Ex Parte LI et al

Patent Trial and Appeal Board

Oct 13, 2017

13705994 (P.T.A.B. Oct. 13, 2017)

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.
13/705,994 12/05/2012 Josiah To Sang Li MAT3Z172 7284
66078 7590 10/17/2017
KOLISCH HARTWELL, P.C.
Mattel Customer Number
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
10/17/2017 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):
docketing @khpatent.com
chuck@khpatent.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSIAH TO SANG LI, JIAN SHENG HU,
WAI NANG LAM, and SUN HO CHAN
Appeal 2016-006603
Application 13/705,9941
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Josiah To Sang Li et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision in the Final Action (dated May 21, 2015,
hereafter “Final Act.”) rejecting claims 1, 2, 4—7, and 9-14.2 We have
jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants’ Appeal Brief (hereafter “Br.”), filed Nov. 23,
2015, the real party in interest is Mattel, Inc. Br. 4.
2 Claims 3 and 8 are cancelled and claims 15—20 are withdrawn. Br. 31—35.
Appeal 2016-006603
Application 13/705,994
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention “relates to frictional joints for toy figures.”
Spec. para. 2.
Claims 1 and 13 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A hip joint assembly for a toy figure, comprising:
a pelvis housing having a front portion and a back
portion, where the front portion and the back portion in
combination define at least two side openings in the pelvis
housing, and a contoured friction plate vertically disposed
within the pelvis housing;
a first leg section having a first disk member coupled to
the first leg section via a first hip post, and configured so that
the first disk member is disposed within the pelvis housing and
the first hip post passes through a side opening in the pelvis
housing, and the first disk member having a first disk face;
a second leg section having a second disk member
coupled to the second leg section via a second hip post, and
configured so that the second disk member is disposed within
the pelvis housing and the second hip post passes through a side
opening in the pelvis housing, and the second disk member
having a second disk face;
wherein each face of the contoured friction plate includes
a plurality of contour features and the first disk face and the
second disk face each abut an opposing face of the contoured
friction plate, such that the contoured features are sandwiched
between the first disk member and the second disk member and
frictional interaction between each disk face and the
corresponding contoured friction plate face renders each leg
section posable as it is pivoted around an axis defined by the
corresponding hip post.
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Appeal 2016-006603
Application 13/705,994
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4—7, and 9-14 under 35
U.S.C. § 102(e) as being anticipated by deFelice et al. (US
2011/0097969 Al, pub. Apr. 28, 2011, hereafter “deFelice”).
II. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over deFelice.
ANALYSIS
Rejection I
The Examiner finds that deFelice discloses each of the limitations of
independent claim 1. Final Act. 3. Specifically, the Examiner finds that
deFelice’s friction pad 82 constitutes a contoured friction plate because the
“comers/edges of item 82 and top and bottom plates” represent contour
features. Id. The Examiner makes similar findings for independent claim
13. Id. at 4—5.
Appellants argue that “friction plate 82 of deFelice cannot correspond
to the recited contoured friction plate” because “the only visible face of
friction plate 82 is flat and featureless,” and deFelice does not disclose
otherwise. Br. 21 (citing deFelice, Fig. 3). According to Appellants, the
Specification defines “a contour feature as ‘any feature configured to
enhance the frictional contact between disk member 36 and friction plate 40,
and thereby achieve a desired degree of resistance to leg movement,’” and
moreover, the Specification distinguishes “between a friction plate that is
‘relatively smooth’ and one that incorporates one or more contour features.”
Br. 22 (citing Spec. para. 21). Appellants assert that because the faces of
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Application 13/705,994
deFelice’s disk members 80 do not and cannot make frictional contact with
the comers, edges, and top and bottom plates of friction plate 82, deFelice is
not anticipatory under a broadest reasonable interpretation of the claims.
See Br. 23-26.
The Examiner responds that the terms “face” and “contour feature”
are broad, and that under a broadest reasonable interpretation in light of the
supporting disclosure, “both comers/edges of the center portion of item 82
and the top and bottom plates of item 82 are ‘contour features’, and the
comers/edge portions of the center section of item 82 (friction pad/plate) are
sandwiched between the disk members [80].” Examiner’s Answer 6 (dated
Apr. 20, 2016, hereafter “Ans.”). The Examiner states that because
Appellants’ term “face” encompasses “multiple surfaces, each ‘face’ of item
82 can be interpreted to be the left and right halves of item 82 including the
multiple surfaces that wrap around the sides and up under the inside surfaces
of the top and bottom plates.” Id. The Examiner notes that not all of the
contour features must be sandwiched between the disk members, and that
because “some of the contour features (the comers/edges) are sandwiched,
the claim limitations have been met.” Ans. 7.
Appellants’ arguments are persuasive for several reasons. First,
independent claim 1 requires that “the first disk face and the second disk
face each abut an opposing face of the contoured friction plate” and
