Ex Parte Goh Aow

Patent Trial and Appeal Board

Feb 7, 2018

11793100 (P.T.A.B. Feb. 7, 2018)

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.
11/793,100 11/16/2007 Lee Lee Goh Aow FOS-P0037 2494
35775 7590 02/09/2018
DESIGN IP, P.C.
5050 W. TILGHMAN STREET
SUITE 435
ALLENTOWN, PA 18104
EXAMINER
LE, VIET
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
pair@designip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE LEE GOH AOW
Appeal 2017-005445
Application 11/793,100
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lee Lee Goh Aow (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 24—28, 30—32, and 36-44.
The remaining pending claims 1—3, 5, 6, 14, 16, 22, and 23 are allowed.
Non-Final Act. 1; Appeal Br. 7. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 The real party in interest is identified as Lee Lee Goh Aow. Appeal Br. 3.
Appeal 2017-005445
Application 11/793,100
CLAIMED SUBJECT MATTER
Claims 24 and 36 are independent. Claim 24, reproduced below,
illustrates the claimed subject matter:
24. A potty-training device, the device comprising:
a body including a toilet seat, the toilet seat comprising an
opening through which a user may urinate or defecate, the
opening lying on a first plane;
a leg rest attached to the body and extending
approximately from the opening towards a front side of the body,
the leg rest comprising a first pair of surfaces and a second pair
of surfaces, each of the surfaces of the first pair of surfaces being
joined to a respective one of the surfaces of the second pair of
surfaces by a bend, the leg rest being sized such that each of the
first pair of surfaces is located beneath a respective thigh of the
user and each of the second pair of surfaces is located beneath a
respective shin of the user when the user is seated on the device
with their buttocks located above the opening;
wherein each of the surfaces of the first pair of surfaces
lies in a plane that extends at a positive angle with respect to the
first plane as measured from where the leg rest is attached to the
body to the respective bend;
wherein each of the surfaces of the second pair of surfaces
lies in a plane that extends at a negative angle with respect to the
first plane as measured from the respective bend to a distal end
of the respective surface; and
wherein an intersection of the first and second pairs of
surfaces defines a maximum height above the toilet seat opening
at, or adjacent to, a front of the toilet seat opening.
Appeal Br. 17 (Claims App.).
2
Appeal 2017-005445
Application 11/793,100
REJECTIONS2
I. Claims 24, 26—28, 30,31, 36-40, and 42-44 are rejected under
35 U.S.C. § 102(b) as being anticipated by Wenkstem (US 2,662,229, issued
Dec. 15, 1953).
II. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wenkstem and Wosiek (US 5,893,178, issued Apr. 13, 1999).
III. Claims 25 and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wenkstem and Ward (US 5,063,617, issued Nov. 12,
1991).
ANALYSIS
Rejection I
The Examiner finds that Wenkstem discloses all of the limitations of
claim 24. See Non-Final Act. 3^4 (citing Figs. 1, 6). In support, the
Examiner provides an annotated Figure 6 of Wenkstem with the notations
“First Plane” and “Third Plane.” Ans. 6. The Examiner explains that the
first pair of surfaces reside on the “First Plane,” and “where dependent on
the size of the user, the thigh can be rested on these surfaces and the first
plane ... is angled positively from the opening.” Id. at 5. The Examiner
further explains that Wenkstem’s device also includes a second pair of
surfaces located on the “Third Plane,” “[wjhere the shin could be located
2 In the Non-Final Office Action dated March 11, 2016 (hereinafter, “Non-
Final Action” or “Non-Final Act.”), the drawings are objected to under
37 C.F.R. § 1.83(a). See Non-Final Act. 2. The Examiner does not indicate
whether this objection is still maintained. However, the objection is not
within the jurisdiction of the Board. See 37 C.F.R. § 1.181.
