Ex Parte Grasso

Patent Trial and Appeal Board

Dec 4, 2014

12818447 (P.T.A.B. Dec. 4, 2014)

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.
12/818,447 06/18/2010 Frank J. Grasso 7754
96545 7590 12/05/2014
Frank J. Grasso
16001 Euclid Beach Blvd.
816
Cleveland, OH 44110
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/05/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRANK J. GRASSO
____________________

Appeal 2012-010448
Application 12/818,447
Technology Center 3700
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant, Frank J. Grasso, pro se, appeals under 35 U.S.C. § 134
from a rejection of claims 1–3 and 5–20. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

The claims are directed to a toy bowling game. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A toy educational bowling game for toddlers comprising:
(a) a toy bowling ball,
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(b) ten toy bowling pins each marked with an individual
and different number from one to ten,
(c) a pin set up guide with ten markings for the placement
of said pins and each of said markings has an individual and
different number from one to ten arranged in numerical order
and in the same numerical alignment as when conventional
bowling pins are lined up for the beginning of play of a
conventional bowling whereby a toddler can learn to count
from one [to]1 ten by matching said numbered pins in numerical
order to said numbered markings on said pin set up guide.

REFERENCES2
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lichodziejewski US 6,283,872 B1 Sept. 4, 2001

eBay listing, VTG Toy Romper Room My Friend Snoopy Bowling Game
1979, http://cgi.ebay.com/VTG-TOY-ROMPER-ROOM-MY- FRIEND-
SNOOPY-BOWINGGAME- 1979-
60686392326?pt=LH_DefaultDomain_)&hash=item3cb21 eac06 (last
visited Nov. 7, 2010) (hereinafter “Snoopy”).

eBay listing, Soft Fabric Bright Steps Bowling Set by Infantino,
http://cgi.ebay.com/Soft-Fabric-Bright-Steps-Bowling-Set- Infantino/
170560373846?pt=LH_DefaultDomain_0&hash=item27b630c456 (1998)
(last visited Nov. 7, 2010) (hereinafter “Infantino”).

1 Correction should be required in any further prosecution of this
application.
2 Printouts of the auction webpages, no longer available online, were entered
into the Image File Wrapper (“IFW”) on December 2, 2010.
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REJECTIONS
Claims 7–12 and 17–20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4.
Claims 1–3, 5, 6, and 13–16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Snoopy and Infantino. Ans. 5.
Claims 7–12 and 17–20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Snoopy, Infantino, and Lichodziejewski. Ans. 6.

OPINION
Appellant does not contest the Examiner’s rejection under § 112.
Rather, Appellant attempts to overcome said rejection by submitting an
untimely amendment to the claims.3 App. Br. 15. There does not appear to
be any disagreement between the Examiner and the Appellant concerning
the merits of this rejection. It is the Examiner’s final rejection that is being
reviewed in this appeal under 35 U.S.C. § 134. See In re Webb, 916 F.2d
1553, 1556 (Fed. Cir. 1990). Presumably, the Examiner and the Appellant
will coordinate to enter the proposed amendment in any further prosecution.
As this amendment has not yet been entered by the Examiner and the
Appellant does not submit any arguments contesting the § 112 rejection, this
rejection is summarily sustained. See Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”).
Appellant first presents arguments discussing claim 1. App. Br. 9–13.
Appellant then argues the rejection of claim 2 under a subheading entitled

3 Although the “examiner has no comment on the copy of the appealed
claims contained in the Appendix to the [A]ppellant's [B]rief” (Ans. 3), we
note that the copy of the claims submitted with the Brief does not correspond
to the last set of claims entered by the Examiner on February 13, 2011.
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“Claims 1-3, 5, and 13-16.” Id. at 13–15. The only argument in the
subheading “Claims 7-12 and 16-20” is that these claims “are reargued and
recited from above.” Appellant additionally indicates that there appears to
be agreement between the Appellant and the Examiner concerning a
proposed, but unentered, amendment to claims 7–12 and 16–20. Id. at 15.
Concerning the prior-art rejections, we select claims 1 and 15 as
representative, respectively, of the rejections set forth above, with the
exception of claim 2 which we treat as separately argued. See 37 C.F.R.
§ 41.37(c)(1)(vii). We note, however, that Appellant’s arguments refer only
generally to the alleged flaws in the Examiner’s methodology, and the
“matching” aspect of the claims without focusing on any specific claim
language.
Insofar as the prior-art rejections are concerned, Appellant contends
that the Examiner improperly imposed an additional criteria on patentability,
destruction of the prior art, and that all that is required for an invention to be
patentable is a new function or synergy of the component parts. App. Br. 9–
13. This new function, Appellant alleges, is “matchings.” Id.
First, we believe the Appellant to have misunderstood the Examiner’s
statement concerning the destruction of the prior art. We agree with the
Appellant that destruction is not a criteria of patentability. However, we
disagree that the Examiner imposed such a criteria. Where the Examiner
proposes a particular combination that the Examiner concludes would have
been obvious, it is generally regarded as weighing against such a conclusion
where the Examiner’s proposed combination destroys or renders inoperative
the prior-art device or method that the Examiner proposed to modify. Cases
along these lines are discussed in the Manual of Patent Examining
Procedure (MPEP) § 2143.01(V) (9th Ed., Mar. 2014). In a similar vein,
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where the Examiner proposes a combination that changes the principle of
operation of a prior-art device or method, it also weighs against a conclusion
of obviousness. Cases involving this principle are discussed in MPEP
§ 2143.01(VI). Appellant, quoting language from the later section of the
MPEP alleged that the Examiner’s proposed modification changed the
principal of operation of the prior art because the Examiner’s proposed
combination would yield matching—an operation not disclosed by the prior
art. See Miscellaneous Incoming Letter of Feb. 4, 2011. The Examiner
responded by stating that the function as a “bowling game is not destroyed.”
Final Act. 4. This statement was not intended by the Examiner as a
requirement for patentability. It was to point out that the Examiner’s
proposed modification did not destroy, render inoperative or change the
principal of operation of the prior art devices being modified. The fact that
some other additional function or benefit, such as matching, may arise from
the proposed combination does not weigh against obviousness. Oftentimes
additional benefits weigh in favor of obviousness.
Second, 35 U.S.C. § 103(a) describes when “[a] patent may not be
obtained.” (Emphasis added). Neither § 103(a) nor cases discussing it set
forth any per se rules that, dictate when an invention must be held obvious or
nonobvious. In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995); contra App.
Br. 10–13. A new function or a new synergy will often weigh in favor of a
conclusion of nonobviousness. However, the fact that a use, such as
matching (id. at 12–13), that may not have been expressly described in the
prior art, is obtained, does not necessarily mandate a conclusion of
nonobviousness. Here, the Examiner proposes to incorporate Infantino’s
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numbers onto Snoopy’s pins4 “in order to make [sic] teach numbers.” Ans.
5. We must agree that having the same indicia on Snoopy’s pin and mat will
reinforce recognition of that indicia. Where that indicia is numbers, we
agree with the Examiner that it will further the objective of teaching
numbers. We recognize that this matching or teaching function is not a
motivation that is expressly stated in the prior art references. However, the
problem motivating manufacturers of prior-art devices may be only one of
many addressed by those devices. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007). The question is not whether the subject matter in question
was obvious to the maker of a prior-art device, but whether the combination
would have been obvious to a person with ordinary skill in the art. The
Supreme Court’s decision in KSR, supra, clarified that the motivation for
making a particular combination need not be expressly stated in the prior-art
references. We agree with the Examiner that one skilled in the art would
have found it obvious to include corresponding numbers on Snoopy’s pins in
order to assist in teaching numbers.
For these reasons, we agree with the Examiner’s conclusion that the
subject matter of claims 1 and 15 would have been obvious to one having
ordinary skill in the art.
Regarding claim 2, the Examiner, citing various cases involving the
so-called printed-matter doctrine, concluded that “[t]o have moved the
indicia of Snoopy to a position outside the pin spot would have been obvious
so that the indicia would not be covered by a pin when in place. No new and
non obvious functional relationship is created.” Ans. 5. Appellant responds

4 Although it is not entirely clear from the reproduced black and white copy
indexed in the IFW, we understand Snoopy’s mat to include numbers and
this point not to be one of contention.
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that “where the numbers are in front of the markings on the pin set up guide
they remain visible so when the pins are properly match[ed] the said
numbers visually reinforce the learning of numbers and counting which
provides for a new function from that of the prior art and [is] thereby not
obvious.” App. Br. 13–14. The Examiner, however, never contended that
the numbers, or location of the numbers, did not perform any function, i.e.,
such as education or recreation (App. Br. 15 comparing In re Gulack, 703
F.2d 1381 (Fed. Cir. 1983)), or did not carry any weight in construing the
claim. Ans. 5, 12–13. Rather, the Examiner, properly considering the
printed-matter cases, correctly determined that the function of the indicia’s
specific location, to increase visibility so as to be able to be more easily
seen, was not a new or non-obvious function of locating indicia. Id. As the
Examiner correctly points out, Appellant’s argument is “incomplete” as it is
not responsive to the position advanced by the Examiner. Id. at 5–6. For
these reasons, we agree with the Examiner’s conclusion that the subject
matter of claim 2 would have been obvious to one having ordinary skill in
the art.

DECISION
The Examiner’s rejections are 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)(1)(iv).

AFFIRMED

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