Ex Parte Barrett

Board of Patent Appeals and Interferences

Jun 30, 2008

10684954 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUSUF M. BARRETT
____________

Appeal 2008-1773
Application 10/684,954
Technology Center 3600
____________

Decided: June 30, 2008
____________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-5, 8, 9, 11-16, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-1773
Application 10/684,954

STATEMENT OF THE CASE
The claims are directed to a free-standing, animal-shaped structure for
providing a child a place to take a nap, as well as a method of using the
structure for a child’s nap. Claims 1 and 13 are representative of the claims
on appeal, and read as follows:

1. A hollow, three-dimensional, free-standing animal-shaped structure
for providing a place for a child to take a nap, said structure being of such a
size to allow a child to fit at least partially inside, said structure having
features of a real animal, said structure being made of inflatable air-tight
material, and said structure having an entrance for the child, said entrance
having a swinging door, and said entrance being of such a size as to allow
the child to crawl into the structure without changing the size of the
entrance.

13. A hollow, three-dimensional, free-standing animal-shaped structure
for providing a place for a child to take a nap, said structure being of such a
size to allow a child to fit at least partially inside, said structure having
features of a real animal, said structure being made of padded fabric, and
said structure having an entrance for the child, said entrance having a
swinging door, and said entrance being of such a size as to allow the child to
crawl into the structure without changing the size of the entrance.

The Examiner relies on the following references:
Berman US 6,722,084 B2 Apr. 20, 2004
Yercha US 5,345,961 Sep 13, 1994
The Examiner contends that claims 1, 3-5, 8, 9, 11-16, 19, and 20, all
of the claims on Appeal, are obvious over the combination of Berman and
Yercha.
Appellant contends that the Examiner has failed to set forth a prima
facie case of obviousness.
2
Appeal 2008-1773
Application 10/684,954

Thus, the issue of Appeal is: Has the Examiner set forth a prima facie
case of obviousness that all of the claims on Appeal are obvious over the
combination of Berman and Yercha?

FINDINGS OF FACT
The Scope and the Content of the Prior Art
Berman
FF1. Berman teaches an inflatable play tent that can assume a fanciful
shape, such as a house (Berman, Fig. 2). The inflatable structure of Berman
is not limited to a house or a tent, but may be in the form of “any structural
design for use as an inflatable structure” (Berman, col. 2, ll. 36-40). (See
Ans. 3.)
FF2. The tent may include an inflatable base or floor (20), a plurality of
inflatable walls (30), a foot operated pump (300) to inflate the device, and a
pivoted doorway (70) may be provided in one of the walls of the tent (See,
e.g., Berman, col. 2, ll. 47-60; col. 3, ll. 8-15; col. 4, ll. 4-15). (See Ans. 3.)
FF3. A sound generating means (200) may be attached to the tent (Berman,
col. 4, ll. 16-42). (See Ans. 3)
FF4. Other means for sensory stimulation may be attached to the tent,
including means for generating effects that access the normal human senses
of touch, taste, feel, sight, and smell (Berman, col. 4, ll. 39-42). (See Ans.
3.)
FF5. The stimulation enhancing factors are appropriate for the decorative
motif of the tent (see, e.g., Berman, col. 4, ll. 27-39), and can be varied from
that of a camping-style tent and/or a house (Berman, col. 2, ll. 40-45; col. 3,
l. 65). (See Ans. 3-4.)
3
Appeal 2008-1773
Application 10/684,954

Yercha
FF6. Yercha teaches that it is well known in the art to produce a play
enclosure that takes the form of an animal, such as a dinosaur. (See Ans. 4.)
FF7. Figure 1 of Yercha is representative, and is reproduced below:

Figure 1 of Yercha shows a tent structure having the features of a dinosaur
(col. 2, ll. 19-52.)
FF8. Yercha teaches that the tent may depict a large animal such as a
dinosaur or a small animal such as a rabbit, with the frontal profile of the
animal, or similar indicia, being coincident with contoured frontal edges
(Yercha, col. 1, ll. 19-31).
FF9. Yercha further teaches that a child playing with the tent enjoys the
feeling within the confines of a simulated animal, and also enjoys viewing
the animal from the outside (Yercha, col. 2, ll. 46-52).
4
Appeal 2008-1773
Application 10/684,954

The Level of Ordinary Skill in the Art
FF10. The level of ordinary skill in the art, as evidenced by the Berman and
Yercha references, would be someone who designs children’s products.

The Differences between the Claimed Invention and the Prior Art
FF11. Berman fails to specifically teach an animal-shaped inflatable
structure, the structure having features of a real animal. (See, e.g. Ans. 4.)
FF12. Berman fails to specifically teach an interior light. (See Ans. 4)
FF13. Berman fails to teach the use of decorative lights, such as an animal
that has eyes that light up (Ans. 4).

ANALYSIS
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
5
Appeal 2008-1773
Application 10/684,954

present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
The Examiner concludes that “it would have been obvious to one of
ordinary skill in the art to have used an animal type of decorative image or
motif upon the Berman tent as taught by Yercha . . . to create a play
enclosure that has a decorative effect which is pleasing and/or attractive to a
child.” (Ans. 4) In addition, the Examiner concludes that providing an
interior light would have been well known and within the level of skill of the
ordinary artisan, as would the use of decorative lights, such as providing a
structure that has the features of an animal, wherein the eyes light up (Id.)
We now turn to Appellant’s arguments in rebuttal.
Appellant groups claims 1, 5, and 9 together (App. Br. 10). We focus
our analysis on independent claim 1, and claims 5 and 9 stand or fall with
that claim.
Appellant argues that the Examiner has failed to resolve the factual
inquiries required by Graham. (App. Br. 10-14). Moreover, as to the level
of ordinary skill in the art, Appellant asserts “that one skilled in the art
would be the parent of a child using the device of this invention . . . [who]
would have a college degree and no training in the field of sleeping area
designs for children.” (App. Br. 12-13.)
Appellant’s arguments are not convincing. First, we conclude that the
Examiner did resolve the factual inquiries required by Graham, even if not
explicitly. The rejection of the Examiner did set forth the teaching of both
Berman and Yercha (Ans. 3-4), and in stating that it “would have been
obvious . . . to have used an animal type of decorative image or motif upon
the Berman tent as taught by Yercha,” the Examiner is implicitly setting
6
Appeal 2008-1773
Application 10/684,954

forth the differences between the claimed invention and the prior art. With
respect to level of skill in the art, the best evidence of that are the Berman
and Yercha references. Although not explicitly stated by the Examiner, we
find the level of skill in the art to be that of someone who designs children’s
products. We find no evidence in the record to support Appellant’s assertion
that a person skilled in the relevant art would be the parent of a child using
the device of this invention who would have a college degree and no training
in the field of sleeping area designs for children.
Appellant argues that the tent of Yercha “has a first end which is
straight, a bottom which is straight, a top which is straight, and a second end
which contains the outline of the front of an animal . . . that . . . cannot be
accurately be said to be an enclosure that takes the form of an animal.”
(App. Br. 10.) Thus, Appellant asserts, the Examiner “has not made an
accurate determination of the scope and content of the prior art.” (Id. at 10-
11.)
Again, Appellant’s argument is not convincing. During prosecution
before the Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. In re American Academy of Science Tech
Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Note that “[a]n essential
purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is during
prosecution that applicants have “the opportunity to amend the claims to
obtain more precise claim coverage.” American Academy, 367 F.3d at 1364.
7
Appeal 2008-1773
Application 10/684,954

Claim 1 does not require that the enclosure take the entire form of an
animal. All that is required by claim 1 is a “structure having features of a
real animal.” The tent structures of Yercha have such features. For
Example, the tent of Figure 1 has the likeness of a dinosaur drawn on the
outside, and has been cut in front to the outline of the leg, the forelegs, the
chest, and the mouth of a dinosaur. As can be seen in Figure 5, further
features may be added, such as a mane or bony frill of an animal (Yercha,
col. 3, ll. 30-45).
Appellant argues further that the Examiner asserts that the motivation
to combine the references is “to create a play enclosure that has a decorative
effect that is pleasing and/or attractive to a child,” but that motivation is not
found in the references (App. Br. 13.) Appellant argues further that there
would be no expectation of success “if one were to substitute the tent of
Yercha [ ] for one of the forms taught by Berman as there would be too
much open space and balance would be a problem.” (Id. at 14.)
The issue of motivation to combine references has recently
been addressed by the United States Court in KSR International Co.,
v. Teleflex Inc., 127 S.Ct. 1727 (2007). The Court rejected a rigid
application of the teaching-suggestion-motivation test, id. at 1739, but
noted:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

8
Appeal 2008-1773
Application 10/684,954

Id. at 1740. In this case, Berman teaches an inflatable tent, and although
explicitly providing embodiments of a camping tent and a house, notes that
the structure may be in the form of “any structural design for use as an
inflatable structure” (Berman, col. 2, ll. 36-40). Yercha teaches a tent-like
structure that may depict a large animal such as a dinosaur or a small animal
such as a rabbit, with the frontal profile of the animal, or similar indicia,
being coincident with contoured frontal edges (Yercha, col. 1, ll. 19-31), and
that a child playing with the tent enjoys the feeling within the confines of a
simulated animal, and also enjoys viewing the animal from the outside
(Yercha, col. 2, ll. 46-52). Thus, we conclude that it would have been well
within the level of skill of the ordinary artisan to provide a structure having
features of a real animal as taught by Yercha to the inflatable structure of
Berman.
As to a reasonable expectation of success, all that is required is a
reasonable expectation of success, not absolute predictability of success. In
re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Moreover, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 127 S.Ct. at 1742. Thus, we find that the ordinary artisan would
understand how to address the issues of open space and balance.
Thus, we conclude that the Examiner has set forth a prima facie case
of obviousness as to claim 1 that has not been rebutted by Appellant, and as
claims 5 and 9 stand or fall with that claim, the rejection is affirmed as to
claims 1, 5, and 9.

As to claim 3, Appellant argues that the Examiner “has not urged that
the animal of Yercha [ ] has a mouth and that the entrance for the child is
9
Appeal 2008-1773
Application 10/684,954

located at the mouth of the animal.” (App. Br. 15.) As to claim 4, Appellant
argues that the Examiner “is correct in omitting any reference to a chest
having an entrance for a child as the prior art does not contain this teaching.”
(App. Br. 16.)
Appellant’s arguments as to claims 3 and 4 are not convincing. In the
structure of Yercha, the frontal profile of the animal or similar indicia, is
coincident with contoured frontal edges (Yercha, col. 1, ll. 19-31), thus it
would have been obvious to the ordinary artisan to use any frontal portion of
the animal, such as the chest or the mouth, as the entrance, depending on the
animal being portrayed. Thus, we also affirm the rejection as to claims 3
and 4.
As to claim 8, Appellant argues that the Examiner “has not urged that
the animal of Yercha [ ] has eyes that light up,” and is correct in doing so “as
the prior art does not contain this teaching.” (App. Br. 18.)
We agree with the Examiner that it would have been within the level
of skill of the ordinary artisan to use decorative lights, such as providing a
structure that has the features of an animal, wherein the eyes light up, in
view of Berman’s teaching that stimulation enhancing factors are
appropriate for the decorative motif of the tent (see, e.g., Berman, col. 4, ll.
27-39), and can be varied from that of a camping-style tent and/or a house
(Berman, col. 2, ll. 40-45; col. 3, l. 65). Therefore, the rejection is also
affirmed as to claim 8.
As to claims 11 and 12, Appellant reiterates the arguments made with
respect to claim 1 (App. Br. 19-22). Thus, the rejection is affirmed for the
reasons set forth with respect to the discussion of claim 1.
10
Appeal 2008-1773
Application 10/684,954

As to claims 13-16, 19, and 20 (of which claim 13 is the independent
claim), Appellant argues that “the [E]xaminer has chosen not to comment on
claim 13.” (App. Br.
Claim 13 requires that the structure be made of padded fabric. As the
Examiner has made no factual finding in this record with regard to the use of
a padded fabric to make the structure, we are compelled to reverse the
rejection as to claims 13-16, 19, and 20.

CONCLUSIONS OF LAW
We conclude that the Examiner has set forth a prima facie case of
obviousness as to claims 1, 3-5, 8, 9, 11, 12, but has failed to set forth a
prima facie case as to claims 13-16, 19, and 10.

TIME LIMITS
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART

dm

11
Appeal 2008-1773
Application 10/684,954

Richard L Huff
19304 Olney Mill Road
Olney, MD 20832

12