Ex Parte Matos

Board of Patent Appeals and Interferences

Nov 29, 2011

10841326 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSE R. MATOS
____________

Appeal 2009-013349
Application 10/841,326
Technology Center 3700
____________

Before GAY ANN SPAHN, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jose R. Matos (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 27-29 and 31-44. Appellant
cancelled claims 24-26 and 30. The Examiner withdrew claims 1-23 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).

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The Claimed Subject Matter
Claim 33, reproduced below, is illustrative of the subject matter on
appeal.
33. An adaptive construction toy kit comprising plural,
optionally edible, adaptive interlocking, interconnecting, press-
fit, snap-fit, tongue-in-slot and/or tab-in-recessed retainer toy
connectors that expand during use, the adaptive toy connector
comprising:
a. a rigid, semi-rigid, or flexible material that expands
when exposed to a predetermined condition during use, the
material being selected from the group consisting of a heat
expandable material, water expandable material, oil-based
composition expandable material, non-aqueous composition
expandable material, acidic composition expandable material,
alkaline composition expandable material, organic solvent
expandable material, or a combination thereof;
b. a shape independently selected at each occurrence
from the group consisting of a square, rectangle, circle, oval,
ellipse, trapezoid, parallelogram, pentagon, starburst, cross,
multi-pointed star, intersecting geometric shapes, hexagon,
heptagon, polygon, geometric shape, irregular shape, regular
shape, symmetric shape, asymmetric shape; fanciful figure,
person, place, or thing; silhouette thereof; and a combination
thereof; and
c. interlocking, interconnecting, press-fit, snap-fit,
tongue-in-slot and/or tab-in-recessed retainer engagement
means;
d. wherein during use an adaptive connector expands
upon exposure to a predetermined condition, selected from the
group consisting of heat, cold, moisture, an aqueous
composition, an oil-based composition, a non-aqueous
composition, acidic composition, alkaline composition, an
organic solvent, or a combination thereof, such that a first
adaptive connector is adapted to interlock and/or interconnect
with a second adaptive connector before and/or after exposure
to the predetermined condition, and wherein the adaptive
connector maintains its physical integrity during use; and
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wherein the connector does not consist solely of resilient
plastic, inflexible hard sugar candy, or semi-flexible, gelatin-
containing sugared candy.

