Ex Parte 7376993 et al

Patent Trial and Appeal Board

Dec 6, 2013

95000514 (P.T.A.B. Dec. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,514 01/08/2010 7376993 CH13-1K 6127
34431 7590 12/09/2013
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2100
CHICAGO, IL 60606
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/09/2013 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
____________________

ARTSANA USA, INC.
1

Requester, Appellant

v.

KOLCRAFT ENTERPRISES, INC.
2

Patent Owner, Respondent
____________________

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3

Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
BRETT C. MARTIN Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
Previously named Chicco USA, Inc. (Appeal Brief (hereinafter "App. Br.")
3).
2
Kolcraft Enterprises, Inc., is the real party in interest (Respondent Brief
(hereinafter "Resp. Br.") 1).
3
Patent US 7,376,993 B2 (hereinafter "'993 patent") issued May 27, 2008 to
Myers et al.
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STATEMENT OF THE CASE
Claims 1-68 are subject to reexamination and claims 1-32, 34, 37-50,
52-60 and 63-68 have been confirmed or found patentable (Right of Appeal
Notice
4
(hereinafter "RAN") 1). Remaining claims 33, 35, 36, 51, 61 and 62
have been canceled (RAN 1). The Requester appeals under 35 U.S.C.
§§ 134 and 315 from the Examiner's withdrawal or refusal to adopt certain
proposed rejections of the claims (App. Br. 5-8). We have jurisdiction under
35 U.S.C. §§ 134 and 315.
The Requester relies on its Appeal Brief, Rebuttal Brief (hereinafter
"Reb. Br.") and a declaration from Mr. O'Donnell to support its position that
the appealed claims are unpatentable. The Patent Owner relies on a
Respondent Brief and a declaration of Mr. Bretschger in support of the
Examiner's decision. An oral hearing with the representatives of the parties
was held before the Patent Trial and Appeal Board on November 6, 2013, a
transcript of which will be entered into the record in due course.
The '993 patent has also been identified as being asserted in co-
pending civil action captioned Kolcraft Enterprises, Inc. v. Chicco USA,
Inc., Civil Action No. 1:09-cv-0339 (N.D. Ill.) (App. Br. 3; Resp. Br. 1).
We AFFIRM-IN-PART and REVERSE-IN-PART, denominating the
reversal as a New Ground of Rejection.

4
The Examiner's Answer mailed March 13, 1013 merely incorporates by
reference the RAN so we cite to the RAN herein.

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THE INVENTION
The '993 patent is directed to play gyms and methods of operating the
same (see '993 patent, Title). There are 16 separate independent claims.
Representative independent claims 1, 22 and 32 read as follows (Claims
App'x, italics added):
1. An apparatus comprising:
a floor mat;
a play gym to suspend an object above the floor mat;
at least two compound connectors to couple the play gym
to the floor mat; and
at least one fastener to couple the floor mat to at least one
of a play yard and a bassinet,
wherein each of the at least two compound connectors
comprises a first connector, a second connector and a third
connector, and the play gym comprises:
a hub; and
at least two legs, each of the legs having a first end
coupled to the hub and a second end dimensioned to be
removably coupled to a respective one of the compound
connectors such that the first, second, and third connector
of each compound connector cooperate to couple a
respective leg to the floor mat, wherein the at least two
legs are pivotably coupled to the hub.

22. An apparatus comprising:
a hub; and
at least two legs, each of the legs having a first end
coupled to the hub and a second end dimensioned to be
removably coupled to: (a) a fabric pocket on at least one of a
bassinet and a play yard, and (b) a compound connector of a
floor mat separate from the bassinet and the play yard, wherein
the hub defines a first plurality of cavities and a second
plurality of cavities, wherein each of the at least two legs is
pivotable between a first position in which the first end is
disposed within a respective one of the first cavities and a
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second position in which the first end is disposed within a
respective one of the second cavities, wherein the compound
connector includes a first connector defining an aperture to
receive the leg and a metal connector to secure the leg to the
mat.

32. An apparatus comprising:
a play yard having a floor mat, the floor mat having a set
of first connectors and a set of second connectors,
a bassinet for suspension within the play yard;
a play gym to suspend an object above the floor mat
when the bassinet is suspended in the play yard and the floor
mat is in the bassinet, and to suspend the object above the floor
mat when the floor mat is in neither the play yard nor the
bassinet, the play gym including a hub and four legs, each of
the first connectors from the first set being paired with a
respective one of the second connectors from the second set,
each pair of first and second connectors cooperating to
removably connect a respective one of the legs to the floor mat,
each of the legs having a first end pivotably coupled to the hub
and a second end dimensioned to be removably coupled to the
floor mat via a respective pair of first and second connectors,
wherein the hub defines a first plurality of cavities and a second
plurality of cavities, and wherein each of the legs is pivotable
between a first position in which the first end is disposed within
a respective one of the first cavities and a second position in
which the first end is disposed within a respective one of the
second cavities, and wherein the hub includes a plurality of pins
and each of the first ends of the legs defines a slot to receive a
respective one of the pins;
a plurality of springs positioned to bias the legs towards
the hub; and
a fastener to couple the floor mat to at least one of the
play yard and a bassinet.

