Ex Parte DrozdowskiDownload PDFPatent Trial and Appeal BoardDec 19, 201613489923 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 13/489,923 06/06/2012 Airlie E. Drozdowski PAC0100PUS 2463 62124 7590 12/21/2016 QUINN LAW GROUP, PLLC 21500 Haggerty Road Suite 300 Northville, MI 48167 EXAMINER BALDORI, JOSEPH B ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/21/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): amb@quinnlawgroup.com U S Docketing @ quinnlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AIRLIE E. DROZDOWSKI Appeal 2015-000750 Application 13/489,923 Technology Center 3700 Before LINDA E. HORNER, THOMAS F. SMEGAL, and BRENT M. DOUGAL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Airlie E. Drozdowski (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the Final Action, dated May 27, 2014 (“Final Act.”), rejecting claims 1-20.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Peas and Carrots, LLC. Br. 2. Appeal 2015-000750 Application 13/489,923 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “children’s toys with a therapeutic feature.” Spec. para. 1. Claims 1,15, and 20 are independent. Claim 1 is reproduced below. 1. A therapeutic stuffed toy for children, the stuffed toy comprising: a body having a torso, a head, and one or more appendages projecting from the torso, the torso defining a cavity; a container disposed within the cavity and attached to the torso; and a fluid medium disposed within the container, the fluid medium including a plurality of particles movably disposed within the fluid medium, wherein a viscosity of the fluid medium is configured to prevent the plurality of particles, after being stirred within the fluid medium, from settling to the bottom of the container for a predetermined minimum amount of time. REJECTIONS The Final Action included the following grounds of rejection: 1. Claims 1, 3-6, 8-17, and 19 under 35 U.S.C. § 102(b) as anticipated by Sutton (US 5,888,117, issued March 30, 1999). 2. Claims 2, 7, 18, and 20 under 35 U.S.C. § 103(a) as unpatentable over Sutton. ANALYSIS Claim 1: Anticipation by Sutton Appellant argues the subject matter of claim 1 is not anticipated by Sutton because Sutton does not disclose “a viscosity of the fluid medium 2 Appeal 2015-000750 Application 13/489,923 [being] configured to prevent the plurality of particles, after being stirred within the fluid medium, from settling to the bottom of the container for a predetermined minimum amount of time.” Br. 11. The Examiner found that Sutton discloses filling the display container with water having particles resembling snow suspended in the water. Final Act. 2-3 (citing Sutton, col. 4,11. 47-56). The Examiner determined that the snow particles will “inherently settle after a predetermined minimum amount of time” and thus the claim does not recite any additional structure that distinguishes the claimed structure from the structure disclosed in Sutton. Id. at 3. We agree with the Examiner that the recited viscosity limitation in claim 1 does not add any structure to the claimed toy that distinguishes it from the toy disclosed in Sutton. The cavity 47 of Sutton’s sealed enclosure 7 contains “[w]ater or other liquid” and “[mjiniature objects for imitating snows, stars and the like . . . suspended in the liquid within the cavity 47.” Sutton, col. 4,11. 47-54.2 We agree with the Examiner that the fluid and miniature objects disposed in the enclosure of Sutton would necessarily become suspended after being stirred within the fluid medium and would necessarily settle to the bottom of the container after a minimum amount of time. See also Br. 11 (“Appellant recognizes that the water inside Sutton’s display 5 may have some viscosity and that the miniature objects stowed in 2 According to Appellant’s Specification, “fluid medium 26 is a liquid, such as water” and “particles 28 may take on many different forms, including light-reflective glitter, ground rice, metal flakes, plastic particulates, combinations thereof, and the like.” Spec. para. 17. 3 Appeal 2015-000750 Application 13/489,923 Sutton’s enclosure 7 may have some degree of buoyancy and therefore may float for a random, undetermined period of time in the water-filled display 5.”). We do not find persuasive Appellant’s argument that Sutton fails to anticipate claim 1 because the claim requires configuring the viscosity to ensure that the miniature objects are prevented from settling to the bottom for a predetermined, as opposed to a random, undetermined, period of time. Br. 11. Appellant appears to be arguing a patentable distinction over the art based on the method by which the fluid medium is selected, namely, that one selecting the fluid medium will select a particular medium to achieve a particular predetermined minimum amount of time before the particles settle. However, once selected, a fluid medium, (e.g., water of Sutton) and the participles (e.g., imitation snow particles of Sutton) will have, as an inherent characteristic, a minimum amount of time in which the particles will settle after being shaken by a particular amount of force. See Ans. 9 (Examiner noting “[t]he way one uses or shakes the device would have an effect on how long it would take the particles to settle” and this limitation is “not a concrete structural limitation, and would vary based on the use of the device”). The fact that a claimed minimum amount of time was predetermined during the selection of the fluid medium does not structurally distinguish the fluid medium, which would inherently exhibit this property once selected. For these reasons, Appellant has not demonstrated error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Sutton. 4 Appeal 2015-000750 Application 13/489,923 Claim 2: Unpatentability over Sutton Claim 2 depends from claim 1 and recites “wherein the viscosity of the fluid medium is configured to prevent the plurality of particles, after being stirred within the fluid medium, from settling to the bottom of the container for a minimum of at least about 1.5 minutes.” Br. A1 (Claims App.). Appellant argues “the Examiner has not provided a scintilla of evidence that Sutton or any other prior art reference teaches the [limitation of claim 2].” Br. 11. This argument, however, does not address the reasoning provided by the Examiner. The Examiner acknowledged that Sutton fails to teach the viscosity being configured to avoid settling for a minimum of at least about 1.5 minutes, but determined that it would have been obvious to one having ordinary skill in the art to have provided the suspended particles of Sutton with this feature as a matter of design choice. Final Act. 5 (Examiner stating that “simply selecting a fluid that will make that time longer, or selecting a specific viscosity, is not a patentable advance”). We agree with the Examiner that one skilled in the art would have found it obvious to have filled Sutton’s enclosure with a liquid to achieve whatever minimum amount of time is desired. Appellant’s Specification does not evince any criticality to the claimed amount of time. Spec. 8,11. 5-8 (providing examples of the minimum amount of time as including “at least about one minute” to “approximately 2-4 minutes”). For these reasons, Appellant has not demonstrated error in the rejection of claim 2. Accordingly, we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Sutton. 5 Appeal 2015-000750 Application 13/489,923 Claims 3-6, 9-14, 16, 17, 19: Anticipation by Sutton Appellant relies on the arguments for patentability presented for independent claim 1 in support of patentability of these dependent claims, each dependent from claim 1. Br. 11-13, 16. For the same reasons provided supra in our analysis of claim 1, we likewise sustain the rejection of dependent claims 3-6, 9-14, 16, 17, and 19 under 35 U.S.C. § 102(b) as anticipated by Sutton. Claim 7: Unpatentability over Sutton Claim 7 depends from claim 1 and recites “wherein the container is a hollow orb.” Br. A1 (Claims App.). Appellant argues that “it would not have been obvious to make the Examiner’s proposed modifications to Sutton because these modifications would require a complete redesign of Sutton’s display apparatus, and because Sutton teaches away from these modifications.” Br. 13. Sutton does not limit the shape of its display apparatus to the depicted hemispherical shape. Rather, Sutton provides disclosure of alternative shapes including “oval, triangular, or any non regular shape, e.g., heart shaped.” Sutton, col. 5,11. 56-60. Further, Sutton does not criticize, discredit, or disparage use of an orb. In fact, Sutton discloses that multiple liquid displays may be provided in an inanimate object such as two hemispherical transparent enclosures mounted on opposite surfaces of the base. Id., col. 5,11. 29-36. In light of this suggestion in Sutton, we find that Sutton does not teach away from the container being a hollow orb. Further, Sutton suggests a manner of 6 Appeal 2015-000750 Application 13/489,923 redesigning its base structure to accommodate two hemispherical enclosures mounted to either side, and thus, we are not persuaded by Appellant that one would not have found it obvious to modify Sutton to use a container that is a hollow orb because the modification “would require a complete redesign of the decorative display apparatus 5.” Br. 14. In light of the disclosures in Sutton of other designs, we find that it would have been well within the technical grasp of one having ordinary skill in the art to modify the enclosure of Sutton in the manner proposed by the Examiner. For these reasons, Appellant has not demonstrated error in the rejection of claim 7. Accordingly, we sustain the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Sutton. Claim 8: Anticipation by Sutton Claim 8 depends from claim 1 and recites “wherein the plurality of particles includes light-reflective glitter.” Br. A2 (Claims App.). Appellant argues that “there is no indication in [the section of Sutton cited by the Examiner] (or anywhere else in Sutton for that matter) that teaches or suggests utilizing light-reflective glitter or light-reflective particles.” Br. 15 (Appellant arguing the “claimed light-reflective particles are not mere decoration, as are the miniature objects disclosed in Sutton” and “operate as part of Appellant’s child therapeutic feature”). The intended use of Appellant’s claimed light-reflective glitter/particles does not persuade us of a structural difference between the miniature snow particles suspended in the enclosure of Sutton, and the claimed particles. In particular, Appellant has 7 Appeal 2015-000750 Application 13/489,923 not contested the Examiner’s finding, which is based on sound reasoning, that “simulated snow is white, and extremely [light] reflective.” Ans. 9-10. For these reasons, Appellant has not demonstrated error in the rejection of claim 8. Accordingly, we sustain the rejection of claim 8 under 35 U.S.C. § 102(b) as anticipated by Sutton. Claim 15: Anticipation by Sutton Independent claim 15 recites a therapeutic stuffed animal similar to claim 1, and further recites “a translucent or transparent spherical container attached to the torso” and “the fluid medium including a plurality of light- reflective particles.” Br. A2-A3 (Claims App.). The Examiner’s rejection of claim 15 is based on a reading of “spherical” as meaning that the container is “sphere like.” Final Act. 4 (Examiner noting that “spherical is an adjective, a full sphere is not claimed”); see also Ans. 9. We agree with the Examiner’s interpretation of the language used in claim 15. As such, we find adequate support for the Examiner’s finding that Sutton’s container, which is hemispherical in shape, is a “spherical container” as recited in claim 1. Sutton, col. 4,11. 33-35, Fig. 2. Appellant does not present arguments contesting this interpretation, arguing only that it would not have been obvious to modify Sutton’s container to be a hollow orb. Br. 13-15. Further, Appellant’s argument that Sutton fails to disclose “a plurality of light-reflective particles” is not persuasive of error in the rejection of claim 15 for the same reasons as discussed supra in the analysis of claim 8. For these reasons, Appellant has not demonstrated error in the rejection of claim 8 Appeal 2015-000750 Application 13/489,923 15. Accordingly, we sustain the rejection of claim 15 under 35 U.S.C. § 102(b) as anticipated by Sutton. Claim 18: Unpatentability over Sutton Claim 18 depends from claim 15 and recites “wherein the container is a hollow polymeric orb.” Br. A3 (Claims App.). Appellant’s argument that Sutton fails to render obvious a container formed as an orb is not persuasive of error in the rejection of claim 18 for the same reasons as discussed supra in the analysis of claim 7. Accordingly, we sustain the rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Sutton. Claim 20: Unpatentability over Sutton Independent claim 20 recites a therapeutic stuffed animal similar to claim 1, and further recites “a translucent or transparent elastic orb attached to the torso” and “a liquid medium . . . entrained with light-reflective glitter particles movably disposed within the liquid medium.” Br. A3 (Claims App.). Independent claim 20, similar to claim 1, also recites “wherein a viscosity of the fluid medium is configured to prevent the plurality of particles, after being stirred within the fluid medium, from settling to the bottom of the orb for a predetermined minimum amount of time.” Id. Appellant’s argument that Sutton fails to render obvious a container formed as an orb is not persuasive of error in the rejection of claim 20 for the same reasons as discussed supra in the analysis of claim 7. Appellant’s argument that Sutton fails to disclose “a plurality of light-reflective glitter 9 Appeal 2015-000750 Application 13/489,923 particles” is not persuasive of error in the rejection of claim 20 for the same reasons as discussed supra in the analysis of claim 8. Appellant’s argument that Sutton fails to disclose this latter element are not persuasive of error in the rejection of claim 20 for the same reasons as discussed supra in the analysis of claim 1. Accordingly, we sustain the rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Sutton. DECISION The decision of the Examiner to reject claims 1-20 is AFFIRMED. 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)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation