Ex Parte Haaf et al

Patent Trial and Appeal Board

Nov 18, 2013

12368483 (P.T.A.B. Nov. 18, 2013)

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.
12/368,483 02/10/2009 David Haaf 545.188 1962
85444 7590 11/18/2013
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
EVANS, EBONY E
ART UNIT PAPER NUMBER
3645
MAIL DATE DELIVERY MODE
11/18/2013 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 and BETTY LEE1
__________

Appeal 2012-000094
Application 12/368,483
Technology Center 3600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a cat
activity pad, which have been rejected as anticipated or obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as Worldwise, Inc. (Appeal
Br. 1.)
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Application 12/368,483

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STATEMENT OF THE CASE
Claims 1-9 are on appeal. Claims 1, 2, and 6 are illustrative and read
as follows:
1. A cat activity pad sized to accommodate a domestic cat, said
pad comprising a plurality of distinct regions, each region
designed to satisfy a need of said domestic cat different from at
least one other region.
2. The cat activity pad of claim 1 wherein at least one of said
regions comprises a closeable opening to receive catnip.
6. The pet activity pad of claim 1 wherein at least one of said
regions comprises a plush surface.

The claims stand rejected as follows:
• Claims 1, 3-5, and 7-9 under 35 U.S.C. § 102(b) as anticipated by
Genitrini ’8992 (Answer 7);
• Claims 1, 3-5, and 7-9 under 35 U.S.C. § 102(e) as anticipated by
Genitrini ’2353 (Answer 8);
• Claim 2 under 35 U.S.C. § 103(a) as obvious based on either
Genitrini reference, combined with Lamstein4 (Answer 7, 9); and
• Claim 6 under 35 U.S.C. § 103(a) as obvious based on either
Genitrini reference, combined with Phillips5 (Answer 8, 9).
I.
The Examiner has rejected claims 1, 3-5, and 7-9 as anticipated by
both Genitrini ’899 or Genitrini ’235. Genitrini ’899 is the published

2 Genitrini, US 2007/0283899 A1, published Dec. 13, 2007.
3 Genitrini, US 7,621,235 B2, issued Nov. 24, 2009.
4 Lamstein et al., US 2008/0149041 A1, published June 26, 2008.
5 Phillips, US 4,327,668, issued May 4, 1982.
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application that later issued as Genitrini ’235. The Examiner relies on the
same disclosure in both references. We will therefore address the
anticipation rejections together.
The Examiner finds that the Genitrini references both disclose “a pad
with a number of distinct regions (20, 22; see col. 9, lines 45-48, fig. 1)”
(Answer 7, 8). We agree that Genitrini references anticipate claim 1.
Genitrini’s Figure 1 is reproduced below:

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Figure 1 shows “a perspective view of a cat toy park showing the cat
toy park open” (Genitrini ’235, col. 8, ll. 53-54).
Genitrini states that the cat toy park includes “opposing base portions
20 and 22” (id. at col. 9, l. 45) and cat toys 18A-18F (id. at col. 9, l. 41),
which include “scratching pad 18A; motorized mouse 18B . . .; [and]
blinking lights 18C” (id. at col. 12, ll. 40-42). Genitrini discloses that
“[e]ach of the removably replaceable base mounted cat toys 18A-18F are
removably fastened to the removably replaceable fasteners 28” (id. at col.
10, ll. 24-26).
Genitrini discloses that the “removably replaceable fasteners 28 . . .
typically have hook and loop fasteners 29 and opposing adhesive fasteners
31, which may be used to removably fasten the removably replaceable
fasteners 28 to the base portions” (id. at col. 9, ll. 49-53). That is, the
removably replaceable fasteners 28 can be fastened to the base portions via
their adhesive fasteners 31 and cat toys 18A-18F can be removably attached
to fasteners 28 via the hook and loop fasteners 29 (see, e.g., id. at Fig. 15).
Thus, Genitrini’s cat toy park, when assembled, includes a pad
comprising distinct regions (e.g., the region having scratching pad 18A
attached and the region having blinking lights 18C attached) that are
designed to satisfy different needs of a domestic cat (scratching and playing,
respectively). We therefore agree with the Examiner that each of the
Genitrini references anticipates claim 1.
Appellants argue, however, that the claimed invention is “a pad in
which elements of the pad itself are designed to satisfy a need of a domestic
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cat. . . . [T]he foldable base of Genitrini does not consist of pet attractions
but, instead, pet attractants are applied to the base.” (Reply Br. 3.)6
This argument is unpersuasive. Claim 1 recites a pad comprising
distinct regions that are designed to satisfy different needs of a cat. As
discussed above, Genitrini’s product comprises distinct regions that have
different cat toys attached to them that satisfy different needs of a cat.
Appellants have not pointed to any claim language or definition(s) in the
Specification that would exclude Genitrini’s product from the broadest
reasonable interpretation of claim 1. We therefore agree with the Examiner
(Answer 10) that the features upon which Appellants rely are not recited in
the rejected claim.
Appellants also argue that a “pad is defined as ‘a thin flat mat or
cushion’” and Genitrini’s base, which includes hinges and matingly
interlocking portions that include handles, does not meet the definition of a
pad (Reply Br. 3).
This argument is also unpersuasive. As shown in Genitrini’s Figure 1,
the base (20, 22) of its cat toy park is thin and flat, and therefore reasonably
appears to be “a thin flat mat,” meeting Appellants’ definition of a pad.
Appellants have not provided a reasoned basis for concluding that a person
of ordinary skill in the art would not consider the base of Genitrini’s product
to be a “pad” because it includes hinges and handles.

6 The rejections set out in the Office action mailed Jan. 12, 2011 were
withdrawn (Answer 6) and new grounds of rejection were set out in the
Answer (id. at 5). Appellants responded to the new grounds of rejection in
the Reply Brief.
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Claims 3-5 and 7-9 fall with claim 1 because they were not argued
separately. 37 C.F.R. § 41.37(c)(1)(vii).
II.
The Examiner has rejected claim 2 as obvious based on either
Genitrini reference, combined with Lamstein. The Examiner finds that
Genitrini does not disclose a closeable opening for catnip but Lamstein does
(Answer 7-8, 9). The Examiner concludes that it would have been obvious
to modify Genitrini’s product – specifically the scratching pad 18A (id. at
11) – to include a closeable opening for inserting catnip, “so as to induce a
cat to scratch the toy rather than another household object” (id. at 8, 9).
We agree with the Examiner’s reasoning and conclusion. As
discussed above, Genitrini discloses a cat toy park that includes, among
other toys, removable scratching pad 18A. Lamstein discloses a catnip
enhanced cat scratcher (Lamstein, title) that “can be used in virtually any
orientation” (id. at 1, ¶ 17). Lamstein’s cat scratcher includes “an inner
channel for receiving and displaying catnip to a pet cat” (id. at 1, ¶ 1), where
the entry to the channel can be selectively closed by, for example, a hook
and loop fastener or a zipper (id. at 2, ¶ 23). Lamstein discloses that
including catnip in the scratcher encourages a cat to scratch it rather than
household objects such as furniture or rugs (id. at 1, ¶ 19). We agree with
the Examiner that it would have been obvious, based on Lamstein, to modify
Genitrini’s scratching pad to include a closeable opening to receive catnip,
in order to encourage the cat to scratch the scratching pad rather than
household objects.
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Appellants argue that the base of Genitrini’s product is rigid and could
not be configured to receive catnip (Reply Br. 5-6), and that the pet activity
toys attached to the base of Genitrini’s product cannot be considered part of
the “pad” recited in the claims (id. at 6).
This argument is not persuasive for the reasons discussed above with
respect to claim 1. Specifically, the broadest reasonable definition of the
claimed “pad,” even when read in light of the Specification, does not
exclude a product, like Genitrini’s, having cat toys removably attached to a
thin, flat base. Therefore, claim 2 reads on the product made obvious by the
combined disclosures of Genitrini and Lamstein.
III.
The Examiner has rejected claim 6 as obvious based on either
Genitrini reference, combined with Phillips. The Examiner finds that
Genitrini does not disclose a plush surface, but Phillips does (Answer 8, 9).
The Examiner concludes that it would have been obvious to provide
Genitrini’s product – specifically the movable mouse 18B (id. at 11) – with a
plush surface in order to provide a pad that was easier to wash (id. at 8, 9)
“or to give the mouse a natural appearance or texture to attract a cat” (id. at
11).
We agree with the Examiner’s reasoning and conclusion. As
discussed above, Genitrini discloses a cat toy park that includes, among
other toys, motorized mouse 18B. Phillips discloses a pet toy, illustrated in
its Figure 1, which is reproduced below:
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Figure 1 shows a perspective view of Phillips’ device (Phillips, col. 1,
ll. 44-45).
Phillips states that its device “includes a baseboard 12 on the upper
surface of which are situated a plurality of tunnel-like enclosures 14 . . . and
models 16 simulating mice” (id. at col. 1, ll. 53-56). The device shown in
Figure 1 also includes “an optional additional slot 26' and associated model
16' . . . with no associated enclosure” (id. at col. 2, ll. 44-47). Phillips
discloses that the “entire upper surface of baseboard 12 and also the exposed
surfaces of the enclosures may be covered with plush washable carpeting
28” (id. at col. 2, ll. 17-19). Phillips discloses that the carpeting can have a
“texture . . . which is appealing particularly to cats” (id. at col. 2, ll. 54-55).
We agree with the Examiner that it would have been obvious to
modify the device disclosed by Genitrini to include a plush surface such as
the plush carpeting described by Phillips – around, for example, the movable
mouse 18B – in order to provide a washable surface that is attractive to cats.
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Appellants argue that “Phillips teaches a puppet like device” and does
not teach making its plush surface part of a multi-region cat activity pad
(Reply Br. 6). Appellants argue that the Examiner’s reasoning is based on
hindsight because it “selectively eliminate[s] the very essence of Phillips,
that is, the puppet like manipulation of mice 16” and applies the surface of
Phillips’ device to Genitrini’s hinged base (id.).
This argument is not persuasive. Both Phillips and Genitrini disclose
devices that provide cat toys that are intended to attract a cats’ interest, and
both devices include simulated mice. Thus, Phillips’ disclosure that plush
carpeting is both washable and appealing to cats would have provided a
skilled artisan with ample reason to combine it, even without Phillips’
specific type of simulated mice, to Genitrini’s device.
SUMMARY
We affirm all of the rejections on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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