13102935 (P.T.A.B. Nov. 19, 2015)

Ex Parte Haaf et al

Patent Trial and Appeal BoardNov 19, 2015

13102935 (P.T.A.B. Nov. 19, 2015)

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. 13/102,935 05/06/2011 David Haaf 545.258 8151 85444 7590 11/19/2015 Bay Area Technolgy Law Group PC 2171 E. Francisco Blvd., Suite L San Rafael, CA 94901 EXAMINER PARSLEY, DAVID J ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 11/19/2015 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 SARA PACULDO ________________ Appeal 2013-006404 Application 13/102,935 Technology Center 3600 ________________ Before MICHAEL L. HOELTER, ERIC C. JESCHKE, and JASON W. MELVIN, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s non-final rejection of claims 1–5 and 8.1 Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “is directed to a cat scratching device and particularly to a device which is ideally suited to be self supporting and 1 Claims 6 and 7 have been cancelled. See Amendment dated July 3, 2012. Appeal No. 2013-006404 Application No. 13/102,935 2 provide multiple scratching surfaces to an engaging cat.” Spec. 1:4–6. Sole independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A cat scratching device for residing upon a substantially horizontal surface, said device comprising three scratching posts each having first and second ends, said scratching posts being separated from one another at their first ends and joined to one another at their second ends resulting in a three-legged self supporting device, each of said three scratching posts having scratching surfaces applied thereto, and wherein one of said scratching surfaces on one of said scratching posts differs from at least one of the scratching surfaces on other of said scratching posts. REFERENCES RELIED ON BY THE EXAMINER O’Rourke ’088 US Des. 295,088 Apr. 5, 1988 Manson US 4,790,265 Dec. 13, 1988 O’Rourke ’124 US Des. 348,124 June 21, 1994 Leon US 2003/0221628 A1 Dec. 4, 2003 THE REJECTIONS ON APPEAL Claims 1–3, 5, and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over O’Rourke ’088 in view of Manson or, alternatively, in view of Leon. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over O’Rourke ’088 in view of Manson or, alternatively, in view of Leon, and further in view of O’Rourke ʼ124. ANALYSIS Independent claim 1 is directed to a cat scratching device with “three scratching posts having scratching surfaces applied thereto.” Claim 1 also includes the limitation “wherein one of said scratching surfaces on one of Appeal No. 2013-006404 Application No. 13/102,935 3 said scratching posts differs from at least one of the scratching surfaces on other of said scratching posts.” The Examiner relies on O’Rourke ’088 for disclosing three scratching posts with scratching surfaces (i.e., rope) thereon. Non-Final Act. 3. However, the Examiner acknowledges that “O’Rourke [’088] does not disclose one of the scratching surfaces on one of the scratching posts differs from at least one of the scratching surfaces on other of the scratching posts.” Non-Final Act. 3. For this teaching, the Examiner relies on, alternatively, Mason and Leon, finding that Mason teaches the use of carpet and Leon teaches the use of carpet and sisal. Non-Final Act. 3 (referencing Mason 2:27–44 and Leon ¶ 32). The Examiner does not identify where either Mason or Leon disclose using alternate scratching surfaces on different scratching posts within the same device. Nevertheless, the Examiner concludes that it would have been obvious “to take the device of O’Rourke [’088] and add different materials for at least some of the scratching surfaces” because this would “yield the predictable result of making the device usable with multiple cats and to make the device attractive to multiple cats.” Non-Final Act. 3; see also Ans. 8. Appellants state that “there are certain inherent advantages in practicing the present invention.”2 Br. 3. Appellants contend that because 2 Appellants initially contend that “its use of diverse scratching surfaces help to prevent their deterioration noting that no one scratching surface should deteriorate more than others thus extending the overall life of the present device.” Br. 3. Here, Appellants’ use of the phrase “diverse scratching surfaces” is understood to be synonymous with Appellants’ use of the term “multitude of scratching surfaces” since this is the phrase employed Appeal No. 2013-006404 Application No. 13/102,935 4 “each post can have its own unique scratching surface, the device would enhance ongoing engagement by reducing boredom that a