Ex Parte Ostendorff et al

Patent Trials and Appeals Board

Mar 22, 2019

13597544 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/597,544 08/29/2012
131888 7590
Mattel, Inc. - Patent Group
333 Continental Blvd.
El Segundo, CA 90245
03/26/2019
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.
17026(1) 1696
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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 ERIC OSTENDORFF and MICHAEL NUTTALL
Appeal2017-009948
Application 13/597,544
Technology Center 3700
Before JOHN C. KERINS, DAVID M. KOHUT, and
GEORGE R. HOSKINS, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
3 decision rejecting claims 1, 2, 5-7, 10, 11, 13-15 and 17-21. Claims 3, 4, 8,
4 9 and 16 are objected to as being dependent on a rejected base claim, but
5 would be allowable if rewritten in independent form including all of the
6 limitations of the base claim and any intervening claims. (See Final Office
7 Action, mailed July 26, 2016 ("Final Act."), at 11 ). Claim 12 was
8 previously cancelled. (Appeal Brief, dated Feb. 13, 2017 ("App. Br."), at 4).
9 We have jurisdiction under 35 U.S.C. § 6(b).
The Appellants identify Mattel, Inc., as the real party in interest. (See
Appeal Brief, dated Feb. 13, 2017, at 3).
Appeal2017-009948
Application 13/597,544
1 We sustain the rejection of claims 1, 2, 5-7, 10, 11 and 13 under pre-
2 AIA 35 U.S.C. § I03(a) as being unpatentable over Ostendorff (US
3 2007/0197127 Al, publ. Aug. 23, 2007), Cooper (US 3,734,500, issued May
4 22, 1973) and Zaruba (US 5,299,969, issued Apr. 5, 1994) (see Final Act. 3);
5 as well as the rejection of claims 14, 15 and 17-19 under§ I03(a) as being
6 unpatentable over Ostendorff and Cooper, either alone or further in view of
7 Zaruba (see Final Act. 8).
8 We do not sustain the rejection of claim 20 under§ I03(a) as being
9 unpatentable over Ostendorff, Cooper, and Zaruba; or the rejection of claim
10 21 under§ I03(a) as being unpatentable over Ostendorff and Cooper, either
11 alone or further in view of Zaruba.
12
13 THE CLAIMED SUBJECT MATTER
14 The appealed claims are directed to a play set for toy vehicles
15 including a track configuration for guiding a toy vehicle through a course.
16 (See Specification, dated Aug. 29, 2012 ("Spec."), para. 2). According to
1 7 the primary reference, Ostendorff:
18 Many innovative tracksets for toy vehicles which have been
19 produced by practitioners in the toy art have enhanced their play
20 value by employing apparatus which might be generally
21 described as stunt devices. Stunt devices are characterized
22 generally in that they operate in combination with a toy vehicle
23 trackset and typically provide some play element which is
24 activated by the proximity or passage of a toy vehicle through a
25 stunt device.
26 (Ostendorff, para 4).
27 Summarizing the content of the tertiary reference, Zaruba, Ostendorff
2 8 says that:
2
Appeal2017-009948
Application 13/597,544
1 In another type of apparatus employed by practitioners in the art
2 to enhance the appeal and enjoyment of toy vehicle tracksets, a
3 loop feature is often provided. Such loop features may be
4 generally characterized as track portions which intercept a
5 moving toy vehicle and travel it through the pathway of a loop
6 feature and thereafter return the toy vehicle to the trackway for
7 continued travel. Often within the loop feature, additional stunt
8 activity such as redirection or capture is provided. For example,
9 [Zaruba] sets forth a LOOP FEATURE FOR PROPELLED TOY
10 VEHICLES having a generally vertically oriented single loop
11 which in tum includes a moveable ingress portion and a
12 moveable egress portion. A propelled toy vehicle enters the loop
13 upon engaging one surface of the ingress portion. Player
14 operated controls effect movement of the egress portion to permit
15 or prohibit the propelled toy vehicle from exiting the loop.
16 (Ostendorff, para. 10).
17 One simple device for enhancing the appeal and enjoyment is to
18 provide a collision causing device such as intersecting tracks. "Appellants
19 do not assert that collision causing devices are novel." (App. Br. 21).
20 Claims 1 and 14 are independent. Claim 1 is illustrative:
21 Claim 1. A track set for toy vehicles, comprising:
22 a first track circuit having a first loop section and a first
23 figure-8 track circuit;
24 a second track circuit having a second loop section and
25 second figure-8 track circuit, wherein the first and second figure-
26 8 track circuits are overlaid on each other to provide multiple
27 intersections between each of the figure-8 track circuits, wherein
28 the toy vehicles travelling on the first and second figure-8 track
29 circuits can crash into each other as they travel along the first and
30 second figure-8 track circuits; and
31 a mechanism for propelling the vehicles along the first
32 track circuit and the second track circuit, wherein each loop
33 section receives the vehicles from an inlet track and each loop
34 section has a pivoting arc-shaped trap door that is part of the loop
35 and a pivoting exit door, which is also a portion of the loop.
3
Appeal2017-009948
Application 13/597,544
1 Dependent claim 20 recites:
2 Claim 20. The track set as in claim 1, wherein the inlet track
3 of the first track circuit has a movable portion that is coupled to
4 a first lever, via a linkage, wherein movement of the first lever
5 tilts the movable portion from a first position wherein the
6 vehicles are retained on the inlet track of the first track circuit to
7 a second position wherein the vehicles are propelled via gravity
8 toward the pivoting arc-shaped trap door of the first loop section
9 and enter the first loop section.
10
11 ISSUES
12 Claim 1 is representative, at least with respect to the rejection of
13 claims 1, 2, 5-7, 10, 11 and 13 over Ostendorff, Cooper, and Zaruba.
14 Claims 20 and 21 are argued separately. (See App. Br. 24--26). Therefore,
15 this appeal turns on two issues:
16 First, would the subject matter of claim 1 have been obvious from the
17 combined teachings of Ostendorff, Cooper, and Zaruba?
18 Second, would the subject matter of claim 20 have been obvious from
19 the combined teachings of Ostendorff, Cooper, and Zaruba?
20
21 FINDINGS OF FACT
22 The record supports the following findings of fact ("FF") by a
23 preponderance of the evidence.
24
25 Ostendorff
26 1. Ostendorff, in its own words, describes a toy vehicle trackset 10
27 that:
4
Appeal2017-009948
Application 13/597,544
1 utilizes a pair of closed track [circuits]2 [27, 28] each having a
2 lower end and a raised end. The raised ends of the [circuits] are
3 supported by a raised support [11] having a spring-loaded
4 dinosaur launcher [ 12] within which a flying dinosaur [ 16] is
5 supported. A target [ 13] is coupled to the launcher [ 12] and
6 positioned in alignment with a pair of launch ramps [30, 31]
7 extending from each of the pathways through a center lap counter
8 [20] which is shaped to simulate a volcano. Within the lap
9 counter [ 20], a diverter [ 21] is supported to switch a moving toy
10 vehicle [35] from its normal [circuit] path to the target directed
11 ramp [30, 31] once the toy vehicle has completed a
12 predetermined number of laps upon the [circuit] by one player.
13 A dual loop hand-operated toy vehicle booster [ 40] is supported
14 at the lower end return path of each of the [circuits]. The child
15 user is able to crank a hand crank [ 47] to initiate a manual boost
16 of a toy vehicle [35]. Proper timing of the hand crank [47] is
17 essential to impart maximum boost to a toy vehicle [35] and
18 impart rapid vehicle movement.
19 (Ostendorff, para. 31 (reference numerals, keyed to Fig. 1, added for
20 convenience)).
21 2. Ostendorff's dual loop hand-operated toy vehicle booster 40, as
22 depicted in Figure 2, 3 includes a pair ofbooster loops 42, 43 supported by a
23 base 41. Each booster loop constitutes a "loop section," as that term is used
24 in claim 1. The base 41 mounts a pair of crank handles 47, 5 3 coupled to
2 Ostendorff uses the term "loop" to refer to a track circuit within a
horizontally-extending plane as well as to refer to a loop within a vertically-
extending plane. In order to minimize confusion, the term "circuit" will be
substituted for "loop" in quotations or paraphrases of the teachings of
Ostendorff where a track circuit is intended.
3 The details of the dual loop hand-operated toy vehicle booster 40 may
be seen more easily in Figure 2 of Ostendorff (US 7,794,301 B2, issued
Sept. 14, 2010), the patent that issued from the application published in the
Ostendorff reference cited by the Examiner.
5
1
2
3
4
5
6
7
8
9
10
11
12
Appeal2017-009948
Application 13/597,544
arms 50, 54. Turning one of the crank handles 47, 53 causes a
corresponding arm 50, 54 to sweep along the base of a corresponding
booster loop 42, 43. If the turning of the crank handle 47, 53 is timed
correctly, the corresponding arm 50, 54 engages and accelerates a toy
vehicle traveling through the corresponding booster loop 42, 43. (See
generally Ostendorff, paras. 35-37).
