Alexander Kokhan

Patent Trials and Appeals Board

Apr 14, 2021

2020005621 (P.T.A.B. Apr. 14, 2021)

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.
15/411,603 01/20/2017 Alexander Kokhan kokhan-constructtoy-cip 9436
7590 04/14/2021
Alexander Kokhan
18143 Erwin Street
Tarzana, CA 91335
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
04/14/2021 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 ALEXANDER KOKHAN
___________

Appeal 2020-005621
Application 15/411,6031
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s non-final rejection of claims 1–4, 6–10, and 18–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Alexander
Kokhan. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates generally to children's toys and games,
and in particular to an electrical construction toy system.” (Spec. ¶ 1.)
Claims 1, 4, and 18 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. An electrical construction toy system, comprising:
a) a flat base;
b) said flat base being made of a plurality of base pieces;
c) at least one of said plurality of base pieces having a
power source embedded within the at least one of said plurality
of base pieces;
d) means of base connecting each of said plurality of base
pieces to other base pieces located on sides of said each of said
plurality of base pieces;
e) said means of base connecting further providing an
electrical connection such that power from the power source
passes between connected base pieces; and
f) one or more powered effects;
g) said one or more powered effects being activated when
the one or more powered effects are connected to the power
source;
h) building blocks;
i) means of block-base connecting said plurality of base
pieces to the building blocks located on top surfaces of said
plurality of base pieces;
j) said means of block-base connecting further providing
an electrical connection such that power from the power source
passes between the connected base pieces and the building
blocks; and
k) means of block connecting said building blocks to other
building blocks;
l) said means of block connecting further providing an
electrical connection such that power from the power source
passes between connected building blocks.

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REJECTIONS2
Claims 1–4, 6–10, and 18–28 are rejected under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventor regards as the invention with respect to the
claim terms “means of base,” “means of block-base,” and “means of
block.”3
Claims 6 and 23 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention with respect to the claim
term “the building blocks are of building shapes.”
Claims 1, 6–10, 18–20, and 28 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Rosen (US 7,322,873 B1, iss. Jan. 29, 2008).
Claims 2–4 and 21–27 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Rosen and Binder (US 2011/0031689 A1, pub.
Feb. 10, 2011).

2 The rejection under 35 U.S.C. § 112(b) of claims 1, 2, and 4 as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention with respect to the claim
term “on top surfaces” was withdrawn. (Answer 3.) The rejection of
claims 1, 6–10, 18, and 20 under 35 U.S.C. §§102(a)(1) and (a)(2) was
withdrawn. (Id.)
3 We note that the Examiner states that “[c]laims 1-4, 6-10, and 18-28 are
rejected under 35 U.S.C. 112(b)” (Non-Final Action 4), but begins the
paragraph discussing this rejection referring only to the independent claims
(claims 1, 4, and 18) (id. at 5). Appellant, apparently recognizing that the
omission of reference to the associated dependent claims in this paragraph
was simply a typographical error, properly seeks review of: “Whether the
limitations ‘means of base’, ‘means of block-base’, and ‘means of block’ of
claims 1-4, 6-10 and 18-28 are erroneously rejected under 35 U.S.C.
§ 112(b).” (See Appeal Br. 6.)
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ANALYSIS
The § 112(b) rejection of claims 1–4, 6–10, and 18–28
The Examiner determines that independent
[c]laims 1, 4, and 18 recite the terms ‘means of base,’ ‘means of
block-base,’ and ‘means of block,’ however, none of these terms
are [sic] found in the specification and it is unclear what is
attempting to be claimed. The only ‘means for…’ found in the
specification is ‘means for connecting,[’] or connecting means,
item 12. Presumably these are all the same item, since there is
only one described connecting means, and only one part number
shown in the drawings and described in the specification.