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REJECTIONS AT ISSUE
The Requester asserts that the Examiner erred in refusing to reject the
various claims under 35 U.S.C. § 103(a) as being obvious over the following
combination of references:
5

A. Rejections based on Fisher-Price 2002
6
:
(1) Claims 1-5 and 17-21 over FP 2002 in view of the Graco
7

(Proposed Rejection A4);

(2) Claim 21 over FP 2002 in view of Graco and Century
8

(Proposed Rejection B4);

(3) Claims 13-16 over FP 2002 in view of Graco and Custer
9

(Proposed Rejection C4);

(4) Claims 5 and 12 over FP 2002 in view of Graco and
Glover
10
(Proposed Rejection D4);

(5) Claims 6-11 over FP 2002 in view of Graco and Yang
11

(Proposed Rejection E4);

(6) Claims 6-11 over FP 2002 in view of Graco and Hu
12

(Proposed Rejection F4);

5
We utilize the same alpha-numeric designations used by the Requester in
its Appeal Brief. We understand the additional parentheticals identifying the
rejections are the designations of rejections used prior to appeal.
6
Fisher-Price Model No. 74067 Instruction Manual (© 2002) (hereinafter
"FP 2002").
7
Graco Pack 'N Play Model No. 386-11-01 Owner's Manual (2001).
8
Century Fold 'N Go Model No. PM-0728AA Owner's Manual (1998).
9
U.S. Patent No. 6,109,280 issued on August 29, 2000 to Marty Custer.
10
U.S. Patent No. 6,516,823 issued on February 11, 2003 to Richard Glover
and Jerome J. Drobinski.
11
U.S. Patent No. 6,711,569 issued on March 30, 2004 to Kai-Ming Yang.
12
U.S. Patent No. 6,510,569 issued on January 28, 2003 to Stephen Hu.
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(7) Claims 5-8 and 12 over FP 2002 in view of Graco and
Kim
13
(Proposed Rejection G4);

(8) Claims 59 and 60 over FP 2002 in view of Century
(Proposed Rejection H4);

(9) Claims 59 and 60 over FP 2002 in view of Century and
Yang (Proposed Rejection I4);

(10) Claims 41 and 42 over FP 2002 in view of Century and
Custer (Proposed Rejection J4);

(11) Claims 48 and 49 over FP 2002 in view of Custer and
Yang (Proposed Rejection K4);

(12) Claims 32, 34, 37-40, 43-47 and 64-68 over FP 2002 in
view of Custer, Century and Yang (Proposed Rejection L4);

(13) Claims 50 and 52-58 over FP 2002 in view of Custer,
Century, Yang and Kim (Proposed Rejection M4);

(14) Claims 64-67 over FP 2002 in view of Custer, Century and
Hu (Proposed Rejection N4); and

(15) Claims 28-31 over FP 2002 in view of Graco and Hu
(Modified Proposed Rejection G).

B. Claims 22-27 over Graco in view of Custer and Yang
(Rejection P).

C. Claims 22-27 over Graco in view of Custer and Hu
(Rejection Q).

D. Claims 22, 23 and 27 over Graco in view of Custer and
Kim (Rejection R).

13
U.S. Patent No. 4,750,509 issued June 14, 1988 to Soon-Tae Kim.
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E. Claims 32, 34, 37, and 38 over Graco in view of Custer
and Yang (Examiner Initiated Rejection).

ISSUES
We initially note that only those arguments actually made have been
considered and other arguments not made are deemed to be waived. See 37
C.F.R. § 41.67(c)(1)(vii). The appeal raises the following issues:
1. Whether claims 3, 4 and 34 are properly before the Board on
appeal.
2. Whether Rejections A(1)-A(15) are properly before the Board
on appeal.
3. Whether the entry of the declaration of Bretschger by the
Examiner removing Drosendahl
14
is relevant to this appeal.
4. To any extent the declaration of Bretschger is relevant to this
appeal, whether the declaration is defective and unpersuasive to remove
Drosendahl because it fails to establish unavailability of the inventors of the
'933 patent.
5. Whether FP 2002 is prior art against the '933 patent.
6. Whether the Examiner erred in refusing to adopt Rejections
A(1)-A(14) principally based on FP 2002.
7. Whether the Examiner erred in refusing to adopt Rejections B-
D based on the finding that Custer does not disclose a "compound
connector."

14
Patent No. US 6,702,643 B1 issued on March 9, 2004 to Drosendahl et al.
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8. Whether the Examiner erred in refusing to adopt Rejection E
based on the finding with respect to the spring biased slide portion of Yang.

