WORLDWISE, INC.

Patent Trials and Appeals Board

Jun 8, 2020

15204828 - (D) (P.T.A.B. Jun. 8, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/204,828 07/07/2016 Hannah Rosenberg 545.451 7007
85444 7590 06/08/2020
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
BURGESS, MARC R
ART UNIT PAPER NUMBER
3647
MAIL DATE DELIVERY MODE
06/08/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANNAH ROSENBERG, VICTORIA DAVILA,
and CHARLES FLOYD
____________

Appeal 2019-003746
Application 15/204,828
Technology Center 3600
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1, 3–13, and 15–18, which are all
of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “its
owner, Worldwise, Inc.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “involves a cat attracting toy capable of
amusing and occupying a domestic cat for extended periods of time and
without the need for significant human intervention.” Spec. 1, ll. 5–7.
Claims 1 and 13 are the independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below:
1. A pet toy, in combination, comprising:
a containment structure having a longitudinal axis and cross
section defining an interior volume, said containment structure
comprising a plurality of containment openings along said
longitudinal axis exposing said interior volume to a pet during
use of said pet toy; and
an electronic component comprising a hollow shell having a shell
opening configured therein, a motor having a rotatable shaft
extending toward said shell opening and a power supply for
powering said motor, said motor and power supply being
supported within the interior of said hollow shell, an attractant
being affixed to said rotatable shaft and extending through said
shell opening, said electronic component and said attractant
being visible to a pet during use of the pet toy and wherein, in
use, said pet toy is configured such that said attractant
intermittently extends through said plurality of containment
openings.
Appeal Br. 8 (Claims App.) (emphasis added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Harkins US 5,045,014 Sept. 3, 1991
Evans et al. (“Evans”) US 5,572,951 Nov. 12, 1996
Cesa US 6,964,572 B2 Nov. 15, 2005
Morrison US 7,320,296 B2 Jan. 22, 2008
del Pinal et al.
(“del Pinal”)
US 8,011,326 B2 Sept. 6, 2011
Floyd et al. (“Floyd”) US 2016/0302388 A1 Oct. 20, 2016
REJECTIONS
Claims 1 and 4–10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Morrison in view of Harkins.
Claims 12, 13, 15, and 162 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Morrison in view of Harkins and further in view of
del Pinal.
Claims 3 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Morrison in view of Harkins, alone, or in view of del
Pinal, and further in view of Floyd.
Claims 11 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Morrison in view of Harkins, alone, or in view of del
Pinal, and further in view of Evans.
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Morrison in view of Harkins in view of del Pinal, and further in view of
Cesa.

2 We consider the Examiner’s inclusion of canceled claim 14 to be harmless
error.
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OPINION
Each of independent claims 1 and 13 requires the highlighted feature
above, i.e., that the toy comprise an attractant affixed to a rotatable shaft that
intermittently extends through the containment or shell openings. See
Appeal Br. 8–9 (Claims App.). After careful review of the record before us,
we agree with the Appellant’s contention that the Examiner’s rejections of
independent claims 1 and 13 are in error because the Examiner has not
adequately explained how the combination of Morrison and Harkins, upon
which the Examiner relies, teaches the recited limitation. See Appeal Br. 5;
Reply Br. 2–3.
The Examiner finds, in relevant part, that Morrison teaches the
claimed pet toy with a containment structure comprising a plurality of
openings and an electronic component comprising a shell, a motor inside the
shell, and a power supply, the component being visible during use. See
Final Act. 2, 6–7. Acknowledging that “Morrison does not teach details of
the electronic component,” the Examiner finds that Harkins teaches a pet toy
with a hollow shell having a shell opening, a motor with a rotatable shaft
extending toward the shell opening, a power supply, and an attractant affixed
to the rotatable shaft and extending through the opening, with the electronic
component and attractant visible during use. Id. at 3, 7. The Examiner
further finds “[a]s taught and in use, the pet toy is configured such that said
attractant intermittently extends through said plurality of containment
openings.” Id. at 4; see also id. at 7. The Examiner notes that Harkins’s
wand can be two to twelve inches long and that as Morrison’s device is
intended for a cat, it would be several inches tall. Id. at 4, 7. Alternately,
the Examiner determines, for claim 1, that “it would have been an obvious
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matter of design choice to make the housing larger or the wand/ball smaller
in order to allow the device to operate, since such a modification would have
involved a mere change in the size of a component.” Id. at 4. For claim 13,
the Examiner determines that alternately, “[i]t would have been an obvious
matter of design choice to make the different portions of the containment
structure . . . square, rectangular, or of whatever form or shape was desired
or expedient.” Id. at 7–8.
Morrison discloses “[a]n entertainment device for use by pets . . .
[which] can have a hollow enclosure with access openings and exit
openings.” Morrison, Abstract. The hollow enclosure can have larger play
items with diameters larger than the access and exit openings and smaller
play items with diameter larger than the access openings but smaller than the
exit openings such that the smaller items can be used external to the hollow
enclosure. Id. The play items can include a motor with a power source
within the play items. Id. at col. 6, ll. 4–10.
Harkins discloses “[a] toy displaying erratic and unpredictable motion
for the amusement and fascination of people and pets.” Harkins, Abstract.
The toy includes a spherical casing having within it a motor with a drive
shaft and rechargeable battery, a flickering element, and “means for
operably attaching the flickering element to the drive shaft so that the
flickering element protrudes from the casing and rotates when the motor is
operated.” Id. The rotation of the flickering element causes “the toy to
move or roll in unpredictable directions, thus providing a source of
amusement for people and pets.” Id. The element is described as
“intermittently moving or flickering” and can include a wand with an
attached amusement element at the end. Id. at col. 2, ll. 13–18. The
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amusement element can comprise “different amusement elements [that]
provide different appearances for the fascination and amusement of both
people and pets,” such as a plurality of streamers, a pompom, cellophane
fan, or small rubber tire. Id. at col. 3, ll. 22–35.
The Examiner emphasizes that it is the combination of Morrison and
Harkins that teaches having a motorized ball with the claimed elements
inside a pet toy structure. Ans. 10–11. However, the Examiner does not
adequately explain how the combination teaches the toy being configured to
have the attractant intermittently extend through the openings and why one
of ordinary skill in the art would do so. As best we understand, the
Examiner modifies Morrison’s play item to have a motor with a rotatable
shaft, the shaft having attached thereto a wand with a length of 2 or more
inches that has an attractant attached to the end, as taught by Harkins, such
that the modified play item would at times extend through the openings
through erratic and unpredictable movement. See Ans. 12–13.
In the Final Action, the Examiner states, with reference to the
proposed modification of Morrison based on Harkins, that “[a]s taught and
in use, the pet toy is configured such that said attractant intermittently
extends through said plurality of containment openings.” Final Act. 4, 7.
There is no further explanation in support of this conclusion. In the Answer,
the Examiner explains that Harkins’s teaching of having erratic and
unpredictable motion would “allow [the modified play item] to roll about
inside a containment structure as taught by Morrison, [such that] it would
inherently intermittently extend through the openings,” and the Examiner
provides diagrams of “scenarios” as support. Ans. 12–13. However,
inherency “may not be established by probabilities or possibilities.” Par
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Pharmaceuticals, Inc. v. TWI Pharmaceutical, Inc., 773 F.3d 1186, 1195