(Non-Final Action 5.)
Appellant argues that “[t]he claim must be considered as a whole”
(Appeal Br. 7), and that “[i]n claims 1 and 4, ‘means of base connecting’ is
to connect each of said plurality of base pieces to other base pieces located
on sides of each said each of said plurality of base pieces,” that “‘means of
block-base connecting’ is to connect said plurality of base pieces to the
building blocks located on top surfaces of said plurality of base pieces,” and
that “‘means of block connecting’ is to connect said building blocks to other
building blocks” (id. at 8). Appellant further argues that “the Examiner
admitted that ‘means of base connecting’, ‘means of block-base connecting’,
and ‘means of block connecting’ are not all the same item.” (Reply Br. 2
(citing Non-Final Action 6).)4
To aid us in construing claim 1, we first determine whether § 112(f)
applies to limitations d), e), i), j), k), and l) of claim 1, which all use the term
“means.” Section 112(f) states:

4 Although not explicitly stated, we understand Appellant to be arguing that
the recited means are not all the same.
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An element in a claim for a combination may be expressed
as a means or step for performing a specified function without
the recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.

In enacting § 112(f),
Congress struck a balance in allowing patentees to express a
claim limitation by reciting a function to be performed rather
than by reciting structure for performing that function, while
placing specific constraints on how such a limitation is to be
construed, namely, by restricting the scope of coverage to only
the structure, materials, or acts described in the specification as
corresponding to the claimed function and equivalents thereof.

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015).
The Federal Circuit has stated that “the use of the term ‘means’ has come to
be so closely associated with ‘means-plus-function’ claiming that it is fair to
say that the use of the term ‘means’ (particularly as used in the phrase
‘means for’) generally invokes section 112[(f)].” Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996). “[T]he use of the
word ‘means’ in a claim element creates a rebuttable presumption that
§ 112[(f)] applies.” Williamson, 792 F.3d at 1348.
In making the assessment of whether the limitation in
question is a means-plus-function term subject to the strictures
of § 112[(f)], [Federal Circuit] cases have emphasized that the
essential inquiry is not merely the presence or absence of the
word “means” but whether the words of the claim are understood
by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.

Id.
As an initial matter here, we note that Appellant and the Examiner do
not agree on whether the claim terms at issue are “means of base” or “means
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of base connecting,” “means of block-base” or “means of block-base
connecting, and “means of block” or “means of block connecting.” (See,
e.g., Non-Final Action 5, Appeal Br. 8.) We begin our analysis with
limitation d) of claim 1 which recites “means of base connecting each of said
plurality of base pieces to other base pieces located on sides of said each of
said plurality of base pieces,” and with the rebuttable presumption that
§ 112(f) applies.
If we construe “means of base connecting” as the means, it is unclear
what function is recited by the phrase “each of said plurality of base pieces
to other base pieces located on sides of said each of said plurality of base
pieces.” On the other hand, if we construe “means of base” as the means,
then we can see that the function recited by the phrase “connecting each of
said plurality of base pieces to other base pieces located on sides of said
each of said plurality of base pieces” is to connect each of the plurality of
base pieces to other base pieces. Therefore, we agree with the Examiner that
the recited means in limitation d) is “means of base.”
But we must also determine if limitation d) recites structure for
performing the function. We determine that “means of base” does not have
a sufficiently definite meaning as the name of a structure. We also
determine that limitation d) does not otherwise recite structure for
“connecting each of said plurality of base pieces to other base pieces located
on sides of said each of said plurality of base pieces.” Therefore, we
determine that limitation d) invokes § 112(f). We now look to the
Specification for structure for performing the recited function. The
Specification discloses structure for performing the connecting function:
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Each base piece 11 provides means of connecting 12 to other
base pieces 11 or building blocks 15. The means of connecting
12 may be magnets, clips, pegs, or any other suitable means of
connecting blocks (11 or 15). The means of connecting 12
further provides electrical connections between the base pieces
11 and/or building blocks 15 such that power passes between the
base pieces 11 and/or building blocks 15 from the power source
18.

(Spec. ¶ 17.) So, by way of example, a “means of base” may be a magnet.
We now look to limitation e). Limitation e) recites “said means of
base connecting further providing an electrical connection such that power
from the power source passes between connected base pieces.” Construing
limitation e) in a manner consistent with limitation d) is, however,
problematic. To so construe limitation e) results in two recited functions in
the claim: 1) connecting, and 2) providing. But it is then unclear what “said
means of base” would be connecting in limitation e). That said, if we
construe the “means of base connecting” as the means, then we can see that
the function recited by the phrase “providing an electrical connection such
that power from the power source passes between connected base pieces” is
to provide an electrical connection such that power from the power source
passes between the connected base pieces. But limitation e) recites “said
means of base” (emphasis added), i.e., it relies on the recitation in limitation
d) for its antecedent basis. Thus, we are left unsure how to construe
limitations d) and e). Moreover, in view of Appellant’s apparent argument
that means of base, means of block-base, and means of block are not the
same (see Reply Br. 2), it is unclear to what structure described in the
Specification each term refers. Limitations i) and j), and k) and l) are
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similarly unclear. Independent claims 4 and 18 use similar language and
suffer a similar infirmity.
The Federal Circuit has stated that
when the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b).