Independent claim 35 calls for an adaptive construction toy kit
including plural connectors, the connector comprised of a material that
shrinks, while maintaining its physical integrity, during use upon exposure
to a predetermined condition, and wherein the connector does not consist
solely of resilient plastic, inflexible hard sugar candy, or semi-flexible,
gelatin-containing sugared candy. App. Br., Clms. Appd’x. 4-5.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 27-29 and 31-44 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
Claims 27-29 and 31-44 are rejected under 35 U.S.C. § 102(b) as
anticipated by Coster (US 3,663,717, issued May 16, 1972).
Claims 27-29 and 31-44 are rejected under 35 U.S.C. § 102(e) as
anticipated by Griffin (US 2003/0152668 A1, published Aug. 14, 2003).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Indefiniteness under 35 U.S.C. § 112, second paragraph
The Examiner determines that claims 27-29 and 31-44 are indefinite
under 35 U.S.C. § 112, second paragraph, because the recitation of “wherein
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the connector does not consist solely of resilient plastic, inflexible hard
sugar candy, or semi-flexible, gelatin-containing sugared candy” (App. Br.,
Clms. Appd’x. 4 and 5) in independent claims 33 and 35 is a negative
limitation which is confusing for failing to set forth the metes and bounds of
the patent protection sought. Ans. 3. The Examiner indicates that it is not
clear “how the claimed invention could be interpreted for what it is NOT
instead of what it is.” Id. The Examiner also indicates that the negative
limitation “is completely contrary and conflicting to some of the limitations
in claims 29, 34, [and] 36.” Id.
Appellant contends that the negative limitation in independent claims
33 and 35 is definite, as merely excluding from the claim scope, connectors
that are made solely from one of the materials of resilient plastic, inflexible
hard sugar candy, and semi-flexible, gelatin-containing sugared candy. App.
Br. 11. Appellant also contends that “[i]t is well established in patent law
that a claim can include a negative proviso to eliminate potentially
overlapping art to more clearly distinguish the claimed invention from art of
record.” Id.
We agree with Appellant. There is nothing inherently ambiguous or
uncertain about a negative limitation and as long as the boundaries of the
patent protection sought are set forth definitely, albeit negatively, the claim
complies with the requirements of 35 U.S.C. § 112, second paragraph.
Indeed, a claim which recited the limitation “said homopolymer being free
from the proteins, soaps, resins, and sugars present in natural Hevea rubber”
in order to exclude the characteristics of the prior art product, was
considered definite because each recited limitation was definite. See In re
Wakefield, 422 F.2d 897, 899 (CCPA 1970). Here, the negative limitation in
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claims 33 and 35 sets forth the metes and bounds of the claim with a
reasonable degree of precision and particularity by excluding from the claim
scope those connectors that are made solely of one of three materials. See
In re Venezia, 530 F.2d 956, 958 (CCPA 1976) (Claims are considered to be
definite, as required by the second paragraph of 35 U.S.C. § 112, when they
define the metes and bounds of the claimed invention with a reasonable
degree of precision and particularity). In addition, the negative limitation is
not contrary and conflicting to any of the limitations in claims 29, 34, and 36
as suggested by the Examiner. Each of claims 29, 34, and 36 recites a list of
alternative materials of which the connector may be comprised. The
Examiner failed to cogently explain how the connector being comprised of
one of the materials listed in any of claims 29, 34, and 36 is contrary or
conflicting to the connector not being made solely of resilient plastic,
inflexible hard sugar candy, and semi-flexible, gelatin-containing sugared
candy.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 27-29 and 31-44 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Anticipation based on Coster
Claims 27, 32-34, and 43
The Examiner interprets Coster to anticipate claims 27, 32-34, and 43
by disclosing a kit comprising a plurality of adaptive interlocking connectors
(i.e., confection bars 10) which change size and/or shape upon exposure to a
predetermined condition such as heat due to its contents such as resilient
plastic material or wood. Ans. 4.
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Appellant argues claims 27, 32-34, and 43 as a group and we select
independent claim 33 as representative. See App. Br. 12-13 and Reply Br.
5-6; see also 37 C.F.R. § 41.37(c)(1)(vii). Appellant contends that Coster
discloses connectors made of resilient plastic, wood, spring steel, or the like
(col. 2, ll. 33-35), and that each of these materials is a non-expanding
material which is adapted to retain its size and shape during use. App. Br.
12. Appellant also contends that many plastic materials do not expand when
exposed to heat, but instead decompose or undergo no apparent physical
change. App. Br. 12. Appellant also contends that the plastic material of
Coster is not intended to and does not expand, particularly during the
ambient and freezing temperatures disclosed by Coster. Id. Appellant also
contends that the Examiner’s mere assertion that the plastic material of
Coster might expand is insufficient, especially since the other materials of
Coster, do not expand when exposed to heat. Id. Appellant also contends
that even if heat were applied to the resilient plastic of Coster, it would not
expand, but would melt so that the connector would not maintain its physical
integrity and would become inoperable. App. Br. 12-13 and 15.
We agree with the Examiner. The resilient plastic, wood, spring steel,
or like material of Coster’s connectors are all materials that expand, at least
to some degree, with exposure to temperature and/or moisture changes.
Indeed, in response to Appellant’s contentions, the Examiner found that
wood is a material that “is naturally adapted to undergo physical changes in
size and shape due to the natural thermal dynamic law of thermal expansion
and contraction.” Ans. 5. The Examiner also found that “even hard
materials such as steel, concrete, asphalt, wood, etc. used to build bridges
and/or pavement often undergo visible physical changes due to the different
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temperatures of different seasons” and “[t]hat is why most if not all bridges