3
Appeal 2017-005445
Application 11/793,100
above the plane, as the plane is angled as a decline from the seat, when the
user sits with their buttocks at the opening.” Id. at 7.
Appellant contends that Wenkstem does not disclose a leg rest
comprising a first pair of surfaces, as required by claim 24. Appellant
contends that the asserted “First Plane” and “Second Plane” shown in the
Examiner’s annotated Figure 6 of Wenkstem are actually internal to the
potty device, and, therefore, cannot comprise parts that serve a leg support
function, regardless of the user’s sitting position. Reply Br. 2. Appellant
also contends that, in Wenkstem, it is not possible that the upper portions of
a user’s legs would be angled higher than another portion of the user’s legs
when resting on the nursery chair in a proper sitting position. Appeal Br. 8.
In support, Appellant provides an annotated Figure 6 of Wenkstem, having
added lines to indicate where the user’s buttocks and thighs would be
located on the nursery chair. Id. at 8, 10. Appellant contends that the
asserted “first surfaces” of Wenkstem on which a user’s upper legs would
rest are “very close to, or perfectly, level,” and “it is not possible that [these
surfaces lie] in a plane that extends at a positive angle with respect to the
‘first plane’ thereof, i.e., the plane in which the seat opening 19 is located.”
Id. at 9.
Appellant further contends that Wenkstem also does not disclose a leg
rest comprising a second pair of surfaces, as required by claim 24. In
support, Appellant provides an annotated Figure 1 of Wenkstem, to illustrate
how, when a user is seated on the nursery chair with their buttocks located
above opening 19, their upper legs would be rested on two surfaces located
on opposite sides of upstanding portion 22, and their lower legs would
dangle in front of the front wall 8. Id. at 12. Appellant also provides a
4
Appeal 2017-005445
Application 11/793,100
mocked-up view based on annotated Figure 1, with “an approximation of a
child-sized user” seated on the nursery chair, to illustrate how both the user’s
buttocks and thighs are located on the same substantially horizontal planes
and the user’s lower legs dangle in front the front wall. Id. at 11.
We are persuaded the Examiner has not established that Wenkstem’s
nursery chair comprises a leg rest having first and second surfaces that lie in
respective first and second planes that extend in the claimed manner, and
wherein the leg rest is sized such that the user’s thighs and shins would be
located beneath the respective first and second surfaces “when the user is
seated on the device with their buttocks located above the opening,” as
claimed. Wenkstem does not disclose which portion of a user’s leg would
lie over which surface of its nursery chair. Viewing Figure 1, if portions of a
user’s leg were to lie on the surfaces indicated by the Examiner with regard
to the Examiner’s annotated Figure 6, it is not apparent how the user would
also be seated on the nursery chair with their buttocks located above the
opening. And, were the user properly seated on the nursery chair with their
buttocks located above the opening, we agree with Appellant that the user’s
buttocks and thighs would be located on the substantially horizontal planes
shown in Appellant’s mocked-up view based on Figure 1 of Wenkstem. See
Br. 11.
The Examiner asserts that locating a user on the claimed device so
that their thigh is above the first pair of surfaces is merely a matter of
intended use. Ans. 5. We disagree. Claim 24 requires that “the leg rest [is]
sized such that each of the first pair of surfaces is located beneath a
respective thigh of the user and each of the second pair of surfaces is located
beneath a respective shin of the user when the user is seated on the device
5
Appeal 2017-005445
Application 11/793,100
with their buttocks located above the opening.'1'’ Appeal Br. 17 (Claims
App., emphasis added). To satisfy these limitations, Wenkstem’s nursery
chair must comprise a leg rest capable of allowing the user to locate the
thigh and shin portions of their leg with the respective “first surfaces” and
“second surfaces” beneath those portions, when the user is seated on the
nursery chair with their buttocks located above the opening, as claimed. As
discussed above, however, the Examiner has not established, by a
preponderance of the evidence, that this positioning of the user’s thighs and
shins would be possible using Wenkstem’s nursery chair.
The Examiner asserts that Appellant’s mocked-up drawings do not
accurately represent Wenkstem’s device as compared to the Examiner’s
annotated Figure 6 of Wenkstem, and the child shown in Appellant’s
mocked-up drawing does not represent the only size of a child that can use
the device. Ans. 6; see Appeal Br. 11.
As discussed above, the Examiner does not appear to have taken into
consideration the space on Wenkstem’s device that is necessary for the child
to place their buttocks above the opening. Appellant’s mocked-up drawing
takes this into account. The Examiner does not provide any evidence to
show that Appellant’s mocked-up drawing inaccurately depicts the
approximate size of a child-sized user that would use Wenkstem’s device
relative to the size of the device, or to show that a smaller or larger child­
sized user sitting in a proper sitting position would meet the claimed
limitations regarding placement of the user’s thighs and shins when that
child is seated on the device with their buttocks located above the opening.
The Examiner also asserts that Wenkstem’s nursery chair could be
scaled to be used with any user as a matter of design choice. Ans. 6.
6
Appeal 2017-005445
Application 11/793,100
However, the need for such scaling implicitly acknowledges differences
between Wenkstem’s nursery chair and the claimed device, thus requiring
structural modifications of the nursery chair. This evidences that Wenkstem
does not disclose all of the limitations claimed, as arranged or combined in
the same way as recited in the claim. See Net Moneyin, Inc. v. Verisign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Such differences between
Wenkstem and the claimed invention “invoke the question of obviousness,
not anticipation.” Id.
For these reasons, we do not sustain the rejection of claim 24, or of
claims 26—28, 30, and 31 depending therefrom, as anticipated by Wenkstem.
Claim 36 is drawn to a toilet training device comprising a pair of
elongate leg supports including features similar to the potty-training device
of claim 24 and, additionally, “a knee support region.” Appeal Br. 18—19
(Claims App.). The “knee support region” is similar to the “bend” of claim
24. The Examiner’s findings for claim 36 are similar to those for claim 24.
Non-Final Act. 4—5. The Examiner’s annotated Figure 6 of Wenkstem also
shows the location of a “Third Plane.” Ans. 6. The Examiner states that a
“short child” seated on the device could rest their calf on front wall 8
existing on that plane, whereas a “shorter child could use the surfaces on the
Second Plane as a calf support region.” Non-Final Act. 7.
We disagree with the Examiner’s position with regard to claim 36 for
the reasons discussed above for claim 24. More specifically, the Examiner’s
position for claim 36 also does not take into consideration the space on
Wenkstem’s device that is necessary for the child to place their buttocks
above the opening. Thus, for reasons similar to those discussed above, we
agree with Appellant that Wenkstem does not disclose the limitations of
7
Appeal 2017-005445
Application 11/793,100
each thigh support region being upwardly inclined towards the
corresponding knee support region, and each calf support region being
downwardly inclined away from the corresponding knee support region and
terminating at a front edge spaced above the flat surface, as claimed. See
Appeal Br. 15.
Accordingly, we do not sustain the rejection of claim 36, or of claims
37-40 and 42 44 depending therefrom, as anticipated by Wenkstem.
Rejection II
The Examiner’s application of Wosiek to the rejection of dependent
claim 32 (Non-Final Act. 7) does not cure the deficiencies of the rejection of
parent claim 24. Thus, we do not sustain the rejection of claim 32 as
unpatentable over Wenkstem and Wosiek.
Rejection III
The Examiner’s application of Ward to the rejection of dependent
claims 25 and 41 {id. at 7—8) does not cure the deficiencies of the rejection
of parent claim 24 or 36. Thus, we do not sustain the rejection of claims 25
and 41 as unpatentable over Wenkstem and Ward.
DECISION
We reverse the rejections of claims 24—28, 30-32, and 36-44.
REVERSED
8