Ex Parte Carruth

Board of Patent Appeals and Interferences

Jun 15, 2010

10973036 (B.P.A.I. Jun. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE CARRUTH
____________

Appeal 2009-003850
Application 10/973,036
Technology Center 3700
____________

Decided: June 14, 2010
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and MICHAEL W.
O’NEILL, Administrative Patent Judges.

Opinion for the Board by KERINS, Administrative Patent Judge.

Concurring Opinion by McCARTHY, Administrative Patent Judge.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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Application 10/973,036

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STATEMENT OF THE CASE
George Carruth (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s non-final rejection of claims 16-29, the only claims
pending in the application. The claims have been twice rejected. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention is to a portable interactive playhouse.
Independent claim 16 is reproduced below, and is illustrative of the overall
claimed subject matter:
16. A portable, interactive playhouse including
open interior space for imaginative play activity by
child users, comprising:

a) a playhouse body including a first shape
retaining, but crushable, wall with an exterior
surface and an interior interactive play surface;

b) the playhouse body including at least one
additional shape retaining, but crushable, wall
spaced from the first wall of the playhouse and
having at least one interactive play surface to form
an open interior interactive play space in the
interactive playhouse, said additional wall having
one or more openable panels therein to facilitate
access of the child user to the open interior
interactive play space;

c) the playhouse body also including top and
bottom surfaces which contribute to the
formation of the open interior interactive play
space in the interactive playhouse;
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d) the surfaces of the first and second walls and the
top and bottom surfaces of the playhouse body
having coordinated colors and surface patterns to
stimulate play activity by the child user; and

e) at least one strap attached to exterior portions of
the first wall of the playhouse body having a
length and attachment means sufficient to locate
the playhouse on the back of a child user or at
locations of interest to the child user.

THE REJECTIONS
The Examiner has rejected:
(i) claims 16-29 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention;
(ii) claims 16, and 18-20 under 35 U.S.C. § 102(e) as being
anticipated by Zheng (US 6,769,588 B2, issued August 3, 2004);
(iii) claims 16, 18 and 27 under 35 U.S.C. § 102(b) as being
anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Mayne (US 5,525,088, issued June 11, 1996);
(iv) claims 16 and 18-29 under 35 U.S.C. § 103(a) as being
unpatentable over Hoffman (US 5,649,658, issued July 22, 1997) in view of
Mayne or Ostermann (US 5,878,672, issued March 9, 1999);
(v) claims 16 and 18-29 under 35 U.S.C. § 103(a) as being
unpatentable over Zheng in view of Mayne or Ostermann; and
(vi) claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Caine (US 5,120,262, issued June 9, 1992) in view of Chase (US
4,883,443, issued November 28, 1989).
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ISSUES
Has the Examiner established that certain language present in claims
16 and 19 render those claims indefinite under 35 U.S.C. § 112, second
paragraph?
Has the Examiner made sustainable findings that support the rejection
of claims 16 and 18-20 as anticipated by Zheng?
Has the Examiner made sustainable findings that support the rejection
of claims 16, 18 and 27 as anticipated by or rendered obvious in view of
Mayne?
Has the Examiner made sustainable findings that support the rejection
of claims 16 and 18-29 as being rendered obvious over Hoffman in view of
Mayne or Ostermann?
Has the Examiner made sustainable findings that support the rejection
of claims 16 and 18-29 as being rendered obvious over Zheng in view of
Mayne or Ostermann?
Has the Examiner made sustainable findings that support the rejection
of claims 16 and 17 as being rendered obvious over Caine in view of Chase?

ANALYSIS
Claims 16-29--35 U.S.C. § 112, second paragraph--Indefiniteness
The Examiner concluded that claim 16 is indefinite in that there is no
antecedent basis for the limitation “second wall” in the expression “the
surfaces of the first and second walls . . .”. (Answer 3). The Examiner
concluded that claim 19 is indefinite because the claim does not make clear
whether the panels recited in that claim are attached to the first wall or to the
second wall, and whether the recitation of “one or more openable panels” in
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claim 19 is intended to refer back to the openable panels recited in claim 16,
or is intended to refer to additional panels. The remaining claims subject to
this rejection are not identified as having language rendering them indefinite,
thus they appear to be rejected on the basis that they depend from a rejected
base claim.
The failure to provide explicit antecedent basis for terms does not
always render a claim indefinite. If the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite. See
Energizer Holdings Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir.
2006); Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI 1992). Claim 16
here recites a “first wall” and “at least one additional . . . wall”. (Appeal Br.,
Claims Appendix). The claim later recites that “the surfaces of the first and
second walls . . .” have coordinated colors and surface patterns. The “first
wall” and the “additional . . . wall” are the only walls recited in the claim,
and thus it is reasonably ascertainable that the claimed “second wall” is the
“additional . . . wall”. We will not sustain the rejection of claim 16 as being
indefinite. The rejection will also not be sustained as to claims 17, 18 and
22-29, which depend from claim 16.
Appellant has not presented any argument in response to the
Examiner’s reasoning for rejecting claim 19 as being indefinite. We agree
with the Examiner that the expression “wherein one or more openable
panels” leaves open to speculation whether the claim is calling for one or
more openable panels in addition to those recited in claim 16, or whether
this expression was intended to simply be referencing the one or more
openable panels set forth in claim 16, from which claim 19 depends. This
problem is exacerbated by the further recitation that the panels are attached
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to “the wall”, without specifying the first or second wall recited in claim 16.
Claim 19 could reasonably be read as requiring panels in addition to those
called for in claim 16, and those additional panels could be attached to the
first wall, the second wall, or any other additional wall.
The rejection of claim 19 under 35 U.S.C. § 112, second paragraph, as
being indefinite, will be sustained. The rejection will also be sustained as to
claims 20 and 21, which depend from claim 19.
Because we have concluded that claims 19-21 are indefinite, the prior
art rejections of those claims must fall because they are necessarily based on
a speculative assumption as to the meaning of the claims. In re Steele, 305
F.2d 859, 862-63 (CCPA 1962). We therefore reverse the rejections of
claims 19 and 20 under 35 U.S.C. § 102(e) as being anticipated by Zheng; of
claims 19-21 under 35 U.S.C. § 103(a) as being unpatentable over Hoffman
in view of Mayne or Ostermann; and of claims 19-21 under 35 U.S.C. §
103(a) as being unpatentable over Zheng in view of Mayne or Ostermann. It
should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.

Claims 16 and 18--Anticipation--Zheng
Appellant contends, inter alia, that the Zheng patent fails to disclose a
structure in which a wall in addition to the first wall (“said additional wall”
or “second wall”) has one or more openable panels therein to facilitate
access of the child user to an open interior interactive play space. The
Examiner’s position is that front panel 22 of Zheng corresponds to the
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claimed additional wall, and that “the bottom edges of 31 and 33 will
provide an openable panel 28.” (Answer 10).
Elements 31 and 33 are described as bottom edges of the front panel
22 and bottom panel 28, respectively, about which front panel 22 may pivot.
(Zheng, col. 2, ll. 55-57). Not only is bottom panel 28 nowhere disclosed in
Zheng as being openable, that panel is not, as disclosed, disposed in the front
panel 22, asserted by the Examiner to correspond to the claimed additional
wall. We thus agree with Appellant that the Examiner has not established
that Zheng discloses the claim 16 limitation requiring “said additional wall
[to have] one or more openable panels therein . . .”. (Appeal Br., Claims
Appendix). The rejection of clams 16, and 18-20 as anticipated by Zheng
will not be sustained.
Claims 16, 18 and 27--Anticipation/Obviousness--Mayne
The Examiner cites to a marked-up copy of Figure 4 of Mayne
included in the Answer to show what elements of the Mayne structure are
regarded as corresponding to various elements in claim 16. (Answer 5-6).
In particular, according to the lead lines placed by the Examiner on the
Figure 4 mark-up, the claimed at least one additional shape retaining wall is
asserted to be met by the satchel flap 320. The Examiner further states that
flap 320 meets the limitation in claim 16, calling for one or more openable
panels provided in the additional shape retaining wall. Satchel flap 320 thus
appears to be asserted as responsive to both the additional wall and an
openable panel provided in that wall. Consistent with the principle that all
limitations in a claim must be considered to be meaningful, it is improper to
rely on the same structure in the Mayne reference as being responsive to two
different elements (wall and openable panel in the wall) in claim 16. See,
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Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in
infringement context, a single conveyor held to not meet claim element
requiring at least two conveyors); In re Robertson, 169 F.3d 743 (Fed. Cir.
1999)(claim requiring three separate means not anticipated by structure
containing two means where one of the two means was argued to meet two
of the three claimed means). The rejection of claims 16, 18 and 27 as
anticipated by Mayne will not be sustained.
The rejection over Mayne is, in the alternative, one grounded in
obviousness. The Examiner has not presented any reasoning or analysis that
persuades us that it would have been obvious to provide one or more
openable panels on the satchel flap 320 asserted to correspond to the claimed
additional wall. The obviousness analysis is directed to wholly different
claim limitations (see Answer 5, 10-11), and the rejection of claims 16, 18
and 27 on this alternate basis will not be sustained.
Claims 16, 18 and 22-29-Obviousness--Hoffman/Mayne/Ostermann
The Examiner found that Hoffman discloses a first wall 16, one
openable panel 20, and adjustable straps. (Answer 6). Notably absent from
the Examiner’s findings are identifications of what elements of Hoffman are
interpreted as being the claimed additional shape retaining wall, and where
on that wall is there disposed one or more openable panels. (Answer 6, 12).
The rejection does not rely on the Mayne or Ostermann patents as providing
some teaching or suggestion that would have made it obvious to provide one
or more openable panels on whatever part of Hoffman might be identified as
being the claimed additional shape retaining wall. The rejection of claims
16 and 18-29 as being obvious over Hoffman, Mayne and Ostermann will
not be sustained.
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Claims 16, 18 and 22-29--Obviousness--Zheng/Mayne/Ostermann
As noted above in the analysis of the rejection of claim 16 as
anticipated by Zheng, the Examiner did not present findings that establish a
disclosure in Zheng of providing one or more openable panels on the
claimed additional wall. The Mayne and Ostermann patents are not relied
on as disclosing or suggesting such a feature, or that it would have been
obvious to modify Zheng to include such a feature. This rejection will thus
not be sustained.
Claims 16 and 17--Obviousness--Caine/Chase
Claim 16 calls for both the first and the additional wall to be “shape
retaining, but crushable”. The Examiner asserts that the playhouse disclosed
in Caine is crushable, citing to a dictionary definition of crush as a verb
meaning, “to squeeze or force by pressure so as to alter or destroy structure”,
and contending that this informs the broadest reasonable meaning of the
claim term “crushable”. (Answer 8, citing to www.m-w.com, Merriam-
Webster Online Dictionary). The Examiner later acknowledges that the
playhouse in Caine is rigid, yet crushable, under the broadest reasonable
interpretation of the term. (Answer 13-14).
In interpreting claim language in the USPTO, the broadest reasonable
meaning of a claim term must take into account not only the ordinary usage
of the term as it would be understood by one of ordinary skill in the art, but
also must take into account whatever enlightenment, by way of definitions
or otherwise, that may be afforded by the written description. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, Appellant uses both
the terms “shape retaining” and “crushable” in defining the nature of the
claimed walls. Appellant’s Specification describes such walls as being
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shape-retaining, but soft to the touch and crushable or collapsible upon
impact. (Spec., p. 5, ll. 18-19). The examples disclosed involve disposing a
fleece or a fabric on a foam core. (Spec., p. 5, ll. 21-23). Persons skilled in
the art would thus understand that Appellant intended the term crushable,
even in its broadest sense, to describe a shape-retaining material that would
deform under pressure, but later regain its shape, and to exclude materials
that would be destroyed or severely damaged under application of pressure.
This meaning is more in line with an alternative definition of “crush”, to wit,
“to crumple or rumple: crushed the freshly ironed shirt”1.
Under what we view to be the broadest reasonable definition of the
phrase “shape retaining, but crushable”, the Caine patent does not disclose a
playhouse having a first and an additional wall having this characteristic.
The Chase patent is not relied on as disclosing or suggesting that it would
have been obvious to modify Caine so as to have this claim feature.
Accordingly, the rejection of claims 16 and 17 as unpatentable over Caine
and Chase will not be sustained.
CONCLUSIONS
Claims 16-18 and 22-29 have not been shown to be indefinite, while
claims 19-21 have been shown to be indefinite. The rejections of claims 16-
18 and 22-29 as either anticipated by, or rendered obvious in view of, the
various references cited and discussed in the foregoing analysis, are not
sustainable. The rejections of claims 19-21 on prior art grounds are reversed
due to the indefiniteness of those claims.