and/or pavement have spacers and/or clearances between the sections to
compensate [for] the thermal expansion and contraction.” Id. The Examiner
also found that “such materials still maintain their physical integrity during
use even during the actual process of thermal expansion and contraction.”
Id. Thus, it is not apparent, and Appellant has not cogently explained, why
the Examiner’s finding, that Coster’s resilient plastic, wood, spring steel, or
like material satisfies claim 33’s limitation of being a material that expands,
yet maintains its physical integrity, when exposed to a predetermined
condition during use, is in error.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 33 under 35 U.S.C. § 102(b) as anticipated by Coster.
We also sustain the Examiner’s 35 U.S.C. § 102(b) rejection of dependent
claims 27, 32, 34, and 43 as anticipated by Coster as falling with
independent claim 33.
Claim 31
Claim 31 is directly dependent upon independent claim 33 and calls
for the first adaptive connector being adapted to interlock and/or
interconnect with a second adaptive connector after exposure to the
predetermined condition. App. Br., Clms. Appd’x. 3. The Examiner finds
that the recitation of claim 31 is a recitation of intended use and that the
materials of Coster “are clearly capable of being interlocked and/or
interconnected (Fig. 3 of Coster) . . . after exposure to a predetermined
condition.” Ans. 5-6. Appellant contends that the connector of Coster is
adapted to interlock with another connector before, not after, exposure to a
predetermined condition. App. Br. 13.
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We agree with the Examiner. Appellant has not provided any
explanation as to why Coster’s connectors are not capable of being
interlocked and/or interconnected after exposure to a predetermined
condition. Accordingly, we sustain the Examiner’s rejection of claim 31
under 35 U.S.C. § 102(b) as anticipated by Coster.
Claims 28 and 29
Claim 28 is directly dependent upon independent claim 33 and calls
for the connector to be edible. App. Br., Clms. Appd’x. 3. Claim 29 is
directly dependent upon claim 28 and calls for the connector to comprise a
material from a list of alternative materials. App. Br., Clms. Appd’x. 3.
With respect to claims 28 and 29, the Examiner finds that the materials of
Coster meet at least one of the recited materials. Ans. 6. Appellant contends
that claims 28 and 29 are not anticipated by Coster because none of the
resilient plastic, wood, spring steel, or like materials of Coster are edible as
required by claim 28. App. Br. 14. We agree with Appellant as none of
Coster’s plastic, wood, spring steel, or like materials are edible.
Accordingly, we do not sustain the Examiner’s rejection of claims 28 and 29
under 35 U.S.C. § 102(b) as anticipated by Coster.
Claim 44
Claim 44 is dependent on claim 43 which in turn is dependent upon
independent claim 33. App. Br., Clms. Appd’x. 6. Claim 43 calls for the
connector to be inedible. Id. Claim 44 recites that the connector comprises
a material selected from the group consisting of dehydrated sponge,
compressed sponge, hydrogel, and gel. Id.
The Examiner states that the materials of Coster meet at least one of
the recited materials of claim 44. Ans. 6. Appellant contends that claim 44
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specifies expandable materials totally unrelated to any materials suggested
or taught by Coster. Reply Br. 6.
We agree with Appellant as the Examiner’s finding that Coster’s
resilient plastic, wood, spring steel, or the like meets at least one of the
recited materials of dehydrated sponge, compressed sponge, hydrogel, and
gel is in error. Accordingly, we do not sustain the Examiner’s rejection of
claim 44 under 35 U.S.C. § 102(b) as anticipated by Coster.
Claims 35-37, 40, and 41
The Examiner interprets Coster to anticipate claims 35-37, 40, and 41
based on the same finding as set forth supra with respect to claims 27, 32-
34, and 43. Ans. 4.
Appellant argues claims 35-37, 40, and 41 as a group and we select
independent claim 35 as representative. See App. Br. 14-15 and Reply Br.
5-6; see also 37 C.F.R. § 41.37(c)(1)(vii). Appellant makes similar
contentions to those discussed supra with respect to claims 27, 32-34, and
43, except that Appellant alleges each of Coster’s materials is a non-
shrinking material which is adapted to retain its size and shape during use.
App. Br. 14-15.
We agree with the Examiner for reasons that are similar to those as
discussed supra with respect to claims 27, 32-34, and 43. More particularly,
the resilient plastic, wood, spring steel, or like material of Coster’s
connectors are all materials that shrink or contract, at least to some degree,
with exposure to temperature and/or moisture changes. Indeed, the
Examiner found that “even hard materials such as steel, concrete, asphalt,
wood, etc. used to build bridges and/or pavement often undergo visible
physical changes due to the different temperatures of different seasons,”
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“[t]hat is why most if not all bridges and/or pavement have spacers and/or
clearances between the sections to compensate [for] the thermal expansion
and contraction,” and “such materials still maintain their physical integrity
during use even during the actual process of thermal expansion and
contraction.” Ans. 5. Thus, it is not apparent, and Appellant has not
cogently explained, why the Examiner’s finding, that Coster’s resilient
plastic, wood, spring steel, or like material satisfies claim 35’s limitation of
being a material that shrinks, yet maintains its physical integrity, when
exposed to a predetermined condition during use, is in error.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 35 under 35 U.S.C. § 102(b) as anticipated by Coster.
We also sustain the Examiner’s 35 U.S.C. § 102(b) rejection of dependent
claims 36, 37, 40, and 41 as anticipated by Coster as falling with
independent claim 35.
Claim 39
Claim 39 is directly dependent upon independent claim 35 and calls
for the first adaptive connector to be adapted to interlock and/or interconnect
with a second adaptive connector after exposure to the predetermined
condition. App. Br., Clms. Appd’x. 5. The Examiner makes the same
findings (Ans. 5-6) and Appellant makes the same contentions (App. Br. 16)
as discussed supra with respect to claim 31. We agree with the Examiner
for the same reasons as discussed supra with respect to claim 31.
Accordingly, we sustain the Examiner’s rejection of claim 39 under 35
U.S.C. § 102(b) as anticipated by Coster.

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Claim 38
Claim 38 is directly dependent upon independent claim 35 and calls
for the connector to be edible. App. Br., Clms. Appd’x. 5. The Examiner
makes the same finding (Ans. 6) and Appellant make the same contention
(App. Br. 16) as discussed supra with respect to claim 28. We agree with
Appellant for the same reason as discussed supra with respect to claim 28.
Accordingly, we do not sustain the Examiner’s rejection of claim 38 under
35 U.S.C. § 102(b) as anticipated by Coster.
Claim 42
Claim 42 is dependent on claim 41 which is in turn dependent upon
independent claim 35. App. Br., Clms. Appd’x. 6. Claim 41 calls for the
connector to be inedible. Id. Claim 42 calls for the connector to comprise a
material selected from the group consisting of hydrogel or gel. Id.
The Examiner makes the same finding (Ans. 6) as discussed supra
with respect to claim 44. Appellant contends that claim 42 specifies
shrinkable materials which are totally unrelated to any materials suggested
or taught by Coster. Reply Br. 6.
We agree with Appellant for the same reason as discussed supra with
respect to claim 44. Accordingly, we do not sustain the Examiner’s
rejection of claim 42 under 35 U.S.C. § 102(b) as anticipated by Coster.
Anticipation based on Griffin
The Examiner interprets Griffin to anticipate claims 27-29 and 31-44
by disclosing a kit comprising a plurality of adaptive, press-fit connectors
101, 102, 104, wherein an adaptive connector 104 changes size and/or shape
upon exposure to a predetermined condition such as heat due to its contents
such as sugar. Ans. 4.
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Appellant contends that the Examiner is overlooking the limitation of
claims 33 and 35 that “the connector does not consist solely of resilient
plastic, inflexible hard sugar candy, or semi-flexible, gelatin-containing
sugared candy” (App. Br., Clms. Appd’x. 5 and 5). App. Br. 18 and 21.
We agree with Appellant that Griffin fails to anticipate claims 33 and
35 because Griffin’s connector consists solely of either inflexible hard sugar
candy or semi-flexible, gelatin-containing sugared candy. More particularly,
Griffin discloses puzzle candy 100, comprised of a first annular piece 101, a
cylindrically-shaped plug piece 102 sized to fit within the aperture 103 of
first annular piece 101, and a second annular piece 104 which has an
aperture 105 sized to receive the first annular piece 101. P. 2, para. [0025].
Griffin also discloses that generally inflexible hard sugar candy or semi-
flexible, gelatin-containing sugared candy is used for the individual pieces of
the various embodiments of the puzzle candy. P. 2, para. [0024]. Thus,
since Griffin discloses the connectors 101, 102, 104 are made solely of
either generally inflexible hard sugar candy or semi-flexible, gelatin-
containing sugared candy, Griffin fails to anticipate claims 33 and 35.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 33 and 35, nor dependent claims 27-29, 31, 32, 34,
and 36-44 which stand with independent claims 33 and 35, under 35 U.S.C.
§ 102(e) as anticipated by Griffin.

DECISION
We affirm the Examiner’s rejection of claims 27, 31-37, 39-41, and
43.
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We reverse the Examiner’s decision to reject claims 28, 29, 38, 42,
and 44.
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) (2007).

AFFIRMED-IN-PART

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