Ex parte Hippely et al.

Board of Patent Appeals and Interferences

Jul 27, 1998

08387047 (B.P.A.I. Jul. 27, 1998)

Application for patent filed February 10, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEITH A. HIPPELY, LARRY R. WOOD,
BRIAN E. WALSH and TERENCE A. CHOY
____________
Appeal No. 97-3987
Application No. 08/387,0471
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 10, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 97-3987 Page 2
Application No. 08/387,047
In determining the teachings of Langer, we will rely on2
the translation provided by the PTO. A copy of the translation
is attached for the appellants' convenience.
BACKGROUND
The appellants' invention relates to a thermochromic toy
vehicle playset having a robot arm detailer. An understanding of
the invention can be derived from a reading of exemplary claims
1, 5 and 8, which appear in the appendix to the appellants'
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hippely et al. 4,961,716 Oct. 9, 1990
(Hippely)
Langer 1,578,242 Nov. 6, 19622
(Germany)
Goldfarb 2,092,463 Aug. 18, 1982
(United Kingdom)
Claim 4 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the appellants
regard as the invention.
Appeal No. 97-3987 Page 3
Application No. 08/387,047
Appeal No. 97-3987 Page 4
Application No. 08/387,047
Claims 1 through 3, 5 and 6 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hippely.
Claims 4 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hippely.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hippely in view of Goldfarb.
Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hippely in view of Goldfarb and Langer.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper No.
11, mailed April 24, 1997) for the examiner's complete reasoning
in support of the rejections, and to the appellants' brief (Paper
No. 10, filed March 3, 1997) for the appellants' arguments
thereagainst.
OPINION
Appeal No. 97-3987 Page 5
Application No. 08/387,047
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We will not sustain the examiner's rejection of claim 4
under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which the appellants regard as the invention.
The examiner determined (answer, p. 3) that the lack of
antecedent basis for "said liquids" rendered the claim
indefinite.

