Ex Parte Martino

Patent Trial and Appeal Board

Feb 27, 2017

13481802 (P.T.A.B. Feb. 27, 2017)

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.
13/481,802 05/26/2012 Marc Gregory Martino MARTINO-009 2647
13346 7590 03/01/2017
Hackler Daghighian Martino & Novak
433 North Camden Drive
Fourth Floor
Beverly Hills, CA 90210
EXAMINER
CHAN, ALLEN
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
marc @martinopatentlaw.com
marc@hdmnlaw.com
jcf@hdmnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC GREGORY MARTINO
Appeal 2015-004950
Application 13/481,802
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marc Gregory Martino (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—6 and 10-20.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Examiner indicated that claims 7—9 are allowable, and objected to
these claims as being dependent upon a rejected base claim. Final Act. 8.
Accordingly, these claims are not involved in this appeal.
Appeal 2015-004950
Application 13/481,802
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A self-propelled flying toy with an automatic activation and
deactivation mechanism, comprising:
a flying toy body defined as comprising a longitudinal
axis;
a motor attached to the body;
a fan mechanically coupled to the motor and substantially
centered about the longitudinal axis;
a power source energetically coupled to the motor; and
a centrifugal switch in communication with the motor and
power source, the centrifugal switch controllably turning the
motor on and powering the fan when rotation about the
longitudinal axis is detected during a throw and turning the motor
off and not powering the fan when rotation about the longitudinal
axis is not detected when not being thrown.
REJECTIONS
I. Claims 1—6 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kessler (US 6,669,587 B2, iss. Dec. 30,
2003) and Hamilton (US 5,316,293, iss. May 31, 1994).
II. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kessler, Hamilton, and Marinelli (US
6,157,898, iss. Dec. 5, 2000).
III. Claims 12—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kessler, Hamilton, and Rohring (US
4,923,196, iss. May 8, 1990).
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Application 13/481,802
DISCUSSION
Rejection I
The Examiner finds that Kessler discloses a self-propelled flying toy,
substantially as claimed, except for
a centrifugal switch in communication with the motor and power
source, the centrifugal switch controllably turning the motor on
and powering the fan when rotation about the longitudinal axis
is detected during a throw and turning the motor off and not
powering the fan when rotation about the longitudinal axis is not
detected when not being thrown.
Final Act. 3. However, the Examiner finds that Hamilton discloses “us[ing]
a centrifugal switch to activate electronic lights and sounds when the
football is thrown and rotates about a longitudinal axis and tum[ing] off the
lights and sounds when the ball is at rest.” Id. (citing Hamilton, Abstract;
col. 5,11. 55—62). The Examiner determines that “[i]t would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify the football of Kessler with the centrifugal switch of Hamilton in
order to use the spin of the football to actuate a mechanism within the
football.” Id. (citing Hamilton, col. 1,1. 63—col. 2,1. 7). According to the
Examiner, “[o]ne of ordinary skill in the art would easily recognize that
automating electronic mechanisms within a football could include an electric
motor such as the one taught by Kessler.” Id.
Appellant argues that combining the teachings of Kessler and
Hamilton would not result in the claimed invention without substantial
modification. See Appeal Br. 19—21; Reply Br. 6—7. In particular,
Appellant asserts that “a direct combination of Kessler and Hamilton results
in a football with (1) a button that turns on an external fan and (2) a timer
that turns off the external fan and (3) a centrifugal switch that controls lights
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Application 13/481,802
and sounds.” Appeal Br. 20. According to Appellant, combining the
references to arrive at the claimed invention would “require^ several mental
deductions and modifications to the structure and operation beyond a direct
combination such that their respective functions have been modified (i.e. not
maintained).” Id.
Appellant’s argument is unconvincing because it is not responsive to
the rejection articulated by the Examiner. As the Examiner explains, “the
rejection of the claims is based upon the combination of Kessler’s disclosure
of a football, motor and propeller and Hamilton’s centrifugal switch.” Ans.
6. We agree with the Examiner that, “[ajlthough Kessler’s football uses a
switch button to activate and deactivate the motor, one of ordinary skill in
the art would easily recognize Hamilton’s centrifugal switch as an
alternative option to activate and deactivate various electronics,” such as
Kessler’s electric motor. Id. In this regard, given that Hamilton’s toy
football uses a centrifugal switch to control electric elements (i.e., lights and
sounds), and Kessler’s toy football uses a button/timer switch to control an
electric element (i.e., motor), the substitution of the centrifugal switch of
Hamilton for Kessler’s button/timer switch amounts to nothing “more than
the predictable use of prior art elements according to their established
functions.” KSRIntI Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (noting
that such modifications are obvious where they do no more than yield a
predictable result). “[Wjhen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” Id. at 416,
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Application 13/481,802
To the extent that replacing Kessler’s button/timer switch with the
centrifugal switch of Hamilton may require modification of the structure of
Kessler’s toy football, Appellant does not assert, much less present any
evidence or technical reasoning to show, that such modifications would have
been beyond the technical grasp of a person having ordinary skill in the art.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421. Moreover, Appellant’s argument regarding “a direct
combination” (Appeal Br. 20) appears to rely on bodily incorporation of
particular structural details of the overall invention of Hamilton (i.e., lights
and sounds) into Kessler, which is not the standard for an obviousness
rejection. See In re Keller, 642 F.2d 413, 425 (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”).
Appellant argues that the Examiner’s proposed modification of
Kessler according to the teachings of Hamilton is improper because it is
based upon impermissible hindsight, and there is no motivation for the
proposed modification. See Appeal Br. 13—16,23—25. In particular,
Appellant asserts that “[n]one of the prior art references taught, suggested,
implied or recognized that Kessler’s switch button was inadequate.” Appeal
Br. 16; see Reply Br. 4—5. Appellant asserts that “no one had ever realized
the need for a way to turn on the motor and propeller beyond using a switch
button as taught by Kessler” (Appeal Br. 15), and “[tjhere is simply no
motivation or reason to find a solution to a problem if the problem was never
identified to begin with” {id. at 16). According to Appellant, “[b]ut for
[Appellant’s] disclosure as a guide, there would still not be another piece of
prior art that taught the need for a new activation and deactivation method
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Application 13/481,802
for a football with a motor and propeller.” Id. at 15—16. This line of
argument does not identify error in the Examiner’s rejection because it
appears to insist upon an explicit teaching, suggestion, or motivation in the
cited references to establish obviousness. The Supreme Court has stated that
a rigid insistence on teaching, suggestion, or motivation is incompatible with
its precedent concerning obviousness. KSR, 550 U.S. at 419. The Court
noted that an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [an
examiner] can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.” Id. at 418. Instead, the relevant
inquiry is whether an examiner has set forth “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418).
Here, as discussed supra, the Examiner articulates adequate reasoning
based on rational underpinnings as to why it would have been obvious to one
of ordinary skill in the art to modify the toy football of Kessler, based on the
teachings of Hamilton, so as to activate and deactivate the electric motor
automatically by a centrifugal switch. See Final Act. 3 (the Examiner
reasoning that such modification would “use the spin of the football to
actuate a mechanism within the football”); see also Ans. 6 (the Examiner
explaining that, “[although Kessler’s football uses a switch button to
activate and deactivate the motor, one of ordinary skill in the art would
easily recognize Hamilton’s centrifugal switch as an alternative option”).
Appellant has not set forth sufficiently persuasive technical reasoning or
evidence to explain why the Examiner’s articulated reasoning is in error.
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Moreover, Appellant does not identify, nor do we discern, any knowledge
relied upon by the Examiner that was gleaned only from Appellant’s
disclosure and that was not otherwise within the level of ordinary skill at the
time of the invention. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
Thus, we do not agree with Appellant that the Examiner’s rejection “relies
on a novel and unique combination gleaned solely from [Appellant’s]
specification” (Appeal Br. 24), and, accordingly, Appellant’s assertion of
hindsight is unsupported.
Appellant argues that “[t]he eighteen plus year period of time between
[Appellant’s] publication and the Hamilton patent is an objective indicator
of nonobviousness.” Id. at 16 (boldface omitted). In particular, Appellant
asserts that, during this period of time, “there is not a single reference that
teaches using a centrifugal switch to activate] or control a motor and
propeller of a self-propelled football.” Id. at 17—18. Appellant’s argument
suggests a long-felt, but unsolved, need existed to provide an improved
switch to activate the motor of a self-propelled toy football. However,
Appellant provides no objective evidence that skilled artisans recognized a
problem that existed for a long period of time without solution. See In
re Gershon, 372 F.2d 535, 539 (CCPA 1967) (objective evidence of long-
felt need must show that the need was a persistent one that was recognized
by those of ordinary skill in the art). Thus, Appellant has not established
long-felt need.
Appellant also argues that the Examiner’s rationale articulated in
support of the conclusion of obviousness is not consistently applied to the
rejection and the prior art. See Appeal Br. 18—19; see also Final Act. 3 (the
Examiner reasoning that “[o]ne of ordinary skill in the art would easily
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Application 13/481,802
recognize that automating electronic mechanisms within a football could
include an electric motor such as the one taught by Kessler”). Appellant
asserts that, “[according to the Examiner’s logic, Kessler should have also
easily recognized that the switch button could be replaced by the centrifugal
sensor of Hamilton,” but “Kessler never mentioned such a purportedly
obvious way to control the motor and propeller.” Appeal Br. 18. This
argument is not persuasive of error because Kessler’s disclosure only of the
use of a button/timer switch to control the motor in the toy football does not
establish non-obviousness of using a different type of known switch.
Moreover, Appellant’s argument is not responsive to the rejection (i.e., an
obviousness rejection, not an anticipation rejection) articulated by the
Examiner. The argument amounts to an assertion that the claimed invention
would not have been obvious to one of ordinary skill in the art at the time of
the invention because Kessler does not disclose every limitation recited in
the claim. Nonobviousness cannot be established by attacking references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1, or of dependent claims 2—6 and 11, for which Appellant
does not present any separate arguments for patentability. See Appeal Br.
13—21, 23—25. Accordingly, we sustain the rejection of claims 1—6 and 11
under 35 U.S.C. § 103(a) as unpatentable over Kessler and Hamilton.
Rejection II
Appellant does not present any separate arguments contesting the
rejection of claim 10, which depends from claim 1. See Appeal Brpassim.
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Appeal 2015-004950
Application 13/481,802
Thus, for the reasons set forth above with respect to the rejection of claim 1,
we also sustain the rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Kessler, Hamilton, and Marinelli.
Rejection III
The Examiner’s rejection of claims 12—20 is predicated in part on the
Examiner’s determination that, in view of the teachings of Rohring, it would
have been obvious to one of ordinary skill in the art at the time of the
invention “to modify the flying toy of Kessler and Hamilton to use a ducted
fan of Rohring in order to provide a football which can be thrown
substantially further than a normal football.” Final Act. 7 (citing Rohring,
col. 2,11. 64—66). According to the Examiner, “one of ordinary skill in the
art would realize that a ducted fan would be beneficial as it would reduce the
amount of wind resistance when the ball is thrown (by allowing air to pass
through the ball), thus allowing the toy to travel further.” Id.', see Ans. 8.
For the reasons advanced by Appellant, the Examiner’s articulated reasoning
for the proposed modification of Kessler lacks rational underpinnings. See
Reply Br. 3. As Appellant points out, “Rohring is not comparing the
efficiency of his internally-ducted propeller as compared to an externally-
ducted propeller,” but, rather, “is comparing his internally-ducted propeller
powered by a combustion engine to a toy football having no internal power
system at all.” Id. (emphasis omitted). Specifically, Rohring discloses that
the propulsive effect from the ducted fan “enables the football to be thrown a
substantially greater distance than would be the case of a toy football having
no internal power system.'1'’ Rohring, col. 8,11. 13—16 (emphasis added). In
other words, although Rohring discloses that the propulsive effect of the
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Application 13/481,802
ducted fan provides improved throwing distance, Rohring only discloses
such improvement relative to a normal, non-powered, football. See id., col.
2,11. 8—12; col. 8,11. 10—16. Given that Kessler’s toy football already
includes a propulsion system that increases throwing distance over a toy
football without such a propulsion system,2 the Examiner does not provide
any evidence or technical reasoning to explain why modifying Kessler’s toy
football to include a ducted fan necessarily would increase throwing distance
over Kessler’s existing system.
For the above reasons, the Examiner fails to establish that the subject
matter of claims 12—20 would have been obvious. Accordingly, we do not
sustain the rejection of claims 12—20 under 35 U.S.C. § 103(a) as
unpatentable over Kessler, Hamilton, and Rohring.
DECISION
The Examiner’s decision rejecting claims 1—6, 10, and 11 is affirmed.
The Examiner’s decision rejecting claims 12—20 is reversed.
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)(l)(iv).
AFFIRMED-IN-PART
2 Kessler discloses a toy football having a motor-driven propeller at the rear
end. See Kessler, Fig. 1, col. 1,11. 30—38. Kessler discloses that “[t]he
propeller will give the football 10 some enhanced thrust, increasing the
distance the ball can be thrown and improving its stability in flight.” Id.,
col. 2,11. 46-48 (boldface omitted).
10