Ex Parte Lee

Patent Trial and Appeal Board

Nov 25, 2013

12369139 (P.T.A.B. Nov. 25, 2013)

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.
12/369,139 02/11/2009 Betty Lee 545 190 3282
85444 7590 11/26/2013
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
HUSON, JOSHUA DANIEL
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
11/26/2013 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 BETTY LEE1
__________

Appeal 2011-012529
Application 12/369,139
Technology Center 3600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a pet toy.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 3, 4, 6, 7, 9, and 10 are pending and on appeal (App. Br. 1).
Claim 1 is representative and reads as follows:

1 Appellant identifies the real party in interest as Worldwise, Inc. (App.
Br. 1.)
Appeal 2011-012529
Application 12/369,139

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1. A pet toy system comprising a base, a wand having a first end and
a second end, said first end being removably appended to and supported by
said base, a connector removably affixed to the second end of said wand, a
plurality of elongated wires emanating from said connector, a cat attractant
toy removably affixed to ends of each of said elongated wires such that
when in use, the weight of said pet attractant toy causes said elongated wires
to assume an actuate shape and wherein said elongated wires and connector
are rotatable about said wand by applying lateral force to said longitudinal
wires.
Claims 1, 3, 4, 6, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a)
as obvious over Schramer (US 5,924,387, Jul. 20, 1999) in view of Haffner
(US 5,339,770, Aug. 23, 1994) (Ans. 5).
The Examiner relies on Schramer for teaching “a pet toy system
comprising a base (Fig. 1 #11 ), a wand (Fig. 1 #12-14) having a first end
and a second end,” “the first end [being] removably appended to and
supported by the base,” “a connector (Fig. 1 #15) removably affixed to the
second end of the wand,” and “a cat attractant toy removably affixed to the
end of the elongated wire such that when in use, the weight of the pet
attractant toy causes the elongated wire to assume an actuate shape,”
wherein “the elongated wires and connector are rotatable about the wand by
applying lateral force to the longitudinal wire” (Ans. 5).
The Examiner relies on Haffner for teaching “a pet toy having a base
(Fig. 1 #24), a wand (Fig. 1 #22), . . . a connector (Fig. 1 #12) attached to the
wand,” and “a plurality of elongated wires (Fig. 1 #18) emanating from the
connector[, t]he elongated wires having a plurality of toys at each of their
ends” (Ans. 5). The Examiner concludes that it would have been obvious
“to have provided the connector as taught by Schramer with the plurality of
elongated wires emanating from it as taught by Haffner in order to provide
Appeal 2011-012529
Application 12/369,139

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multiple sources of stimuli to the pet as well as to provide multiple pets with
their own toy for stimulation” (id. at 5-6).
ANALYSIS
Appellant argues that there is no “teaching in Schramer suggesting
that the post consisting of subparts 12 and 14 is to be removable from the
base for any purpose whatsoever” (App. Br. 4). We are not persuaded.
As noted by the Examiner (Ans. 8), Schramer discloses a toy
comprising “a base 11, which has a central socket 11a closely receptive of a
stationary, rigid cylindrical post 12 which extends centrally upwardly from
base 11” (Schramer, col. 2, ll. 61-64). We agree with the Examiner that this
teaching suggests a post 12 that is capable of being withdrawn from the
base 11 and is therefore “removably appended” to the base. We note
Appellant’s argument that, “if one wishes to assemble parts (permanently),
and to do so without nails or adhesive, such parts can be made to fit so
snugly that they are not intended to be releasable from one another” (Reply
Br. 2). However, in the absence of any teaching in Schramer that the
assembly is permanent,2 we cannot agree that Schramer fails to suggest that
the post 12 is removably appended to the base 11.
Appellant also argues:
Not only would one not modify Schramer by Haffner for, to do
so, one would have to convert Schramer’s ball connector 15 to
dome 12 (to which there is no suggestion) but, even if one was

2 We note that Schramer actually discloses “that the serial relationship
between the longer and shorter post, as selected, and the coil and linear wire
springs provides a system which is selectively and easily adjusted to fast or
slower movements of the toy fascinator 17 as designed” (Schramer, col. 3,
ll. 21-24 (emphasis added)), implying that the assembly is not permanent.
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Application 12/369,139

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to do so, the claims are not taught nor rendered obvious for the
attractant toys of Haffner, as noted, simply hang from dome 12.
(App. Br. 5.) We are not persuaded.
As noted in the Examiner’s Answer, “the Examiner is simply using
the secondary reference of Haffner to teach that it is known to attach
multiple toys to a single central mast connector” (Ans. 9). The Examiner is
not replacing Schramer’s ball connector 15 with Haffner’s dome 12, nor is
he replacing Schramer’s wire 16 with Haffner’s wires 18. Instead, the
Examiner concludes that it would have been obvious “to have provided the
connector as taught by Schramer with the capability of employing multiple
wires with toys at their ends so that more than one animal would be capable
of using the toy at any given time” (id.). Appellant has not adequately
explained why this reasoning is in error.
Claim 3 depends from claim 1 and recites that “a plurality of pet
attractants are provided each being interchangeably connected to ends of
said wires.” Appellant argues that “Schramer teaches that the attractants are
preassembled with wire 16 and are not removable therefrom” (App. Br. 5).
We are not persuaded.
As noted by the Examiner (Ans. 10), Schramer discloses that “the
outer or other free end of the wire spring 16 is suitably looped in a circular
pattern, as indicated at 41 [of Figure 8], to provide an anchor for attaching
the fascinator bait 17 thereto” (Schramer, col. 5, ll. 10-13). We agree with
the Examiner that this suggests that bait 17 is removable from wire 16
(Ans. 10).
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Application 12/369,139

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In the Reply Brief, for the first time on appeal, Appellant separately
argues the features of claim 7 (Reply Br. 2). According to 37 C.F.R.
§ 41.37(c)(1)(vii), in the Appeal Brief:
For each ground of rejection applying to two or more claims,
the claims may be argued separately or as a group. . . .
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.
37 C.F.R. § 41.37(c)(1)(vii). In the Appeal Brief, Appellant argued the
claims as a group and did not present any separate arguments as to claim 7.
Thus, Appellant’s arguments in the Reply Brief with respect to the separate
patentability of claim 7 are untimely and will not be considered on appeal.
CONCLUSION
The evidence supports the Examiner’s conclusion that claims 1 and 3
would have been obvious. We therefore affirm the obviousness rejection of
claims 1 and 3. Claims 4, 6, 7, 9, and 10 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc