Ex Parte Haaf

Patent Trial and Appeal Board

Feb 26, 2016

12903447 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/903,447 10/13/2010
85444 7590 02/26/2016
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
David Haaf
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
545.208 3974
EXAMINER
BANIANI, SHAD! SHUNT!
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
02/26/2016 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 DAVID HAAF
Appeal2013-007774
Application 12/903,447 1
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-12. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).
1 According to the Appellant, the real party in interest is W orldwise, Inc.
Appeal Br. 1.
Appeal2013-007774
Application 12/903,447
Claimed Subject Matter
Claims 1, 6, 7, and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A pet amusement device comprising a base, stem emanating
from said base and a corrugated cardboard cylinder having a
substantially circular cross section and an opening through its
center sized to receive said stem.
Rejections
We have added a new ground of rejection for claim 1 as unpatentable
over Kimmel (US 2011/0036303 Al, pub. Feb. 17, 2011) and Diep
(US 7,011,043 B2, iss. Mar. 14, 2006) because the Examiner's rejection of
claim 2 as unpatentable over Kimmel and Diep cures the deficiency in the
Examiner's rejection of claim 1 as anticipated by Kimmel. Infra. Moreover,
we have consolidated the new ground of rejection of claim 1 with the
Examiner's rejection of claims 2 and 3, because they are both rejected under
35 U.S.C. § 103(a) as unpatentable over Kimmel and Diep. To facilitate our
analysis we set forth the ground of rejections in a different order than the
order presented in the Final Office Action, Appeal Brief, and Answer.
I. Claims 1, 4, and 6 are rejected under 35 U.S.C. § 102(e) as
anticipated by Kimmel.
II. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kimmel and Bryson (US 2,997,019, iss. Aug. 22, 1961).
III. Claims 7-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kimmel and Frank (US 4,611,556, iss. Sept. 16, 1986).
IV. Claims 1-3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kimmel and Diep.
2
Appeal2013-007774
Application 12/903,447
ANALYSIS
Rejections I-III
The Examiner finds that Kimmel' s cardboard tube 310 corresponds to
the "corrugated cardboard cylinder" required by independent claims 1 and 6.
Final Act. 2 (citing Kimmel i-f 31, Fig. 3). The Appellant contends that,
contrary to the Examiner's finding, "there is nothing in Kimmel to suggest
that the cardboard tube is corrugated." Appeal Br. 4. According to the
Appellant, the term "cardboard" is a "generic term," referring to "heavy-
duty paper of various strengths, ranging from a simple arrangement of a
single thick sheet of paper to complex configurations featuring multiple
corrugated and uncorrugated layers." Appeal Br. 4 (emphasis added). The
Examiner responds that, based upon the Appellant's definition, "cardboard is
inherently corrugated," i.e., "corrugation exists in the material." Ans. 4.
The Appellant's contention is persuasive.
The Examiner relies on the principle of inherency and, therefore, must
provide evidence and/ or technical reasoning making clear that the missing
descriptive matter is necessarily present in the thing described in the
reference. See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991). "The mere fact that a certain thing may result from a given
set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999). In this case, the Appellant's definition of "cardboard,"
does not adequately support the Examiner's finding that cardboard is
inherently corrugated. Instead of establishing that cardboard necessarily
and, therefore, inherently includes corrugations, the use of the phrase
"ranging from" in the Appellant's definition accounts for other plausible
configurations, such as a simple arrangement of a single sheet of paper. See
3
Appeal2013-007774
Application 12/903,447
Appeal Br. 4. Although we appreciate that it is plausible that Kimmel's
cardboard tube 310 may be corrugated, the Examiner has not provided
adequate evidence that such is necessarily the case in Kimmel. Therefore,
we do not sustain the Examiner's rejection of claims 1, 4, and 6 as
anticipated by Kimmel, i.e., Rejection I.
The Examiner's rejection of claim 5, which depends from claim 1,
relies on the same unsubstantiated finding discussed above with the respect
to the rejection of claim 1, i.e., Kimmel's lack of a corrugated cardboard
cylinder. See Final Act. 4. The Examiner's additional findings and
reasoning pertaining to the rejection of dependent claim 5 do not cure the
deficiency in rejection of claim 1. See id. Therefore, we do not sustain the
Examiner's rejection of claim 5 as unpatentable over Kimmel and Bryson,
i.e., Rejection II.
The Examiner's rejection of independent claims 7 and 12 relies on a
similar unsubstantiated finding that Kimmel' s cardboard tube 310 provides a
corrugated surface. See Final Act. 4, 6; see also Ans. 8. And, the
Examiner's additional findings and reasoning pertaining to Frank do not
cure the unsubstantiated finding pertaining to Kimmel. See Final Act. 5-7;
see also Ans. 7-9. Therefore, we similarly do not sustain the Examiner's
rejection of independent claims 7 and 12, and claims 8-11, which depend
either directly or indirectly from claim 7, as unpatentable over Kimmel and
Frank, i.e., Rejection III.
Rejection IV
As discussed above, the Examiner's finding that Kimmel' s cardboard
tube 310 is corrugated is inadequately supported, and as such, the
Examiner's rejection of claim 1 as anticipated by Kimmel is not sustained.
4
Appeal2013-007774
Application 12/903,447
However, for the reasons discussed below, the Examiner's rejection of
claim 2 based on Kimmel and Diep cures the deficiency of the Examiner's
rejection of claim 1 as anticipated by Kimmel. As such, we have added a
rejection of claim 1under35 U.S.C. § 103(a) as unpatentable over Kimmel
and Diep. We designate this rejection of claim 1 as a new ground of
