Ex Parte Piaget

Board of Patent Appeals and Interferences

Oct 28, 2009

11381568 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY D. PIAGET
____________________

Appeal 2009-002922
Application 11/381,568
Technology Center 3600
____________________

Decided: October 28, 2009
____________________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
KEN B. BARRETT and FRED A. SILVERBERG, Administrative Patent
Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Gary D. Piaget (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-61, 8-162, 18 and 19. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to a ball-launching device
including a ball receiving portion and a dispenser device for use in training
and exercising dogs. (Spec. 4: ¶ [07]).
The invention is readily understood by reference to Figure 1, and
Claim 1.
Figure 1 is reproduced below:

1 Although the Appeal Brief states otherwise, we note Claim 7 is not part of
this appeal. The Examiner’s Answer (Ans. 4) and the Final Rejection
mailed June 29, 2007 (FR 2) did not include a rejection of claim 7, although
the Final Rejection included an objection to claim 7 (FR 2, 9).
2 Claim 16, on the other hand, is part of this appeal. Claim 16 depends from
claim 12 (App. Br. 23). The Final Rejection mailed June 29, 2007 (FR 2)
included a rejection of claim 12, but did not include a specific identification
of claim 16 in the statement of rejection (FR 4). However, the rejection and
Answer each provided discussion and rationale in rejecting claim 16 (Ans. 8,
FR 6), and the Appeal Brief includes discussion pertaining to claim 16 (App.
Br. 10).
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Figure 1 shows the ball launching device 10 having a ball receiving
surface 16 and a dispenser 32 (Spec. 7, 9: ¶¶ [12] and [18]).
Claim 1, reproduced below, is representative of the claimed subject
matter on appeal:
1. A device for launching and receiving a ball
comprising:
a ball receiving structure having a surface
area, said surface area being larger than said ball;
a handle extending from said ball receiving
structure; and
a treat dispensing mechanism configured
and arranged to selectively dispense at least one
treat onto the ball receiving structure, wherein a
pet deposits said ball onto said ball receiving
structure in exchange for said at least one treat.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Zutis US 2005/0183674 A1 Aug. 25, 2005