The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the
Appeal No. 97-3987 Page 6
Application No. 08/387,047
claims must be analyzed, not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable
language or modes of expression are available. Some latitude in
the manner of expression and the aptness of terms is permitted
even though the claim language is not as precise as the examiner
might desire. If the scope of the invention sought to be
patented cannot be determined from the language of the claims
with a reasonable degree of certainty, a rejection of the claims
under 35 U.S.C. § 112, second paragraph, is appropriate.
Thus, the failure to provide explicit antecedent basis for
terms does not always render a claim indefinite. As stated
above, if the scope of a claim would be reasonably ascertainable
by those skilled in the art, then the claim is not indefinite.
Appeal No. 97-3987 Page 7
Application No. 08/387,047
See Ex parte Porter, 25 USPQ2d 1144, 1145 (Bd. Pat. App. & Inter.
1992).
In this case, we agree with the appellants' position (brief,
p. 11) that the recitation of "a hot liquid reservoir and a cold
liquid reservoir" in parent claim 1 renders the language "said
liquids" definite under 35 U.S.C. § 112, second paragraph. That
is, it is our view that the scope of the invention sought to be
patented by claim 4 can be determined from the language of the
claims with a reasonable degree of certainty. Accordingly, the
decision of the examiner to reject claim 4 under 35 U.S.C. § 112,
second paragraph, is reversed.
The anticipation issues
We will not sustain the examiner's rejection of claims 1
through 3, 5 and 6 under 35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. § 102(b),
it must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a single
prior art reference. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
Appeal No. 97-3987 Page 8
Application No. 08/387,047
465 U.S. 1026 (1984). However, the law of anticipation does not
require that the reference teach what the appellants are
claiming, but only that the claims on appeal "read on" something
disclosed in the reference. Id.
Appeal No. 97-3987 Page 9
Application No. 08/387,047
Claims 1 through 3
Claims 1 through 3 each set forth that the playset
comprises, inter alia, (1) a trackway having an entrance gate and
an exit gate; (2) a dual tank unit supporting a hot liquid
reservoir and a cold liquid reservoir and defining first and
second ramps through the hot liquid reservoir and the cold liquid
reservoir respectively; (3) a base supporting the dual tank unit
so as to align a selected one of the ramps to extend between the
entrance gate and the exit gate; (4) a receiving station; and
(5) a robot arm.
Hippely teaches a playset which includes (1) a trackway
having an entrance portion (i.e, ramp member 34, annular track
section 40 and pickup station B) and an exit gate (i.e, exit
station B); (2) a dual tank unit supporting a hot liquid
reservoir and a cold liquid reservoir (i.e, immersion station C
and tanks 82); (3) a base supporting the dual tank unit (i.e,
cover member 14); (4) a receiving station (i.e, track surface
85); and (5) a robot arm (i.e, robotic arm apparatus 12).
We agree with the appellants' argument (brief, pp. 6-7) that
Hippely does not anticipate claims 1 through 3. In that regard,
Appeal No. 97-3987 Page 10
Application No. 08/387,047
we agree that the claimed ramps do not read on the bottom
surfaces of Hippely's tanks 82. Furthermore, Hippely's base
(i.e, cover member 14) does not support the tanks 82 so as to
align a selected one of the tanks to extend between the entrance
gate and the exit gate.
Since each element of claims 1 through 3 is not found in
Hippely, the decision of the examiner to reject claims 1 through
3 under 35 U.S.C. § 102(b) is reversed.
Claims 5 and 6
Claims 5 and 6 each set forth that the playset comprises,
inter alia, (1) a dual tank unit supporting first and second
liquid filled tanks having respective first and second ramps
therethrough; (2) a track set having a travel path for guiding a
toy vehicle through the first tank via the first ramp; (3) a
receiving station; and (4) a robot arm.
We agree with the appellants' argument (brief, pp. 6-7) that
Hippely does not anticipate claims 5 and 6. In that regard, we
agree that the claimed ramps do not read on the bottom surfaces
of Hippely's tanks 82. Furthermore, Hippely does not provide a
Appeal No. 97-3987 Page 11
Application No. 08/387,047
travel path for guiding a toy vehicle through the first tank via
the first ramp.
Since each element of claims 5 and 6 is not found in
Hippely, the decision of the examiner to reject claims 5 and 6
under 35 U.S.C. § 102(b) is reversed.
The obviousness issues
We will not sustain the examiner's rejection of claims 4 and
7 through 10 under 35 U.S.C. § 103.
Claims 4 and 7
The decision of the examiner to reject dependent claims 4
and 7 is reversed since the all the limitations of their parent
claims (i.e., claims 1 and 5) are not taught by Hippely for the
reasons set forth above.
Claims 8 and 9
Claims 8 and 9 each set forth that the playset comprises,
inter alia, (1) a dual tank unit having first and second liquid
filled tanks and first and second toy vehicle trackways
therethrough; (2) a first track segment for guiding a toy vehicle
Appeal No. 97-3987 Page 12
Application No. 08/387,047
The test for obviousness is what the combined teachings of3
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
to enter the first tank and traverse the first toy vehicle
trackway; (3) a second track segment for guiding a toy vehicle
emerging from the first tank; and (4) a robot arm.
We agree with the examiner's determination (answer, p. 5)
that it would have been obvious to provide Goldfarb's toy vehicle
wash apparatus as a segment leading to Hippely's toy vehicle
playset. However, we also agree with the appellants' argument
(brief, pp. 6-7 and 9) that the combined teachings of Hippely3
and Goldfarb would not have rendered obvious the subject matter
of claims 8 and 9. In that regard, we agree that the claimed
first and second toy vehicle trackway do not read on the bottom
surfaces of Hippely's tanks 82. Furthermore, there is no
teaching or suggestion in the applied prior art to provide a
first track segment for guiding a toy vehicle to enter the first
tank and traverse the first toy vehicle trackway. That is, there
is no suggestion of providing a trackway to the tanks 82 of
Hippely.
Appeal No. 97-3987 Page 13
Application No. 08/387,047
Since the subject matter of claims 8 and 9 is not suggested
by the applied prior art, the decision of the examiner to reject
claims 8 and 9 under 35 U.S.C. § 103 is reversed.
Appeal No. 97-3987 Page 14
Application No. 08/387,047
Claim 10
We have also reviewed the reference to Langer applied in the
rejection of claim 10 but find nothing therein which makes up for
the deficiencies of Hippely and Goldfarb discussed above.
Accordingly, the decision of the examiner to reject claim 10
under 35 U.S.C. § 103 is reversed.
Appeal No. 97-3987 Page 15
Application No. 08/387,047
CONCLUSION
To summarize, the decision of the examiner to reject claim 4
under 35 U.S.C. § 112, second paragraph, is reversed; the
decision of the examiner to reject claims 1 through 3, 5 and 6
under 35 U.S.C. § 102(b) is reversed; and the decision of the
examiner to reject claims 4 and 7 through 10 under 35 U.S.C.
§ 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-3987 Page 16
Application No. 08/387,047
ROY A. EKSTRAND
333 CONTINENTAL BOULEVARD
EL SEGUNDO, CA 90245-5012
APPEAL NO. 97-3987 - JUDGE NASE
APPLICATION NO. 08/387,047
APJ NASE
APJ ABRAMS
APJ COHEN
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 06 Jul 98
FINAL TYPED: