Ex Parte Floyd et al

Patent Trial and Appeal Board

Aug 29, 2018

15156762 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/156,762 05/17/2016
85444 7590 08/30/2018
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Charles Floyd
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.
545.452 2101
EXAMINER
BARLOW, MORGAN T
ART UNIT PAPER NUMBER
3642
MAIL DATE DELIVERY MODE
08/30/2018 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 CHARLES FLOYD,
VICTORIA DA VILA, and HANNAH ROSENBERG
Appeal2017-009197
Application 15/156,762
Technology Center 3600
Before MICHAEL L. HOELTER, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-009197
Application 15/156,762
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision, as set forth in the Final Office Action dated March 30,
2017 ("Final Act."), rejecting claims 1-7. 2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a transparent globe pet toy. Claim 1, the
only independent claim on appeal, is reproduced below with disputed
limitations italicized for emphasis:
1. A pet toy comprising
a substantially spherical upper housing, said upper
housing being substantially transparent;
a substantially spherical lower housing joined to said
upper housing;
a fan assembly extending between said upper housing
and said lower housing, said fan assembly comprising a power
source and motor energized by said power source located
within said lower housing and having a shaft extending from
said lower housing to said upper housing;
a plurality of fan blades fixed to said shaft, said fan
blades residing within said upper housing such that upon
rotation, said fan blades direct air toward said lower housing;
said upper housing further comprising at least one
opening located at its top when said toy is at rest and a plurality
of attractants, each of a mass and size to randomly circulate
within said substantially transparent upper housing upon
Worldwise, Inc. ("Appellant") is the applicant pursuant to 37 C.F.R.
§ 1.46, and is identified as the real party in interest. Appeal Brief, dated
April 6, 2017 ("Appeal Br."), at 1.
2 This appeal is related to Appeal No. 2017-006526. Appellant's claims
and arguments in the two appeals are substantially identical.
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energizing said motor, said at least one opening being of
sufficient size to enable attractants to randomly escape the
interior of said sphere when said fan operates but is too small
to enable a pet to access said sphere's interior.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Rowe
Muday
US 2003/0140869 Al
US 6,990,762 Bl
July 31, 2003
Jan. 31, 2006
An "Elefun" toy described in a Wikipedia article dated June 17, 2013, a
review page titled "Elefun" dated 1993 from BoardGameGeek.com, and
screen shots from a video on BoardGameGeek.com ( collectively called
"Elefun/Hasbro"). See Final Act. 4---6.
REJECTIONS
The Examiner made the following rejections:
1. Claims 1 and 4--7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Muday and Elefun/Hasbro.
2. Claims 2 and 3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Muday, Elefun/Hasbro, and Rowe.
Appellant seeks our review of these rejections.
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DISCUSSION
The Rejection of Claims 1 and 4-7
as Unpatentable Over Muday and Elefun/Hasbro
Appellant argues claims 1 and 4--7 as a group. Appeal Br. 3---6. We
select claim 1 as the representative claim, and claims 4--7 stand or fall with
claim 1. 3 7 C.F.R. § 41.3 7 ( c )(1 )(iv).
The Examiner finds that the combination of Muday and
Elefun/Hasbro discloses all of the limitations of claim 1. Final Act. 3-5. In
particular, the Examiner finds that Muday does not disclose that the
cylindrical housing is substantially spherical, but explains that it "would
have been an obvious matter of design choice ... to construct the entire
device of Muday [] with a spherical cross-section" because Appellant has
"not disclosed that this is anything more than one of numerous shapes or
configurations a person of ordinary skill in the art would find obvious for the
purpose of providing a consistent shape, and preventing an animal or owner
from harming themselves on an edge." Final Act. 4; see Answer, dated June
1, 2017 ("Ans."), at 3.
The Examiner also finds that Muday does not disclose that "at least
one opening being of sufficient size to enable attractants to randomly escape
the interior of said [sphere] when said fan [] operates." Final Act. 4. The
Examiner, however, finds that Elefun/Hasbro discloses "an amusement
device with a bottom chamber comprising a fan assembly [having] at least
one opening ('trunk') being of sufficient size to enable attractants
('butterflies') to randomly escape the interior of said housing when said fan
assembly operates (propelling nylon butterflies upward ... )." Final Act. 4.
The Examiner determines that it would have been an obvious matter of
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design choice to increase the size of the Muday' s opening "so that the
attractants randomly escape the interior of said housing when said fan
assembly operates, as taught by Elefun [], in order to provide a randomized
and, thus, entertaining device." Final Act. 4--5.
Appellant asserts that the Examiner's rejection is erroneous for
several reasons. First, Appellant contends that "Muday fails to disclose a
transparent housing substantially in the form of a sphere." Appeal Br. 3.
According to Appellant,
the purpose of the transparent housing is to facilitate a cat sitting
next to it having the opportunity to gaze within it to see the
ongoing activity. [Spec. 5:31.] A substantially spherical housing
also facilitates the suspension of attractants which move like
butterflies within its interior facilitated by the downward airflow
created by its fan. A substantially transparent spherical housing
also increases the viewing surface to provide a toy having the
shape of a fishbowl.
Appeal Br. 6. Appellant's explanation, however, does not persuasively
address the Examiner's determination that "[i]t would have been an obvious
matter of design choice ... to construct the entire device of Muday [] with a
spherical cross-section" because Appellant has "not disclosed that this is
anything more than one of numerous shapes or configurations a person of
ordinary skill in the art would find obvious for the purpose of providing a
consistent shape, and preventing an animal or owner from harming
themselves on an edge." Final Act. 4; see Ans. 3; see also In re Dailey, 357
F.2d 669, 672-73 (CCPA 1966) (affirming a determination that the change
of shape of a nursing container was a "mere matter of choice" because the
configuration was nothing more than one of numerous configurations for
providing the necessary mating surfaces). Similarly, Appellant does not
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persuasively address the Examiner's determination that the "criticality of the
substantially claimed shape is called [ in ]to question" in view of the
Specification's disclosure that "[ v ]arious modifications, alternative
constructions, changes and equivalents will readily occur to those skilled in
the art .... Such changes might include alternative ... sizes, shapes, forms
... or the like." Ans. 3 ( emphasis omitted). Thus, Appellant does not
identify error by the Examiner.
Second, Appellant contends that Muday does not disclose "a sphere
having a flat surface at its bottom for maintaining its orientation." Appeal
Br. 3. This limitation is not found in claim 1 (or any other claim).
Third, Appellant contends that Muday does not disclose fan "blades
directing air toward the bottom of the sphere." Appeal Br. 3. Appellant
contends that the "fan ofMuday pushes air upwardly and not downwardly,"
and "Muday is not concerned about the possibility of the fan, in directing air
upwardly, to blow attractants or particles 90 completely out of housing 60."
Appeal Br. 4. Appellant's Specification (6: 10-15) explains how air is
directed towards the bottom of the housing:
Fan 45 extends into substantially spherical upper housing 11
and is fixed to motor shaft 25 and is rotated such that blades 24,
ideally in the shape of flower petals, cause air within
substantially transparent housing 11 to move downwardly
toward substantially spherical lower housing 12. This causes air
movement within substantially spherical transparent housing 11
to suspend attractants 21 and cause them to move as more
completely described below.
The Specification further explains that attractants 21 move in a "haphazard
motion within the sphere" (id. at 6:24), and "circulate within the globe" (id.
at 7:3--4). Thus, the Specification clearly explains that fan 45 circulates air
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haphazardly inside the housing so that some air is directed towards the
bottom of the housing. The random air circulation causes attractants to
circulate within the housing until the attractants escape through the
opening 13.
With respect to Muday, the Examiner correctly finds that "the air is
directed upward from the housed fan blades, initially" and "due to the
enclosure of the space, air flow is eventually directed downward" (Final Act.
3), and "the air pushed by the fan blades [moves] upward and downward,
which is represented by the swirling projecting movement lines following
elements 90, as illustrated in Figure 1" (id. at 7). The Examiner further finds
that "[a]s illustrated in the wavy projection lines defining the path of travel
of each of elements 90 in Figure 1 of Muday, there exists air currents within
the device which point downwardly" and, thus, the "fan blades direct air
toward said bottom," as recited in claim 1. Ans. 4. We agree that Muday's
fan circulates the butterflies inside the housing in essentially the same
manner as the Specification. We agree with the Examiner that the broken
lines in Figures 1 and 3 of Muday illustrate the random circulation path of
the butterflies inside the housing. See Ans. 4. Like Appellant's
Specification, Muday describes a fan that creates a haphazard air circulation
path, and Muday depicts the fan as directing air toward the "bottom" of the
housing, as recited in claim 1. Appellant does not address persuasively the
Examiner's findings regarding Muday' s circulation path and does not
identify error by the Examiner.
Third, Appellant asserts that Muday does not disclose "openings at the
top of the sphere sized to promote the random escape of attractants through
the opening as a result of the combination of fan speed, mass of attractants
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and size of the opening." Appeal Br. 3. According to Appellant, "[t]here
are no openings akin to openings 13 of transparent housing 11 and, as a
consequence, Muday is not concerned about the possibility of the fan, in
directing air upwardly, to blow attractants or particles 90 completely out of
housing 60," and "[p]articles 90 ofMuday cannot escape his housing 60 as
exhaust vents 66 are too small to allow the passage of particles 90." Appeal
Br. 4; see Reply Br. 2. However, Appellant is attacking the teachings of
Muday individually. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Here, the Examiner finds that Elefun/Hasbro, not Muday, discloses
the recited "at least one opening ('trunk') being of sufficient size to enable
attractants ('butterflies') to randomly escape the interior of said housing
when said fan assembly operates (propelling nylon butterflies upward, ... )",
and states that it would have been an obvious design choice to increase
Muday's openings in light of Elefun/Hasbro's teachings. Final Act. 4--5;
Ans. 5---6. Appellant does not address the rejection as articulated by the
Examiner, and, thus, does not identify error by the Examiner.
Fourth, Appellant asserts that "[r]ecognizing the deficiencies of
Muday, the Examiner has cited a toy offered by Hasbro which has actually
no relationship to either the present invention or to that of Muday." Appeal
Br. 4. According to Appellant, "the Elefun toy from Hasbro is not a pet toy
whatsoever but is intended to be used by two or more children." Id. at 5.
Appellant, however, narrowly characterizes the field of the invention
and the pertinent problem described in the Specification and Elefun/Hasbro.
K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) ("To
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qualify as prior art for an obviousness analysis, a reference must qualify as
'analogous art,' i.e., it must satisfy one of the following conditions: (1) the
reference must be from the same field of endeavor; or (2) the reference must
be reasonably pertinent to the particular problem with which the inventor is
involved."). Here, the Specification broadly discloses that it is directed to
toys (i.e., field of the invention) and seeks, in part, to randomly eject
attractants (e.g., butterflies, flowers) to keep the user interested (i.e., problem
addressed by the inventor). See, e.g., Spec. 1: 11-27. Similarly,
Elefun/Hasbro is a toy and seeks to keeps the user interested by randomly
ejecting attractants. Thus, the Examiner correctly finds that the
Specification and Elefun/Hasbro are both toys. Ans. 7. Because toys ( and
often the same toys) may be used by cats, children, or both, Appellant's
argument about the purported distinction between children and cats is
unpersuasive.
Fifth, Appellant asserts that the Examiner's combination of Muday
and Elefun/Hasbro "is not only the result of hindsight reconstruction of
Applicant's invention but actually teaches away from it." Appeal Br. 5.
According to Appellant, the "Elefun toy reinforces the notion that air
generated from the fan located in the toy's base pushes air upwardly; the
object is to launch all of the butterflies through the toy's expanded sleeve. If
the fan was to direct air downwardly, the sleeve would collapse and no
butterflies would be launched." Id. Appellant's argument is not persuasive
because Elefun/Hasbro does not criticize, discredit, or otherwise discourage
the Examiner's proposed combination of Muday and Elefun/Hasbro,
including the use of Muday's random, tortious air circulation path. DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
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Cir. 2009) (A "reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed.") (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Muday's random, tortious air circulation would enhance the random ejection
of Elefun/Hasbro 's attractants/butterflies. In addition, Appellant does not
identify any knowledge relied upon by the Examiner that was gleaned only
from Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention, thereby obviating Appellant's
assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971 ). Thus, Appellant does not apprise us of error.
The rejection of claim 1 is sustained. Appellant does not argue claims
4--7 apart from claim 1. We discern no error in the Examiner's rejection of
claims 4--7, and also sustain the rejection of claims 4--7.
The Rejection of Claims 2 and 3
as Unpatentable Over Muday, Elefun/Hasbro, and Rowe
Claim 2, which depends from independent claim 1, recites "a timer for
stopping power to said motor after passage of a period of time." Claim 3,
which also depends from claim 1, recites "an integrated circuit for varying
the speed of said motor shaft."
With respect to claim 2, the Examiner finds that Rowe teaches "the
use of a timer for stopping power to said motor after passage of a period of
time." Final Act. 6 (citing Rowe ,r 17). With respect to claim 3, the
Examiner further finds that Rowe teaches "an integrated timer to interrupt
the energizing of a motor ( wherein the timer is considered to be an
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integrated part of the device, which is capable of interrupting the energy
flow to the motor by turning the device off." Id. at 7 ( citing Rowe ,r 17).
The Examiner determines that it would have been obvious to modify
Muday' s device with Rowe's integrated timer "to save battery life when the
toy is not in use." Id.
In response to the Examiner's rejection, Appellant asserts the
"significant differences between the claimed invention and that of Muday
have been previously discussed" and "[t]his rejection fails for no other
reason than the novel and unobvious differences between the claimed
invention and that of the Muday/Elefun combination." Appeal Br. 6. As
discussed above, the rejection of claim 1 over the combination of Muday and
Elefun/Hasbro is sustained. Here, Appellant does not address Muday's
device as modified by Elefun/Hasbro or Rowe.
Appellant also asserts that:
the presently claimed invention provides for the periodic escape
of attractants through opening 13 while Muday's opening 66
prevent attractants 90 from doing so. By periodically stopping
the motor or varying its speed not only changes the movement
of the attractants to further stimulate interest but also interrupts
the escape of attractants.
Id. Appellant, however, does not contest the Examiner's finding that Rowe
discloses the limitations in claims 2 and 3, or the reasoning for modifying
Muday/Elefun in light of Rowe. As discussed above with respect to claim 1,
the rejection relies on Elefun/Hasbro, not Muday, for disclosure of the
recited "opening." Final Act. 4--5. Appellant does not identify error by the
Examiner. Thus, the rejection of claims 2 and 3 is sustained.
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DECISION
For the above reasons, the Examiner's rejections of claims 1-7 are
AFFIRMED.
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)(l )(iv).
AFFIRMED
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