Ex Parte 8047609 et al

Patent Trial and Appeal Board

Jun 30, 2014

95001871 (P.T.A.B. Jun. 30, 2014)

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.
95/001,871 01/12/2012 8047609 5983-114068 8767
61215 7590 06/30/2014
DAVID I. ROCHE
BAKER & MCKENZIE LLP
300 EAST RANDOLPH STREET
CHICAGO, IL 60601
EXAMINER
FOSTER, JIMMY G
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/30/2014 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
____________________

THORLEY INDUSTRIES LLC
Third Party Requester/Respondent
v.
WONDERLAND NURSERY GOODS CO., LTD.
Patent Owner/Appellant
____________________

Appeal 2014-002821
Reexamination Control 95/001,871
U.S. Patent No. 8,047,609 B21
Technology Center 3900
____________________
Before: JEFFREY B. ROBERTSON, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued on November 1, 2011 to Chen et al. (hereinafter referred to as the
'609 patent).
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STATEMENT OF THE CASE
Patent Owner/Appellant appeals under 35 U.S.C. §§ 134(b) and 315
from the Examiner’s rejection of claims 1, 2, 12, 13, and 19-24. Claims 21-
24 were newly added during the reexamination proceeding. We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
We are informed that the '609 patent is involved in a litigation entitled
Wonderland Nurserygoods Co. Ltd. v. Thorley Industries LLC d/b/a
4MOMS, Western District of Pennsylvania (Civil Action No. 12-196). Resp.
Br. 2.
We AFFIRM.

THE INVENTION
Patent Owner's invention is directed to "a driving device for driving a
seat body of an infant rocking chair to move back and forth as well as up and
down." Spec., col. 1, ll. 17-19. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A driving device for an infant rocking chair, the infant
rocking chair including a seat body and a bottom seat, said
driving device comprising:
a base adapted to be disposed between the seat body and
the bottom seat;
a supporting element connected to said base and adapted
to support the seat body;
a first motion mechanism including a horizontal first
guide path unit adapted to be disposed at the bottom seat, and a
first movable member disposed on said base and movable along
said first guide path unit; and
a motor for driving said first movable member,
wherein said motor includes:
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a motor shaft,
a crank connected fixedly to said motor shaft at one end
thereof, and
a link having two ends connected respectively and
pivotally to said base and the other end of said crank such that
rotation of said motor shaft results in reciprocal movement of
said first movable member.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Surbaugh
Nafte
Nordella
Kanaya
Caster
US 3,993,280
US 4,752,980
US 5,022,708
US 5,257,851
US 5,711,045
Nov. 23, 1976
June 28, 1988
June 11, 1991
Nov. 2, 1993
Jan. 27, 1998

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 21-24 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
RAN 7.
2. Claims 21-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
RAN 12.
3. Claims 21-24 stand rejected under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined. RAN 9.
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4. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Nafte. RAN 16.
5. Claims 12, 13, and 19-24 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Nordella. RAN 31.
6. Claims 12, 13, and 19-22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kanaya. RAN 52.
7. Claims 19 and 20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Surbaugh. RAN 74.
8. Claims 12, 13, and 19-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Caster and Nordella. RAN 79.
9. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nafte and Caster. RAN 98.

ANALYSIS
Indefiniteness
The Examiner rejects claim 21, and therefore also dependent claims
22-24, as indefinite for lack of antecedent basis for the claim term "the
driving device." RAN 7. We agree with Patent Owner that a person of
ordinary skill in the art would "recognize that the word 'the' should have
been 'a', based on a reading of the specification and other claims." App. Br.
6. Accordingly, we do not sustain this rejection.
The Examiner separately rejects claim 24 as indefinite because of the
phrase "broad and generally flat plate-like structure." RAN 7-8. We agree
with Patent Owner that the portion of the language at issue reciting a
"generally flat plate-like structure" is sufficiently clear so as not to be
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indefinite. App. Br. 6. Both the Examiner and the Requester point to the
fact that the patent discloses other structures, such as a raised edge and
protrusions that cause it not to be a "generally flat plate-like structure." We
find this to be too narrow a reading of the claim language. Although there
may be other structures on the bottom seat, such structures do not preclude
the overall element from being generally flat and plate-like.
We cannot agree, however, that the term "broad" is definite in this
case. App. Br. 7. The term "broad" does not appear anywhere in the patent,
except in claim 24. As a result, the Specification is not availing as an aid to
further explain what is meant by the term as it appears in the claim. Further,
we find unpersuasive Patent Owner's citation to the dictionary and a district
court case as proof that the term needs no construction and is therefore
definite. App. Br. 7. Claim construction is contextual and simply because
the same term has been found definite in other contexts does not necessarily
mean it is definite in all contexts. In this case, we agree with the Examiner
that "[w]hile it is possible that 'broad,' and 'narrow,' might be used together
in a definite manner as part of a distinguishing comparison between two
identified elements, there is no indication of this occurring in claim 24."
RAN 8. Put another way, we find insufficient basis on this record for one of
skill in the art to know when a plate-like structure is sufficiently "broad" to
be considered "broad" per claim 24 or when a plate-like structure ceases to
be "broad." Accordingly, we find this term indefinite and sustain the
Examiner's rejection of claim 24. We do not, however, sustain the
Examiner's rejection of claims 21-23 as indefinite.
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Written Description
The Examiner rejects claims 21-24 as failing to comply with the
written description requirement, because claim 21 recites the driving device
as including the bottom seat, whereas the Specification does not describe the
bottom seat as being part of the driving device, but only as part of the overall
chair. Although we agree that there is some inconsistency in claim 21 vis-à-
vis the Specification, we do not agree that this rises to the level of a lack of
written description. In the case of claim 21, we find that one of skill in the
art would understand that the bottom seat is part of both the overall infant
chair and could be part of the driving device, even though it is not
specifically described as such. The Specification describes that the driving
device drives the seat body relative to the bottom seat. See Spec., col. 3, ll.
22-32. As long as the seat body moves relative to the bottom seat, then it
follows that the driving device could be part of either, or a separate device
that is still part of the overall infant seat as described in the Specification.
The inconsistency is one of nomenclature, but not one that requires a finding
that the inventor was not in possession of what is claimed, as would be
required to uphold the rejection. Accordingly, we do not sustain the
Examiner's rejection of claims 21-24 based on written description.
Scope Enlargement
The Examiner states that "[t]o the extent that recitation of the 'driving
device' in claim 21 might not be intended by Patent Owner to be set forth
structurally in the claim, but instead as a part of function, such claim is then
broader." RAN 9. As pointed out by Patent Owner, claim 19 "uses the very
language in claim 21 that Examiner says is the basis for his rejection." App.
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Br. 7. We agree and find that claim 21 is no broader than at least claim 19.
Accordingly, we do not sustain this rejection.
Unpatentability over Nafte and Caster
The Examiner rejects claims 1 and 2 as obvious over the combination
of Nafte and Caster. RAN 98. The Examiner finds that Nafte teaches every
element of claims 1 and 2, but because Nafte's device is for rocking a cradle,
it fails to specifically teach that it is for an infant rocking chair. RAN 100.
The Examiner then finds that Caster teaches an apparatus for rocking an
infant chair and concludes that it would have been obvious to replace the
cradle portion of Nafte with the infant retaining means of Caster. Id.
Patent Owner does not argue that the combination is improper, but
instead relies upon its argument that Nafte fails to teach certain elements,
namely the "bottom seat" and "disposed between" elements, as argued
against the Examiner's anticipation rejection over Nafte alone. App. Br. 45.
Patent Owner argues that the bottom seat "is referring to a platform upon
which several other components are placed, and which cooperates with a
housing to form an enclosure." App. Br. 15. Patent Owner further argues
that this language "clearly suggests a platform-like structure, i.e., a generally
flat area with significant breadth or surface area." Id. In this case, Patent
Owner improperly attempts to import limitations from the Specification into
the construction of this term. There is nothing in the claim itself that would
require such a platform-like structure and it is clear that Nafte's cross arms
16 meet the claimed bottom seat in that it is part of the driving device and is
located such that the base is between the seat body and the bottom seat as
discussed infra.
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Patent Owner also argues that the term "bottom" should refer "to the
