Ex Parte Nuttall et al

Patent Trial and Appeal Board

Sep 14, 2018

13967756 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/967,756 08/15/2013
131888 7590
Mattel, Inc. - Patent Group
333 Continental Blvd.
El Segundo, CA 90245
09/18/2018
FIRST NAMED INVENTOR
Michael Nuttall
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.
17185(1) 2630
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
epatents@mattel.com
patricia. deleon @matte 1. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL NUTTALL, PAUL W. SCHMID, and
STACY L. O'CONNOR
Appeal2018-000299
Application 13/967,756
Technology Center 3700
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
LISA M. GUIJT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1-5, 9-13, 15, 19, 23-25, and 27-31. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 The applicant and real party in interest in this appeal is identified as Mattel,
Inc. App. Br. 3.
Appeal2018-000299
Application 13/967 ,756
We affirm the Examiner's rejection of claims 1-5, 9-13, 15, 19, 23-
25, and 27-31. Pursuant to our authority under 38 C.F.R. § 41.50(b), we
designate our decision as including new grounds of rejection.
CLAIMED SUBJECT MATTER
The claims are directed to a toy vehicle play set. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A play set, comprising:
a planar surface having opposed ends;
a plurality of targets located proximate to one end of the
opposed ends of the planar surface;
a feeding mechanism located proximate to the other end of
the opposed ends of the planar surface, the feeding mechanism
being configured to launch objects at the plurality of targets, the
feeding mechanism is configured to pivot relative to the planar
surface;
an outlet chute having opposed first and second end
portions, the second end portion is mounted adjacent to the one
end, the outlet chute is configured to receive the launched objects
from the one end; and
a return chute having an articulating member with opposed
first and second ends, the second end is mounted to the first end
portion of the outlet chute, and the first end is mounted to the
feeding mechanism, the articulating member is configured to
move with the feeding mechanism when the feeding mechanism
is pivoted relative to the planar surface.
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Application 13/967 ,756
REJECTI0N2
Claims 1-5, 15, 9-13, 19, 23-25, and 27-31 are rejected under 35
U.S.C. § 112, first paragraph, as being based on a disclosure that is not
enabling.
ANALYSIS
The Examiner rejects independent claims 1 and 19 because, according
to the Examiner, the disclosure is non-enabling as to the limitation: "the
articulating member [28] is configured to move with the feeding mechanism
[20] when the feeding mechanism [20] is pivoted relative to the planar
surface [14]." 3 Final Act. 3. The Examiner bases this conclusion on the
grounds that the disclosure would not enable one of ordinary skill in the art
to make or use the invention without undue experimentation. Ans. 5.
Appellant, on the other hand, argues that "a toy designer of ordinary skill in
the art" provided with the drawings and specification would be able to
construct the claimed invention. App. Br. 24--26. Moreover, Appellant
contends, to the extent that making and using the claimed invention would
require any experimentation, such experimentation would not be "undue" for
a person of ordinary skill in the art. Id.
For the reasons below, we disagree with Appellant.
2 The Examiner withdrew rejections under 35 U.S.C. § 102, 35 U.S.C. § 103,
and 35 U.S.C. § 112, second paragraph. Ans. 3.
3 We note that the Examiner misquotes the language of the claims as "the
articulating member configured to be repositioned as the feeding mechanism
is moved with respect to the play set." Ans. 5.
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Application 13/967 ,756
The statutory basis for the enablement requirement is found in 35
U.S.C. § 112, first paragraph, which provides, in relevant part:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same ....
"Enablement serves the dual function in the patent system of ensuring
adequate disclosure of the claimed invention and of preventing claims
broader than the disclosed invention." MagSil Corp. v. Hitachi Glob.
Storage Techs., Inc., 687 F.3d 1377, 1380-81 (Fed. Cir. 2012). "The test of
enablement is whether one reasonably skilled in the art could make or use
the invention from the disclosures in the patent coupled with information
known in the art without undue experimentation." US. v. Telectronics, Inc.,
857 F.2d 778, 785 (Fed. Cir. 1988). "Whether undue experimentation is
needed is not a single, simple factual determination, but rather is a
conclusion reached by weighing many factual considerations." In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). These factors include:
( 1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
Id. Not all of the Wands factors need to be reviewed when determining
whether a disclosure is enabling. Enzo Biochem, Inc. v. Cal gene, Inc., 188
F.3d. 1362, 1371 (Fed. Cir. 1999). Rather, the Wands factors "are
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Application 13/967 ,756
illustrative, not mandatory. What is relevant depends on the facts." Amgen,
Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991).
When rejecting a claim for lack of enablement, the PTO bears an
initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification. In re
Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). If the PTO meets this
burden, the burden then shifts to the applicant to provide suitable proofs
indicating that the specification is indeed enabling. Id. at 1562 ( citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971).
We tum first to the Examiner's factual findings as to why the
articulating member and the pivoting arrangement of the feeding mechanism
are not enabled by the disclosure. The Examiner points out that the only
indications of how the feeding mechanism 20 and the articulating member
28 move with respect to the device-and with respect to each other-are the
directional arrows 24 and 38, respectively. Final Act. 3; Ans. 6. However,
whereas arrow 24 is rotational, arrow 3 8 is linear. Thus, the Examiner
implicitly poses the question: if 20 pivots, and 28 moves with 20 when 20 is
pivoted, then how are 20 and 28 constructed such that 28 moves linearly,
along direction 38, when 20 is rotated about direction 24?4 In our view, the
point the Examiner raises satisfies the requirement of "a reasonable
explanation" because the Examiner clearly identifies the limitation in
4 It is noted that the amended Figures entered October 4, 2013, in contrast to
the figures originally filed on August 15, 2013, do not appear to depict
differing positions of the articulating member 28 upon pivoting of the
feeding mechanism 20. See Figs. 1--4 (both versions). This adds to the
confusion regarding how these members are to be constructed.
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Application 13/967 ,756
question, and points out a perceived inconsistency between what is disclosed
and what is claimed. Consequently, the burden is shifted to Appellant to
"provide suitable proofs indicating that the specification is indeed enabling."
Wright, 999 F.2d at 1562.
In response, Appellant does not direct our attention to any specific
paragraphs in the disclosure that would enable one of ordinary skill in the art
to make and use the feeding mechanism and the associated articulating
member, as claimed. Rather, Appellant argues that whatever information is
allegedly missing from the disclosure is well-known in the art and, therefore,
need not be present in the disclosure to satisfy the enablement test because
"the skilled artisan is imputed with the information known in the art" (App.
Br. 24), and "a patent need not teach, and preferably omits, what is well
known in the art." App. Br. 15 (citing In re Buchner, 929 F.2d 660, 661
(Fed. Cir. 1991)).
"[A]s part of the quid pro quo of the patent bargain, the applicant's
specification must enable one of ordinary skill in the art to practice the full
scope of the claimed invention." AK Steel Corp. v. Sollac and Ugine, 344
F.3d 1234, 1244 (Fed. Cir. 2003). The Wands factors are considered in
making this determination:
Quantity of Experimentation & Amount of Direction/Guidance
"Enablement is not precluded by the necessity for some
experimentation, such as routine screening." Wands, 858 F.2d at 736-37
( emphasis added). However, the amount and/or type of experimentation that
is acceptable under the enablement test is not without limits: "[A]
considerable amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a reasonable amount of
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guidance with respect to the direction in which the experimentation should
proceed." Id. at 737 (emphasis added)(citation omitted).
Appellant argues undue experimentation would not be required
because one of ordinary skill in the art could use "any pivoting connection"
for the feeding mechanism, and that, "for example a telescoping section of
ramp, a pleated ramp construction, any pivoting connection, or any
combination of the above" could be used to achieve the combined motion of
the feeding mechanism and articulating member. App Br. 24--25. We
disagree. For starters, none of the above suggestions were made in the
original disclosure. But even if such "guidance" had been present in the
Specification, the experimentation that would still be required to arrive at the
claims would not, in our view, be "merely routine." Rather, it would seem
to require a substantial amount of ingenuity to make something that not only
meets the claim language, but also does so in a manner that would allow the
invention as a whole to function as intended (i.e., such that the return chute
26 is able to return objects to the feeding mechanism regardless of the angle
to which the feeding mechanism is pivoted) (Spec. ,r,r 6, 12, 15).
