Ex Parte Moreau

Board of Patent Appeals and Interferences

Mar 11, 2005

10264717 (B.P.A.I. Mar. 11, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARYELLEN ROONEY MOREAU
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Appeal No. 2005-0211
Application No. 10/264,717
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ON BRIEF
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Before CAROFF, KIMLIN, and GARRIS, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final rejection of claims 1-6 and
8-28, all the claims now pending in appellant’s application.
The appealed claims are directed to a teaching aid in the form of a doll or puppet.
Claim 1, which is one of three independent claims, is illustrative of the subject
matter embodied in appellant’s claims:
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1. A teaching aid comprised of:
a body member having a proximal lateral side, a distal lateral side, a top side, a
bottom side, a back side, and a front side, wherein the front side comprises a pair of eyes;
an arm member disposed on the proximal lateral side or the distal lateral side of the
body member;
a leg member disposed on the bottom side of the body member; and
a plurality of indicia removably attachable to the body, arm, and leg members by
means of indicia fastening means.
The prior art references relied upon by the examiner are:
Oswald 175,475 Aug. 30, 1955
Maiden-Nesset 4,637,798 Jan. 20, 1987
Natiw 4,681,555 July. 21, 1987
Price 4,808,139 Feb. 28, 1989
Van Meter 5,096,453 Mar. 17, 1992
Sisler 6,280,283 Aug. 28, 2001
Holt 6,350,169 Feb. 26, 2002
The following eleven rejections are before us for review:
1. Claims 5-6, 11-12, 19-22 and -26-27 stand rejected under 35 U.S.C. § 112,
second paragraph, for alleged indefiniteness.
2. Claims 1-3, 8-12 and 15-16 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Sisler.
3. Claims 1-4, 18, 24 and 26 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Natiw.
4. Claims 5-6 stand rejected under 35 U.S.C. § 103 as obvious from Sisler in view
of Holt.
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1 We note that this rejection is not listed in the “Grounds of Rejection” section of the examiner’s
answer, but is discussed on pages 10 and 11 of the answer.
5. Claims 5-6 and 19-20 stand rejected under 35 U.S.C. § 103 as obvious from
Natiw in view of Holt.
6. Claims 13 and 28 stand rejected under 35 U.S.C. § 103 as obvious from Natiw in
view of Oswald and Van Meter.1
7. Claim 14 stands rejected under 35 U.S.C. § 103 as obvious from Sisler in view of
Maiden-Nesset.
8. Claim 17 stands rejected under 35 U.S.C. § 103 as obvious from Sisler.
9. Claims 21-22 and 25-26 stand rejected under 35 U.S.C. § 103 as obvious from
Natiw in view of Price.
10. Claim 23 stands rejected under 35 U.S.C. § 103 as obvious from Natiw in view
of Maiden-Nesset.
11. Claim 27 stands rejected under 35 U.S.C. § 103 as obvious from Sisler in view
of Holt, Maiden-Nesset and Van Meter.
We have carefully considered the entire record in light of the opposing positions
taken by the appellant and by the examiner. Having done so, we shall affirm all of the
rejections at issue. The basis for our decision is as follows:
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2 Indeed, appellant makes the same stipulation with regard to each of the rejections (and
associated claims) before us under 35 U.S.C. § 102 and 35 U.S.C. § 103.
Rejection (1)
Appellant does not take issue with the propriety of the 35 U.S.C. § 112 rejection on
the merits. Rather, appellant relies upon an amendment filed with her brief to overcome
the rejection. However, the examiner’s answer indicates that the amendment has not
been entered.
Therefore, since appellant does not contest the 35 U.S.C. § 112 rejection on the
merits, and since appellant’s amendment has not been entered, the rejection is summarily
affirmed.
Rejection (2)
This rejection is affirmed.
Initially, we note that appellant stipulates in her brief that the claims subject to the
rejection at issue stand or fall together for purposes of this appeal.2 Accordingly, we shall
limit our consideration to claim 1 in reviewing this rejection.
Sisler discloses a teaching aid in the form of a doll. See Sisler: column 3, lines
43-51. The body of the doll includes a head and torso, as well as arms and legs.
Accessories, i.e. indicia, such as facial and body features, clothing and other items may be
removably attached to the body using a “Velcro” type fastening system.
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Appellant argues that her claims define a doll-like product which is distinguishable
from that of Sisler in that the claims require that arm and leg members be attached to the
head of the doll rather than to the torso. We disagree.
As noted by the examiner, Sisler defines a doll’s body as inclusive of a head and a
torso. Thus, the arms and legs of Sisler’s doll can reasonably be said to be attached to the
doll’s body. Consequently, appellant’s “body member”, as claimed, can broadly, but