1 THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th
ed. 2009), accessed at http://dictionary.reference.com/browse/guide (last
viewed on June 8, 2010).
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DECISION
The decision of the Examiner to reject claims 16-18 and 22-29 under
35 U.S.C. § 112, second paragraph is reversed. The decision of the
Examiner to reject claims 19-21 under 35 U.S.C. § 112, second paragraph, is
affirmed. The decision of the Examiner to reject claims 16-29 under any of
35 U.S.C. §§ 102(b), 102(e) and/or 103(a) is reversed.
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) (2007).

AFFIRMED-IN-PART

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McCARTHY, Administrative Patent Judge, Concurring.

I agree with my colleagues’ decision not to sustain the rejections of
claims 16-18 and 22-29. I also agree with my colleagues’ decision to sustain
the rejection of claims 19-21 under § 112, second paragraph.
I also agree with my colleagues’ decision not to sustain the rejections
of claims 19 and 20 under § 102(e) as being anticipated by Zheng or the
rejections of claims 19-21 under § 103(a) as being unpatentable over
Hoffman and Mayne; Hoffman and Ostermann; Zheng and Mayne; or Zheng
and Ostermann, but for different reasons. I would not sustain these
rejections on their merits rather than summarily reverse the rejections under
the authority of In re Steele, 305 F.2d 859, 862 (CCPA 1962).
In Steele, the appellant claimed “[a] polyglycol product consisting of a
hydrophobe comprising an aliphatic monohydric alcohol containing between
1 and 8 carbon atoms having attached thereto a heteric mixed chain of
ethylene oxide and 1,2-propylene oxide groups . . . .” Id. at 860. On appeal
from a decision of the Board affirming a rejection of the claim under § 103,
our reviewing court held that the Examiner misinterpreted the claim by
giving no effect to the term “heteric.” Id. at 862. The court held that its:
study of the lengthy record in the Patent Office
prosecution provides ample support for our
conclusion that substantial confusion exists in the
record at all levels of the prosecution as to the
proper interpretation to be given to the appealed
claims. We believe that this confusion arose and
has continued because the claims do not
particularly point out and distinctly claim the
invention as required by 35 U.S.C. § 112.
We therefore have decided to resolve the
issue herein by reversing the decision below
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because we find it based on unsupported
speculative assumptions.
Id at 863.
One need not indulge in unsupported speculative assumptions
concerning the scope and meaning of claims 19-21 in order to address the
rejections of claims 19 and 20 under § 102(e) and the rejections of claims
19-21 under § 103(a) in the present appeal. Neither my colleagues nor I
conclude that parent claim 16 is indefinite or ambiguous. My colleagues and
I agree with the Appellant that Zheng has not been shown to disclose an
additional wall “having one or more openable panels therein . . .” as recited
in claim 16. The ambiguity giving rise to the rejection of claims 19-21
under § 112, second paragraph is whether the clause “[w]herein one or more
openable panels are flexibly attached to the wall with a cloth hinge” requires
one or more openable panels in addition to those recited in claim 16.
However the ambiguity is resolved, parent claim 16 as well as dependent
claims 19 and 20 nonetheless requires that the additional wall have one or
more openable panels therein. I would not sustain the rejections of claims
19 and 20 under § 102(e) as being anticipated by Zheng for the same reason
we do not sustain the rejection of claim 16 as being anticipated by Zheng.
Furthermore, The Examiner does not rely on Mayne or Ostermann as
disclosing or suggesting the one or more openable panels in the additional
wall. I would not sustain the rejections of claims 19-21 under § 103(a) as
being unpatentable over Zheng and Mayne or over Zheng and Ostermann for
the same reasons we do not sustain the rejection of claim 16 as being
unpatentable over either of those combinations of references.

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Likewise, my colleagues and I agree with the Appellant that the
Examiner has not made findings sufficient to identify elements of Hoffman
corresponding to the limitation requiring “at least one additional shape
retaining, but crushable, wall spaced from the first wall . . . , said additional
wall having one or more openable panels therein.” However the ambiguity
in claim 16 is resolved, parent claim 16 as well as dependent claims 19-21
nonetheless recite this limitation. The Examiner does not rely on Mayne or
Ostermann as disclosing or suggesting the features required by this
limitation. I would not sustain the rejections of claims 19-21 under § 103(a)
as being unpatentable over Hoffman and Mayne or over Hoffman and
Ostermann for the same reasons we do not sustain the rejection of claim 16
as being unpatentable over either of those combinations of references.

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