rejection.
At the outset, we adopt the Examiner's findings regarding the
rejection of claim 1 (Final Act. 2), except for the finding that Kimmel's
cardboard tube 310 is corrugated because, as discussed above, it is
inadequately supported. Generally, the Examiner's adopted findings include
Kimmel's flat base 130, post 120, and cardboard tube 310, correspond with
the base, stem, and cardboard cylinder, as required by claim 1. Id. (citing
Kimmel, Fig. 3).
Turning to the Examiner's findings with respect to the rejection of
claim 2, we adopt the Examiner's finding that Kimmel does not disclose, but
that Diep discloses, the further limitation of claim 2, which directly depends
from claim 1.2 See Final Act. 3. Specifically, the Examiner finds Diep
teaches an apparatus for dulling animal claws including corrugations that
extend to an outer surface of the apparatus. See Final Act. 3 (citing Diep,
Figs. 1, 5, 9, 17).
The Examiner determines that it would have been obvious to modify a
cardboard tube of Kimmel' s pet amusement device with the corrugations
that extend to the outer surface of the cardboard tube, as taught by Diep.
2 Claim 2, which directly depends from claim 1, recites "wherein the
corrugations of said cardboard cylinder extend to the outer surface of said
cylinder." Appeal Br., Claims App.
5
Appeal2013-007774
Application 12/903,447
Final Act. 3--4. Among other things, the result of the modification of
Kimmel' s cardboard tube 310 is a "corrugated cardboard cylinder" as
required by claim 1. As such, the Examiner's rejection of claim 2 cures the
deficiency of the Examiner's rejection of claim 1.
Moreover, we determine that the Examiner articulates adequate
reasoning with rational underpinning as to why one of ordinary skill in the
art would have employed corrugations of cardboard extending to the outer
surface in Kimmel's device, as required by claim 2. See also KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner reasons that
the modification of the outer surface of Kimmel' s pet amusement device
occurs by replacing one surface for another surface, i.e., sandpaper for
corrugated cardboard, which maintains the same or better function
concerning dulling and/or trimming pet claws. See Final Act. 3--4, Ans. 6-7.
The Appellant does not persuasively contend that the Examiner's
conclusion, concerning the rejection of claim 2, is in error. See Appeal
Br. 4--5, Reply Br. 2. According to the Appellant, "[t]he cylinder of Kimmel
is intended to act only as a support for a sandpaper surface," and Diep "uses
cardboard (alone) as a material for dulling animal claws." Appeal Br. 4.
Relatedly, the Appellant contends, "Kimmel would not benefit from a
corrugated scratching structure like Diep as the outer surface of Kimmel is
nothing more than sandpaper." Id. at 4--5.
The Examiner responds that Kimmel discloses that sandpaper is a
mere choice of surface. See Ans. 6 (citing Kimmel i-f 29). And, further that
one of ordinary skill in the art would apply Diep' s teaching of an outer
corrugated cardboard surface to Kimmel' s device to provide dulling of cat
claws. See Ans. 6-7. We agree with the Examiner.
6
Appeal2013-007774
Application 12/903,447
The Appellant also contends that "Kimmel teaches away from using
an exposed cardboard material." Reply Br. 2. The Appellant's contention is
premised on Kimmel's disclosure that a sandpaper coating, e.g., 144, is
desirable to promote filing of claws via sanding. See id. (citing Kimmel
i-f 29). The Appellant asserts that corrugated cardboard would not function,
as sandpaper does, to manually trim cat claws. See id. However, as
discussed above, Kimmel does not foreclose the possibility of surfaces other
than sandpaper. Rather, Kimmel explicitly states "[ s ]urfaces and surface
coatings 142 may vary." Kimmel i-f 29. Kimmel's mere disclosure of a
function or advantage attendant to a sandpaper surface does not "teach
away" from other surfaces, such as cardboard. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed."). The Appellant does not point
to any disclosure in Kimmel criticizing, discrediting, or otherwise
discouraging employing corrugations of cardboard extending to the outer
surface in Kimmel' s device, as the Examiner proposes.
Based on the foregoing, we are unpersuaded that the Examiner erred
in concluding that the subject matter of claim 2 would have been obvious in
view of Kimmel and Diep. Therefore, we sustain the Examiner's rejection
of claim 2 and claim 3, which was not separately argued, as unpatentable
over Kimmel and Diep.
As a board of appeal, we are primarily a tribunal of review. Although
we decline to reject every claim under our discretionary authority under 37
C.F .R. § 41.50(b ), we emphasize that our decision does not mean that the
7
Appeal2013-007774
Application 12/903,447
remaining claims, i.e., claims 4--12, are patentable. As such, we have not
considered the patentability of the remaining claims in view of the combined
teachings of Kimmel and Diep alone or in further view of the teachings of
Bryson or Frank. We leave it to the discretion of the Examiner to reconsider
the patentability of the remaining claims.
DECISION
We REVERSE the Examiner's decision rejecting: claims 1, 4, and 6
under 35 U.S.C. § 102(b) as anticipated by Kimmel; claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over Kimmel and Bryson; and claims 7-12 under
35 U.S.C. § 103(a) as unpatentable over Kimmel and Frank.
We AFFIRM the Examiner's decision rejecting claims 2 and 3, and
designate as a NEW GROUND OF REJECTION the rejection of claim 1,
pursuant to our authority under 37 C.F.R. § 41.50(b), under 35 U.S.C.
§ 103(a) as unpatentable over Kimmel and Diep.
In addition to affirming the Examiner's rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
8
Appeal2013-007774
Application 12/903,447
by the Examiner, in which event the proceeding will be
remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
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-IN-PART; 37 C.F.R. § 41.50(b)
9