Ex Parte Kessler

Patent Trial and Appeal Board

Dec 3, 2013

12300626 (P.T.A.B. Dec. 3, 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.
12/300,626 05/22/2009 Brian D. Kessler KESSLER=93A 1942
1444 7590 12/03/2013
Browdy and Neimark, PLLC
1625 K Street, N.W.
Suite 1100
Washington, DC 20006
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/03/2013 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 BRIAN D. KESSLER
____________

Appeal 2012-002581
Application 12/300,626
Technology Center 3700
____________

Before KEVIN F. TURNER, WILLIAM V. SAINDON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 11, 13-17, 22, 26, and 27. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm the decision of the Examiner.
CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to an amusement device,
and particularly to a transparent ball having decorative elements inside the
ball. Spec., p. 1, ll. 4-8. Claim 26, the sole independent claim, is
representative of the subject matter on appeal, and recites:
1. An amusement ball, comprising
(1) an outer shell of transparent or semi-transparent
plastic, elastomer or plastomer having good bounce
characteristics,
(2) a light-up device within the outer shell, free
from attachment to said outer shell, and capable of
movement within said outer shell, and
(3) a liquid which fills the interior of the outer shell
under pressure against the inside of the outer shell,
wherein the light-up device is free to move within said
liquid, and
optionally (4) a plurality of decorative particles
within said liquid.
REFERENCES
The Examiner relied upon the following prior art references:

Gilman US 5,433,438 Jul. 18, 1995
Gentile US 5,924,942 Jul. 20, 1999
Kennedy US 6,395,861 B1 May 28, 2002
Quinn US 2003/0220162 A1 Nov. 27, 2003
Lin US 2005/0143204 A1 Jun. 30, 2005
Liao US 2007/0087861 A1 Apr. 19, 2007
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REJECTION
The following rejections are before us for review:
1. Claims 11, 14-16, 22, and 26 rejected under 35 U.S.C. 103(a) as
unpatentable based on Lin and Gentile. (Ans. 4);
2. Claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable based
on Lin, Gentile, and Quinn. (Id. at 5);
3. Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable based
on Lin, Gentile, and either Gilman or Kennedy. (Id. at 6); and
4. Claim 27 rejected under 35 U.S.C. § 103(a) as unpatentable based
on Lin, Gentile, and Liao. (Id.)
ANALYSIS
Claims 11, 13-16, 22, 26, and27
Appellant states that the broad issue in this appeal is “whether or not it
would have been obvious to modify Lin by the inclusion within the Lin ball
of a light-up device according to Gentile.” App. Br. 8. The Examiner
determined that “[i]t would have been obvious to one of ordinary skill in the
art to provide the ball of Lin with the light-up device of Gentile”. Ans. 5.
The rationale provided by the Examiner for the proposed combination is “to
draw attention to the ball that is being used.” Id.
Appellant argues that:
there is no factual basis for the proposed combination, in spite
of its apparent simplicity, because Lin cannot be obviously
modified by Gentile without violating requirements of Gentile,
because the art provides no reasons for putting a light-up device
according to Gentile within the outer shell of the Lin ball[.]
App. Br. 9. The record and controlling legal principles are to the contrary.
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Appellant acknowledges that Lin discloses a transparent elastic ball
made of polyurethane (PU) containing ornaments floating inside as a toy or
a decoration article. App. Br. 17. Appellant also acknowledges that the Lin
ball is “filled with liquid.” E.g., App. Br. 10 (the ball “is completely filled
with liquid in both Lin and the present invention.”) These acknowledged
facts were found specifically by the Examiner. Ans. 4.
Appellant also acknowledges that Gentile discloses a ball having a
light-up device, referred to as the bulb (30), which floats freely within the
liquid inside the Gentile ball. App. Br. 9. These acknowledged facts also
were found specifically by the Examiner. Ans. 5.
These fact findings by the Examiner support the rejection. Thus,
contrary to Appellant’s assertion, the rejection is not “based on speculation
rather than facts.” App. Br. 9.
Appellant argues that “Gentile teaches that the ball must not be
completely filled with liquid” (emphasis added). App. Br. 10; see also, App.
Br. 13 (“Gentile, sets forth requirements whereby the ball must not be
completely filled with liquid.”). However, as noted by the Examiner,
Appellant fails to provide evidentiary support for these assertions and “fails
to point to particular sections of Gentile that require the ball to be only
partially filled with the liquid or that the light-up device would fail to
function in a fully-filled ball.” Ans. 7. We agree with the Examiner.
Appellant has not directed our attention to any persuasive evidence that
supports the argument that the Gentile ball must not be completely filled
with liquid.1

1 “Argument in the brief does not take the place of evidence in the record.”
In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
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As the Examiner also states, “Gentile specifically states that the
purpose of the liquid with respect to the light-up device is to act as a
dampening cushion between the light source and the inner surface of the
hollow shell.” Ans. 7. See, Gentile, col. 3, ll. 63-66 (“Retained within the
open inner volume 24 is a volume of liquid 26. One of the primary purposes
of the volume of liquid 26 is to dampen energy thereby reducing undesirable
bouncing of the game ball 10.”) As stated by the Examiner, there is no
evidence that this purpose is achievable only when the ball is partially filled
with liquid.
The Examiner has made clear that the rejection of the claimed
invention is over the combination of Lin in view of Gentile. Ans. 8.
Whether a patent claiming the combination of prior art elements is obvious
is determined by whether the improvement is more than the predictable use
of prior art elements according to their established functions. KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
Id. at 418.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
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devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
“Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 420. Regardless of Gentile’s primary
purpose, the Examiner found that Gentile discloses a light-up device which
floats within liquid inside of a ball. Ans. 5. The idea that a person of
ordinary skill and creativity in the relevant technology would ignore Gentile
because Gentile may use this technology differently than the claimed
invention makes little sense. KSR, 550 U.S. at 420-421. As the Supreme
Court reminds us, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421.
Appellant argues that combining Gentile with Lin would not have
been obvious “because that would be contrary to the objectives of Gentile.”
App. Br. 13. The obviousness inquiry does not ask “whether the references
could be physically combined but whether the claimed inventions are
rendered obvious by the teachings of the prior art as a whole.” In re Etter,
756 F.2d 852 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413
(CCPA 1981) (stating “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference”). Rather, in a case such as this where each of the
elements of the claim are known to the art, the obviousness inquiry requires
a finding that the combination of known elements was obvious to a person
with ordinary skill in the art.
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Appellant asserts that the Examiner has not met “the initial burden to
establish prima facie obviousness.” Reply Br. 3. Based on our analysis
above, we disagree. The Examiner’s factual findings regarding what the
references disclose are supported by a preponderance of the evidence. See
In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections.”)
Having considered all the evidence presented by Appellant against
obviousness and weighing all the evidence anew, it is our conclusion that the
evidence for obviousness of claim 26 outweighs the evidence against
obviousness.
Appellant has not presented any separate argument for claims 11, 14-
16, and 22, or for claims 13 and 27 (App. Br. 20 (“claims 13 and 27 define
non-obvious subject matter for the same reasons as independent claim 26.”))
Accordingly, these claims fall with claim 26. 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
Claim 17
Claim 17 depends from claim 26 and requires that the shell of the ball
comprises an MDI-based polyurethane elastomer.
The Examiner found that Lin does not disclose an MDI-based
polyurethane. Ans. 6. However, the Examiner took Official Notice that
MDI-based polyurethanes are well-known in the art of game balls. Id. In
support thereof, the Examiner cited references to Gilman and Kennedy for
their disclosures of game ball constructions comprising an MDI-based
polyurethane. Id. The invention disclosed in Kennedy relates generally to
game balls, and more particularly to a quick-cure coating for game balls.
Kennedy, col. 1, ll. 5-6. The invention disclosed in Gilman relates to a ball
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for use in football training, physical therapy, and early childhood physical
education. Gilman, col. 1, ll. 10-12.
Appellant argues that “the rejection of claim 17 is [not] supported by
any factual basis.” App. Br. 20. Appellant also argues that “good bounce
characteristics of Appellant's ball as called for in claims 26 and 17 is
antithetical to the teachings of the critical Gentile prior art in which it was
taught to ‘reduce bounce’”. Reply Br. 2.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to use an MDI-based polyurethane for the ball of Lin
as modified by Gentile in order to take advantage of the polyurethane’s
particular physical characteristics such as improved durability. Ans. 6.
Appellant’s evidence and arguments do not apprise us that this is
more than the predictable use of prior art elements according to their
established functions. Accordingly, we find no error in in the Examiner’s
decision to reject claim 17.
DECISION
Upon consideration of the record as a whole in light of Appellant’s
contentions and the preponderance of relevant evidence, we affirm the
Examiner’s decision rejecting claims 11, 13-17, 22, 26, and 27.
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)(1)(iv).

AFFIRMED

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