The following rejections by the Examiner are before us for review:
1. Claims 1-6 and 9 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Zutis.
2. Claims 1, 10-12, 14-16 and 18 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Zutis.
3. Claims 8, 13 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zutis.
ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that the embodiments of figures 5 and 10 in Zutis anticipate the limitations
of the claims rejected under 35 U.S.C. §102(e), and (2) whether the
Examiner erred in concluding that it would have been obvious to use plastic
sheet material as a ball receiving surface as called for in claims 8 and 19
(App. Br. 19) and to provide a removable cover as called for in claim 13
(App. Br. 19).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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Appellant’s Invention
1. Appellant’s Specification describes that “[t]he ball-receiving
surface 16 may be formed from any suitable material . . . The
purpose of the ball receiving surface 16 is to provide a platform
onto which the dog can deposit the ball . . . ” (Spec. 8: ¶ [14])
(emphasis added).
2. Appellant’s Specification does not provide any definition of the
phrase “structural frame.” However, Appellant, in the Appeal
Brief, defines “a structural frame” as a “systematic framework that
surrounds the border.” (App. Br. 16, 18).
The Examiner’s Findings
3. The Examiner finds that (1) in Zutis, the figure 5 embodiment
describes all of the limitations called for in claims 1 and 6 (Ans. 4)
and (2) that in Zutis, the figure 10 embodiment describes all of the
limitations called for in claims 1 and 12 (Ans. 6, 7).
4. The Examiner finds that in Zutis, the figure 5 embodiment
describes a ball receiving structure 1, a handle 16, a treat
dispensing mechanism 3, 5, 14 and 10, an interior compartment 4,
and a removable cover 18 engaged with an end of the interior
compartment 4 (Ans. 4, 5).
5. The Examiner finds that in Zutis, the figure 10 embodiment
describes a ball receiving portion 1 having a peripheral edge P and
a ball receiving structure F, a handle 16, and a storage
compartment 4 (Examiner’s marked-up version of Zutis’ fig. 10
embodiment) (Ans. 6-7).
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6. The Examiner finds that, regarding Zutis’ figure 5 embodiment,
the limitation “structural frame” is construed to mean “a general
outer perimeter of the ball receiving structure of figures 5-7” (Ans.
10).
7. The Examiner finds that, regarding Zutis’ figure 10 embodiment,
the limitation “structural frame” is construed to mean “a general
outer perimeter of the ball receiving structure of figure 10” (Ans.
11-12).
8. The Examiner finds that Zutis’ describes that the device can be
made of molded plastics (p. 2, ¶ [0019]) (Ans. 11-12).
9. The Examiner finds that, regarding the Zutis’ figure 5 and figure
10 embodiments, a small ball is smaller than the surface area of the
receiving surface (Ans. 4, 6).
10. The Examiner finds that regarding claims 8 and 19, Zutis does not
describe that the receiving surface comprises a plastic sheeting
material. However, the Examiner concludes that it would have
been obvious to modify Zutis by making the receiving surface out
of plastic sheeting in order to provide an inexpensive cleanable
surface (Ans. 9).
11. The Examiner finds, regarding claim 13, that Zutis’ figure 10
embodiment does not describe a removable cover. However, the
Examiner concludes that it would have been obvious to provide
Zutis’ figure 10 embodiment with a removable cover to replenish
the treats as taught by Zutis’ cap 18 of figure 1 (Ans. 9-10).
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The Board’s Findings
12. Zutis describes, in figure 5, a tray 1, a button 3, a housing 16
defining an interior cavity 4 and a removable cap 18. The cavity 4
holds discreet amounts of food (treats) 12. The removable cap 18
allows additional food 12 to be entered into cavity 4. The button 3
dispenses food 12 into the tray 1. (p. 2, ¶¶ [0021] and [0024]).
13. Zutis further describes, in figure 10, a tray 1 having a lip, a button
3, a housing 16 defining an interior cavity 4 and a rotating cylinder
54. The cavity 4 holds discreet amounts of treats (food) 12. The
button 3 rotates the cylinder 54 to dispense treats 12 into tray 1.
(p. 2, ¶¶ [0021] and [0024]).
14. Zutis still further describes that the housing and the button may be
made of a variety of materials, including molded plastic (p. 2, ¶
[0019]).
15. Zutis still further describes that the treats may be discreet small
individual treats (p. 1, ¶ [0006]).
16. Zutis still further describes that (1) “[t]his tray is smaller than the
housing but sufficiently large such that it can catch and hold a treat
dispensed from the housing” (p. 1, ¶ [0006]), and (2) “the tray is
also defined as a surface from which an animal could take a treat
as soon as the treat is dispensed” (p. 2, ¶ [0029]).
17. Additional findings as necessary appear in the Analysis portion of
this opinion.

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PRINCIPLES OF LAW
Intended Use
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Functional language
“A patent applicant is free to recite features of an apparatus either
structurally or functionally.” In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
(“[T]here is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). “Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk.”
Id.
[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of
the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.
Swinehart, 439 F.2d at 213.
ANALYSIS
Rejection of claims 1-6 and 9 under 35 U.S.C. § 102(e) as being anticipated
by Zutis
Appellant argues claims 1-5 as one group and claims 6 and 9 as a
separate group. Accordingly, we select claims 1 and 6 as representative
claims for this rejection.

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Claim 1 is reproduced again below:
1. A device for launching and receiving a ball
comprising:
a ball receiving structure having a surface
area, said surface area being larger than said ball;
a handle extending from said ball receiving
structure; and
a treat dispensing mechanism configured
and arranged to selectively dispense at least one
treat onto the ball receiving structure, wherein a
pet deposits said ball onto said ball receiving
structure in exchange for said at least one treat.

Appellant contends that Zutis does not describe a surface area large
enough to allow a ball to be deposited thereon in exchange for a treat (App.
Br. 15). We note that the Appellant has not provided declaration evidence to
substantiate this contention.
We find that Zutis describes that a tray sufficiently large such that it
can catch and hold a treat dispensed from the housing. The tray is a surface
from which an animal can take a treat (Fact 16). See, e.g., Figure 5, below,
which clearly illustrates the same claimed functional operations of receiving
a ball and dispensing a treat are possible, notwithstanding Appellant’s
contentions regarding size.

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Importantly, Claim 1 does not call for the specific size of the ball
receiving area. As correctly noted by the Examiner, balls come in all sizes,
and a small ball can be smaller than the surface area of the receiving surface
(Fact 9).
Appellant has directed us to no persuasive evidence to contradict the
fact that a person having ordinary skill in the art would be able to find a ball
that would be able to be deposited on Zutis’ tray 1 by an animal and function
in the way claimed. Zutis’ tray 1 is a surface from which an animal could
take a treat and is defined as being sufficiently large to both catch and hold a
treat (Fact 16). Consequently, we are unpersuaded of error in the
Examiner’s finding that Zutis’ figure 5 embodiment describes all of the
limitations called for in claim (Fact 3), and we affirm the rejection of claims
1-5 as anticipated by Zutis.
Claim 6 reads as follows:
6. The device for launching a ball of Claim 1,
said ball receiving structure further comprising:
a structural frame; and
a ball receiving surface suspended within
said structural frame.

Appellant contends that Zutis does not describe a structural frame.
Appellant further contends that the structural frame and the ball receiving
surface should be construed as two separate elements (App. Br. 16).
Appellant further contends that Zutis’ tray cannot be considered as two
elements, that is, a structural frame that receives and supports a ball
receiving surface (App. Br. 16).
Appellant’s Specification does not provide any definition of the
phrase “structural frame.” However, Appellant, in the Appeal Brief,
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suggests that “a structural frame” should be defined as a “systematic
framework that surrounds the border.” (Fact 2).
On the other hand, the Examiner concluded that the phrase “structural
frame” as called for in claim 6 means a general outer perimeter of the ball
receiving structure (Fact 6).
For ease of reference, we reproduce Figure 10 of Zutis below:

Giving the term “structural frame” either interpretation, we see no
error in the Examiner’s finding that the phrase “structural frame” as called
for in claim 6 means a general outer perimeter of the ball receiving structure
illustrated in, e.g., Zutis’ figures 5 or 10. (Fact 6, 7).
As noted above, Zutis’ tray 1 is a surface area large enough to allow a
ball to be deposited thereon in exchange for a treat. Zutis’ tray 1 includes an
outer edge and an inner surface area, wherein the inner surface area supports
a dispensed treat 12 or a dropped ball. The inner surface area of tray 1 is
suspended from the outer edge of tray 1. The surround of Zutis’ tray 1 is
consequently a structural frame.
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Therefore we are unpersuaded by Appellant’s contentions that the tray
of Zutis is not both a structural frame and ball receiving surface suspended
within said structural frame. We affirm this rejection as it applies to claims
6 and 9.

Rejection of claims 1, 10-12, 14-16 and 18 under 35 U.S.C. § 102(e) as
being anticipated by Zutis
Appellant argues claims 1, 10 and 11 as one group, and claims 12, 14-
16, and 18 as another group. We select claims 1 and 12 as representative of
each group.
Claim 12 reads as follows:
12. A device for training a dog to fetch a ball
comprising:
a ball receiving portion having a peripheral
edge, a receiving surface disposed within said
peripheral edge, said receiving surface being larger
than said ball and a ball retaining structure
extending outwardly from said peripheral edge;
a handle extending from said peripheral
edge of said ball receiving portion;
a storage compartment disposed within said
handle; and
a dispenser disposed at a first end of said
storage compartment adjacent said ball receiving
portion, said dispenser configured to dispense a
treat onto said receiving surface from a plurality of
treats stored within said storage compartment,
wherein a dog deposits a ball onto said
receiving surface in exchange for said treat that is
dispensed thereon.

Appellant contends that Zutis does not describe a surface area large
enough to allow a ball to be deposited thereon in exchange for a treat (App.
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Br. 17). As noted above, this contention is unpersuasive in that Claims 1
and 12 do not call for the specific size of the ball receiving area; balls come
in all sizes; and a person having ordinary skill in the art would be able to
find a ball that would be able to be deposited on Zutis’ tray 1.
Therefore, we conclude that Appellant has not demonstrated that the
Examiner erred in rejecting claims 1 and 12 over Zutis. We therefore affirm
this rejection as it applies to claims 1, 10, 11, 12, 14-16 and 18.

