Ex Parte Trowbridge et al

Patent Trial and Appeal Board

Jul 10, 2018

14505408 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/505,408 10/02/2014
94468 7590 07/12/2018
DISNEY ENTERPRISES INC.
c/o Patent Ingenuity, P.C.
9701 Wilshire Blvd., Suite 1000
Beverly Hills, CA 90212
FIRST NAMED INVENTOR
Robert Scott Trowbridge
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.
DISNEY-0790-US 2245
EXAMINER
BALDOR!, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/12/2018 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):
ssimpson@patentingenuity.com
patents@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCOTT TROWBRIDGE and
AKHIL MADHANI
Appeal2017-007723
Application 14/505,408
Technology Center 3700
Before JENNIFER D. BAHR, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellant is the Applicant, Disney Enterprises, Inc., which the Appeal
Brief identifies as the real party in interest. Appeal Br. 2.
Appeal2017-007723
Application 14/505,408
THE CLAIMED SUBJECT MATTER
Claims 1, 8, and 14 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. An apparatus comprising:
a puppet device;
a control mechanism operably connected to the puppet
device to control movement of the puppet device, the control
mechanism comprising a material having a material index of
refraction that substantially matches a fluid index of refraction
of a fluid in which the puppet device and the control device[2J
are positioned such that the control mechanism is rendered
substantially invisible.
REJECTIONS
I. Claims 1, 2, 4, 8, and 9 stand rejected under 35 U.S.C.
§ I02(a)(1)/(a)(2) as anticipated by Kohner (US 4,591,345, iss. May
27, 1986).
II. Claims 14 and 16-20 stand rejected under 35 U.S.C.
§ I02(a)(1)/(a)(2) as anticipated by Harris (US 2009/0071137 Al,
pub. Mar. 19, 2009).
III. Claims 3 and 10 stand rejected under 35 U.S.C. § 103 as unpatentable
over Kohner and Greenberg (US 4,223,471, iss. Sept. 23, 1980).
IV. Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable over
Harris and Greenberg.
2 We interpret "the control device" as referring to "a control mechanism"
recited in claim 1. Although this informality may not rise to the level of
rendering the claim indefinite, Appellant and the Examiner should consider
changing "the control device" to "the control mechanism" for consistency
throughout the claim.
2
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Application 14/505,408
V. Claims 5-7 and 11-13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kohner and Harris.
DISCUSSION
Rejection I
Independent claim 1 recites "a control mechanism operably connected
to [a] puppet device" and comprising "a material having a material index of
refraction that substantially matches a fluid index of refraction of a fluid in
which the puppet device and the control [mechanism] are positioned such
that the control mechanism is rendered substantially invisible." Appeal Br.
10 (Claims App.). Independent claim 8 also requires substantially matching
indexes of refraction. Id. at 11 (Claims App.). In particular, claim 8 recites
a control mechanism that moves in a fluid environment and interacts with an
actuator operably connected to an object, wherein the control mechanism
comprises "a material having a material index of refraction that substantially
matches a fluid index of refraction to render the control mechanism
substantially invisible in the fluid environment." Id.
The Examiner finds that Kohner discloses the apparatus of claims 1
and 8. Final Act. 3. In particular, the Examiner finds that actuating rod 41
of Kohner is a "control mechanism comprising a material having a material
index of refraction that substantially matches a fluid index of refraction" of a
fluid in which the control mechanism is positioned or moves such that the
control mechanism is rendered substantially invisible in the fluid. Id. ( citing
Kohner 6:6-8).