3. The Appellants correctly characterize Ostendorff as
"provid[ing] a side-by-side race with the expressed purpose of a winning
player completing the prescribed number of laps and hitting the target first.
Thus, Ostendorff is about speed." (Reply Brief, dated July 17, 2017 ("Reply
Br."), at 3).
13 Cooper
14 4. Cooper describes a game making use of "a toy vehicular
15 roadway 10 which is one lane wide throughout, and has a guide groove 12
16 running along the middle. The roadway comprises two separate circuits
17 generally designated 14 and 16 respectively." (Cooper, col. 2, 11. 42--46 &
18 Fig. 1 ). Each circuit 14, 16 has a layout topologically equivalent to a Figure-
19 8, with bridging paths 14d, 16d added. (See Cooper, col. 2, 11. 46-56 & Fig.
20 1 ). The first and second circuits 14, 16, as depicted in Figure 1, intersect at
21 multiple points. (See Cooper, col. 4, 11. 37-39). The roadway 10 is
22 configured to permit one player to "steer" a self-propelled toy vehicle 3 7
23 between left and right portions 14a, 14b of the first circuit 14, as well as
24 through the bridging path 14d; and to permit another player to steer a self-
25 propelled toy vehicle 3 7 between left and right portions 16a, 16b of the
26 second circuit 16, as well as through the bridging path 16d, in order to
6
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Application 13/597,544
1 control the timing with which each vehicle approaches the intersections
2 between the circuits. (See generally Cooper, col. 2, 1. 65 - col. 3, 1. 38; col.
3 3, 1. 66- col. 4, 1. 3; & Figs. 1 & 4--6). Likewise, the players may make use
4 of braking and retaining mechanisms 62.1, 62.2, to control the timing with
5 which each vehicle 3 7 approaches the intersections. (See Cooper, col. 4, 11.
6 3-8 & Fig. 1 ). A player wins a round of the game by running the front of
7 the player's vehicle 37 into the side of the other player's vehicle at an
8 intersection between the circuits 14, 16. (See Cooper, col. 4, 11. 39-50 &
9 Fig. 10).
10 5. The Appellants correctly characterize Cooper as being "about
11 demolition and strategic maneuvering with respect to the other player."
12 (Reply Br. 3).
13
14 Zaruba
15 6. As discussed earlier, Zaruba describes a loop for use as a stunt
16 device in a toy vehicle trackset. (See Zaruba, col. 1, 11. 13-21 & Fig. 5).
17 The loop 112 includes an arcuate fixed portion 122 pivotably coupled at one
18 end to a curved ingress portion 132; and pivotably coupled at the other end
19 to a curved egress portion 144. (See Zaruba, col. 5, 11. 20-40 & Fig. 5). As
20 suggested in Figure 2, which depicts another embodiment, the curved
21 ingress portion 13 2 is designed to be pushed upwardly and out of the way by
22 an incoming toy vehicle to permit the toy vehicle access to the interior of the
23 loop 112. (See Zaruba, col. 5, 11. 47-57; see also id., col. 3, 1. 67 - col. 4, 1.
24 8). A player may push on a pivoting lever 17 4 attached to the curved egress
25 portion 144 to push the egress portion upwardly and out of the way, so that a
7
Appeal2017-009948
Application 13/597,544
1 toy vehicle within the loop 112 may exit. (See Zaruba, col. 5, 1. 58 - col. 6,
2 1. 9 & Fig. 5).
3 7. Zaruba does not describe an inlet track having a movable
4 portion coupled to a lever.
5 8. Zaruba's loop feature 110 includes a pair of counter-rotating,
6 soft-foam wheels or discs 182a, 182b located at the bottom of the loop 112.
7 The wheels 182 a, 182 b engage and accelerate a toy vehicle traveling along a
8 bottom portion of the loop to energize the vehicle to circulate all the way
9 around the inner periphery of the loop. (See Zaruba, col. 6, 11. 10-26).
10
11 ANALYSIS
12 First Issue
13 The Examiner finds that Ostendorff describes each limitation of
14 claim 1 except for the limitation reciting that the "first and second figure-8
15 track circuits are overlaid on each other to provide multiple intersections
16 between each of the figure-8 track circuits;" and the limitation "wherein
17 each [of the first and second] loop section[s] ... has a pivoting arc-shaped
18 trap door that is part of the loop and a pivoting exit door, which is also a
19 portion of the loop." (See Final Act. 3; see also FF 1 & 2). Cooper
20 describes a roadway 10 comprising two circuits 14, 16 having multiple
21 intersections at which toy vehicles might crash, albeit for use in a game
22 emphasizing demolition and strategy maneuvering. (See Final Act. 4; see
23 also FF 4 & 5). Zaruba describes a loop having a pivoting arc-shaped trap
24 door that is part of the loop, as well as a pivoting exit door that is a part of
25 the loop. (See Final Act. 5; see also FF 6).
