Ex Parte Agostini et al

Board of Patent Appeals and Interferences

Mar 11, 2010

10846490 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATTHEW FELIX AGOSTINI,
MARY ELLEN GERTRUDE FOSBENNER,
ROBERT JUDE HENRY, GREGORY JOHN SISOLAK, and
WILLIAM FRANCIS MICHAEL DOUGHERTY
____________________

Appeal 2009-003885
Application 10/846,490
Technology Center 3700
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Decided: March 11, 2010
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Before: WILLIAM F. PATE III, JOHN C. KERINS, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-21. App. Br 5. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 10/846,490

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The claims are directed to a lever or wheel activated toy
vehicle.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A lever activated toy vehicle comprising:
a body having a front end, a rear end, an interior and an
exterior;
a chassis that accommodates the body and has at least a
front wheel proximate the front end and a rear wheel proximate
the rear end;
a motor disposed within one of the body and the chassis
and drivingly coupled to at least one of the wheels;
a lever movably supported on one of the chassis and the
body of the toy vehicle so as to be accessible by a user with the
body and chassis joined together for movement between a first
position and a second position by user manipulation of the
lever;
a moveable part having at least a portion on the exterior
of the body and a portion on the interior of the body, the
moveable part being supported on at least one of the chassis and
the body for movement between a concealed position and a
revealed position, the moveable part has a first surface visible
on the vehicle in at least the concealed position and a second
surface visible on the vehicle only in the revealed position, each
surface having sufficiently different features to differentiate the
first and second surfaces; and
an actuator mechanism operably coupled with the motor
and the moveable part, the actuator mechanism being
configured to move the moveable part from the concealed
position to the revealed position by power from the motor after
the lever is moved from the first position to the second position
and being configured to move the moveable part from the
revealed position back to the concealed position after a
predetermined time.

Appeal 2009-003885
Application 10/846,490

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kassai
Wu
Lee
Randall
US 4,424,978
US 5,069,649
US 6,468,127 B1
US 6,866,557 B2
Jan. 10, 1984
Dec. 3, 1991
Oct. 22, 2002
Mar. 15, 2005

REJECTIONS
Claims 1-19, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu, Lee, and Kassai. Ans. 3.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu, Kassai, and Randall. Ans. 6.

OPINION
Appellants contend that the Examiner erred in concluding that the
subject matter of independent claims 1, 11, and 20 would have been obvious
because there is no rational basis for the Examiner’s proposed modification
of Wu with the lever of Kassai. App. Br. 13-16, 17, 18; Ans. 3-5. We agree.
While many mechanical components may technically act as a “lever,”
the “lever” recited in claims 1 and 11, read in light of the Specification,
would be understood by one of ordinary skill in the art as a control lever,
because it is accessible by the user and functions to activate the toy vehicle.
Kassai’s lever 12 is the type of “lever” claimed. Kassai col. 4, ll. 50-65. One
of ordinary skill in the art would not recognize Wu’s push rod 41, which
functions essentially as a cam-actuated (cam 252) rack of rack 42 and pinion
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Application 10/846,490

4
421, as a structure similar to Kassai’s lever 12. Wu, col. 2, l. 60 – col. 3, l.
34. Thus, one of ordinary skill in the art would not find the teachings
relating to Kassai’s lever 12 relevant to Wu’s push rod 41 as the Examiner
suggests. We are therefore forced to conclude that the Examiner proposes
applying Kassai’s lever-related teachings to Wu’s push rod only to
reconstruct the claimed invention.
To draw on hindsight knowledge of the patented invention, when the
prior art does not contain or suggest that knowledge, is to use the invention
as a template for its own reconstruction—an illogical and inappropriate
process by which to determine patentability. Sensonics Inc. v. Aerosonic
Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v.
Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). We must therefore
conclude that the Examiner has not articulated any reasoning with a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418, 127 S. Ct. 1727, 1741 (2007)
Claim 20 does not recite a lever. However Kassai remains applied in
the rejection. The Examiner contends it would have been obvious to first
modify Wu’s push rod by making it user-accessible like Kassai’s lever, as
discussed above regarding claims 1 and 11. The Examiner then contends it
would have been obvious to replace that modified lever with Randall’s
crank. Ans. 8. In the case of claim 20, the Examiner has proposed modifying
Wu’s structure with Kassai’s teachings only to make Randall’s alleged
teaching regarding the interchangeability of a lever and a crank 91 relevant
to the Examiner’s hypothetical structure. Randall col. 9, ll. 58-61. Again,
one of ordinary skill in the art would not find the teachings relating to
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Kassai’s lever 12 particularly relevant to Wu’s push rod or to Randall’s
crank, since neither Randall’s or Wu’s structures are used for user control or
activation of the toy in the manner that Kassai’s lever is used. Again we are
forced to conclude that the conclusion of obviousness was improperly based
upon facts gleaned only through hindsight.

DECISION
For the above reasons, the Examiner’s rejections of claims 1, 11 and
20, and therefore of dependent claims 2-10, 12-19, and 21 are reversed.

REVERSED

Vsh

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