Ex Parte MannDownload PDFPatent Trial and Appeal BoardJan 4, 201711858675 (P.T.A.B. Jan. 4, 2017) 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. 11/858,675 09/20/2007 Charles David Mann 15599.0001US01 3183 23552 7590 01/06/2017 MERCHANT & GOULD P.C. P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 01/06/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): US PT023552@ merchantgould .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES DAVID MANN Appeal 2014-009327 Application 11/858,675 Technology Center 3600 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Charles David Mann (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1,3,4, 6—8, 10, 17—27, and 29-35.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Claim 36 is withdrawn from consideration, and claims 2, 5, 9, 11—16, and 28 are canceled. Appeal Br. 39, 40, 42, 43 (Claims App.); Final Act. 1 (Office Action Summary). Appeal 2014-009327 Application 11/858,675 THE CLAIMED SUBJECT MATTER Claims 1, 8, 21, and 32 are independent. Appeal Br. 39-43 (Claims App.). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A pet toy comprising: (a) a first portion having a passage therethrough; (b) a shaft having a first end, a second end and a middle portion centrally located between the first end and the second end, the shaft extending through the passage of the first portion such that the first portion fully covers the middle portion of the shaft; (c) a second portion having an opening for receiving the first end of the shaft which releaseably engages the second portion to the first portion; (d) a third portion having an opening for receiving the second end of the shaft which releaseably engages the third portion to the first portion; (e) a treat-retaining region; (f) wherein the second and third portions are constructed such that the first and second ends of the shaft are fully embedded within the second and third portions respectively when engaged to the shaft, the second and third portions remaining engaged to the shaft during pet use. Id. at 39 (Claims App.). THE REJECTION2 Claims 1, 3, 4, 6—8, 10, 17—27, and 29-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wesely (US 2006/0060154 Al, 2 The Examiner withdrew rejections of claims 32—36 under 35 U.S.C. § 112, first paragraph, and of claims 1,3,4, 6, 7, and 32—36 under 35 U.S.C. § 112, second paragraph. Ans. 11—12. 2 Appeal 2014-009327 Application 11/858,675 pub. Mar. 23, 2006), Woltmann (US 2003/0188696 Al, pub. Oct. 9, 2003), and Bolivar (US 5,022,345, iss. June 11, 1991). DISCUSSION Independent claims 1, 8, and 21 each require (1) a shaft; (2) a first portion (claim 1), a base portion (claim 8), or a non-edible central piece (claim 21) fully covering a centrally located middle portion of the shaft; and (3) second and third portions (claim 1), first and second tip portions (claim 8), or first and second non-edible end pieces (claim 21) receiving or secured/connected to the first and second ends, respectively, of the shaft such that the first and second ends of the shaft are fully embedded within the second and third portions (claim 1), first and second tip portions (claim 8), or first and second non-edible end pieces (claim 21). Id. at 39-41 (Claims App.). Independent claim 32 requires (1) a non-edible base portion, (2) first and second non-edible tip portions, (3) first and second engagement mechanisms, and (4) first and second edible treats, “wherein the base portion, the first and second tip portions, and the first and second edible treats are the only exposed components of the pet toy.” Id. at 42-43 (Claims App.). The Examiner’s rejection of each of these claims, as well as the claims depending therefrom, is predicated on the Examiner’s determinations that it would have been obvious (1) to substitute Woltmann’s threaded cap 66 for Wesely’s releasable fasteners 3, as a simple substitution of one known element for another to obtain predictable results, and (2) to have Wesely’s “first portion” (i.e., fastener 4 and inner chewing component 2) “fully covering the middle portion of the shaft as taught by Bolivar . . . depending 3 Appeal 2014-009327 Application 11/858,675 on the user’s preference to have the shaft be fully cover[ed] or not so as to further entice the pet to play with the toy.” Final Act. 5—6. Appellant points out that Wesely discloses leaving a distance (5) of the elongated member uncovered “to allow talon o[r] beak gripping onto the elongated member” and that “every single embodiment of Wesely shows a shaft that is uncovered at the middle portion of the shaft.” Appeal Br. 21, 27, 31 (citing Wesely 132); see also id. at 37 (reiterating that Wesely has an elongated member with an exposed portion). Appellant additionally directs our attention to paragraph 19 of Wesely, which states, “[t]he toy should be . . . not so large in diameter or long that the bird can not grasp and hold the toy with either its beak or talons” and “[f]or example,... the elongated member is preferably about A inch in diameter.” Id. at 21, 28, 31. Thus, according to Appellant, “there would be no reason one having ordinary skill in the art would have modified Wesely with the teachings of Bolivar,” as proposed by the Examiner, to arrive at the claimed subject matter. Id. at 22, 29, 32. We agree with Appellant. A person having ordinary skill in the art would have understood from at least paragraphs 19 and 32 of Wesely that the toy is specifically adapted to be grasped and held by a bird with either its beak or its talons at the exposed portion of the elongated member, particularly distance 5 proximal to releasable fasteners 4. Thus, eliminating such exposed portions of the elongated member would nullify this gripping feature taught by Wesely. Consequently, a person having ordinary skill in the art would not have been prompted to eliminate the exposed central portion (distance 5) by having Wesely’s “first portion” (i.e., fastener 4 and inner chewing component 2) fully cover the middle portion of the shaft, as 4 Appeal 2014-009327 Application 11/858,675 proposed by the Examiner, especially in concert with the other modification proposed by the Examiner, namely, replacing Wesely’s releasable fasteners 3 with caps 66 as taught by Woltmann, which would eliminate the only other exposed portions of Wesely’s elongated member. The Examiner reasons that it would have been obvious to do so “to further entice the pet to play with the toy,” but does not explain why modifying the “first portion” comprising fastener 4 and inner chewing component 2 to fully cover the middle portion of the elongated member would further entice the pet to play with the toy. Final Act. 6; see also Ans. 13—16. Accordingly, the Examiner fails to articulate an apparent reason, with rational underpinnings, why, in the absence of hindsight gleaned improperly from Appellant’s underlying disclosure, a person having ordinary skill in the art would have modified Wesely as proposed by the Examiner to arrive at the subject matter of any of independent claims 1, 8, 21, and 32. See St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (reminding us that “we must guard against ‘hindsight bias’ and ‘ex post reasoning’” in making obviousness determinations (quoting KSR Int’l Co v. Teleflex Inc., 550 U.S. 398, 421 (2007))). For the above reasons, we do not sustain the rejection of independent claims 1, 8, 21, and 32, or of dependent claims 3, 4, 6, 7, 10, 17—20, 22—27, 29-31, and 33—35, under 35 U.S.C. § 103(a) as unpatentable over Wesely, Woltmann, and Bolivar. 5 Appeal 2014-009327 Application 11/858,675 DECISION The Examiner’s decision rejecting claims 1, 3, 4, 6—8, 10, 17—27, and 29-35 under 35 U.S.C. § 103(a) is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation