Ex Parte Yu

Board of Patent Appeals and Interferences

Sep 10, 2010

11169193 (B.P.A.I. Sep. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SUN YU
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Appeal 2009-008396
Application 11/169,193
Technology Center 3700
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and
STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008396
Application 11/169,193

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The Appellant appeals under 35 U.S.C. § 134 of the Examiner’s final
decision rejecting claims 1-11, 13-15 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Katz (US 5,009,626, issued Apr. 23, 1991) and
Hidalgo (US 6,805,607 B2, issued Oct. 19, 2004); and rejecting claims 12
and 16 under § 103(a) as being unpatentable over Katz, Hidalgo and Bailey
(US 5,749,764, issued May 12, 1998). Claims 1 and 15 are independent
claims. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative of the claims on appeal:
1. A sensory stimulation plush comprising:
a fabric skin having a linear elastic
elongation of at least 50% in the first direction,
said skin formed into a plush shape so as to define
a cavity;
a particulate fill within said cavity wherein a
particle of said fill has a major axis and a minor
axis, and said fill has an average particle size on
the major axis of between 0.25 and 10 millimeters;
and
a photographic image emulative of a person,
animal, or object imprinted on said skin so as to
maintain the elastic elongation of said skin.

The issue raised in this appeal is whether the evidence and technical
reasoning underlying the conclusion that the subject matter of claims 1 and
15 would have been obvious adequately supports the Examiner’s conclusion
that a sensory stimulation plush, as recited in claim 1, or a process, as recited
in claim 15, in which a fabric skin of the plush has a linear elastic elongation
of at least 50% in a first direction, would have been obvious. (See Ans. 4
and 5; Reply Br. 3).
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The Examiner finds that Katz and Hidalgo both describe dolls having
fabric skins. (Ans. 3). Furthermore Katz describes a fabric skin made from
SONTARA® material. Katz describes SONTARA® material as being
susceptible of being stretched to conform to mold or substratum contours.
On the other hand, Katz does not describe the material as having at least
50% linear elastic elongation in a first direction. (Katz, col. 4, ll. 21-37, col.
10, ll. 40-48; see also Zafiroglu, (US 5,308,674, issued May 3, 1994) at col.
4, ll. 30-33, Examples I and II, which shows an area expansion of about 5 to
30% for fabrics comprising SONTARA® material). In fact, the Examiner
does not find that Katz or Hidalgo expressly or inherently discloses fabric
skins made from materials having at least 50% linear elastic elongation in a
first direction. (See Ans. 3-5).
Instead, the Examiner reasons:
Regarding the linear elongation as set forth in
claims 1,4-6, such linear elongation or material
stretch is also well known in the materials such as
knit, SPANDEX®, etc, and commonly used doll
body cover. It is noted that the materials used in
the fabric skin of the present application are
formed of stretch polyester, SPANDEX®, stretch
nylon, and combinations thereof (see page 4, of the
specification) and such materials are well known
in the art as admitted by the appellant. Each of the
materials disclosed by the appellant would satisfy
the linear elongation of at least 50% or more as
claimed. It would have been a matter of design
choice to substitute the material of Katz with any
highly elastic material known in the art to achieve
[the] predictable result of enhancing the sensory
feel of the skin of the doll.

(Ans. 4 (emphasis added)).
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In other words, the Examiner relies on a description of the structural
properties of the fabric skin in the instant Specification as an admission by
the Appellant of the state of the prior art. (Id.) The Examiner finds, without
providing any evidence other than the purported admission, that the claimed
linear elastic elongation property was well known in the art and commonly
used as a doll body cover. (Ans. 5).
The Appellant’s Specification states on page 4, lines 3-5, “[a] fabric
skin according to the present invention is formed of materials illustratively
including a stretch polyester, SPANDEX®, stretch nylon, and combinations
thereof.” This statement is not an admission of the prior art. The statement
appears in the “Description of the Preferred Embodiments” section of the
Specification. It cannot be presumed that the Appellant intended this
statement to describe what was commonly known or used in the art prior to
the filing of the underlying application.
The Appellant correctly contends that “there is not prior art of record
that such materials are ‘commonly used doll body cover’ . . . other than
Appellant’s own specification.” (Reply Br. 3). The portion of the
Appellant’s Specification which describes the Appellant’s claimed subject
matter is not prior art against that subject matter. In re Pleuddemann, 910
F.2d 823 (Fed. Cir. 1990).
The Examiner has not presented substantive evidence, apart from the
erroneously labeled admission, to show that fabric skins having linear elastic
elongations of at least 50% in a first direction were commonly used in doll
body cover. Consequently, the Examiner’s conclusion that “[i]t would have
been a matter of design choice to substitute the material of Katz with any
highly elastic material known in the art to achieve [the] predictable result of
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enhancing the sensory feel of the skin of the doll” (Ans. 4) lacks rational
underpinning.
With respect to claims 12 and 16, the Examiner finds that Bailey
discloses that it was well known in the art “to use a containment bag (12)
filled with dried beans or the like and inserted into a cavity of a doll (20) as
shown in Fig. 1.” (Ans. 4). The Examiner does not explain how the
teachings of Bailey might have overcome the deficiencies in the combined
teachings of Katz and Hidalgo as applied to independent claims 1 and 15.
The evidence and technical reasoning underlying the conclusion that
the subject matter of claims 1 and 15 would have been obvious does not
adequately support the Examiner’s conclusion that a sensory stimulation
plush, as recited in claim 1, or a process, as recited in claim 15, in which a
fabric skin of the plush has a linear elastic elongation of at least 50% in a
first direction, would have been obvious. We do not sustain the rejections of
claims 1-11, 13-15 and 17 under § 103(a) as being unpatentable over Katz
and Hidalgo. Neither do we sustain the Examiner’s final decision rejecting
claims 12 and 16 under § 103(a) as being unpatentable over Katz, Hidalgo
and Bailey.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1-17.

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REVERSED

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Klh

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