coupling parts comprises
an insert coupling part and said insert coupling part
has at least two insert guide portions, said insert guide
portions being axially spaced apart from one another along
the connecting axis and said insert guide portions being
guided radially in the receiving coupling part,
at least said at least one locking guide receiving
portion generating a snap in retaining function as at least
one of said insert guide portions is inserted in said
receiving coupling part,
wherein a first insert guide portion is
simultaneously a counter-locking portion, which is
received so as to lock in the locking guide receiving
portion of the receiving coupling part,
wherein a second insert guide portion is provided,
which is guided in a second guide receiving portion of the
receiving coupling part.
2
Appeal 2015-008145
Application 13/749,173
Rejections
I. Claims 1—20 are rejected under 35 U.S.C. § 112(b) or pre-AIA
35U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1—3, 5—13, and 15—19 are rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Sorola (US 5,461,820, iss. Oct. 31, 1995).
III. Claims 4 and 14 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Sorola and Brumagin et al. (US 7,736,214 B2, iss.
June 15, 2010, hereinafter “Brumagin”).
IV. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sorola and Dorge (US 3,287,028, iss. Nov. 22, 1966).
ANALYSIS
Rejection I
The Examiner rejects claims 1—20 for various reasons, including:
claims being narrative in form and replete with indefinite language; and not
claiming structure clearly. Final Act. 2; see id. at 3; Ans. 9-10. The
Examiner’s primary concern appears to be that the claims have terms,
phrases, and limitations that “are either names, fancy terms or functional
limitations lacking positively recited structure rendering the claim
indefinite.” Id. at 2 (emphasis omitted).
The Appellant argues that the claims are not narrative and replete with
indefinite language, rather the claims are directed to “positively recited
structure” and “the scope of the claim is clear and fully understandable by a
person of ordinary skill in the art.” Appeal Br. 11, 19; see also id. at 12—18.
The Appellant’s argument is persuasive. After analyzing the Examiner’s
rejection, it appears that the rejection is based generally on a position that
3
Appeal 2015-008145
Application 13/749,173
the claims should use more suitable language or modes of expression.2
However, the Examiner does not identify any language in the claims that is
unclear. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
The Examiner also points out that some claims include “reference
characters” and appears to conclude that this practice does not positively
recite structure. Final Act. 2. The Examiner also appears to suggest that the
reference characters — and other aspects of the Specification — are not read
into the claims. Id. at 2—3. Although dependent claims 2 and 12 include
reference characters (see Appeal Br., Claims App.), the use of reference
characters does not make claims indefinite. Rather, the use of reference
characters in a claim is an acceptable practice according to the MPEP, which
states with added emphasis:
Reference characters corresponding to elements recited in the
detailed description and the drawings may be used in conjunction
with the recitation of the same element or group of elements in
the claims. The reference characters, however, should be
enclosed within parentheses so as to avoid confusion with other
numbers or characters which may appear in the claims. The use
of reference characters is to be considered as having no effect on
the scope of the claims.
2 The Manual of Patent Examining Procedure (MPEP) § 2173.02 (II)
instructs:
The examiner’s focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is whether
the claim meets the threshold requirements of clarity and
precision set forth in the statute, not whether more suitable
language or modes of expression are available.... Some latitude
in the manner of expression and the aptness of terms should be
permitted so long as . . . pre-AIA 35 U.S.C. [§] 112, second
paragraph, is satisfied.
4
Appeal 2015-008145
Application 13/749,173
MPEP § 608.01 (m) (9th Ed. Rev. 7, Nov. 2015).
Thus, we do not sustain the Examiner’s rejection of claims 1—20 under
35 U.S.C. § 112, second paragraph, as indefinite.
Rejections II—IV
We do not sustain the Examiner’s rejections of claims 1—20 under
§ 102(b) as anticipated by Sorola and § 103(a) as unpatentable over Sorola
in combination with Brumagin or Dorge because, as discussed below, they
rely on inadequately supported findings. See Appeal Br. 20-22; Reply
Br. 5-6.