single [] scratching surface applied to all posts might present.” Br. 3. This is a nearly identical replication of a passage directed to advantages of the invention found in Appellants’ Specification. See Spec. 6:29–7:1. Appellants’ Specification also states that “certain pet cats have been found to prefer certain scratching surfaces over others. The present device will assist in providing the pet owner with such feedback enabling this device to be customized to the pet’s specific needs and desires.” Spec. 7:2–4. As such, Appellants explain that “future purchasing decisions” can be customized based on this feedback for a preferred surface. Br. 4. Appellants argue that “[n]one of these advantages are present in the references either taken singularly or in combination.” Br. 4. In summary, Appellants contend that “[a]lthough the Examiner is correct that carpet and sisal are known scratching surfaces, the combination of references cited do not suggest using these different scratching surfaces on a single article, nor does it suggest separate posts which are covered by a different scratching surface.” Br. 4. It is not disputed that O’Rourke ’088 discloses three scratching posts each covered with rope, or that Mason teaches using carpet as a material for a scratching surface, or that Leon teaches that carpet or sisal can be used as a scratching surface. See supra. However, each reference discloses the use of the same scratching surface on its different components,3 and the Examiner in Appellants’ Specification when addressing the extended life of the scratching posts. See Spec. 6:25–29. 3 “The combination of these references renders the claimed invention obvious in that substituting one functionally equivalent material such as the Appeal No. 2013-006404 Application No. 13/102,935 5 further states that Appellants “place[] no criticality on the posts having different scratching surface materials.”4 Ans. 9. The Examiner’s findings and conclusions do not detract from Appellants’ contention regarding a lack of a reason to comingle different scratching surfaces on different elements of the claimed scratching device. See Br. 4. We are cautioned by our reviewing court that the Examiner’s “reasons must be clearly articulated. It is not enough to say that there would have been a reason to combine two references because to do so would ‘have been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient—more is needed to sustain an obviousness rejection.” In re Chaganti, 554 F. App’x 917, 922 (Fed. Cir. 2014). We have also recently been instructed that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc., v. Berk-Tek LLC, Nos. 2014-1575, 2014-1576, 2015 WL 6756451, at *5 (Fed. Cir. Nov. 5, 2015) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Here, the Examiner’s stated motivation (“making the device usable with multiple cats and to make the device attractive to multiple cats,” Non- Final Act. 3) appears to paraphrase Appellants’ Specification when rope of O’Rourke [’088] with another functionally equivalent material such as the carpet of Manson or carpet or sisal of Leon would render the device of O’Rourke suitable for its intended function of providing a cat scratching device while providing multiple scratching surfaces that can be used in a setting with multiple cats.” Ans. 8. 4 The Examiner also states that “the combination of these references would provide and is capable of providing the same advantages disclosed by [Appellants].” Ans. 9. Appeal No. 2013-006404 Application No. 13/102,935 6 discussing the advantages of the invention.5 Accordingly, and based on the record presented, we reverse the Examiner’s rejection of independent claim 1, and dependent claims 2, 3, 5, and 8 as being obvious over O’Rourke ’088 in view of Manson, or alternatively, in view of Leon. Regarding claim 4 (which is understood to depend from claim 1), the Examiner relies on O’Rourke ʼ124 to teach the suspension of a cat attractant from the apex of the device. Non-Final Act. 5. The stated reason to combine O’Rourke ʼ124 with the references relied upon with respect to claim 1 is “to make the device more attractive to cats.” Non-Final Act. 5. The Examiner does not explain how this same reason cures the defect discussed above regarding the Examiner’s rejection of claim 1. We likewise reverse the Examiner’s rejection of claim 4. DECISION The Examiner’s rejections of claims 1–5 and 8 are reversed. REVERSED rvb 5 “[T]he device would enhance ongoing engagement by reducing boredom that a single scratching surface might represent.” Spec. 6:29–7:1.