In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
“[W]e employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-issuance reviewing
courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Specifically, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112[(b)], as indefinite.”
Id.; see also In re Packard, 751 F.3d at 1311.
In view of the above, we agree with the Examiner that it is unclear
what Appellant is attempting to claim in independent claims 1, 4, and 18.
(See Non-Final Action 5.) Therefore, we are not persuaded that the
Examiner erred in rejecting independent claims 1, 4, and 18, and dependent
claims 2, 3, 6–10, and 19–28 under 35 U.S.C § 112(b) as indefinite.

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The § 112(b) rejection of claims 6 and 23
Claim 6 recites “[t]he electrical construction toy system of claim 1,
wherein said building blocks are of building shapes.” Claim 23 depends
directly from independent claim 4 and recites similar language.
The Examiner determines that “[i]t is unclear how ‘building shape’ is
different from a ‘building block,’ and what is intended here. Further, there
does not appear to be a definition for the term ‘building shape’ in the
specification.” (Non-Final Action 5.)
Appellant argues:
In fact, the scope of “said building blocks” of claims 6
and 23 is broader than the scope of “building shapes” of claims
6 and 23. Furthermore, “building shape” (shape such as a
building) is supported in specification [sic].
“[B]uilding blocks may be attached to each other to form
different shapes such as a vehicle, building, animal”, paragraph
[0021], lines 4-6. Said building blocks can be of vehicle shapes,
building shapes, or animal shapes. In claims 6 and 23, the
limitation “said building blocks are of building shapes” further
limits the scope to building shapes.

(Appeal Br. 10; see also Reply Br. 3.)
In addition to disclosing that “building blocks may be attached to each
other to form different shapes such as a vehicle, building, animal” (Appeal
Br. 10 (quoting Spec. ¶ 21), the Specification also discloses that “[t]he
system further provides one or more building blocks 15 which are preferably
shaped like buildings” (Spec. ¶ 20; see also Appeal Br. 10.) In view of this,
we disagree with the Examiner that the difference between a “building
block” and a building block of a building shape, i.e., a building block in the
shape of a building, is unclear.
Therefore, we will reverse this rejection of claims 6 and 23.
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The § 103 rejections of claims 1–4, 6–10, and 18–28
For the reasons discussed above, the meanings of the claim terms
“means of base” or “means of base connecting,” “means of block-base” or
“means of block-base connecting, and “means of block” or “means of block
connecting” are unclear. We do not sustain the rejection under § 103 of
claims 1–4, 6–10, and 18–28 because the rejections are necessarily based on
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862–63 (CCPA 1962).
It must be understood, however, that our decision regarding these
rejections is based solely on the ambiguity of the claims and does not reflect
in any manner on the adequacy of the prior art evidence relied on in the
Examiner’s rejection.

CONCLUSION
The Examiner’s rejection of claims 1–4, 6–10, and 18–28 under
35 U.S.C. § 112(b) as being indefinite for failing to particularly point out
and distinctly claim the subject matter which the inventor regards as the
invention with respect to the claim terms “means of base,” “means of block-
base,” and “means of block” is affirmed.
The Examiner’s rejection of claims 6 and 23 under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor regards as the invention with respect to
the claim term “the building blocks are of building shapes” is reversed.
The Examiner’s rejections of claims 1–4, 6–10, and 18–28 under
35 U.S.C. § 103 are reversed.
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Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–10,
18–28
112(b) Claim terms “means
of base,” “means of
block-base,” “means
of block”
1–4, 6–10,
18–28

6, 23 112(b) Claim term “the
building blocks are of
building shapes”
6, 23
1, 6–10,
18–20, 28
103 Rosen 1, 6–10,
18–20, 28
2–4,
21–27
103 Rosen, Binder 2–4,
21–27
Overall
Outcome
1–4, 6–10,
18–28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED