Ex Parte Mager

Patent Trial and Appeal Board

Sep 19, 2018

14256400 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/256,400 04/18/2014
1688 7590 09/19/2018
Sandberg Phoenix & von Gontard, PC
120 S. Central Ave.
Suite 1600
St. Louis, MO 63105
FIRST NAMED INVENTOR
Carl Ray Mager
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MAGCE442US 7683
EXAMINER
BURGESS, MARC R
ART UNIT PAPER NUMBER
3647
MAIL DATE DELIVERY MODE
09/19/2018 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 CARL RAY MAGER
Appeal 2017-011098
Application 14/256,400
Technology Center 3600
Before MICHAEL L. HOELTER, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1-5, 8, 9, 12, 15, 16, 18-23, and 24--
27. App. Br. 3. Claims 6, 7, 10, 11, 13, 14, and 17 have been canceled and
claim 24 has been withdrawn from consideration. App. Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we do
not find error in the Examiner's rejections.
Accordingly, we AFFIRM.
Appeal 2017-011098
Application 14/256,400
THE CLAIMED SUBJECT MATTER
The disclosed subject matter is directed to "employ[ing] floating
decoys to lure or entice waterfowl, for example ducks, closer to the hunter."
Spec. ,r 3. Apparatus claims 1, 12, and 18 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A self-contained waterfowl decoy animation device,
compnsmg:
a frame;
at least two pulley wheels rotatably attached to the frame;
a drive motor operatively associated with one of said
pulley wheels;
a drive belt around the pulley wheels; and
an electric source operatively associated with the drive
motor.
REFERENCES RELIED ON BY THE EXAMINER
Petroski et al.
Brewer
Tourtellotte et al.
Elliott et al.
US 6,374,529 Bl
US 2006/0207158 Al
US 7,273,198 B2
US 7,975,422 B2
THE REJECTIONS ON APPEAL 1
Apr. 23, 2002
Sept. 21, 2006
Sept. 25, 2007
July 12, 2011
Claims 1-5, 12, 15, 16, 21, 22, 26, and 27 are rejected under 35
U.S.C. § I02(a)(l) as anticipated by Elliott.
Claims 8 and 23 are rejected under 35 U.S.C. § 103 as unpatentable
over Elliott and Petroski.
Claims 18, 20, and 25 are rejected under 35 U.S.C. § 103 as
unpatentable over Elliott and Brewer.
1 Because claim 24 has been withdrawn (App. Br. 3), we do not address the
Examiner's rejection of this claim as being indefinite under 35 U.S.C. § 112,
second paragraph, or it being obvious under 35 U.S.C. § 103.
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Application 14/256,400
Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Elliott, Brewer, and Petroski.
Claims 4, 5, 9, 12, 15, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Elliott and Tourtellotte. 2
Claims 18, 20, and 25 are rejected under 35 U.S.C. § 103 as
unpatentable over Elliott, Tourtellotte, and Brewer.
ANALYSIS
The rejection of claims 1-5, 12, 15, 16, 21, 22, 26, and 27
as anticipated by Elliott
Appellant argues claims 1-5, 12, 15, 16, 21, 22, 26, and 27 together
(App. Br. 9-13) and, additionally, presents separate arguments for dependent
claim 16 (App. Br. 13-14). We select claims 1 and 16 for review, with the
remaining claims standing or falling with their respective parent claim. See
37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1
Claim 1 recites, simply, "a frame;." Appellant relies on the "Collins
English Dictionary" for the definition thereof and concludes:
Thus, to be a 'frame', the component needs both a) e.g., an
arrangement of 'members', see Fig. 1 - items 14, 16, to which
other material is attached or fitted (i.e., the pulleys, drive belt,
drive motor) and b) gives the decoy device its strength and shape.
App. Br. 9. The Examiner provides a similar definition stating, "Please note
that frame can be defined as 'a structure that forms part of an object and
gives it its strength and shape."' Final Act. 13; see also App. Br. 10.
2 The Examiner also incorrectly included claim 17, which has been canceled.
Final Act. 8, App. Br. 3.
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Application 14/256,400
Addressing the Examiner's definition (and, indirectly, Appellant's
own), Appellant contends that that part of the definition wherein "the frame
'forms a part of an object', really applies to any structural component, and
hence, adds nothing." App. Br. 11. We, thus, address the remaining part of
this definition, i.e., the frame giving "strength and shape."
Appellant contends that the "extremely broad interpretation of the
term 'frame' urged by the Examiner extends well beyond any appropriate
'reasonable interpretation' called for under MPEP 2111" and that it has
"nothing to do with what Applicant sought to achieve."3 App. Br. 11; Reply
Br. 6; see also Reply Br. 3, 5. In seeking to understand Appellant's
"extremely broad interpretation" contention, we note that the remaining part
of both proposed definitions are directed to giving something "its strength
and shape." Upon closer inspection, we note that Appellant's "something"
is "the decoy device" whereas the Examiner's "something" is broader, i.e.,
"an object." See supra. For the sake of argument, we will adopt Appellant's
narrower construction that the "something" being provided "strength and
shape" is the "decoy device," and not some other object. 4
In rendering the present anticipation rejection of claim 1, the
Examiner correlated the recited "frame" to Elliott's item 42. Final Act. 3.
Appellant, on the other hand, contends that Elliott's "quadruple idler pulley
3 The Examiner, addressing this point, stated, "The issue is again that while
Elliot discloses a device which meets the claim as written, the appellant does
not feel it is the same as what they meant." Ans. 11.
4 We do this, as stated above only "[f]or the sake of argument" knowing that
such assumption may violate such well-known precedent as giving claim
terms their broadest reasonable interpretation and also the prohibition of
incorporating limitations from the Specification into the claims. However,
we make this assumption for the sake of brevity.
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Appeal 2017-011098
Application 14/256,400
assembly [42 (Elliott 3:59)] is in fact not a 'frame' which gives other
material attached or fitted to it strength and shape as discussed above." App.
Br. 10. Instead, as per Appellant, Elliott's item 42 "serves rather like a
'hitching rope' would, to which four horses could be tied together in one
spot" and, further, Elliott's "assembly does not give Elliott's device its
strength- it merely tethers disparate idler pulley units to one area." App.
Br. 1 O; see also Reply Br. 6. In short, Appellant contends that the various
decoys of Elliott's decoy device "are intended to vary considerably as the
device is configured in diverse ways to lure ducks" and, further, that Elliott's
item 42 fails to "give [Elliott's "disparate idler pulley units"] any defined
shape." App. Br. 10, 11.
Obviously, Appellant is addressing more than simply Elliott's item
42, but is addressing Elliott's belt 18, decoys 12, and various idler pulleys
140 as well. In Elliott, the belt and attached decoys are depicted as
travelling around spaced idler pulleys in an irregular, jagged circuit that
extends well beyond the periphery of item 42. See Elliott Fig. 3. Thus, as
Appellant's argument is understood, Elliott's item 42 fails to provide
"strength and shape" to Elliott's tortuous path, and hence Elliott's item 42 is
not a "frame" as this term is defined. This understanding of Appellant
addressing more than simply Elliott's item 42 is buttressed by Appellant's
further contention "that Elliott's device is essentially (and intentionally) a
largely unbounded, in reality, frameless decoy device." App. Br. 11; see
also Reply Br. 3, 5. In short, Appellant's contention is that Elliott's item 42
fails to provide "strength and shape" to Elliott's "decoy device." See supra.
However, tempting Appellant's contention might be, it is noted that
Appellant's own frame 12 operates in much the same manner as does
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Application 14/256,400
Elliott's item 42 (only to a lesser degree). For example, Appellant's decoys
42, 43, and 44 are each separately secured to different portions of a moving
belt via a "flexible tether line." See Spec. ,r,r 26, 27; Fig. 2. Thus,
Appellant's own decoy device does not limit decoy travel to strictly the
outline or confines of frame 12. Instead, the actual travel of Appellant's
decoys 42, 43, and 44 are subject to the vicissitudes of the surrounding
environment. Consequently, it is not made clear how Appellant's frame 12
is able to provide "strength and shape" to Appellant's decoy device, whereas
Elliott's item 42 is unable to do so. Conversely, the same reasons Appellant
argues that Elliott fails to disclose a "frame" would apply equally well to
Appellant's own frame. This is because, in both devices, frames 12, 42
provide a structure each directly supporting a plurality of pulley wheels
around which both the belt and the decoys travel. Granted, Elliott's decoys
are depicted as traveling along a (presumably) longer circuit involving more
idler pulleys, but that is not precluded by claim 1. Instead, claim 1 simply
recites "a frame" and "at least two pulley wheels rotatably attached to the
frame." Appellant does not explain how this is not clearly depicted and/or
described in Elliott.