Preliminary Matters
Claims 3, 4 and 34
According to the Patent Owner, claims 3 and 4 in Rejection A(1) were
not appealed in the Notice of Appeal and thus, "are not part of the appeal
and cannot now be added." (Resp. Br. 11; see also Resp. Br. 4, 8). In
addition, according to the Patent Owner, claim 34 is not properly at issue in
Rejection E because the Requester only appealed claims 32, 37 and 38 in
Rejection E (Resp. Br. 4, 14). The Requester asserts that the omission of
claims 3 and 4 was merely a mistake and notes that the Requester previously
proposed rejecting these claims based on FP 2003 (Reb. Br. 6-7; App. Br. 6,
fn. 6). As to claim 34 in Rejection E, the Requester again asserts that the
omission was merely a mistake (Reb. Br. 14).
We agree with the Patent Owner that claims 3 and 4 are not subject to
appeal. The Notice of Appeal filed by the Requester on April 18, 2012
excludes claims 2-4 therefrom (Notice of Appeal 1). See generally, 37
C.F.R. § 41.61(c), (d). The Notice of Appeal explicitly sets forth the
rejections being appealed to the Board (Notice of Appeal 2-4). Of these
rejections appealed, "Rejection (1)" specifically identifies claims 1, 2, 5 and
17-21 as being appealed (Notice of Appeal 2). Hence, it can reasonably be
asserted that omission of claim 2 on page 1 was merely a mistake. However,
neither the Notice of Appeal, nor any of the rejections identified therein as
being appealed to the Board, identifies claim 3 or 4 as being part of the
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appeal. Thus, we find no support for the Requester's assertion that the
exclusion of claims 3 and 4 from the appeal was merely a mistake rather
than intentional. Correspondingly, because claims 3 and 4 are not properly
before the Board, the appeal thereof is dismissed.
We also agree with the Patent Owner that claim 34 is not subject to
appeal in Rejection E. The Notice of Appeal filed by the Requester does not
identify claim 34 as being appealed in the "Examiner Initiated Rejection"
numbered "(22)" of claims 32, 37 and 38 (Notice of Appeal 4). While the
Notice of Appeal does identify claim 34 as being appealed, we observe that
claim 34 is included with respect to the appeal of rejection numbered "(12)"
that is principally based on FP 2002 instead of Graco (Notice of Appeal 4).
Correspondingly, the appeal of Rejection E is only with respect to claims 32,
37 and 38, and the appeal of claim 34 under Rejection E is dismissed.

Rejection A(15)
According to the Patent Owner, Rejection A(15) for claims 28-31
based on FP 2002 was never proposed by the Requester during the
reexamination proceeding. The Patent Owner argues that "the Appellant is
barred from presenting the new rejections of claims 28-31 on appeal" and
the rejections should be dismissed (Resp. Br. 3, 8-10). Though the
Requester concedes that the Examiner did not consider Rejection A(15), it
argues that Rejection A(15) is identical to previously Proposed Rejection G
except for the substitution of FP 2002 in place of FP 2003, and asserts that
FP2002 "discloses the same subject matter" as FP2003 (App. Br. 16-17;
Reb. Br. 6-7).
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37 C.F.R. § 41.67(c)(1)(vi) states "[n]o new ground of rejection can
be proposed by a third party requester appellant [in the Appellant's brief],
unless such ground was withdrawn by the examiner … and the third party
requester has not yet had an opportunity to propose it …." The record
indicates that rejection A(15) of claims 28-31 as now set forth in the
Requester's Appeal Brief was not proposed to the Examiner, but instead, is
being proposed for the first time during the appeal before the Board. We
agree with the Patent Owner that such presentation of a new rejection at the
appeal stage of reexamination is improper and not in compliance with the
noted Rule. Hence, Rejection A(15) is dismissed as not being properly
before the Board.

Declaration of Bretschger
During the reexamination, the Examiner entered a declaration of
Bretschger submitted by the Patent Owner together with amendments
canceling various claims, the Examiner finding that the amendment and
declaration simplified issues for appeal and entry "would not be an undue
burden" (RAN 8). The declaration of Bretschger sought to antedate
Drosendahl.
15

The Requester argues that the declaration of Bretschger should not
have been entered by the Examiner because it was submitted untimely after
the first Action Closing Prosecution, and reexaminations are to be conducted
with special dispatch (App. Br. 20). The Requester also argues that the

15
U.S. Patent No. 6,702,643 issued on March 9, 2004 to Christine
Drosendahl, Jerry May and Timothy Snyder.
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declaration is deficient and unpersuasive because it is not from the inventors
and fails to establish unavailability of the inventors under MPEP § 715.04
(App. Br. 21-22). The Requester further states that "[a]s a result, the
rejections based on Drosendahl should be maintained." (App. Br. 21; see
also Rebuttal Br. 12).
However, as noted by the Patent Owner (Resp. Br. 11), none of the
non-adopted rejections appealed by the Requester for review by the Board
relies on Drosendahl. The record is clear as to which non-adopted rejections
are being appealed to the Board (Notice of Appeal dated April 18, 2012, 2-4;
App. Br. 6-8), none of which relies on Drosendahl. Thus, the Examiner's
decision to enter the Bretschger's declaration is not pertinent to the appeal
before the Board and is entirely within the purview of the Examiner. The
Examiner's decision is petitionable to the Director, and is not an adverse
decision relating to matters involving the rejection of claims that is
reviewable by the Board because there are no rejections that rely on
Drosendahl. See In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971) ("the
kind of adverse decisions of examiners which are reviewable by the board
must be those which relate, at least indirectly, to matters involving the
rejection of claims.").
To any extent that the Requester's statement that "the rejections based
on Drosendahl should be maintained" can somehow be interpreted to be an
actual appeal of rejections so as to be properly before the Board, we observe
that the actual entry of the declaration is still a matter within the purview of
the Examiner and is petitionable to the Director. As to the substantive
argument that the Bretschger's Declaration is defective and unpersuasive
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because it fails to establish unavailability of the inventors of the '933 patent
in violation of MPEP § 715.04 (App. Br. 21-22), we observe that 37 C.F.R.
§ 1.131(a) specifically provides that "the owner of the patent under
reexamination … may submit an appropriate oath or declaration to establish
invention of the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is based." (37 C.F.R.
§ 1.131(a); see also Resp. Br. 12). Thus, the rule expressly provides for
persons other than inventors to submit such declarations in reexamination
proceedings independent of the availability of all inventors. In addition, the
MPEP is subservient to the Code of Federal Regulations. See generally,
Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253,
1257 (Fed. Cir. 1997) (while the MPEP gives an indication of "the
presumptions under which the PTO operates," it does not have the force of
law). Hence, the fact that Bretschger's Declaration did not establish
unavailability of the inventors is not dispositive and we are not persuaded by
the Requester's argument based thereon.

