Ex Parte Jager

Board of Patent Appeals and Interferences

Feb 28, 2011

10858220 (B.P.A.I. Feb. 28, 2011)

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33 were withdrawn from consideration by the Examiner pursuant to an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