Alternatively, should Appellant's focus be solely on Elliott's item 42
and whether this item ( and not any belt or decoy travel as disclosed in
Elliott) can be properly correlated to the recited "frame," then this
perspective by Appellant would likewise miss its mark. This is because
Elliott describes and depicts item 42 as comprising a series of horizontal
inter-connected supports 136, each arranged at right-angles to the other and
forming a cross-like shape about a vertical support. See Elliott 6:35--44; Fig.
12. Elliott states that these horizontal supports 136 "could be made of
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Application 14/256,400
aluminum," if desired (Elliott 6: 15-18), thereby indicating that these
supports, and hence item 42, provide some degree of stability and rigidity,
such as when deployed in an underwater environment. In view of such
disclosures, it is not clear how it can be said that Elliott's item 42 fails to
provide support, and hence is not "a frame," in the normal sense of the word.
Accordingly, and based on the record presented, we are not persuaded the
Examiner erred in correlating Elliott's item 42 to the recited "frame."
Claim 1 also recites, "a drive motor operatively associated with one of
said pulley wheels." Appellant contends, "[i]n contrast, the drive motor 14
of the Elliott decoy device is not even remotely associated operationally with
a pulley wheel on Elliott's alleged 'frame' (the quadruple idler pulley
assembly 42) of that device." App. Br. 12. Instead, according to Appellant,
Elliott's "drive motor 14 is shown as being well off to the right side of
'frame' 42, and not as being associated with any of 'said pulley wheels ...
attached to the frame."' App. Br. 12. Appellant also addresses the claim
phrase "operatively associated with" stating that the Examiner's
understanding of this phrase as applying "to any and all pulley wheels in the
decoy device which the drive motor energizes, regardless of their location,
however, remote ... would be an unreasonable interpretation given the
specific wording used by Appellant." App. Br. 13.
Elliott discusses drive wheel assembly 14, and its various belts,
pulleys, motors, shafts, etc. See Elliott 3:30-42; 5:18-32; Fig. 5. Elliott
states that when motor 62 is energized, a primary pulley 78 will rotate and
that, "[ w ]hen the primary drive pulley 78 is connected to the corresponding
groove in the secondary drive pulley 80 it will also be caused to rotate."
Elliott 5:20-22. Elliott further states, "[t]he elastic drive belt 18 (see FIG. 1)
7
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Appeal 2017-011098
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Hence, Elliott expressly describes an interconnection between motor 62 and
a secondary drive pulley 80 about which drive belt 18 is placed and caused
to move. 5 It is this drive belt 18 that is depicted in Elliott's Figure 3 as
extending around the pulley wheels 140 mounted on Elliott's frame 42. See
also Elliott Fig. 12. Thus, even assuming a direct connection between
Elliott's motor 62 and one of frame 42's pulley wheels 140 is not expressly
disclosed in Elliott, claim 1 does not require such a direct connection.
Instead, claim 1 simply recites, "a drive motor operatively associated with
one of said pulley wheels" that are "attached to the frame," and Appellant is
not persuasive that Elliott fails to disclose this limitation. Accordingly, and
based on the reasons provided, we are not persuaded the Examiner erred in
Appeal 2017-011098
Application 14/256,400
depicted in Elliott's Figure 11 as support in teaching this limitation. Final
Act. 6. Appellant contends that this Figure 11 configuration is to a different
embodiment, and "not the quadruple idler pulley assembly 42" embodiment.
App. Br. 14. Indeed, Figure 11 depicts how a "double idler pulley
assembly" might be folded for transport. Elliott 2:20-21. However, when
Elliott discusses the cruciform configuration of Figure 12, Elliott clearly
states, "[t ]his assembly may also be folded to facilitate transport." Elliott
6:35-37. Appellant does not address this latter teaching in Elliott or
otherwise explain how the folding operation depicted for the Figure 11
embodiment of Elliott is unsuitable for the folding operation expressed with
respect to Elliott's Figure 12 embodiment.
On this point, and still addressing claim 16, the Examiner
alternatively relies on Elliott and Tourtellotte as also disclosing this
limitation. Final Act. 8, 11 (referencing Tourtellotte 8:31-35); see also
Tourtellotte Figs. 1, 2. It is not disputed from a review of Tourtellotte that
this reference readily discloses first and second elongated frame members
interconnected about a pivot point thereby allowing Tourtellotte's device to
pivot from a cruciform configuration to a generally linear configuration.
However, when addressing Tourtellotte, Appellant contends that this
reference "is non-analogous art and is not available for purposes of
establishing obviousness." App. Br. 22. Appellant acknowledges, "[p]rior
art is analogous if it is from the same field of endeavor or if it is reasonably
pertinent to the particular problem the inventor is trying to solve." App. Br.
22 ( citation omitted). Appellant contends that the first prong of the non-
analogous art test (i.e., field of endeavor) is not met because Tourtellotte
pertains to "dry land stands for roadside barriers and signs" and "is not part
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Appeal 2017-011098
Application 14/256,400
of the 'field' of frames for waterfowl decoy animation devices employed in
watery environs .... " App. Br. 22. Regarding the second prong of the non-
analogous art test (i.e., reasonably pertinent to a particular problem),
Appellant contends that this test is likewise not met because "[ s ]imply put,
Tourtellotte[ is] related to stands for roadside barriers and signs" and as
such, this "would not 'commend itself to practitioners of decoy animation
devices." App. Br. 22.
Appellant's latter rationale is problematic since it appears Appellant is
simply repeating why Tourtellotte is not in the same field of endeavor, and
not why Tourtellotte fails to be reasonably pertinent to a particular problem.
Here, as expressed in claim 16, the issue is the pivoting of first and second
members about a pivot point, from a cruciform configuration into a
generally linear configuration. Tourtellotte teaches that its cruciform frame
configuration may be pivoted into a more linear configuration so as to be
able to fold the device into "a compactable bundle for handling and
shipping." Tourtellotte Abstract; see also Tourtellotte Figs. 1, 2. The
primary reference to Elliott also teaches folding of the frame "to facilitate
transport." Elliott 6:36-37. Thus, Tourtellotte simply depicts more
specifically how the folding of a cruciform frame can be achieved, and thus
would, instead, appear to commend itself to a skilled person upon reading
Elliott. Appellant does not make clear how the issue of folding a cruciform
frame shape into one that is more compact is not the same issue Tourtellotte
addresses. Hence Appellant is not persuasive that Tourtellotte fails to be
reasonably pertinent to the particular cruciform folding issue that Elliott
mentions and which Tourtellotte more specifically depicts.
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Application 14/256,400
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 16.
The rejections of claims 8, 18, 19, 20, 23, and 25
over various combinations of Elliott, Petroski, and Brewer.
The Examiner relies on the teachings of Petroski (in combination with
Elliott) for disclosing the additional limitations of claim 8 and 23. Final Act.
6. We select claim 8 for review which recites "readily attachable and
detachable stilts" secured to the frame. App. Br. 19. Appellant contends,
"nothing in Petroski would lead one skilled in the art to jump from using
height adjustable stake sections to the separate teaching of making stilts
which are readily attachable and detachable as devised by Appellant." App.
Br. 19. To be clear, Appellant contends that Petroski "does not feature
'readily detachable' stilts" and that "the stakes of Petroski's device cannot be
readily detached because to do so would literally collapse the system of
stakes employed by Petroski." App. Br. 20.
Here, Appellant seems to address the result or outcome of any
detachment (i.e., "would literally collapse the system") and not whether
Petroski teaches "readily attachable and detachable" devices as claimed. It
is not disputed that Petroski teaches threaded stakes. See Petroski 11 :38--42
("threaded portions" 76); Fig. 6. However, Appellant contends, "[a] review
of the Petroski Figures shows that all require that screw and bolts be
extensively manipulated to detach/attach the components of the Petroski
stakes." App. Br. 17. Whether the manipulation of Petroski's screw and
bolt is extensive or not, is relative, as is the claim term "readily attachable
and detachable." Nevertheless, Appellant does not persuasively explain how
a screw and bolt configuration is not also, or equally, "readily attachable and
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Application 14/256,400
detachable." Nor is Appellant persuasive that one skilled in the art would be
unable to 'jump" from Petroski' s teaching of using threaded stakes to
realizing that such a threaded attachment would also render them "readily
attachable and detachable as devised by Appellant." App. Br. 19.
Accordingly, we are not persuaded that "Petroski is not readily
combinable with Elliott ... because it does not teach or suggest this feature
and because it would disintegrate the very structure of Petroski 's quite
different type of decoy system." App. Br. 20-21.