8
Appeal2017-009948
Application 13/597,544
1 The Appellants do not appear to challenge these findings. Instead, the
2 Appellants challenge the Examiner's determination that one of ordinary skill
3 in the art would have had reason to combine these elements in the fashion
4 claimed. In addition, the Appellants argue that the proposed combination
5 would have rendered Ostendorff' s trackset inoperative for its intended
6 purpose, that is, for use in playing a racing game; and that the proposed
7 combination would have changed the principle operation of Ostendorff.
8 (See App. Br. 20-24; Reply Br. 1-3).
9 The Appellants concede that collision causing devices were not novel.
10 (See Reply Br. 21 ). Cooper teaches that toy cars might crash at intersections
11 formed by overlaid circuits arranged in figure-8 configurations. (See FF 4).
12 Configuring Ostendorff's circuits 14, 16 as intersecting figure-8s would
13 have enhanced the play experience provided by the trackset by providing
14 opportunities for toy cars to collide. This would have provided one of
15 ordinary skill reason for the proposed modification. (See Ans. 4). On the
16 other hand, configuring Ostendorff s circuits 14, 16 as intersecting figure-8s
17 would not have changed the main thrust of Ostendorffs trackset, namely,
18 providing a racing game emphasizing speed, although some rounds of the
19 racing game may have ended in collisions. (See FF 3). Thus, configuring
20 Ostendorff s circuits 14, 16 in this manner would not have rendered
21 Ostendorffs trackset inoperative or changed the trackset's principle of
22 operation.
23 We adopt the reasoning of the Examiner as set forth on page 4, line 9
24 through page 5, line 4, of the Final Office Action; as well as the Examiner's
25 reasoning on page 5, lines 9-16 of the Final Office Action. As such, we
26 sustain the Examiner's decision rejecting claims 1, 2, 5-7, 10, 11 and 13
9
Appeal2017-009948
Application 13/597,544
1 under§ 103(a) as being unpatentable over Ostendorff, Cooper, and Zaruba.
2 In addition, we sustain the rejection of claims 14, 15 and 17-19 under §
3 103(a) as being unpatentable over Ostendorff and Cooper, either alone or
4 further in view of Zaruba.
5
6 Second Issue
7 Claim 20 recites the limitation "wherein the inlet track of the first
8 track circuit has a movable portion that is coupled to a first lever" ( emphasis
9 added). Claim 21 recites similar language to claim 20. The Examiner finds
10 that "Zaruba discloses actuator 178 for causing lever 17 4 to open door 144
11 allowing exit of a vehicle for loop 122. After the door is open, allowing a
12 car exit, the door retum[s] to complete the loop 122 again." (Examiner's
13 Answer, mailed May 18, 2017, at 10). As the Appellants point out, claim
14 20 recites an "inlet track," not a loop exit track. (See Reply Br. 4 & 5; FF 6;
15 cf Spec., para. 19 (referring to the "pivotal portion 60 of the inlet track) &
16 Fig. 2)). Therefore, the Examiner has failed to show how the references
17 teach the disputed limitation. As such, we do not sustain the rejection of
18 claim 20 under§ 103(a) as being unpatentable over Ostendorff, Cooper, and
19 Zaruba; or the rejection of claim 21 under§ 103(a) as being unpatentable
20 over Ostendorff and Cooper, either alone or further in view of Zaruba.
21
22 DECISION
23 We AFFIRM the Examiner's decision rejecting claims 1, 2, 5-7, 10,
24 11, 13-15 and 17-19.
25 More specifically, we sustain the rejection of claims 1, 2, 5-7, 10, 11
26 and 13 under§ 103(a) as being unpatentable over Ostendorff, Cooper, and
10
Appeal2017-009948
Application 13/597,544
1 Zaruba; and the rejection of claims 14, 15 and 17-19 under§ 103(a) as being
2 unpatentable over Ostendorff and Cooper, either alone or further in view of
3 Zaruba.
4 We REVERSE the Examiner's decision rejecting claims 20 and 21.
5 More specifically, we do not sustain the rejection of claim 20 under
6 § 103(a) as being unpatentable over Ostendorff, Cooper, and Zaruba; or the
7 rejection of claim 21 under§ 103(a) as being unpatentable over Ostendorff
8 and Cooper, either alone or further in view of Zaruba.
9 No time period for taking any subsequent action in connection with
10 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
11 § 1.136(a).
AFFIRMED-IN-PART
11