Formalities
The Patent Owner also asserts that the Requester's Appeal Brief
should be rejected because it has numerous formality issues such as sections
being out of order, exceeding the page limit, inclusions of claims not
appealed, proposing new rejections of claims 28-31, and incorporating
arguments by reference (Resp. Br. 3-4; see also Resp. Br. 7-8). However,
we have addressed the main formality issues raised by the Patent Owner
supra, and note that the Requester's Appeal Brief has been accepted by the
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Board in its docketing of the appeal. See generally, 37 C.F.R. § 41.64(a),
(b). To any extent that there are other substantive issues raised by the
asserted formality issues, we address them infra as appropriate.

Rejections A(1)-A(14) Based on Fisher-Price 2002
Prior Art Status of Fisher-Price 2002
Firstly, the Patent Owner requests that the Board not consider
Rejections A(1)-A(14) because the Requester's Appeal Brief incorporates
arguments by reference (Resp. Br. 4, 7). While the Patent Owner cites to 37
C.F.R. § 41.67(c)(1)(vii), we note that the cited rule does not preclude
referencing other parts of the record. Instead, the rule makes clear that the
appellant, the Requester in the present case, must set forth arguments or
authorities relied upon for the issues presented on appeal for decision by the
Board. Id. The Examiner found that FP 2002 is not prior art (RAN 21, et
seq.) and this very finding is being disputed by the Requester in its appeal.
This issue, for which the Requester seeks our review and decision, has been
fully briefed in the Requester's Appeal Brief, and is considered to be
dispositive by the Requester as to Rejections A(1)-A(14) (App. Br. 11-14).
Hence, we address the substantive issue as to whether FP 2002 is, or is not,
prior art herein.
The record indicates that Fisher-Price Model No. 74067 Instruction
Manual (©2003) (hereinafter "FP 2003") was submitted with the Request for
Inter Partes Reexamination dated January 8, 2010, together with a
declaration of Ms. Saenz that included a webpage printout from Mattel
Consumer Relations Answer Center website stating Learning Patternsâ„¢
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Motion & Music Jungle Gym Product No. 74067 as being "Released: 2002."
(Hereinafter "Webpage Printout"; see Request for Inter Partes
Reexamination, Exhibit W). However, because the priority date of the '993
patent was also in 2003, the Examiner deemed FP 2003 not to be prior art
against the '993 patent (Order Granting Request for Inter Partes
Reexamination 6; see also App. Br. 9). The Examiner did not find the
Webpage Printout dispositive as to the prior art status of FP 2003 stating that
"[i]t is not the device that is being relied upon as evidence in a
reexamination, but rather the printed publication." (Id.).
The record further indicates that the Requester subsequently submitted
FP 2002, which, as noted, is a Fisher-Price Model No. 74067 Instruction
Manual bearing a 2002 copyright date (see Requester's Comments filed July
18, 2011, 2-3 (hereinafter "Req. Comments"); Decl. of O'Donnell, ¶ 11; see
also App. Br. 11). The Examiner finds the copyright notice of FP 2002
inadequate to demonstrate actual public dissemination of FP 2002 in the year
2002 because such a manual would have been disseminated only with the
sale of the product (RAN 21). The Examiner asserts that the Requester "has
provided no evidence that the manual was publically distributed prior to
January 26, 2003 (as the Bretschger declaration establishes a date prior to
January 27, 2003.)" (RAN 21). Hence, the Examiner concludes that while
the FP 2002 may have been printed in 2002, "[i]t is not a foregone
conclusion that the Fisher-Price device was produced, shipped and sold prior
to January 26, 2003." (RAN 21-22).
The Examiner's decision not to adopt the proposed rejections based on
FP 2002 was partly based on the above finding that FP 2002 is not prior art
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(see e.g., RAN 21). In this regard, the Examiner explains that, whereas the
Requester relies on FP 2002 for disclosing the compound connectors recited
in the claims, FP 2002 is not prior art against the '993 patent, and that none
of the other references "show[s] or fairly teach[es] compound connectors
with three cooperating connectors coupling the mat to the legs of the play
gym." (Id.). The Examiner further states that with respect to Rejections
A(1)-A(14), "[w]ithout the Fisher-Price 2002 reference, there is no teaching
of three cooperating connectors coupling the mat and the legs of the gym."
(RAN 22).
The Patent Owner agrees with the Examiner and states that while a
copyright may indicate date of printing, it does not indicate accessibility by
the public, especially considering that "the reference in question is a
document intended for inclusion in a product." (Resp. Br. 6-7). The Patent
Owner points out that "'the one who wishes to characterize the information,
in whatever form it may be, as a 'printed publication' should produce
sufficient proof of its dissemination or that it has otherwise been available
and accessible to persons concerned with the art to which the document
relates and thus most likely to avail themselves of its contents.'" (Resp. Br.
7, quoting In re Wyer, 655 F.2d 221, 227 (CCPA 1981)).
The Requester argues that FP 2002 is prior art because, inter alia,
"[t]he combination of the reference[']s 2002 copyright date [] and the
printout showing a 2002 release date [] was sufficient evidence to show that
Fisher Price 2002 was publically available in 2002." (App. Br. 14). While
we understand the Examiner's finding that FP 2002 is not prior art based on
the copyright date alone, we agree with the Requester that FP 2002 is prior
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art in view of the Webpage Printout. In particular, the Requester has
provided sufficient proof that FP 2002 was publically distributed in year
2002 by preponderance of the evidence that indicates that the Product No.
74067 was "Released: 2002," thereby validating the date of dissemination of
FP 2002 as occurring in the year 2002. While the Examiner's reasoning that
reexamination is based on documents and not the device is persuasive with
respect to FP 2003 because it is unlikely that FP 2003 (bearing a 2003
copyright date) would have been disseminated in 2002, it is unpersuasive
with respect to FP 2002 which bears the 2002 copyright date and the
accompanying Webpage Printout evidence. Correspondingly, the Examiner
erred in finding that FP 2002 is not prior art against the '993 patent.