very lowest supporting part of the device in question." Id. First, we do not
agree with the premise that the term bottom must be the bottom-most
structure of the device recited in the claims. It is sufficient that the element
be at the bottom of the elements claimed. Nafte’s cross arms 16 support the
portion of the mounting device for the item to be rocked corresponding to
the elements recited in the claims (in Nafte's case a cradle, which the
Examiner modifies to be a rocking chair as taught in Caster). The fact that
there is additional structure below cross arms 16 is unavailing. The claim
language utilizes the open-ended term "comprising," which allows for the
inclusion of additional structure. Patent Owner's argument is consistent with
a position that, should the device recited in the claims be mounted to an
additional structure, i.e., some kind of elevating device such as a high chair
frame, the bottom seat would cease to be a bottom seat because it would no
longer be the bottom-most element. We decline to adopt such a construction
in view of the language in the claims.
Patent Owner's final argument is that Nafte fails to teach that the base
is between the seat body and the bottom seat. See App. Br. 16-18. Whereas
from an elevational standpoint, Nafte's platform 11 is between the seat body
(which is to be mounted to and above platform 11) and the bottom seat
(Nafte's cross arm's 16), Patent Owner argues, that because cross arms 16 sit
outside of the footprint of platform 11 that it is not between cross arms 16
and the seat body. App. Br. 16-17. We do not read the claim language as
requiring the base being "between" in every manner conceivable nor has
Patent Owner pointed to any disclosure in the Specification requiring such a
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narrow reading. In this instance, the fact that it is "between" from an
elevational standpoint is sufficient to meet the claim language. Accordingly,
we sustain the Examiner's rejection of claims 1 and 2 as unpatentable over
Nafte and Caster.
Unpatentability over Caster and Nordella
The Examiner rejects claims 12, 13, and 19-24 as obvious over the
combination of Caster and Nordella. RAN 79. The Examiner finds that
Caster generally discloses a device for rocking an infant chair, "but fails to
disclose all of the structure by which the rocking motion is achieved and the
seat body is supported." RAN 80. The Examiner then finds that Nordella
teaches all of the elements of claim 12. Id.
Patent Owner first attacks the combination as improper because
Nordella is not analogous art. App. Br. 40. Patent Owner argues that
Nordella is not pertinent to the particular problem to be solved because
"Nordella's target user is an adult, whereas the invention of the '609 [patent]
is focused on children," and that "the '609 patent's objective is to induce
sleep." App. Br. 42. We find this to be an overly narrow description of the
problem to be solved. More generally, we view the problem to be solved as
more properly described as relating to a mechanism that can cause a chair to
move up and down and back and forth. Even if we were to narrow the
problem to be solved to such motion so as to induce sleep in an infant,
Patent Owner has submitted no evidence that the device disclosed in
Nordella would be incapable of moving a chair in such a fashion. Nordella
discloses the use of hydraulic cylinders to create the claimed motion and
without evidence to the contrary, we discern no reason that one of skill in the
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art would be incapable of creating such motion using the device disclosed in
Nordella.
Patent Owner argues also that Nordella "does not enable vertical
motion because there is no disclosure of channels 94 that support that
motion." App. Br. 45. Nordella discloses that "[u]pward and downward
motion of the seat may be obtained by placing a hydraulic cylinder 166
between the intermediate stage assembly 54 and the seat stage assembly 56
(FIGS. 1 and 2)." Spec., col. 6, ll. 19-22. Nordella then goes on to explain
that "seat stage assembly 56 moves upward or downward as the guide
wheels 90 of the seat stage assembly roll along the channels 94 of the
intermediate seat stage assembly 54." Spec., col. 6, ll. 23-26. Although it
may be true that Nordella fails to specifically show its channels 94 in the
drawings, we do not agree that Nordella lacks enablement for this aspect. It
is clear from the Specification that wheels 90, which are shown in the
drawings, are intended to roll within channel 94. One of skill in the art
would clearly understand how to implement the guided vertical motion when
taking the drawings in combination with the disclosure.
Lastly, although we found claim 24 indefinite due to the term "broad,"
with respect to claim 24 we agree with the Examiner that in the context of
Nordella, "rectangular frame 64 may be considered 'broad' because it is wide
in comparison to some of the other elements." RAN 39. As noted above,
we do not find claim 24 indefinite because it is unclear what can be
considered broad, but because there is no discernable way to determine
when something ceases to be broad. Accordingly, we sustain the Examiner's
obviousness rejection over Caster and Nordella.
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Remaining Rejections
Because the sustained rejections reach all of the claims at issue, we
decline to reach the remaining anticipation rejections over Nafte, Nordella,
Surbaugh, and Kanaya.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claim 24 as indefinite; claims 1 and 2 as unpatentable over Nafte and Caster;
and claims 12, 13, and 19-24 as unpatentable over Caster and Nordella. We
REVERSE the Examiner's decision to reject claims 21-23 as indefinite;
claims 21-24 as failing to comply with the written description; and claims
21-24 as enlarging scope.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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For Patent Owner:
David I. Roche
BAKER & MCKENZIE LLP
300 East Randolph Street
Chicago, IL 60601

For Third Party Requester:
Ryan J. Miller
THE WEBB LAW FIRM, P.C.
One Gateway Center
420 Ft. Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222