Ex parte Glaser

Board of Patent Appeals and Interferences

May 27, 1999

08533287 (B.P.A.I. May. 27, 1999)

Application for patent filed September 25, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT GLASER
_____________
Appeal No. 98-0674
Application 08/533,2871
______________
HEARD: May 6, 1999
_______________
Before MEISTER, PATE and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, 5 and 7 under 35 U.S.C. §
103. No other claim is pending in the application.
Appellant's invention relates to a toothbrush toy having
Appeal No. 96-0674
Application 08/533,287
We note the following error in claim 1 as reproduced in the2
"Appendix": line 6, "i" should read --in--.
Strict antecedent basis is lacking for the recitation of "said3
toothbrush" in lines 8 and 9 of claim 1. It appears that the language should
read --said toothbrush toy--. Correction of this informality is in order upon
return of this application to the jurisdiction of the examiner.
2
a toothbrush portion detachably secured to a handle in the
form of
an animate character. An understanding of the invention can
be derived from a reading of exemplary claim 1, which has been
reproduced in the "Appendix" to appellant's Brief (Paper No.
9).2
THE REFERENCES
The prior art references of record relied upon by the examiner
in rejecting the appealed claims are:
Guest et al. (Guest) 5,306,019 Apr. 26, 1994
Zandberg et al. (Zandberg) Des. 209,574 Dec. 19, 1967
Schleich 656,087 Aug. 08, 1951
(British Patent)
THE REJECTION
Claims 1 through 3, 5 and 7 stand rejected under
35 U.S.C. § 103 as being unpatentable over Zandberg in view of
Schleich and Guest. 3
Appeal No. 96-0674
Application 08/533,287
3
The rejection is explained in the Examiner's Answer
(Paper No. 10).
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
To begin with, we note the examiner's references at pages
4 and 5 of the Answer and to appellant's references at pages
4-6 of the Brief to certain patents which were cited during
prosecution of the present application, but not applied in the
final rejection. We also note that the examiner has stated
that no new prior art has been relied on in the rejection
(Answer, page 3). Accordingly, we will limit our
consideration of the standing rejection to the prior art
relied on in the final rejection.
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
Appeal No. 96-0674
Application 08/533,287
4
is our conclusion that the evidence adduced by the examiner is
not sufficient to establish a prima facie case of obviousness
with respect to claims 1 through 3, 5 and 7. Accordingly, we
will not sustain the examiner's rejection of claims 1 through
3, 5 and 7 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
Appeal No. 96-0674
Application 08/533,287
5
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968). Our reviewing court has repeatedly
cautioned against employing hindsight by using the appellant's
disclosure as a blueprint to reconstruct the claimed invention
from the isolated teachings of the prior art. See, e.g.,
Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we turn to the rejection of the
Appeal No. 96-0674
Application 08/533,287
As defined in the specification, an object is "bendable" if the object4
may be bent, but automatically returns to its original pose after it is
released and an object is "posable" if the object will maintain a pose to
which it is bent (pages 3 and 4).
6
claims on appeal.
Claim 1 recites a "bendable and posable" toothbrush toy4
comprising a toothbrush portion detachably secured to a handle
portion by means of a twist-and-lock connector. The handle
portion is in the form of an animate character having limbs
which are posable relative to remaining portions of the
handle. The twist-and-lock connector includes a male
connector 6 formed integrally with the toothbrush portion and
having at least one radially extending projection 9 and a
cylindrical socket 5 disposed in the handle having at least
one axial groove 11 for
receiving the radially extending projection, an inclined
surface 12 defined by a cut-out portion which cooperates with
the projection on the toothbrush portion to retain the
toothbrush portion in the handle portion and an abutment 14
restricting the toothbrush portion to rotate only in one
Appeal No. 96-0674
Application 08/533,287
7
direction upon being inserted into the cylindrical socket.
Zandberg is a design patent showing an ornamental design
for a toothbrush in the form of an animate character. The
character appears to be of human form and is depicted as
standing on two feet with folded arms and has a number of
toothbrush bristles extending out the back of the character's
head.
Schleich discloses a toy figure, e.g., a doll, puppet or
animal, comprising a bendable wire skeleton having a thin
covering of flexible material adapted to permit the parts of
the figure to be bent and retained in any adjusted position
(lines 8, 9 and 18-22).
Guest discloses an arrow with a nock assembly including
an adapter 50 mounted within a bore 36 of the arrow shaft 30.
A nock 40 is removably mounted to the adapter 50 so that the
head end 42 of the nock 40 is located within the socket 52 of
the adapter 50, and the bifurcated tail end 44 of the nock 40
is
located outside of the socket 52. With the nock 40 mounted to
Appeal No. 96-0674
Application 08/533,287
8
the adapter 50 in the locked position, the adapter 50 is fixed
to the shaft 30, typically with an appropriate glue, so that
the adapter 50 is in a predetermined angular position about
the shaft axis 34, relative to the vanes or feathers 25 on the
arrow shaft. In order to lock the nock in place, the nock is
provided with a pair of locking pins 48 which extend radially
outward from the head end 42 of the nock 40. The adapter
includes a wall 56 having an aperture 60 which consists of a
central circular portion 66 and a pair of radially extending
slots 67. A plurality of cam surfaces 62 are located on the
forward surface 58 of the wall 56. Each cam surface 62 tapers
gradually forward from the forward surface 58 to a forward
most point 64 adjacent a depression 65. The depressions 65 as
well as the wall 56 with its forward surface 58, the aperture
60 with its central circular portion 66 and radially extending
slots 67, the cam surface 62 with its forward most point 64
and the arcuate slits 68 in the wall 56 function as detent
means 72 for the pins 48 when the nock 40 is combined with the
adapter 50 in the locking mode as shown in FIGS. 1 and 2.
See, col. 4, lines 27-58. In an alternative embodiment shown
in Figures 15-18, the detent is replaced by
Appeal No. 96-0674
Application 08/533,287
9
threading 148 on the nock and complimentary threading 157 on
the adapter. See, col. 7, lines 3-7.
It is the examiner's position (Answer, page 4) that it
would have been obvious to make the arms of the Zandberg
character posable as taught by Schleich in order to render the
toy element more versatile and add play value. Appellant, on
the other hand, argues (Brief, pages 3 and 4) that there is no
teaching, sugges-tion or motivation in the prior art of record
to confer bend-ability and posability to the handle portion of
the toothbrush taught by Zandberg.
We have carefully reviewed the collective teachings of
Zandberg, Schleich and Guest and find ourselves in agreement
with the appellant. The examiner's reference to "added play
value" sounds to us as though the examiner is assuming that
the article shown by Zandberg is a toy and has concluded that
the addition of posable arms to the Zandberg device would
simply add to the existing play value of the Zandberg "toy."
While we recognize that a child could use a toothbrush as a
play object, that does not make Zandberg's disclosed
toothbrush a toy. We see Zandberg's design not as a toy, but
Appeal No. 96-0674
Application 08/533,287
The mere fact that the prior art structure could be modified does not5
make such a modification obvious unless the prior art suggests the
desirability of doing so. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). A suggestion arising from appellant's disclosure is
impermissible as the basis for a rejection. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992)
10
simply as an attempt to make the prospect of using the article
for its intended purpose, i.e.,
dental hygiene, more enticing to a child. That being the
case, we find the motivation put forth by the examiner to be
unpersuasive. 5
Zandberg suggests a one piece toothbrush. Neither
Schleich nor Guest provide any teaching, suggestion or
motivation for making the toothbrush shown by Zandberg in two
parts or for combining Zandberg's toothbrush with a separate
handle portion in the form of an animate character. That
being the case, we find no motivation in the applied
references for applying the specific twist and lock connector
disclosed by Guest to the toothbrush disclosed by Zandberg.
Accordingly, we will not sustain the rejection of claim 1
under 35 U.S.C. § 103 as being unpatentable over Zandberg in
Appeal No. 96-0674
Application 08/533,287
11
view of Schleich and Guest.
Claims 2, 3, 5 and 7 are dependent on claim 1 and,
therefore, contain all of the limitations of claim 1.
Accordingly, the examiner’s respective rejections of
claims 2, 3, 5 and 7 under 35 U.S.C. § 103 will not be
sustained.
SUMMARY
The decision of the examiner to reject claims 1 through
3, 5 and 7 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Appeal No. 96-0674
Application 08/533,287
12
Administrative Patent Judge )
vsh
Appeal No. 96-0674
Application 08/533,287
13
Young & Thompson
745 South 23rd Street
Second Floor
Arlington, VA 22202