Rejections A(1)-A(14)
However, our consideration of the Rejections A(1)-A(14) does not
end with the prior art status of FP 2002. In particular, the Examiner also
stated "[i]t is further noted that the legs of the Fisher-Price 2002 are not seen
as pivotably coupled to the hub. The legs are fixedly connected to the hub.
The distal end[s] of the legs are movable only because the legs are flexible,
not due to a pivotable connection at the hub." (RAN 22). Indeed, all of the
apparatus claims for which the Requester asserts obviousness based on FP
2002 require at least two legs to be "pivotably coupled to the hub," and/or
pivotable between first and second positions. However, FP 2002 does not
disclose that the tubes (i.e., legs) are pivotably coupled to the asserted hub,
or disclose structure for such pivotable coupling.
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The Requester does not challenge or persuasively refute this finding
of the Examiner. To the contrary, the Requester is on record as stating that
"the Fisher-Price 2002 manual teaches that the legs are flexible, as they must
inherently flex to be inserted into the connectors. See Figs. 1-4 (pgs. 7, 8,
12)." (Req. Comments 10). At best, the Requester's position may be that this
flexing/bending of the tubes of FP 2002 satisfies the recitation of the claims
requiring the legs to be pivotably coupled to the hub and/or pivotable
between positions (see, e.g., Req. Comments 8, stating "Fisher-Price 2002:
The legs pivot with respect to the hub in the direction of arrows. See Fig. 4
(pg. 12).").
We disagree with the Requester's implied claim interpretation of
"pivotably coupled" because such expansive interpretation is not only
inconsistent with the broadest reasonable interpretation in view of the
Specification of the '993 patent, but also contrary to the plain and ordinary
meaning of pivot or pivotable.
16
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (Claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (The
words of the claim must be given their plain meaning unless the plain
meaning is inconsistent with the specification).

16
Pertinent definitions of "pivot" are "1: a shaft or pin on which something
turns"; "1: turning on or as if on a pivot"; "to turn on or as if on a pivot: 1: to
provide with, mount on, or attach by a pivot 2: to cause to pivot - pivotable."
Merriam-Webster's Collegiate Dictionary, 11
th
Ed. (2007).
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Pivotal coupling and pivotal movement resulting from such a coupling
differs from that of a fixed coupling and bending movement. The
Specification of the '993 patent uses the term "pivotable" and variations
thereof in accordance with the plain and ordinary meaning (col. 4, ll. 5-10),
and does not use the term in a context that encompasses or means bending.
Indeed, the Specification of the '993 patent explicitly recognizes the
distinction between bending and pivoting of the recited legs, the
Specification disclosing that "the legs 22 are pivotably coupled to the hub 20
such that they can be pivoted" between two positions (col. 4, ll. 5-10,
emphasis added), but also that the legs "are flexible such that they can be
bent into the arched position." (Col. 3, ll. 61-65, emphasis added).
Thus, because the Requester does not challenge, or persuasively
refute, this finding of the Examiner regarding FP 2002, we are not persuaded
that the Examiner erred in refusing to adopt Rejections A(1)-A(10).
In addition, the Requester's Proposed Rejections A(11)-A(14) are also
deficient in that the rejections proposed do not adequately disclose the
limitations of these claims, and the Requester does not adequately address
the Examiner's findings with respect to the prior art as discussed below.

