Ex parte MILETI

Board of Patent Appeals and Interferences

Dec 31, 1997

08255076 (B.P.A.I. Dec. 31, 1997)

Application for Patent filed June 7, 1994, which is a1
continuation-in-part of application 08/018,839, filed February
18, 1993, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT J. MILETI
_____________
Appeal No. 96-3885
Application 08/255,0761
______________
ON BRIEF
_______________
Before COHEN, STAAB, and CRAWFORD, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3, 7 through 10, 13 through 17, and 19. The examiner has
indicated that claim 18, the only other claim remaining in the
application, is objected to as being dependent upon a rejected
Appeal No. 96-3885
Application No. 08/255,076
We have relied upon the claims as they appear in the2
application file in light of errors found in the copies of the
claims appended to appellant’s brief.
2
claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any
intervening claims.
Appellant’s invention pertains to a toy for being launched
by a person in a manner similar to a sling through the air to
impart speed to the toy and create airflow past the toy, to a
process of preparing a readily packagable throwing toy, to a
throwing toy, and to a toy for being launched through the air to
impart speed to the toy and to create airflow past the toy. An
understanding of the invention can more fully be derived from a
reading of exemplary claims 1, 8, 15, and 19, as they appear in
the application file. 2
As evidence of obviousness, the examiner has applied the
patents listed below:
Klahn et al. (Klahn) 4,151,674 May 1, 1979

