Ex Parte Diskin et al

Patent Trial and Appeal Board

Dec 16, 2015

13046521 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/046,521 03/11/2011
85444 7590 12/16/2015
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Aimee Diskin
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.
545.257 5059
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
3644
MAILDATE DELIVERY MODE
12/16/2015 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 AIMEE DISKIN and SARA P ACULDO
Appeal2013-005018
Application 13/046,521
Technology Center 3600
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
STATEMENT OF THE CASE
Aimee Diskin and Sara Paculdo ("Appellants") 1 appeal under
35 U.S.C. § 134 from the Examiner's decision rejecting claim 8 under
35 U.S.C. § 103(a) as unpatentable over Crout (US D609,411 S, iss. Feb. 2,
2010) and Blum (US 2002/0156634 Al, iss. Oct. 24, 2002), and rejecting
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Crout, Blum, and
Sherman (US 6,155,629, iss. Dec. 5, 2000). The Board has jurisdiction over
the appeal under 35 U.S.C. § 6(b ). We REVERSE.
1 The Appeal Brief identifies Worldwise, Inc. as the real party in interest.
Appeal Br. 1.
Appeal2013-005018
Application 13/046,521
CLAIMED SUBJECT MATTER
Claim 8 is independent, with claim 4 depending therefrom. Appeal
Br. 6 (Claims App.). Claims 1-3 and 5-7 are canceled, and claims 9 and 10
are withdrawn. Id. at 1. Claim 8 recites:
8. A cat litter mat sized to receive a cat litter box,
said cat litter mat composed of silicone rubber having a
substantially planar central portion and a perimeter, at least a
portion of said perimeter having an upturned edge, a cat litter
box receiving region being devoid of said upturned edge, said
planar central portion comprising a plurality of nubs extending
therefrom and said planar central portion having an area
substantially devoid of said nubs, said area devoid of said nubs
extending from said cat litter box receiving region to an
opposite edge of said central portion.
OPINION
A. Claim 8: Obviousness based on Crout and Blum
Appellants argue the Examiner errs in finding Crout discloses, as
• ,..1" 1. Q h . . ·i,. • -l't. . rec1teu m c1aim o, a mat uavmg a penmeter, w1t11 a port10n 01 tue penmeter
having an upturned edge, and with "a cat litter box receiving region being
devoid of said upturned edge." Appeal Br. 4 (emphasis added to language of
claim 8 at issue); Reply Br. 2-3. For the following reasons, this argument is
persuasive.
The Examiner's annotations to Figure 4 of Crout, excerpted here on
the next page, identify where the Examiner finds a "cat litter box receiving
region" and an "area ... devoid of upturned edge":
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Appeal2013-005018
Application 13/046,521
Ans. 2--4. The Examiner reasons claim 8 does not define a boundary for the
cat litter box receiving region, and Figure 1 of the Appellant's application
shows a cat litter box receiving region 14 having a middle section devoid of
upturned edge 15, and two side sections of upturned edges. Ans. 6. "[I]t is
the Examiner['s] position to interpret that Crout [teaches] the region devoid
of oval recesses is capable of receiving a litter box (e.g., the user can pick a
litter box that fit[s] onto the region devoid of oval recesses)." Id.
From the Examiner's annotations to Figure 4 of Crout, and the related
discussion of a user picking a litter box that "fit[ s] onto the region devoid of
oval recesses," it is clear that the Examiner relies on the entire smooth upper
section of Crout's mat (roughly rectangular in shape in Figure 4) as
corresponding to the claimed cat litter box receiving region. It is equally
clear from Figures 1 and 4 of Crout that the outer perimeter of the mat in
that region (i.e., three sides of the rough rectangle) has an upturned edge
along the entire perimeter, except for the notch that the Examiner has
annotated "area ... devoid of upturned edge." We determine that the
Examiner errs in finding the identified cat litter box receiving region is
devoid of the upturned edge, as required by claim 8. The notch in Crout is
much too small in extent along the perimeter to satisfy the claim requirement
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Appeal2013-005018
Application 13/046,521
for the litter box receiving region to be devoid of an upturned edge. In
addition, based on the two parallel lines at the bottom of the notch, it appears
that the notch merely lowers the height of the upturned edge in that area,
rather than removing the upturned edge to create an area devoid of that edge.
Crout, Fig. 4 (compare notch at top of Figure 4 showing continuous, but
shorter, upturned edge and notch at bottom of Figure 4 showing removal of
upturned edge at center of notch). Further, while Figure 1 of Appellant's
application shows upturned edge 11 approaching litter box receiving
region 14, Figures 1 and 2 show a substantial portion of perimeter 9 in
region 14 is devoid of edge 11 in order to receive litter box 20. In contrast,
Crout's notch is much too small in extent along the perimeter to do the same
thing. In other words, the Examiner has not adequately explained how
Crout's "area ... devoid of upturned edge" constitutes a cat litter box
receiving region, as called for by claim 8.
For the foregoing reasons, we conclude the Examiner errs in finding
Crout's mat has a cat litter box receiving region devoid of an upturned edge,
as recited in claim 8. The Examiner relies on Blum solely as disclosing a
mat made of silicone rubber, and not in relation to the structural
configuration of the mat recited in claim 8. Final Act. 2. We therefore do
not sustain the rejection of claim 8 as unpatentable over Crout and Blum.
B. Claim 4: Obviousness based on Crout, Blum, and Sherman
The Examiner cites Sherman's Figures 10 and 13, which show a
vehicle mat having upturned edges 42, 44 of varying height, as being
pertinent to the upturned edge increasing height requirement of claim 4.
Final Act. 3. As such, the Examiner's reliance on Sherman does not cure the
deficiencies of Crout and Blum noted above with respect to claim 8, so we
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Appeal2013-005018
Application 13/046,521
do not sustain the rejection of claim 4 as unpatentable over Crout, Blum, and
Sherman.
DECISION
The Examiner's decision rejecting claims 4 and 8 is reversed.
REVERSED
rvb
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