Rejection of claims 8, 13 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Zutis
Appellant argues claims 8 and 19 together. Accordingly we select
claim 8 as representative. Claim 8, and claim 6 from which it depends, read
as follows:
6. The device for launching a ball of Claim 1,
said ball receiving structure further comprising:
a structural frame; and
a ball receiving surface suspended within
said structural frame.

8. The device for launching a ball of Claim 6,
wherein said receiving surface is a material
selected from the group consisting of: cloth, mesh,
plastic sheeting, plastic fabric and interwoven
strands.

Appellant contends that Zutis does not describe a structure that would
support a plastic sheet (App. Br. 19).
We are unpersuaded by this contention. The periphery of Zutis, e.g.
as seen in figure 10, is capable of performing that function. Zutis describes
that the housing and the button may be made of a variety of materials,
including molded plastic (Fact 14). Zutis’ figures 5 and 10 show the
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housing 16 and the tray 1 as being part of the same element. The Examiner
found that one would be motivated to substitute plastic sheeting for the hard
plastic to provide an inexpensive cleanable surface. Appellant has not
provided persuasive evidence to the contrary.
Therefore, we see no error in the Examiner’s finding that it would
have been obvious to modify Zutis by making the receiving surface out of
plastic sheeting.
Moreover, making the receiving surface out of the known element of
plastic sheeting would have reasonably been expected to yield the result of
providing an inexpensive cleanable surface. See KSR, 550 U.S. at 417
(holding that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”)
We therefore affirm this rejection as it applies to claim 8 and 19.
Claim 13, and claim 12 from which it depends, read as follows:
12. A device for training a dog to fetch a ball
comprising:
a ball receiving portion having a peripheral
edge, a receiving surface disposed within said
peripheral edge, said receiving surface being larger
than said ball and a ball retaining structure
extending outwardly from said peripheral edge;
a handle extending from said peripheral
edge of said ball receiving portion;
a storage compartment disposed within said
handle; and
a dispenser disposed at a first end of said
storage compartment adjacent said ball receiving
portion, said dispenser configured to dispense a
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treat onto said receiving surface from a plurality of
treats stored within said storage compartment,
wherein a dog deposits a ball onto said
receiving surface in exchange for said treat that is
dispensed thereon.

13. The device for training a dog of Claim 12,
further comprising:
a removable cover engaged with a second
end of said storage compartment, said second end
being opposite said first end, wherein said plurality
of treats can be replenished after removal of said
cover.

Appellant contends that Zutis’ figure 10 embodiment does not
describe a removable cover.
We agree with Appellant that that Zutis’ figure 10 embodiment does
not describe a removable cover. However, the Examiner concluded that it
would have been obvious to provide Zutis’ figure 10 embodiment with a
removable cover as taught by Zutis’ figure 1, at 18. (Fact 11).
The Examiner found that Zutis’ figure 5 embodiment describes a ball
receiving structure 1, a handle 16, a treat dispensing mechanism 3, 5, 14 and
10, an interior compartment 4, and a removable cover 18 engaged with an
end of the interior compartment 4 (Fact 4).
Zutis’ figure 5 embodiment further describes that the removable cap
(cover) 18 allows additional food 12 to be entered into cavity 4 (Fact 12).
Appellant has not provided persuasive reasoning or evidence as to
why Zutis’ removable cap (cover) 18 would not operate in a similar manner
if added to Zutis’ figure 10 embodiment.
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Moreover, providing a removable cover would have reasonably been
expected to yield the result of allowing the replenishment of treats. See
KSR, 550 U.S. at 417. Therefore, we conclude that Appellant has not
demonstrated that the Examiner erred in rejecting claim 13 over Zutis and
we affirm the rejection in this regard.
CONCLUSIONS OF LAW
Appellant has not established that the Examiner erred in finding that
the embodiments of figures 5 and 10 in Zutis anticipate the limitations of the
claims rejected under 35 U.S.C. §102(e).
Appellant has not established that the Examiner erred in concluding
that it would have been obvious in Zutis (a) to use a plastic sheeting material
as a ball receiving surface as called for in claims 8 and 19 and (b) to provide
the embodiment of figure 10 with a removable cover engaged with a second
end as called for in claim 13.
DECISION
The decision of the Examiner to reject claims 1-6, 8-16, 18 and 19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

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