Rejection A(11)
Claims 48 and 49 are asserted to be obvious over FP 2002 in view of
Custer and Yang. Independent claim 48, and claim 49 depending therefrom,
recites "springs biasing respective ones of the legs towards the hub such that
moving the first ends of the legs away from the first cavity to the second
cavity requires pulling the legs away from the hub against the springs."
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Requester relies on Yang to satisfy this limitation and asserts that it discloses
"a plurality of springs (32) positioned to bias the slide portions (34) of the
legs (60) toward the hub (1)" and the limitation regarding pulling the legs is
"a method limitation which is not entitled to any weight." (Req. Comments
21). The Requester also asserts that the slide portion (34) is an extension of
the leg that is biased toward the hub by a spring (see, e.g., App. Br. 27).
The Examiner disagrees and finds that Yang fails to disclose legs that
are pivotable by pulling the leg away from the hub, and instead, finds that
the legs of Yang cannot be pulled away, and that the tabs (i.e., slide portion
34) merely allow the legs to be pivoted (RAN 42-43). The Examiner also
states that the claim limitation requiring the leg to be pulled away is
functional so that the prior art must be capable of performing the recited
function (RAN 38-39).
We agree with the Examiner. The slide portion 34 of Yang, which is
biased by the spring 32, is actually part of a sliding engaging assembly 30
that functions together with structural features of the body 10 (i.e., hub) and
the coupling pin 35 to thereby lock the leg 60 in an erected position (Yang,
col. 4, ll. 39-57; Figs. 2-4). While the slide portion 34 is movably received
within an open end of a leg (Yang, col. 3, ll. 50-65; Figs. 2-4), it cannot
reasonably be considered "a leg" or as performing a function of a leg. The
spring 32 of Yang merely biases the slide portion 34, and does not "bias[]
respective ones of the legs towards the hub" as required. The legs 60 of
Yang are pivotally mounted on the body 10 (i.e., hub) by the pins 61 in
circular holes so as to merely allow for pivotal movement (Yang, col. 3, ll.
50-51; Figs. 3-4). Consequently, the legs 60 of Yang are not capable of
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performing the recited function of being pulled away from the hub against
the springs.

Rejection A(12)
Claims 32, 34, 37-40, 43-47 and 64-68 are asserted to be obvious over
FP 2002 in view of Custer, Century and Yang. Of these claims, claims 32,
43, 44, 64 and 68 are independent claims. Claim 32 requires "a plurality of
springs positioned to bias the legs towards the hub." Claim 43 recites the
functional limitation pertaining to "pulling the leg away from the hub."
Claims 44 and 68 include similar limitations to claim 43, with claim 44
further requiring the legs to be "spring biased toward the hub." As discussed
supra, Yang does not disclose these limitations (see also RAN 38-39, 42-
43).
Claim 64 recites "each of the legs having a first end pivotably coupled
to the hub via a respective slot and a pivot pin…and the respective slots of
the legs permitting translation of the legs relative to their respective pivot
pins to move the legs clear of their respective internal surfaces of the hub to
thereby permit the legs to pivot to the stored position." (Emphasis added).
The Examiner finds that this feature is not disclosed in the references relied
upon by the Requester (RAN 43). We agree. The elongated opening 62
(i.e., slots) in the legs 60 of Yang merely allows movement of the slide
portion 34, and does not pivotably couple the legs 60 to the body 10 (i.e.,
hubs), such pivotable coupling being attained by a separate pin 61 that is
received in a circular hole in Yang (Yang, col. 3, ll. 50-65; col. 4, ll. 39-57;
Figs. 2-4) instead of a slot. While mounting of the legs in Yang allows
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pivoting about the pivot pins, it does not allow the legs to translate
17
relative
to their respective pivot pins. Correspondingly, the apparatus of Yang does
not have the slots required by the claim.

Rejection A(13)
Claims 50 and 52-58 are asserted to be obvious over FP 2002 in view
of Custer, Century, Yang and Kim. These claims recite that "each leg must
be pulled away from the coupling body to enable the leg to be pivoted
relative to the coupling body." As discussed supra, Yang does not disclose
this limitation (see also RAN 42).

Rejection A(14)
Claims 64-67 are asserted to be obvious over FP 2002 in view of
Custer, Century and Hu, claim 64 being an independent claim. As noted
supra, claim 64 recites "each of the legs having a first end pivotably coupled
to the hub via a respective slot and a pivot pin…and the respective slots of
the legs permitting translation of the legs relative to their respective pivot
pins to move the legs clear of their respective internal surfaces of the hub to
thereby permit the legs to pivot to the stored position." (Emphasis added).
However, the first and second cylinders 5, 7 (i.e., legs) of Hu do not have a
slot thereon (Hu, Fig. 1). Hu does disclose a slot on bars 8 that is spring

17
The pertinent definition of "translation" is "uniform motion of a body in a
straight line." Merriam-Webster's Collegiate Dictionary, 11
th
Ed. (2007). A
related definition of "translate" is "to cause (a body) to move without
rotation or angular displacement." Random House Webster's College
Dictionary (1992).
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biased, but the bars 8 are locks for second cylinders 7 and cannot reasonably
be considered "a leg" or as performing a function of a leg (Hu, col. 2, ll. 35-
42; Figs. 1, 3-5). The second cylinders 7 of Hu are pivotably mounted by
screws 73 that pass through the circular holes 71 (Hu, col. 2, ll. 27-29; Figs.
1, 3-5), and such mounting does not allow the second cylinders to translate
relative to their respective pivot pins as also required by the claims.