independent claim 13 requires that “each disk face abuts opposing faces of
the contoured friction plate.” Br. 31, 33 (Claims App.). An ordinary and
customary meaning of “abut” is “to touch along a border.” Merriam
Webster’s Collegiate Dictionary (11th ed. 2005). Such an interpretation is
consistent with Appellants’ Specification that discloses that “faces 42 of
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Application 13/705,994
friction plate 40 are typically configured to abut disk face 39 of each leg
member,” wherein “each outwardly oriented face 39 of a disk member 36
makes substantial frictional contact with a side or face 42 of a friction plate
40.” Spec. para. 18. Appellants’ detail of Figure 3 of deFelice is shown
below:
Appellants’ annotated detail of Figure 3 of deFelice shows disk 80
and friction pad 82. Br. 25.
As shown above, when the hip joint of deFelice is assembled, “disk
members 80 . . . abut and sandwich the (plain) friction plate 82.” Id.
Accordingly, Appellants are correct to assert that “disk members 80 are
sized appropriately to nestle between the upper and lower plates of friction
plate 82.” Id. In contrast, the Examiner has not pointed to any portion of
deFelice that discloses that any of the comers, edges, and top and bottom
plates of deFelice’s friction pad/plate 82 abut an opposing face of disks 80.
We, thus, agree with Appellants that the comers, edges, and top and bottom
plates of deFelice’s friction pad/plate 82 do not abut or make contact with
(touch) a face of deFelice’s disks 80, as called for by each of independent
claims 1 and 13. See id. at 23.
Secondly, we note that during examination of a patent application,
pending claims are given their broadest reasonable constmction consistent
with the Specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
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Application 13/705,994
1364 (Fed. Cir. 2004). In this case, we agree with Appellants that under a
broadest reasonable interpretation of the claims consistent with the
Specification, a “contour feature” is distinct from a smooth surface and
enhances, or increases frictional contact, and the Examiner does not
adequately explain how any of the comers, edges, and top and bottom plates
of deFelice’s friction pad/plate 82 make frictional contact with disks 80, let
alone how they enhance, or increase fictional contact. See Br. 23. As noted
above, such an interpretation is consistent with Appellants’ Specification,
which states that “a contour feature is any feature configured to enhance the
frictional contact between disk member 36 and friction plate 40,” and could
contact a relatively smooth face or another contour feature. Spec, paras. 21,
22. Appellants’ annotated detail of Figure 3 of deFelice is shown below:
Appellants’ annotated detail of Figure 3 of deFelice shows disk 80,
friction pad 82, shaft and ball assembly, and retaining housing in the rear
wall of pelvis back shell portion 34B. Br. 24.
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Application 13/705,994
Appellants are correct in that because friction plate 82 is intended to
be inserted into the bracket at the base of shaft 62 and the combination is
then fitted within a retaining housing in the rear wall of pelvis back shell
portion 34B, “[t]he side edges of the upper horizontal portion of friction
[pad/]plate 82 would ... be enclosed by the side walls of the bracket at the
base of the shaft,” whereas “the side edges of the lower horizontal portion of
friction [pad/]plate 82 would be snug within the side walls of the retaining
housing.” Id. at. 24—25. We, thus, agree with Appellants that when the hip
joint of deFelice is properly assembled, the comers of the top and bottom
plates of friction pad/plate 82 would not be “permitted to make contact
[with] a disk member 80.” Id. at 25. Hence, although deFelice’s comers,
edges, and plates of friction pads 82 are sandwiched between disk members
80 (see Ans. 7), nonetheless, in contrast to the Examiner’s position, deFelice
fails to disclose “frictional interaction between each disk face and the
corresponding contoured friction plate face,” as called for by each of
independent claims 1 and 13.
Lastly, we note that regardless of what the Examiner considers a
“face” of the contoured friction plate (see Ans. 6), the Examiner has not
adequately established that other than the flat front face of friction pad 82,
no other surfaces have “frictional interaction” with the respective faces of
disks 80. See Br. 21, 23—25.
Accordingly, for the foregoing reasons, we agree with Appellants that
deFelice’s friction pad 82 does not constitute a “contoured friction plate”
having “contour features,” as required by each of independent claims 1 and
13, and the Examiner’s rejection “is premised on an unreasonable claim
construction” that is unsupported by evidence. See id. at 26. Therefore, we
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Application 13/705,994
do not sustain the rejection under 35 U.S.C. § 102(e) of independent claims
1 and 13, and their respective dependent claims 2, 4—7, 9-12, and 14 as
anticipated by deFelice.
Rejection II
The Examiner’s modification of deFelice does not remedy the
shortcomings of the anticipation rejection based upon deFelice discussed
supra. See Final Act. 5—6. Therefore, for the same reasons discussed above,
we also do not sustain the rejection under 35 U.S.C. § 103(a) of claim 14 as
unpatentable over deFelice.
SUMMARY
The Examiner’s decision to reject claims 1, 2, 4—7, and 9-14 under 35
U.S.C. § 102(e) as anticipated by deFelice is reversed.
The Examiner’s decision to reject claim 14 under 35 U.S.C. § 103(a)
as unpatentable over deFelice is reversed.
REVERSED
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