Ex Parte JagerDownload PDFBoard of Patent Appeals and InterferencesFeb 28, 201110858220 (B.P.A.I. Feb. 28, 2011) Copy Citation 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. 10/858,220 06/01/2004 Claudius Jager JAP 1501.cip 5260 30996 7590 02/28/2011 ROBERT W. BECKER & ASSOCIATES 707 HIGHWAY 333 SUITE B TIJERAS, NM 87059-7507 EXAMINER SMITH, KIMBERLY S ART UNIT PAPER NUMBER 3644 MAIL DATE DELIVERY MODE 02/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CLAUDIUS JAGER ____________ Appeal 2009-009850 Application 10/858,220 Technology Center 3600 ____________ Before MICHAEL W. O’NEILL, KEN B. BARRETT, and FRED A. SILVERGERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown in the PTOL-90A cover letter attached to this decision. Appeal 2009-009850 Application 10/858,220 2 STATEMENT OF THE CASE Claudius Jager (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-22, 30 and 31. Claims 23-29, 32, and 33 were withdrawn from consideration by the Examiner pursuant to an election of species requirement. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The claims on appeal relate to a toy for animals having a hollow core of a first polymeric material harder than a second polymeric material of an outer covering. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A toy for animals, comprising: a hollow core of a first polymeric material; a covering of a second thermosetting polymeric material; wherein said first polymeric material is harder than said second polymeric material; and wherein said covering is disposed outwardly over said core and is disposed on at least portions of said core. The Rejections The following Examiner’s rejections are before us for review: Claims 1-18 and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Willinger (U.S. Patent No. 6,202,598 B1, issued Mar. 20, 2001) and Baikie2 (U.S. Patent No. 6,238,715 B1, issued May 29, 2001). 2 We appreciate the Examiner’s efforts in paragraph no. 2 of the Final Office Action mailed Dec. 1, 2006, where in response to Appellant’s request to Appeal 2009-009850 Application 10/858,220 3 Claims 19-21, 30 and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Willinger, Baikie, and Miller (U.S. Patent No. 6,186,096 B1, issued Feb. 13, 2001). SUMMARY OF DECISION We AFFIRM. OPINION Construing the claim is the first step in an obviousness analysis, followed by a comparison of the construed claim to the prior art. Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted). When claim terminology is construed in the United States Patent and Trademark Office, the pending claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We find that this case turns on how one of ordinary skill in the art would construe the term “hollow” in the claim phrase “a hollow core.” provide relative references regarding the Examiner’s use of Official Notice that hollow chew toys are notoriously well known in the art, the Examiner cited Baikie, Markham (U.S. Patent No. 5,832,877), and an undated “web reference showing an illustration of a Natural Beef Bone, Arcata Pet Supplies (www.arcatapet.com).” However, we refer the Examiner’s attention to the Manual of Patent Examining Procedure (MPEP) §§ 2124 and 2144.03 for instruction that a reference provided in response to a challenge to an Examiner’s use of Official Notice need not necessarily precede the filing date. Appeal 2009-009850 Application 10/858,220 4 Appellant’s Specification does not expressly define the term “hollow” or otherwise indicate that this term is used in a manner other than its ordinary and customary meaning. Accordingly, we construe the term “hollow” in accordance with its ordinary and customary meaning. An ordinary and customary meaning of the term “hollow” that is most consistent with the Specification and the understanding of those of ordinary skill in the art is “having a cavity within.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Appellant argues that a person of ordinary skill in the art reading the Specification would interpret the claim term “hollow” to mean an unfilled space. App. Br. 12. The Appellant’s arguments directed to the term “hollow” are premised on the dictionary definition given to the term “hollow” when used as a noun. See MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). However, Appellant’s arguments are not commensurate with the claim scope because the term “hollow” must be construed in the context of claim 8; that is, in the context of the claim phrase “a hollow core” where the claim term “hollow” is used as an adjective (i.e., “having a cavity within”), not as a noun (i.e., “an unfilled space”). See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278 (Fed. Cir. 1992) (Claims are to be construed as a whole). The ordinary and customary meaning of the term “hollow” in claim 8 broadly encompasses any core “having a cavity within” and the claim does not require that the cavity within the core be unfilled. Rather, the core still remains hollow even if the cavity is filled with a filling, a treat, a device, etc. Accordingly, claim 8 requires a “hollow” core to be a core having a cavity within regardless of whether that cavity is filled or unfilled. Appeal 2009-009850 Application 10/858,220 5 Stated another way, given the ordinary and customary meaning of the term “hollow,” in the context within which the term is used in claim 8, we find that the broadest reasonable construction of the claim as it would be interpreted by one of ordinary skill in the art in light of the Specification is such that claim 8 requires a core having a cavity therewithin regardless of whether that cavity is filled or unfilled. Thus, in applying the properly construed claim language of “hollow” to the prior art reference Baikie, we find that Baikie properly teaches a hollow chew toy 10, particularly in light of Appellant’s Specification, at page 4, lines 4-6, wherein the Summary of the Invention states that “the harder core is preferably hollow to prevent damage to the toy and optionally, to provide a place for insertion of stimulating treats and devices.” Emphasis added. Since Appellant’s invention includes embodiments where the hollow core is filled with a treat or a device, Appellant is foreclosed from arguing that the recitation of “a hollow core” in claim 8 means that the core is unfilled at all times. We adopt the Examiner’s findings with respect to the scope and content of the prior art. To the extent that the Examiner equated the term “hollow” to the term “shape” in response to Appellant’s arguments that Baikie does not teach the term “hollow” (Ans. 9-10), we agree that the Examiner misinterpreted the claim term “hollow.” However, we view this as harmless since the Appellant’s argument that “the Baikie toy is NOT hollow, it is FILLED” (App. Br. 12) is also incorrect based upon a proper construction of the claim term “hollow” as was done supra. In view of the foregoing, we sustain the Examiner’s rejection of claims 1-18 and 22 under 35 U.S.C. § 103(a) as unpatentable over Willinger and Baikie. Since the properly construed claim term “hollow” does not Appeal 2009-009850 Application 10/858,220 6 require the cavity within the core to be unfilled, we do not agree that the Examiner misconstrued the Miller reference and we also sustain the Examiner’s rejection of claims 19-21, 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over Willinger, Baikie, and Miller. DECISION Based on the foregoing, we affirm the Examiner’s rejections of claims 1-18 and 22 under 35 U.S.C. § 103(a) as unpatentable over Willinger and Baikie and claims 19-21, 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over Willinger, Baikie, and Miller. AFFIRMED Klh ROBERT W. BECKER & ASSOCIATES 707 HIGHWAY 333 SUITE B TIJERAS, NM 87059-7507 Copy with citationCopy as parenthetical citation