Ex Parte Jager

Board of Patent Appeals and Interferences

Aug 9, 2012

11234434 (B.P.A.I. Aug. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAUDIUS JAGER
____________

Appeal 2010-001353
Application 11/234,434
Technology Center 3600
____________

Before GAY ANN SPAHN, WILLIAM V. SAINDON, and
PATRICK R. SCANLON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Claudius Jager (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 22-41. The Examiner withdrew claims 1-
21, 42, and 43 from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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Application 11/234,434

2
The Claimed Subject Matter
The claimed subject matter relates to a toy for people or animals
“characterized primarily in that it comprises at least one core ring of a hard
polymeric, preferably thermoplastic material.” Spec. 1, l. 1 and Spec. 5, ll.
3-5. Claim 22 (the sole independent claim), reproduced below, with
emphasis added, is representative of the subject matter on appeal.
22. A toy comprising:
at least one ring-shaped core of a first
polymeric material said ring-shaped core having an
outer surface;
a covering of a second thermosetting
polymeric material, wherein covering is disposed
outwardly over at least portions of said outer
surface of said ring-shaped core; and
wherein said first polymeric material is
harder than said second polymeric material.

The Rejections
The following Examiner’s rejections are before us for review.
(1). Claims 22-25 and 41 are rejected under 35 U.S.C. § 102(b) as
anticipated by Willinger (US 6,202,598 B1, issued Mar. 20, 2001).
(2). Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Willinger and Axelrod (US 6,067,941, issued May 30, 2000).
(3). Claims 27-37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Willinger.
(4). Claims 38-40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Willinger and Tsengas (US 6,550,426 B2, issued Apr. 22,
2003).

Appeal 2010-001353
Application 11/234,434

3
OPINION
Rejection (1) – Anticipation based on Willinger
The Examiner determines that Willinger discloses each and every
limitation to anticipate independent claim 22. Ans. 3. In particular, the
Examiner finds that “Willinger discloses a toy for animals comprising a
ring-shaped core, as shown in Figures 13 and 14 the hole (24) is shown
going through the middle of the core of each rounded end which would
make the core ring-shaped.” Id.
Appellant contends that “the Examiner’s rejection incorrectly
interprets the disclosure of the Willinger Patent as anticipating all the
elements of the independent and dependent claims,” and “the Examiner’s
mere recitation of Willinger as having . . . a ring-shaped core[,] is improper
since it is NOT disclosed by the Willinger reference.” App. Br. 9-10.
The first step in an anticipation analysis is a proper construction of the
claims, and the second step is to compare the properly-construed claim to the
prior art. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003). The scope of claims in patent applications is determined by giving
claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Since the claim term “ring-shaped core” is not
defined in Appellant’s Specification, it is appropriate to consult a general
dictionary definition of the words “ring-shaped ” and “core” for guidance in
determining the ordinary and customary meaning of those words as viewed
by a person of ordinary skill in the art. See Comaper Corp. v. Antec, Inc.,
596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary and customary meaning
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of “ring-shaped” is “annular or doughnut-shaped” and the ordinary and
customary meaning of “core” is “the central or innermost part.”1 Thus, a
person of ordinary skill in the art would understand the claim term “ring-
shaped core” to mean “an annular or doughnut-shaped innermost part.”
Based on the proper construction of the claim term “ring-shaped
core,” we agree with Appellant that Willinger does not disclose an annular
or doughnut-shaped innermost part. Indeed, Willinger discloses a chewable
pet toy having “[a] relatively hard stiff core of molded material such as a
thermoplastic elastomer [which] provides a durable base for a softer, more
easily chewable overcoat layer formed over the core,” wherein “[t]he core
and overcoat may be molded in the shape of a dog bone.” Willinger, Title,
Abstract, first and second sentences, and col. 3, ll. 24-29. Although we
appreciate the Examiner’s position that Willinger’s chewable pet toy has
knobs or condyles 16 with bores 24 therethrough so that the core 10 includes
portions that are somewhat ring-shaped, we cannot agree with the Examiner
that Willinger’s core 10, when taken as a whole, is ring-shaped. See Figs. 9
and 15. Willinger’s Figures 9 and 15 are front elevational views of different
embodiments of a core 10 of a chewable pet toy which depict the core 10 as
being dog bone shaped 12, and Willinger also specifically discloses that the
“[c]ore 10 is shown in the shape of a dog bone 12.” See Willinger, col. 2, ll.
66-67, col. 3, ll. 11-12, and 24-25, and Figs. 9 and 15. Thus, even though
portions of Willinger’s core 10, such as knobs or condyles 16 having bores
24 therethrough, may be somewhat ring-shaped, the entirety of Willinger’s
core 10 is dog bone shaped 12. Moreover, the Examiner appears to be

1 Accessed at http://www.thefreedictionary.com/ring-shaped and
http://www.thefreedictionary.com/core on August 6, 2012.
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interpreting the core to comprise a ring-shape, rather than addressing the
actual claim language of “a ring-shaped core,” which requires the core to be
ring-shaped.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 22, and claims 23-25 and 41 dependent thereon, under 35
U.S.C. § 102(b) as anticipated by Willinger.
Rejections (2), (3), and (4) – Obviousness based respectively on
Willinger and Axelrod, Willinger alone, and Willinger and Tsengas

With respect to the Examiner’s obviousness rejections of claims 26-40
under 35 U.S.C. § 103(a), Appellant argues that neither Axelrod nor Tsengas
cures Willinger’s deficiency of not having a ring-shaped core and Appellant
also sets forth the same arguments discussed supra with respect to
independent claim 22 for the rejections of claims 26-40. For the same
reasons as discussed supra with respect to independent claim 22, we do not
sustain the Examiner’s rejections of claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Willinger and Axelrod, claims 27-37 under 35 U.S.C.
§ 103(a) as unpatentable over Willinger, and claims 38-40 under 35 U.S.C.
§ 103(a) as unpatentable over Willinger and Tsengas.

DECISION
We reverse the Examiner’s decision to reject claims 22-41.

REVERSED

Klh