Ex Parte Fair et al

Patent Trial and Appeal Board

Jun 26, 2017

12827870 (P.T.A.B. Jun. 26, 2017)

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.
12/827,870 06/30/2010 Paul Fair 81247-017830US-787682 5810
20350 7590 06/28/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
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06/28/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL FAIR, KRISTIN A. TIDWELL, CATHERINE P. McNEIL,
and CLARICE BONZER
Appeal 2016-0000701
Application 12/827,8702
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of claims
1—10, 12—17, 19—21, and 23—33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our Decision considers Appellants’ Appeal Brief (“Appeal Br.,” filed
May 8, 2015) and Reply Brief (“Reply Br.,” filed Sept. 24, 2015), as well as
the Examiner’s Non-Final Office Action (“Non-Final Act.,” mailed Jan. 29,
2015) and Answer (“Ans.,” mailed July 28, 2015).
2 Appellants identify The Boppy Company, LLC as the real party in interest.
Appeal Br. 3.
Appeal 2016-000070
Application 12/827,870
CLAIMED SUBJECT MATTER
The claimed invention relates to “systems and methods of attaching
toys or other items to child care equipment, and . . . pieces of child care
equipment having features for attaching toys or other items.” Spec. 135.
Claims 1, 13, 14, 20, 23, and 28 are the independent claims on appeal.
Claim 13 is illustrative of the claimed subject matter and is reproduced
below with the disputed limitation in italics:
13. A method of attaching an item to a pillow, the method
comprising:
providing a pillow that includes a flexible shell material
covering a compressible fill material, the pillow further
including a track comprising a flexible rod-like member with
unconnected and unexposed ends having a cross-sectional
shape and coupled to the flexible shell at a seam by a separate
material covering the track, and a clip slidingly engaged with
the track, the clip defining an opening for detachably receiving
an item so as to attach the item to the pillow and including a
passage that extends at least partially through the clip and that
is configured to receive the track, wherein the passage
comprises a cross-sectional shape substantially the same as the
cross-sectional shape of the track;
providing an item to be attached to the pillow; and
attaching the item to the pillow via the clip.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Fishman US 2,831,538 Apr. 22, 1958
Bost et al. US 4,463,464 Aug. 7, 1984
Mead et al. US 7,290,303 B2 Nov. 6, 2007
Pontaoe et al. US 8,336,173 B2 Dec. 25, 2012
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Appeal 2016-000070
Application 12/827,870
REJECTIONS
Claims 1, 3-5, 8-10, 12-17, 19-21, 23, 24, 27-29, 32, and 33 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Mead and Pontaoe.3
Claims 2, 25, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mead, Pontaoe, and Lishman.4
Claims 6, 7, 26, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mead, Pontaoe, and Bost.5
ANALYSIS
We are persuaded by Appellants’ argument that Pontaoe does not
disclose “a track comprising a flexible rod-like member with unconnected
and unexposed ends,” as recited in independent claim 13. Appeal Br. 13—14;
Reply Br. 4—5.
In rejecting independent claim 13, the Examiner relies on Pontaoe for
teaching the claimed track, and finds Pontaoe discloses a track 12
comprising a flexible rod-like member 14 with unconnected and unexposed
3 The Examiner sets forth separate statements for the rejection of claims 1,
3—5, 8—10, 12, and 33 (Non-Final Act. 2), claim 13 (id. at 6), claims 14—17
and 19 (id. at 8), claims 20 and 21 (id. at 9), claims 23, 24, and 27 (id. at 11),
and claims 28, 29, and 32 (id. at 15). We consolidate the statements into a
single ground of rejection because they are each based on the same
combination of references.
4 The Examiner sets forth separate statements for the rejection of claim 2
(Non-Final Act. 5), claim 25 (id. at 14), and claim 30 (id. at 17). We
consolidate the statements into a single ground of rejection because they are
each based on the same combination of references.
5 The Examiner sets forth separate statements for the rejection of claims 6
and 7 (Non-Final Act. 5), claim 26 (id. at 14), and claim 31 (id. at 18). We
consolidate the statements into a single ground of rejection because they are
each based on the same combination of references.
3
Appeal 2016-000070
Application 12/827,870
ends. Non-Final Act. 7. More specifically, the Examiner finds Pontaoe
teaches a track that is enclosed within a flexible shell. Ans. 19.
Indeed, Pontaoe discloses a track member 12 comprising a bulbous
edge 14 and an attachment segment 16. Pontaoe 3:43—45, Fig. 1. Pontaoe
further discloses that track member 12 is attached to a fabric panel 18 (id. at
3:46—51), and Figure 1 shows panel 18 looped around track member 12.
Independent claim 13, however, does not merely recite a track
enclosed within a flexible shell, but rather specifically describes the track as
“comprising a flexible rod-like member with unconnected and unexposed
ends.” Appeal Br., Claims App. As Appellants point out, the written
description of Pontaoe does not explicitly reference or describe the ends of
track member 12. Id. at 14. Moreover, it unclear from the drawings whether
track member 12 has ends, and, if it has ends, whether the ends are
unexposed. For example, the drawings show bulbous edge 14 and
attachment segment 16 of track member 12 in cross-hatching, which
suggests the drawings depict a cross-section of track member 12. Pontaoe,
Figs. 1, 2; 37 C.F.R. § 1.84(h)(3). If the drawings show track member 12 in
cross-section, it is indeterminate whether the portion of track member 12
shown in the drawings is an end, and, therefore, it is unclear whether track
member 12 has ends. Even if we assume the drawings, in fact, show an end
of track member 12, the drawings show the end is exposed, namely the
terminal face of track member 12 is not covered by panel 18. Thus, based
on the teachings of Pontaoe, and absent further explanation by the Examiner,
it is not clear whether track member 12 does or does not have ends that are
or are not exposed.
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Appeal 2016-000070
Application 12/827,870
In view of the foregoing, the Examiner’s finding that Pontaoe
discloses “a track comprising a flexible rod-like member with unconnected
and unexposed ends” is insufficiently supported. We, therefore, do not
sustain the rejection of independent claim 13. Furthermore, each of
independent claims 1,14, 20, 23, and 28 includes a limitation regarding the
ends of the track similar to the limitation discussed above in regard to
independent claim 13, and the Examiner’s rejections of independent
claims 1, 14, 20, 23, and 28 and dependent claims 2—10, 12, 15—17, 19, 21,
24—27, and 29-33 rely on the same deficient finding regarding Pontaoe’s
disclosure of the claimed ends of the track. Accordingly, we likewise do not
sustain the rejections of claims 1—10, 12, 14—17, 19-21, and 23—33.
DECISION
The Examiner’s decision to reject claims 1—10, 12—17, 19—21, and
23—33 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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