Ex Parte Ostendorff et al

Patent Trial and Appeal Board

Mar 22, 2018

13446102 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/446,102 04/13/2012
131888 7590
Mattel, Inc. - Patent Group
333 Continental Blvd.
El Segundo, CA 90245
03/26/2018
FIRST NAMED INVENTOR
Eric Ostendorff
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.
16921(1) 6317
EXAMINER
HYLINSKI, ALYSSA MARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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 @mattel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC OSTENDORFF and STACY O'CONNOR
Appeal 2016-004235
Application 13/446,102 1
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eric Ostendorff and Stacy O'Connor ("Appellants") seek review
under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final
Office Action dated February 12, 2015 ("Final Act."), rejecting claims 1-20.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Mattel, Inc. as the real party in interest. Br. 3.
Appeal 2016-004235
Application 13/446,102
BACKGROUND
The disclosed subject matter "relates to a booster mechanism for a toy
vehicle track set, and in particular, to a windable booster mechanism with
multiple engagement portions or booster arms that can continuously boost
toy vehicles." Spec. i-f 1. Claims 1, 10, and 15 are independent. Claim 1 is
reproduced below, with emphasis added:
1. A toy vehicle track set, comprising:
a track along which a toy vehicle can travel;
and
a booster mechanism coupled to the track, the
booster mechanism including a body mounted for
complete rotation about an axis, the body including
a plurality of booster arms, each of the plurality of
booster arms being configured to engage a toy
vehicle, the body being windable against a biasing
mechanism to a loaded position so that each time
the booster mechanism is actuated by a toy vehicle,
the body rotates a partial rotation about the axis
away from the loaded position so that one of the
booster arms engages and propels the actuating toy
vehicle along the track.
REJECTIONS
1. Claims 1-8 and 10-17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Chang (US 2010/0112896 Al, published May 6, 2010)
and Ribas (US 4,475,303, issued Oct. 9, 1984).2
2 Although the Examiner separates the discussion of this Rejection
into two groups of claims, both groups are rejected based on the same
combination of prior art. See Final Act. 2-3 (claims 1-3, 5-8, 10-12, and
15-17), 3 (claims 4, 13, and 14 ). We address these two groups of claims as
part of the same Rejection.
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Application 13/446,102
2. Claims 9 and 18-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chang, Ribas, and Krynicki (US 3,279,120, issued Oct.
18, 1966).
DISCUSSION
Rejection 1 - Claims 1---8 and 10-17
A. Claims 1-3, 5-8, 10-12, and 15-17
Appellants present certain arguments asserting the patentability of all
claims in this Rejection as a group based on language in the independent
claims---claims 1, 10, and 15. Br. 15-17. Because Appellants also provide
additional arguments for claims 4, 13, and 14 (see infra Rejection 1 § B), the
analysis of the arguments directed at the Rejection overall determines the
outcome for claims 1-3, 5-8, 10-12, and 15-17. For this group, we select
claim 1 as representative, with claims 2, 3, 5-8, 10-12, and 15-17 standing
or falling with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) (2014 ).
For claim 1, the Examiner relied on Chang for certain limitations,
stating, for example, that Chang disclosed "a booster mechanism coupled to
the track by a base proximate a tum (Fig. 1) having a body with a booster
arm (70) configured to engage a toy vehicle by extending into the tum (Figs.
3A-3C) and mounted for complete 360 degree rotation about an axis
(paragraph 32)." Final Act. 2. The Examiner found that:
Ribas discloses a launching mechanism for toy vehicles having
a plurality of arms or engaging portions (20) configured to be
partially rotated about an axis to a plurality of respective rest or
stopped positions in which the body is in a respective loaded
position for responding to actuation by a toy vehicle and will
remain in the rest positions until actuated by sequential toy
vehicles by means of an indexing mechanism (8) having a
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Application 13/446,102
plurality of catches (8a) for selectively stopping rotation of the
launcher (Fig. 2, column 3 lines 1-39).
Final Act. 2-3.
According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention to have modified "the
body of Chang to include a plurality of arms or engaging portions and an
indexing mechanism including catches for partial rotation of the body for the
predictable result of enabling successive activation of toy vehicles as
opposed to having to rewind or reset the mechanism after each individual
use." Id. at 3.