Regarding claims 18, 19, 20, and 25, Appellant contends, "[a]dding
Brewer to Elliott or to Elliott and Petroski does not remedy the deficiencies
in Elliott, or in Elliott plus Petroski noted above." App. Br. 21. The
Examiner is not relying on Brewer to remedy any deficiency with either
Elliott or Petroski. Final Act. 8. Consequently, based on the record
presented, we sustain the Examiner's rejection of claims 8, 18, 19, 20, 23,
and 25.
The rejection of claims 4, 5, 9, 12, 15, 16, 18, 20, 25 as unpatentable over
Elliott and Tourtellotte or, over Elliott, Tourtellotte, and Brewer
The Examiner alternatively rejected claims 4, 5, 9, 12, 15, and 16 as
unpatentable over Elliott and Tourtellotte; and claims 18, 20, and 25 as
unpatentable over Elliott, Tourtellotte, and Brewer. Final Act. 8-12.
Appellant argues claims 4, 5, 9, 12, 15, 16, 18, 20, and 25 together. App. Br.
21-23. We select independent claim 12 for review, with the remaining
claims standing or falling therewith.
Independent claim 12 recites more than just "a frame" ( as is stated in
claim 1 above), but instead recites "a frame comprising a first elongated
frame member and a second elongated frame member, said frame members
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Application 14/256,400
configured in a cruciform configuration for use." The Examiner relies on
Tourtellotte for such teachings. Final Act. 9. Appellant contends,
"Tourtellotte is non-analogous art and is not available for purposes of
establishing obviousness." App. Br. 22. Regarding the "pertinent to the
particular problem" prong of the non-analogous art test, Appellant contends
that Tourtellotte, which is "related to stands for roadside barriers and signs
would not 'commend itself to practitioners of decoy animation devices."
App. Br. 22 (referencing omitted). This is because of their different use and,
also, "the structure of a road sign's stand versus a decoy system's frame
structure ... are just some obvious points of significant difference." App.
Br. 22-23 (reference omitted).
The fact that the two (Elliott and Tourtellotte) are non-analogous
because they have different uses or structure does not necessarily mean that
Tourtellotte' s teachings would not have commended itself to a skilled person
under the "pertinent to a particular problem" consideration. See supra. To
be clear, the Examiner states that one skilled in the art would "modify the
system as taught by Elliott with the two-piece folding support system as
taught by Tourtellotte in order to reduce the complexity and part count of the
frame while retaining the ability to fold the frame." Final Act. 9. The
Examiner's focus on frame folding is supported by Elliott itself which
teaches that the cruciform frame depicted in Fig. 12 "may also be folded to
facilitate transport," but does not illustrate this frame in a folded
configuration. Elliott 6:36-37. Tourtellotte likewise addresses folding a
cruciform frame for "handling and shipping" purposes (Tourtellotte
Abstract), yet expressly illustrates and describes, in detail, how a two-legged
configuration would be folded. Compare Tourtellotte Figs. 1 and 2; see also
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Application 14/256,400
Tourtellotte 8:31-52. Thus, Tourtellotte's teachings would, indeed, appear
to commend itself to one skilled in the art regarding an inquiry into
cruciform frames and, more specifically, cruciform frames that fold in an
effort "to reduce complexity and part count." Final Act. 9.
Appellant also contends, "Declaring Tourtellotte to be analogous art
would be a major, and fully unjustified, stretch in this instance, which could
be based only on an undue exercise of hindsight." App. Br. 23; see also
Reply Br. 4, 7. However, as above, the test for analogous art is whether the
reference is in the same field of endeavor or pertinent to the particular
problem. See App. Br. 22. This is not a matter of the Examiner discarding
any such consideration so as to "essentially sweep nearly all 'art"' under this
umbrella (Reply Br. 4); and, as regarding hindsight, Appellant does not
explain how Elliott fails to already disclose a cruciform frame used for
decoy purposes.
Appellant further contends, "adding Tourtellotte to Elliott or to Elliott
and Brewer does not remedy the deficiencies in Elliott, or in Elliott plus
Brewer detailed above." App. Br. 23. As indicated above, we are not
persuaded there are deficiencies in Elliott. Accordingly, we are not
persuaded the Examiner erred in rejecting claims 4, 5, 9, 12, 15, 16, 18, 20,
and 25 as being obvious over Elliott and Tourtellotte or, over Elliott,
Tourtellotte, and Brewer.
DECISION
The Examiner's rejections of claims 1-5, 8, 9, 12, 15, 16, 18-23, and
25-27 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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