Stauffer 4,290,226 Sep. 22, 1981
Waters 4,624,648 Nov. 25, 1986
Hill 4,790,788 Dec. 13, 1988
Appeal No. 96-3885
Application No. 08/255,076
3
The following rejections are before us for review.
Claims 1 through 3, 6, 7, and 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hill in view of Waters,
and vice versa.
Claims 1 through 3, 6, 7, and 19 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hill in view of Waters,
and vice versa, as applied above, further in view of Stauffer.
Claims 8 through 10 and 13 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hill in view of
Waters, and vice versa, as earlier applied, further in view of
Klahn.
Claims 8 through 10 and 13 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hill in view of
Waters, and vice versa, as earlier applied, further in view of
Stauffer and Klahn .
The full text of the examiner's rejections and response to
the argument presented by appellant appears in the answer (Paper
Appeal No. 96-3885
Application No. 08/255,076
In claims 1 and 19, lines 4 and 3, respectively, change3
“A” from the upper case to the lower case --a--. Claim 1, line
8, “won” should apparently be --own--. Dependent claims 2, 3, 6,
and 7, line recite a “throwing” toy, while parent claim 1 does
not.
In our evaluation of the applied patents, we have4
considered all of the disclosure of each patent for what it would
have fairly taught one of ordinary skill in the art. See In re
Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teaching of each patent, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
No. 11), while the complete statement of appellant’s argument can
be found in the brief (Paper No. 10).
OPINION
In reaching our conclusion on the obviousness issues raised
in this appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied patents, and3 4
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
We do not affirm any of the examiner’s rejections of
Appeal No. 96-3885
Application No. 08/255,076
5
appellant’s claims under 35 U.S.C. 103.
Initially, we make note of the following claim language
interpretations. We understand the recitation of “substantially
rigid”, relative to the ring-like structure, to denote a rigid
structure that may have some flexibility (specification, page 6).
As to the “ring-like” structure, we understand this recitation to
denote a structure that is as round as possible, but not having
perfect roundness (specification, page 6). As regards to the
recitation of “sheetlike”, we understand that term to denote
something akin to a sheet (specification, page 6) that is thin in
comparison to its length and breadth.
We turn now to the examiner’s obviousness rejections.
Each of the examiner’s rejections is founded upon the basic
combination of the Hill and Waters patents.
Simply stated, we are of the view that one having ordinary
skill in the art would not have been motivated to modify the
aerial toy of Hill as proposed since the specified alteration
would destroy the patentee’s intended functioning of the toy.
Appeal No. 96-3885
Application No. 08/255,076
6
More specifically, the Hill patent points out (column 2, lines 35
through 43) that by “compressing” the toy to where the trailing
sides meet and throwing it with a rifling action, as the toy is
released the flexible cylinder rebounds to its rest or open shape
as it leaves the thrower’s fingertips. Thus, the patentee
desires a compressible and flexible cylinder (sail or airfoil)
which can automatically return to its open shape. Replacing the
compressible sail of Hill with a trailing portion not intended to
be compressed and with a rebound function (Waters), as proposed,
would clearly defeat patentee Hill’s objective for his aerial
toy.
Considering the examiner’s alternative application of the
applied art, it likewise appears to us that the collective
teachings lack any express or implicit incentive for completely
altering the disclosed use of the aerial toy of Waters based upon
the Hill teaching of a distinctly different aerial throwing toy.
We have also assessed the respective teachings of Stauffer
and Klahn but find that they do not overcome the noted
deficiencies of the Hill and Waters references.
Appeal No. 96-3885
Application No. 08/255,076
This panel of the board has considered appellant’s view of5
the Waters patent as expressed in the brief (pages 6 and 7).
7
NEW GROUNDS OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of the
board introduces the following new grounds of rejection. 5
Claims 1 and 19 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Waters.
Anticipation under 35 U.S.C. §102(b) is established
only when a single prior art reference discloses, either
expressly or under principles of inherency, each and every
element of a claimed invention. See In re Paulsen, 30 F.3d 1475,
1478-1479, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994), In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). However, the law of
anticipation does not require that the reference teach
specifically what an appellant has disclosed and is claiming but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
Appeal No. 96-3885
Application No. 08/255,076
8
the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983); cert. denied, 465 U.S.
1026 (1984).
The aerial toy of Waters (Figure 5; column 4, line 43 to
column 5, line 6) comprises, inter alia, a substantially rigid
ring structure (forward portion) and a cylindrical sleeve
(trailing portion) of cloth, cloth-like (Nylon), or plastic
(polyethylene) sheet. The aforementioned sleeve of the noted
material is understood to be in a collapsed state without
airflow. Further, the toy is perceived to be clearly capable of
being launched by a person in a manner similar to a sling through
the air to impart speed to the toy and to create airflow past the
toy (claim 1) and clearly capable of being launched through the
air to impart speed to the toy to create airflow past the toy
(claim 19). The toy of claims 1 and 19 is, accordingly,
anticipated by the aerial toy teaching of Waters.
Claims 2, 3, 6 and 7 are rejected under 35 U.S.C. § 103 as
being unpatentable over Waters.
In our opinion, the disclosure in Waters (Figures 10, 11;
Appeal No. 96-3885
Application No. 08/255,076
9
column 6, lines 64, 65) of a plastic tube 55 would have been
suggestive of the selection of an appropriate material from among
conventional plastic materials (claims 2 and 3). Similarly, the
teaching of plastic sheets (such as polyethylene) by Waters
(column 5, lines 3 through 6) would have been suggestive of the
selection of an appropriate plastic material (claim 6). In our
opinion, the recitation of “sewing or other convenient operation”
by Waters (column 3, lines 52 through 55) would have been
understood as encompassing other known forms of securement and
suggestive of, for example, adhesive (claim 7).
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
Appeal No. 96-3885
Application No. 08/255,076
10
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
In summary, this panel of the board has REVERSED each of the
examiner’s rejections under 35 U.S.C. § 103. Additionally, new
grounds of rejection have been introduced pursuant to 37 CFR § 1.
196(b).
Appeal No. 96-3885
Application No. 08/255,076
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The decision of the examiner is reversed.
REVERSED
37 CFR § 1.196(b)
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-3885
Application No. 08/255,076
12
St. Onge Steward Johnson & Reens
986 Bedford Street
Stamford, CT 06905