(Fed. Cir. 2014) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
“The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Id. (citing In re Rijckaert, 9 F.3d 1531,
1533–34 (Fed. Cir. 1993)). And, “[t]hat which may be inherent is not
necessarily known. Obviousness cannot be predicated on what is unknown.”
In re Spormann, 363 F.2d 444, 448 (C.C.P.A. 1966). Neither Morrison nor
Harkins teaches their attractant intermittently extending through openings.
We agree with the Appellant that the Examiner’s scenarios are simply
speculation. See Reply Br. 3.
The Examiner also states that, alternatively, for claim 1
it would have been an obvious matter of design choice to make
the housing larger or the wand/ball smaller in order to allow the
device to operate, since such a modification would have involved
a mere change in the size of a component. A change in size is
generally recognized as being within the level of ordinary skill
in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Final Act. 4–5. The Examiner provides a similar alternative for claim 13,
that Morrison teaches that the containment structure 110 can be
of any shape desired (column 3, lines 38–43). It would have been
an obvious matter of design choice to make the different portions
of the containment structure, square, rectangular, or of whatever
form or shape was desired or expedient. A change in form or
shape is generally recognized as being within the level of
ordinary skill in the art, absent any showing of unexpected
results. In re Dailey et al., 149 USPQ 47.
Final Act. 7–8 (bold omitted). However, our reviewing court has cautioned
that “[m]erely stating that a particular [limitation] is a design choice does not
make it obvious.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
1069 n.4 (Fed. Cir. 2018) (quoting Cutsforth, Inc. v. MotivePower, Inc., 636
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F. App’x 575, 578 (Fed. Cir. 2016) (nonprecedential)). Similarly, the
Manual of Patent Examining Procedure (“MPEP”) states that “[t]he mere
fact that a worker in the art could rearrange the parts of the reference device
to meet the terms of the claims on appeal is not by itself sufficient to support
a finding of obviousness.” MPEP § 2144.04 (quoting Ex parte Chicago
Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984). The
Examiner must still provide a reason for one of ordinary skill in the art,
“without the benefit of the appellant’s specification, to make the necessary
changes in the reference device.” Id.
Rather than provide any evidence or technical analysis relevant to the
specific facts at issue relating to the modified play item intermittently
extending through the openings, the Examiner summarily reaches a
conclusion of obviousness relying on, without more, a per se rule that “[a]
change in size [or form or shape] is generally recognized as being within the
level or ordinary skill in the art.” Final Act. 4–5, 7–8. “This method of
analysis is founded on legal error because it substitutes supposed per se rules
for the particularized inquiry required by section 103. It necessarily
produces erroneous results.” In re Ochiai, 71 F. 3d 1565, 1571 (Fed.
Cir. 1995). Further, the Appellant argues that the different structures of
Morrison and Harkins achieve different purposes, while for the Appellant’s
invention, the feature of the attractant intermittently extending through
openings is critical for its purpose. See Appeal Br. 4–5; Reply Br. 2–3.
Specifically, the Appellant argues that this feature “not only makes the toy
more effective in that it stimulates the hunt and pounce instincts of a cat[,]
but also helps protect the attractant by periodically withdrawing it within the
structure to minimize its degradation during vigorous play.” Reply Br. 2;
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see also Appeal Br. 4; Spec. 1 (discussing a cat’s natural instinct to hunt and
pounce and prior art problems of instability). The Appellant argues that in
contrast to their invention, Morrison’s device prevents boredom and
dissatisfaction (see Appeal Br. 4; see also Morrison, Abstract, col. 6, ll. 4–10
(providing an “entertainment device” that “spark[s] the interest of the pet in
chasing the play items”)), and that Harkins teaches a tennis ball like
structure with a tune and rotating flickering element (see Appeal Br. 5) that
provides a toy “for the amusement of people and pets[,] . . . to fascinate
people and pets . . . [and] that will not cause injury to either people or pets”
(Harkins, col. 1, ll. 35–42). The Appellant thus provides sufficient reasons
why the feature of the attractant intermittently extending through openings
and the sizing of Morrison’s play item as modified by Harkins are not
simply design choices. See In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995).
Thus, based on the record before us, we are persuaded of Examiner
error, and we do not sustain the rejections of independent claims 1 and 13.
We also do not sustain the rejections of dependent claims 4–10, 12, 15,
and 16 under the same grounds of rejection. The rejections of claims 3, 11,
17, and 18 as further obvious over Floyd, Evans, and Cesa are also not
sustained, as they fail to include additional findings and/or reasoning that
cures the deficiency in the rejections of the independent claims, from which
they depend.
CONCLUSION
The Examiner’s decision to reject claims 1, 3–13, and 15–18 is not
sustained.
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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–10 103 Morrison, Harkins 1, 4–10
12, 13, 15, 16 103 Morrison, Harkins,
del Pinal
12, 13, 15, 16
3, 17 103 Morrison, Harkins,
del Pinal, Floyd
3, 17
11, 18 103 Morrison, Harkins,
del Pinal, Evans
11, 18
17 103 Morrison, Harkins,
del Pinal, Cesa
17
Overall
Outcome
1, 3–13,
15–18

REVERSED