Correspondingly, while we agree with the Requester that FP 2002 is
prior art, in view of the above, we find no error in the Examiner's refusal to
adopt Rejections A(1)-A(14) as proposed by the Requester.

Rejections B-D Based on Combination of Graco, Custer and One of
Yang, Hu or Kim
Rejections B-D propose rejecting claims 22-27 based on the
combination of Graco, Custer and one of Yang, Hu or Kim.
18
Independent
claim 22 recites, inter alia, "a compound connector of a floor mat…wherein
the compound connector includes a first connector defining an aperture to
receive the leg and a metal connector to secure the leg to the mat." Claims
23-27 ultimately depend from claim 22. The Requester argues these
rejections together and submits arguments specifically directed to
independent claim 22 (App. Br. 22-26).
The Examiner finds that the cited references do not disclose or fairly
teach a compound connector with a metal connector as recited in claim 22

18
Rejection D based on the combination of Graco in view of Custer and
Kim only proposes rejection of claims 22, 23 and 27.
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and finds that there is no reason to use a metal connector in Custer, which
uses pockets to secure the legs to the mat (RAN 26, 39). The Examiner
further finds that Custer discloses pockets for receiving the ends of the tubes
(i.e., legs) and that the zipper "enables the mat to be moved out of the way if
the device is mounted on a crib or play yard, but does not connect the legs to
the mat as claimed in claim 22." (RAN 40). The Examiner views the sliding
fastener of Custer as not being part of a "compound connector" because it is
not in contact with either the aperture for legs or the legs themselves (see
RAN 35). The Patent Owner agrees with the Examiner and argues that
Custer "shows a leg that is coupled to a pocket 48 of a mat without a metal
connector." (Resp. Br. 13). According to the Patent Owner, the legs are
always secured to the floor 44 via the pockets (id.).
The Requester argues that Custer discloses a compound connector that
includes a sliding fastener 46 for keeping the legs secured to a mat, and that
it is common knowledge to use a metal zipper as a substitute for a plastic
zipper (App. Br. 23-24). The Requester also argues that "the pockets (48)
and sliding fastener (46) of Custer 'cooperate' to secure the legs (20) of the
frame (18) to the floor mat (44), in the same fashion as described by [the
Patent Owner] with respect to its 'compound connector.'" (App. Br. 26). We
agree with the Requester.
While the claim term "connector" is used in the specification of the
'993 patent to identify structures numbered "50" and "60" that function to
secure the legs of the play gym disclosed therein, the term "compound
connector" is not used in the '993 patent. In the Specification of the '993
patent, connector 50 is disclosed as being "pocket 50" on a bassinet or a play
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yard that receives the ends of the legs, and the connector 60 is disclosed as
being "implemented by a plate 62 that defines an aperture 64," the plate
being "pivotably coupled to the underside of the mat 16 via a rivet 62 [sic]
(Fig. 5)." (See '993 patent Specification, col. 5, ll. 4-15; col. 5, l. 54-col. 6, l.
20; Figs. 2, 5, 6). As such, the broadest reasonable interpretation of
"compound connector" in view of the Specification of the '993 patent is
merely that the connector includes more than one component.
The pockets 48 and sliding fastener 46 of Custer function to secure the
flexible rods 20 (i.e., legs) to the fabric floor 44 (i.e., mat) (Custer Figs. 3
and 4). Custer specifically states that the fabric floor 44 "has a sliding
fastener 46 [that] couples the floor to the lower periphery of the frame when
used in a stand-alone mode independent of the play yard." (Custer, col. 4, l.
67-col. 5, l. 1). While Custer further states "[l]astly the floor has pockets 48
for receiving the free ends of the tubes" (Custer, col. 5, ll. 1-2), the broadest
reasonable interpretation of "compound connector" encompasses a pocket
being one of the components of the compound connector, the Specification
of the '993 patent disclosing a pocket as an example of a "connector."
19
The

19
The Patent Owner also made it clear that a pocket can be a component of a
"compound connector," the Patent Owner's legal representative stating the
following in response to a question posed during the Oral Hearing:
There is another example in the specification of the patent that
talks about using a pocket, a fabric pocket, that's stitched to the
bassinet or the play yard. So there's stitching that joins the
pocket, and then there's an addition, there's a Velcro®
connector that provides a further secure holding so that the post
can't slide out of the pocket. So there's three connectors
involved with securing there as well. Another example of a
compound connector.
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argument that "Custer shows a leg that is coupled to a pocket 48 of a mat
without a metal connector" (Resp. Br. 13) is unpersuasive because Custer
clearly discloses that it is the sliding fastener 46 that interconnects or secures
the flexible rods 20 (i.e., the legs) to the fabric floor 44 (i.e., "to the mat").
The Examiner and the Patent Owner appear to overlook the fact that the
claim specifies that the "compound connector" secures the leg to the mat.
When the sliding fastener 46 is closed, the flexible rods 20 (i.e., legs) in the
pockets 48 and the fabric floor 44 (i.e., mat) are secured to each other
(Custer, col. 4, l. 67-col. 5, l. 2; Figs. 3, 4) thereby satisfying the limitation at
issue. As to the finding that Custer is silent as to the sliding connector being
made of plastic or metal, we agree with the Requester that substituting a
plastic zipper for a metal zipper would have been obvious. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
Therefore, we reverse the Examiner's decision not to adopt Rejection
B (which relies on Yang) with respect to claims 22, 23 and 27. However, as
to dependent claims 24-26 that require "a plurality of springs positioned to
respectively bias the at least two legs toward the hub," we disagree with the
Requester's assertion that Yang discloses this limitation for the reasons
already discussed supra. Hence, we affirm the Examiner's decision not to
adopt the Rejection B with respect to claims 24-26.
We also we reverse the Examiner's decision not to adopt Rejection C
(which relies on Hu) with respect to claims 22 and 27. However, dependent
claims 23-26 recite "the first ends of the at least two legs define a slot." Hu