First, Appellants argue that "Ribas does not provide booster arms or
booster members and, instead, only provides a turnstile 5 with a number of
arms 20 that are configured to prevent movement." Br. 15. 3 Appellants
argue that "Ribas merely provides a stop mechanism with multiple stop or
barrier arms that are configured to prevent movement and selectively allow
one self-powered vehicle to enter a track at a time" and that "[t]he stop
mechanism fails to teach or suggest, let alone disclose, any 'booster arm'
functionality or structure." Id.
With this argument, Appellants do not address the rejection as
articulated. Although Appellants are correct that, in Ribas, turnstile 6 "does
not propel a vehicle" but rather prevents movement of self-powered vehicles
(Br. 15; see also Ribas 3: 1-15), the Examiner does not propose modifying
booster 16 in Chang (see Fig. 1) with the functionality of turnstile 6 in Ribas.
As noted by the Examiner, Ribas is relied on, for example, "to teach that
3 Appellants identify element 5 in Ribas as a turnstile, however,
element 5 is actually a "circular plate." Ribas, col. 2, 11. 3---6. Element 6 is
the "turnstile." Id.
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Application 13/446,102
providing multiple arms in a toy track mechanism to provide incremented
actuation of features is known." Ans. 2. Based on these teachings of Ribas,
we understand the Examiner to propose, for example, (1) modifying booster
16 of Chang to include a "plurality" of the identified "booster arms"-
paddle 70 in Chang, and (2) modifying the body of Chang for partial (i.e.,
incremental) rotations rather than the disclosed 360° rotations.
Appellants also argue that "[i]f anything, the stop mechanism teaches
a feature that is distinct, if not opposite, from a booster member" and that "it
is clear that Chang and Ribas are directed towards two different, if not
opposite, concepts." Br. 15. We are not apprised of error based on this
argument because Appellants have not shown that the differences between
the references undermine the findings or reasoning relied on to support the
conclusion of obviousness, when considering the modified device as
proposed by the Examiner. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007) ("[F]amiliar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.").
Second, Appellants argue that "the cited references cannot be properly
combined under 35 U.S.C. § 103(a) because modifying Chang in view of
Ribas would destroy the intended purpose or chang[ e] the principle
operation of Chang." Br. 16. Appellants state, "[ m Jost notably,
incorporating the turnstile stop mechanism of Ribas into the booster of
Chang would prevent the booster from launching cars, contrary to its
intended purpose and principle operation." Id. Appellants argue that
"removing the paddle 70 [of Chang] that engages and accelerates toy
vehicles through the booster and replacing it with the turnstile 5 [of Ribas]
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Application 13/446,102
that prevents or retards vehicle movement would clearly render Chang
inoperable for its intended purpose of boosting vehicles." Id. Appellants
also argue that because
the turnstile 5 of Ribas is only actuated when a toy vehicle drives
by the pawl 7 on track 1 (disposed adjacent to the turnstile 5), if
the turnstile 5 of Ribas was substituted for the paddle 70 of
Chang, the alleged booster arms (i.e. the stop arms 20 of the
Ribas turnstile 5) would not be actuatable by a car entering the
booster, as is intended by Chang and required by independent
claims 1, 10, and 15.
Br. 1 7. According to Appellants, "another car would be required to engage
the pawl 7 of the turnstile 5 in order to unlock it and allow a toy vehicle to
rotate the turnstile 5, further rendering Chang inoperable for its intended
purpose of accelerating a vehicle that enters the booster." Id.
With these arguments, Appellants do not address the rejection as
articulated. The Examiner does not propose removing paddle 70 in Chang
and replacing that structure with turnstile 6 of Ribas, and, as discussed
above, also does not propose modifying booster 16 in Chang with the
functionality of turnstile 6 in Ribas. Instead, we understand the Examiner to
propose the modifications discussed above.
Moreover, the Examiner does not rely on pawl 7 from Ribas to actuate
the "booster mechanism" in the context of the modified device. Addressing
the relevant language in claim 1, the Examiner cited Figures 3A through 3C
as well as paragraph 33 of Chang, which discloses that "a trigger can
activate the booster member when a toy vehicle travels by the trigger" and
that, in the example in Figures 3A-3C, "the trigger includes a mechanical
leaf switch that can detect when a toy vehicle rolls over a pressure plate 80."
Final Act. 2.
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Appellants also contend that "if the paddle 7 [sic - 70] [of Chang]
were modified in view of the turnstile 5 [of Ribas] to include multiple arms,
at least some of the arms would rest in the pathway of a vehicle, thereby
preventing the booster arm from rotating behind and into a vehicle moving
through the booster." Br. 16. Appellants argue that "[i]fthe Chang paddle
were modified to have six arms, like the turnstile of Ribas, ... it would be
prohibitively difficult to successfully boost a toy vehicle." Id. According to
Appellants, "[s]ince the main purpose of booster is to successfully boost toy
vehicles, such a modification clearly destroys the intended purpose of
Chang." Id.
We are not apprised of error by this argument. As an initial matter,
the proposed modification need not provide six booster arms to satisfy the
recited "plurality of booster arms." Moreover, Appellants have not provided
sufficient evidence or technical reasoning to support the assertion that the
presence of multiple arms would cause the identified technical issues. See In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence."). Further, even assuming that the
proposed modification would have caused the identified technical issues,
Appellants have not shown that a person of ordinary skill in the art would
not have been able to overcome those issues. See KSR, 550 U.S. at 418
(stating that the obviousness analysis "can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ"); id. at
421 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton.").
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B. Claims 4, 13, and 14
Appellants present certain arguments asserting the patentability of
claims 4, 13, and 14, in addition to the arguments addressing the
independent claims (discussed above). For these additional arguments,
Appellants argue claims 4, 13, and 14 as a group. Br. 17-18. We select
claim 4 as representative, with claims 13 and 14 standing or falling with
claim 4. See 37 C.F.R. § 41.37(c)(l)(iv).
For claim 4, the Examiner stated that "Chang and Ribas disclose the
basic inventive concept, with the exception of the partial rotation being one-
third of a rotation." Final Act. 3. According to the Examiner:
It would have been an obvious matter of design choice to
configure the body and catches for enabling rotation of the body
in one-third intervals since such a modification would have
involved the elimination of some of the arms and catches of
Ribas and it has been held that the omission of elements where
not desired would have been obvious.
Id. (citing In re Larson, 340 F .2d 965 ( CCP A 1965) ).
First, Appellants argue that "one-third of a rotation is not merely a
design choice at least because a partial rotation of one-third of a rotation
enables multiple, continuous actuations and launchings without blocking the
track for toy vehicles passing through thereafter." Br. 18. According to
Appellants, "partially rotating the booster arm included in Chang one-third
of a rotation would block the pathway for the next toy vehicle entering the
booster and rotating the arm of Ribas one third of a rotation would allow
multiple vehicles to exits the turnstile." Id.
In the context of a rejection based on design choice, a relevant issue is
whether the alleged differences between the claimed invention and the prior
art "result in a difference in function or give unexpected results" or whether
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they are "no more than obvious variations consistent with the principles
known in that art." See In re Rice, 341 F.2d 309, 314 (CCPA 1965). Here,
Appellants have not provided evidence of unexpected results or a difference
in function when using three booster arms as opposed to, for example, six
booster arms. Instead, Appellants rely on attorney argument. See Pearson,
494 F.2d at 1405. In addition, as discussed above regarding the second
argument for Rejection 1, Appellants have not provided sufficient evidence
or technical reasoning to support the assertion that the presence of three
paddles 70 in Chang would cause the identified technical issue. Moreover,
Appellants do not address the Examiner's reasoning statement regarding
"omission of elements." Final Act. 3; Ans. 3.
Second, Appellants argue that "if the turnstile 5 of Ribas was
incorporated into Chang, ... the now-included turnstile 5 would block the
track if it was rotated one-third of a rotation." Br. 18.
With this argument, Appellants do not address the rejection as
articulated. The Examiner does not propose "incorporat[ ing]" turnstile 6 of
Ribas into the modified device. See Ans. 3 (stating that "the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference"). Instead,
for claim 4, we understand the Examiner to propose, for example, ( 1)
modifying booster 16 of Chang to include three of the identified "booster
arms"-paddle 70 in Chang, and (2) modifying the body of Chang for 120°
rotations rather than the disclosed 360° rotations. See Final Act. 2-3; Ans.
2-3. For the reasons above, we sustain the rejection of claim 4. Claims 13
and 14 fall with claim 4.
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Rejection 2- Claims 9 and 18-20
Claim 9 depends from claim 1 and claims 18-20 depend from claim
15. See Br. 20, 22 (Claims App.). Appellants do not provide additional
arguments for claims 9 and 18-20, aside from those presented for claims 1
and 15. For the reasons discussed above, we are not apprised of error in the
rejection of claims 1 and 15. See supra Rejection 1 §A. As such, we
sustain the rejection of claims 9 and 18-20.
DECISION
We affirm the decision to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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