Independent claims 1 and 13 are directed to a coupling having two
coupling parts. Appeal Br., Claims App. One of these parts includes a
“receiving coupling part” and the other of the parts includes an “insert
coupling part.” See id. The “receiving coupling part” includes a “locking
guide receiving portion” having a “locking receiver.” Id. The “insert
coupling part” includes “insert guide portions.” Id.
Turning to the Examiner’s rejection, the Examiner identifies Sorola’s
housing member 12 as the claimed “receiving coupling part” and Sorola’s
cavity 16 as the claimed “locking guide receiving portion.” Final Act. 3^4;
see Sorola Fig. 1. As for the claimed “locking receiver,” the Examiner finds
that U-shaped retainer 48 corresponds with the claimed “locking receiver.”
Final Act. 4; see Sorola Figs. 1, 6. Also, the Examiner identifies elongate
body member 38 as the claimed “insert coupling part” and journal 26 and
enlarged head 46 as the claimed “insert guide portions.” See Final Act. 3, 4.
Notably, independent claims 1 and 13 require that the locking guide
receiving portion of the retaining coupling part includes the ability to
5
Appeal 2015-008145
Application 13/749,173
generate a snap when inserting the insert guide portion of the insert
coupling part. See id. And, it appears that the Examiner is relying on
retainer 48 as the structure that provides the function of “generating a snap
in retaining function,” as recited in independent claims 1 and 13. See Final
Act. 4; Ans. 10, 12. We base this understanding on the Examiner’s finding
that “at least one locking guide receiving portion generating a snap in
retaining function (2:58-67) and the second insert guide (46) is received in
the receiving coupling part.” Final Act. 4; Ans. 10, 12. Here, the Examiner
relies on Sorola at column 2, lines 58—67, which describes with italics
added:
A U-shaped retainer 48 has a radial slot 50 therein having
an arcuate inner surface 52 formed on a radius corresponding
substantially to that of the spindle 44. The slot 50 has a width
dimension slightly less than that of the spindle 44 which enables
the retainer to be snap-fitted onto the spindle between the head
46 and the journal 12. The radius on which the surface 52 is
formed is smaller in diameter than that of the head 46 so that one
end face 54 of the retainer 48 confronts an inner shoulder 56 of
the head 46 to maintain the retainer 48 on the spindle 44.
For the Examiner’s finding to apply reasonably to the claimed
invention a person of ordinary skill in the art would have to agree that cavity
16 includes as part of its structure retainer 48. See Reply Br. 5—6. We
determine that a person of ordinary skill in the art would not agree with this
finding.
Retainer 48 is snap-fitted to reduced diameter shank 44 of spindle 40,
and then inserted in cavity 16. See Sorola col. 2,11. 58—67, col. 4,11. 7—25.
After being inserted into cavity 16, the only structural connection between
retainer 48 and cavity 16 is through components associated with the elongate
body member 38, which the Examiner identifies as the claimed “insert
6
Appeal 2015-008145
Application 13/749,173
coupling part.” In view of the foregoing, we find that one of ordinary skill
in the art would not understand retainer 48 as a structural component of
cavity 16 (“locking guide receiving portion”) or, more broadly, housing
member 12 (“receiving coupling part”).
Alternatively, the Examiner may be suggesting that a snap is
generated between cavity 16 and head 46. However, as pointed out by the
Appellant and as discussed above, no snap is generated between cavity 16
and head 46 when inserting head 46 into cavity 16. See Appeal Br. 21.
Thus, for the foregoing reasons, we do not sustain the Examiner’s
rejections of claims 1—15. Independent claim 16 is similar to independent
claims 1 and 13. See Appeal Br., Claims App. The Examiner relies on
similar findings for independent claim 16 as those discussed above. See
Final Act. 6. And, for similar reasons, we do not sustain the Examiner’s
rejections of claims 16—20.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—20.
REVERSED
7