(Hearing Transcript, pg. 25).
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does not disclose such a slot. Hence, we affirm the Examiner's decision not
to adopt the Rejection C with respect to claims 23-26.
As to Rejection D based on the combination of Graco in view of
Custer and Kim, the Examiner further finds that "none of the references
show[s] a first plurality of cavities and a second plurality of cavities,
wherein each of the legs is pivotable between a first position in which the
first end is disposed within respective one of the first cavities and a second
position in which the first end is disposed within a respective one of the
second cavities." (RAN 27-28). The Examiner finds that "Kim does not
show a second cavity for maintaining the leg in the second position," and
that Figure 4 of Kim depicts the first position with a solid line and a second
position with a dashed line, but in this second position, the end of the leg is
not disposed in a cavity (RAN 28). The Requester does not dispute this
specific finding of the Examiner with respect to Kim. Thus, we are not
persuaded that the Examiner erred in not adopting Rejection D.

Rejection E Based on Combination of Graco, Custer and Yang
Claims 32, 37 and 38 require "a plurality of springs positioned to bias
the legs towards the hub." The Requester argues that the legs of Yang
satisfy this limitation and are biased toward the hub because the legs include
a spring biased slide portion 34 that cooperates with the hub, and is an
extension of the leg (App. Br. 27). The Examiner disagrees and finds that
"[t]he legs of Yang are not biased toward the hub," but instead, merely
discloses a biased tab (i.e., slide portion 34) (RAN 43; see also RAN 31-32).
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We agree with the Examiner. As discussed supra relative to Rejection
A(11), the slide portion 34 of Yang, which is biased by spring 32, is actually
part of a sliding engaging assembly 30 that functions to lock the leg 60 in an
erected position (Yang, col. 4, ll. 39-57; Figs. 2-4). The slide portion 34
movably received within an open end of a leg (Yang, col. 3, ll. 50-65; Figs.
2-4) cannot reasonably be considered "a leg" or said to function as a leg.
The legs 60 of Yang are pivotably mounted on the body 10 (i.e., hub) by the
pins 61 that merely allow pivotal movement (Yang, col. 3, ll. 50-51; Figs. 3-
4). The spring 32 of Yang merely biases the slide portion 34, and does not
"bias the legs towards the hub" as required. Hence, we affirm the
Examiner's decision not to adopt the Rejection E.

CONCLUSIONS
1. Claims 3, 4 and 34 are not properly before the Board on appeal.
2. A. Rejections A(1)-A(14) are properly before the Board on appeal;
and
B. Rejection A(15) is not properly before the Board on appeal.
3. Entry of the declaration of Bretschger by the Examiner is not
relevant to this appeal.
4. To any extent the declaration of Bretschger is relevant to the
appeal, it is not defective or unpersuasive.
5. FP 2002 is prior art against the '933 patent.
6. The Examiner did not err in refusing to adopt Rejections A(1)-
A(14).
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7. A. The Examiner erred in refusing to adopt Rejection B with
respect to claims 22, 23 and 27; and
B. The Examiner did not err in refusing to adopt Rejection B with
respect to claims 24-26.
8. A. The Examiner erred in refusing to adopt Rejection C with
respect to claims 22 and 27; and
B. The Examiner did not err in refusing to adopt Rejection C with
respect to claims 23-26.
9. The Examiner's refusal to adopt Rejection D has not been
shown to be erroneous.
10. The Examiner did not err in refusing to adopt Rejection E.

DECISION
1. The Examiner's refusal to adopt Rejections A(1)-A(14) is
AFFIRMED.
2. A. The Examiner's refusal to adopt Rejection B with respect to
claims 22, 23 and 27 is REVERSED and denominated as a New
Ground of Rejection; and
B. The Examiner's refusal to adopt Rejection B with respect to
claims 24-26 is AFFIRMED.
3. A. The Examiner's refusal to adopt Rejection C with respect to
claims 22 and 27 is REVERSED and denominated as a New Ground
of Rejection; and
B. The Examiner's refusal to adopt Rejection C with respect to
claims 23-26 is AFFIRMED.
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4. The Examiner's refusal to adopt Rejection D is summarily
AFFIRMED.
5. The Examiner's refusal to adopt Rejection E is AFFIRMED.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides "[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. …
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b)
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cc:
Patent Owner

HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2100
CHICAGO, IL 60606

Third Party Requester

VOLPE AND KOENIG, P.C.
UNITED PLAZA, SUITE 1600
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103