The Examiner does not point to any explicit disclosure in Kohner with
respect to indexes of refraction of the actuating rods relative to the fluid in
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Application 14/505,408
housing 2 in which the figure and actuating rods are disposed. See id. The
Examiner bases the finding that Kohner's rod 41 satisfies the index of
refraction limitations of claims 1 and 8 on Kohner' s disclosure that the
actuating "rods are 'transparent to conceal their existence."' Ans. 3 ( citing
Kohner 6:7-8). The Examiner finds, without citing any supporting
evidence, that "[ a ]ny transparent or clear material used in a transparent or
clear fluid, such as air or water, would render the material 'substantially'
invisible, and would also have an index of refraction that 'substantially'
matches that of the fluid, meeting the claimed limitations." Id. The
Examiner also finds, without citing any supporting evidence, that "[ s ]ince
transparent materials have a low index of refraction compared to other solid
materials, and since this is the closest physically possible to air, water, and
other clear fluids, this is as 'substantially matching' as is physically
possible." Id. Noting that "the [S]pecification provides no standard for
measuring the degree of 'substantially matching' indexes of refraction"3 and
"does not describe or list a single index of refraction," the Examiner
essentially disregards the claim language and concludes that "one can
ascertain that ... the invention is simply any clear solid material in a clear
fluid." Id. at 4--5.
In other words, the Examiner equates transparency with index of
refraction, and presumes that all transparent or clear materials have a
material index of refraction that substantially matches the index of refraction
of all transparent or clear fluids. Appellant takes issue with the Examiner's
3 Notably, although the inadequacies identified by the Examiner appear to us
to be fair criticisms of the disclosure of Appellant's invention, the Examiner
does not reject the claims under any provision of 35 U.S.C. § 112.
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Appeal2017-007723
Application 14/505,408
finding that a transparent material necessarily has a material index of
refraction substantially matching that of a clear fluid. Appeal Br. 4--5.
The Examiner does not point to any evidence in the record that
supports the Examiner's position that a material's transparency is indicative
of the material's index of refraction. Kohner's description of the actuating
rods as "transparent to conceal their existence" (Kohner 6:7-8) is not, by
itself, evidence that the rods of Kohner have an index of refraction that
"substantially matches" the index of refraction of the fluid in which they
operate. The Examiner points out that Appellant's Specification "mentions
using water and an 'actuator hav[ing] a clear appearance that is similar to the
appearance of the water' as an example." Ans. 6-7 (citing Spec. ,r 21). The
Examiner then cites examples of "some common 'clear materials"' that have
indexes of refraction that differ significantly from one another and from the
index of refraction of water. Id. at 7. The Examiner deduces from this "that
some of the materials [and fluids] contemplated by Appellant's invention
would have indexes of refraction well over 50% apart." Id.
The Examiner's analysis appears to be premised on an interpretation
of Appellant's Specification as characterizing all "clear" or transparent
materials as materials having a material index of refraction substantially
matching that of the fluid (i.e., water). Such an interpretation is incorrect.
Appellant's Specification discloses that the control mechanisms of the
invention comprise a material having a material index of refraction
substantially the same as that of the fluid in which the puppet is situated, and
may further include hydraulic fluid having an index of refraction
substantially matching that of the fluid being delivered through the control
mechanisms. Spec. ,r,r 18, 21. The Specification further discloses that, for
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Appeal2017-007723
Application 14/505,408
the particular example in which the puppet and actuator are in water, the
control mechanisms and the actuators "have a clear appearance that is
similar to the appearance of the water." Id. ,r 21. Read in context with the
disclosure of the Specification preceding it, the sentence of paragraph 21
from which the Examiner quotes merely conveys that for applications in
which the puppet and its actuators and control mechanisms are in water, the
control mechanisms and actuating fluid are selected to have indexes of
refraction that are substantially the same as water. This is what the
Specification means by having a clear appearance that is similar to the
appearance of the water. In other words, a clear appearance similar to water
is simply an informal way of specifying that the control mechanism material
and the actuating fluid, if any is used, 4 have indexes of refraction
substantially the same as the fluid in which the puppet, actuators, and control
mechanism are situated.
For the above reasons, the Examiner does not establish by a
preponderance of the evidence that the transparent rods of Kohner satisfy the
index of refraction limitations of claims 1 and 8 so as to anticipate the
claimed subject matter. Accordingly, we do not sustain the rejection of
claims 1 and 8, or their dependent claims 2, 4, and 9, as anticipated by
Kohner.
4 Appellant's Specification also discloses that, instead of hydraulic fluid, an
air pump can be used to deliver air pressure through the control mechanism.
Spec. ,r 21, 22. According to the Specification, "the delivery of air pressure"
through the control mechanism is invisible because "air is invisible." Id.
,r 22; see also id. ,r 6 ( distinguishing "dry environments" from "a fluid
environment").
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Application 14/505,408
Rejection II
The Examiner's rejection of claims 14 and 16-20 suffers from the
same deficiency as the rejection of claims 1 and 8. Independent claim 14
recites an apparatus comprising a "tube comprising a material having a
material index of refraction that substantially matches a fluid index of
refraction of a fluid in which the ... tube [is] positioned such that the control
mechanism is rendered substantially invisible." Appeal Br. 11 (Claims
App.). The Examiner finds that Harris discloses the apparatus of claim 14.
Final Act. 3--4. In particular, the Examiner finds that embodiments of Harris
comprising a clear polyolefin tube anticipate the claimed "tube comprising a
material having an index of refraction that substantially matches a fluid
index of refraction of a fluid ... such that the control mechanism is rendered
substantially invisible." Id. at 4 ( citing Harris ,r 109).
The Examiner does not identify any disclosure in Harris directed to
the index of refraction of the tube relative to the fluid in which it is disposed.
Id. Rather, the Examiner's finding of anticipation is based on Harris's
disclosure "that the tubes are made of clear plastic." Ans. 3 ( citing Harris
,r 109). The Examiner's position is that "[a]ny transparent or clear material
used in a transparent or clear fluid, such as air or water, would render the
material 'substantially' invisible, and would also have an index of refraction
that 'substantially' matches that of the fluid." Id. The Examiner's position
in this regard is substantially the same as that presented in explaining the
rejection of claims 1 and 8 based on anticipation by Kohner. See id. at 3-7.
For the reasons discussed above, the Examiner's position is not well-
founded.
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Therefore, the Examiner does not establish by a preponderance of the
evidence that the clear tubes of Harris satisfy the index of refraction
limitations of claim 14 so as to anticipate the claimed subject matter. See
Appeal Br. 7 (arguing that "Harris does not teach that a material index of
refraction substantially matches a fluid index of refraction of a fluid as
recited by claim 14"). Accordingly, we do not sustain the rejection of claim
14, or claims 16-20, which depend from claim 14, as anticipated by Harris.
Rejections 111-V
The rejections of claims 3, 5-7, 10-13, and 15 suffer from the same
deficiency as the rejections of claims 1, 8, and 14, from which they depend.
See Final Act. 4--8. The Examiner does not articulate any additional
findings or reasoning that would make up for the aforementioned
unsupported finding with respect to the substantially matching indexes of
refraction. The Examiner finds that Greenberg teaches that acrylic is "a well
known and easily acquirable transparent material." Id. at 5 (citing
Greenberg 4:29-33). This is the same material disclosed and claimed by
Appellant as having a material index of refraction substantially matching
that of water. Spec. ,r 18; Claim 3. However, the Examiner does not
identify any disclosure in either Kohner or Harris that the transparent
actuating rods or the clear tubes of Harris are disposed in water. Thus, even
if Kohner or Harris were modified to make the actuating rods or tubes of
acrylic, the Examiner does not establish by a preponderance of the evidence
that the resulting modification of either Kohner or Harris would have rods or
tubes comprising a material index of refraction that substantially matches
that of the fluid in which they are disposed, as required in the claims.
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Application 14/505,408
Accordingly, we do not sustain the rejections of claims 3, 5-7, 10-13,
and 15 under 35 U.S.C. § 103.
DECISION
The Examiner's decision rejecting claims 1-20 is reversed.
REVERSED
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