Furthermore, even if the disclosure were supplemented by the suggestions in
the Appeal Brief, the disclosure would still provide the skilled artisan with
little more than an invitation to tinker with one or more generic, mechanical
concepts. This falls well short of the enablement test. See Enzo, 188 F.3d at
1374 (holding disclosure non-enabling because inter alia "the teachings set
forth in the specifications provide no more than a 'plan' or 'invitation' for
those of skill in the art to experiment. ... "); see also Genentech, Inc. v. Novo
NordiskAIS, 108 F.3d 1361, 1366 (Fed. Cir. 1997) ("Patent protection is
granted in return for an enabling disclosure of an invention, not for vague
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intimations of general ideas that may or may not be workable. [5J Tossing out
the mere germ of an idea does not constitute enabling disclosure. While
every aspect of a generic claim certainly need not have been carried out by
an inventor, or exemplified in the specification, reasonable detail must be
provided in order to enable members of the public to understand and carry
out the invention."). Instead of directing our attention to the amount of
direction or guidance in Appellant's Specification, Appellant's arguments
focus almost exclusively on the level of skill in the art. This, without more,
is not demonstrative of an enabling disclosure. See Id. ("Genentech's
arguments, focused almost exclusively on the level of skill in the art, ignore
the essence of the enab lement requirement.").
Relative Skill in the Art & Predictability/Unpredictability of the Art
Appellant is correct that "[ t ]he more that is known in the prior art
about the nature of the invention, how to make, and how to use the
invention, and the more predictable the art is, the less information needs to
be explicitly stated in the specification." App. Br. 14 ( citation omitted).
However, there are limits on the extent to which the skill and knowledge of
the hypothetical artisan can be used to fill gaps in the disclosure. See, e.g.,
ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935,941 (Fed. Cir. 2010)
(holding the applicant "cannot simply rely on the knowledge of a person of
ordinary skill to serve as a substitute for the missing information in the
specification."); see also Genentech, 108 F.3d at 1366 ("It is the
specification, not the knowledge of one skilled in the art, that must supply
5 Citations and internal quotations omitted.
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Application 13/967 ,756
the novel aspects of an invention in order to constitute adequate
enab lement. ").
In this case, Appellant seems to be conflating what is well-known to a
person of ordinary skill in the art with what could be made by such a person.
For instance, Appellant argues that because telescoping ramps, pleated
ramps, and pivots are well-known in the art, "any combination of the above"
could be used to make-without undue experimentation-an articulating
member having one end connected to a return chute and another end
connected to a pivoting feeding mechanism, where the articulating member
moves with the feeding mechanism when the feeding mechanism is pivoted.
App. Br. 25. We disagree. Even if the suggestions in the Appeal Brief had
been present in the original disclosure, which they are not, Appellant would
still be relying heavily on the skill of the hypothetical toy artisan to finish
the job of making Appellant's invention. Although it is true that "a patent ..
. preferably omits, what is well known in the art[,]" (Buchner, 929 F .2d at
661 ), Appellant in this case has omitted the details of what has been
invented.
Breadth of the Claims
The enablement doctrine "prevents both inadequate disclosure of an
invention and overbroad claiming that might otherwise attempt to cover
more than was actually invented. Thus, a patentee chooses broad claim
language at the peril of losing any claim that cannot be enabled across its
full scope of coverage." MagSil, 687 F.3d at 1381. "The scope of the
claims must be less than or equal to the scope of the enablement to ensure
that the public knowledge is enriched by the patent specification to a degree
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at least commensurate with the scope of the claims." Si trick v. Dreamworks,
LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).
Here, Appellant argues "any pivoting connection may be used to
connect the feeding mechanism 20 to the play surface, provided that it
permits the feeding mechanism to be swiveled sufficiently to aim the
launched toy vehicle." Reply 8-9. Applicant also argues "the articulating
member 28 may include any known structure that allows sufficient
flexibility in return chute 26 to accommodate the pivoting motion of feeding
mechanism 20." Id. at 9 (emphasis added). However, the breadth of the
claims that Appellant proposes would cover embodiments well beyond the
invention as it is described and shown in the disclosure. Neither the
Specification nor the drawings describe or show, respectively, even one
embodiment of the feeding mechanism and articulating member with
sufficient detail to enable one of ordinary skill in the art to make and use the
claimed device. As such, if the present claims were allowed, the public
knowledge would be enriched to a lesser degree than the scope of protection
that the claims would provide Appellant. See Sitrick, supra.
In sum, we find no error in the Examiner's conclusion that one of
ordinary skill in the art, being both apprised of the invention by the
disclosure, and also skilled in the art by experience and knowledge, would
nevertheless be unable to make or use the claimed invention without undue
experimentation. Because we have articulated additional reasoning in
support of the Examiner's conclusion, we designate our decision as
including new grounds of rejection so as to afford Appellant the procedural
options associated therewith.
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Application 13/967 ,756
DECISION
The Examiner's rejection of claims 1-5, 15, 9-13, 19, 23-25, and 27-
31 is AFFIRMED. Pursuant to 37 C.F.R. § 4I.50(b), we designate our
decision as including new grounds of rejection.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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