reasonably, be said to embrace or read upon the combined head and torso configuration
of Sisler which includes a pair of eyes.
In no sense can claim 1 be said to exclude a doll configuration where the body
includes both a head and torso portion, with arms and legs extending from the torso, as in
Sisler. Claim 1 refers to neither a head nor a torso, and does not explicitly require that
arms and legs extend from a head.
Rejection (3)
The rejection is affirmed.
Natiw discloses a stuffed, flexible product which can be used as either a puppet or a
doll.
Appellant argues that indicia, e.g. hair, ears, are permanently fixed, i.e. sewn or
stitched, to the Natiw puppet doll, rather than being “removably attached”, as claimed.
According to appellant, the stitching of Natiw could not be undone without adversely
affecting the integrity of the doll.
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On the other hand, according to the examiner the stitching of Natiw could broadly
be viewed as a mechanism for removably attaching items to the puppet doll inasmuch as
stitches can be undone if desired.
We favor the examiner’s broad interpretation over appellant’s more narrow view
since neither appellant’s claims nor the specification specifically define the expression
“removably attachable” in terms of limitations or factors which may adversely affect the
integrity of the doll. Certainly, stitching can be undone with minimal affect on the doll
proper, if done carefully.
Furthermore, we note that items of clothing can be added to the doll of Natiw
(column 9, line 65 - column 10, line 2; column 10, lines 62-64). In such circumstances,
items of clothing could also be considered accessories, i.e. indicia, which are ordinarily
“removably attachable” to a portion of the body.
Rejection (4)
This 35 U.S.C. § 103 rejection, based upon Sisler and Holt, is affirmed. Sisler has
been discussed above. Holt shows a finger puppet having a tether or strap 42 attached to
the body of the puppet which allows a user to hang the puppet in an upright position.
Appellant argues that there would be no motivation to equip the Sisler doll with a
strap, as in Holt, since the Sisler doll apparently can sit in a self-sustaining upright position
without the need for additional support.
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The examiner’s position is that the appellant’s argument is speculative since the
Sisler doll is composed of soft stuffing and, therefore, may not necessarily be rigid enough
to be self-supporting when placed in an upright position.
Our view is that, even though the Sisler doll may be capable of being placed in a
self-sustaining upright position, it would nevertheless have been prima facie obvious,
within the context of 35 U.S.C. § 103, to equip the Sisler doll with a strap in order to
provide the capability of being able to hang the doll up for storage purposes, or as a matter
of convenience, as reasonably suggested by Holt.
Rejection (5)
This 35 U.S.C. § 103 rejection, based upon Natiw and Holt, is affirmed. Both Natiw
and Holt have been discussed above.
We agree with the examiner that the claims at issue are rendered obvious by the
combination of Natiw and Holt essentially for the same reason discussed above with
respect to rejection (4).
Rejection (6)
This rejection, based upon the combination of Natiw with Oswald and Van Meter, is
affirmed.
The claims at issue essentially require that the leg member be comprised of a
plurality of braided strands of material.
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Oswald and Van Meter show stuffed figures having elongate appendages or strands
extending from the lower portion of the body of the figure. Oswald, in particular, shows
that the appendages constitute braided strands of material. Oswald is specifically referred
to by Van Meter (column 1, lines 14-23).
Appellant points out that Natiw is directed to puppets or dolls having human-like
features whereas the figures shown in Oswald and Van Meter are more animal-like.
Accordingly, appellant urges that there would have been no motivation to combine the
references since the braided strands of the secondary references would detract from the
human-like appearance promoted by Natiw.
We find the appellant’s argument unpersuasive since a finding of obviousness does
not require that the inventions of the references be strictly physically combinable. Rather,
it is sufficient that the teachings of the references, if taken collectively as analogous art,
would suggest doing what the appellant has done. In re Billingsley, 279 F.2d 689, 691,
126 USPQ 370, 372 (CCPA 1960); In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385,
389 (Fed. Cir. 1983).
With respect to the rejection at hand, the three applied references relate to the
same art, i.e. stuffed toy figures, either dolls or puppets. To incorporate a feature, shape
or configuration from one figure into the body of another would have been prima facie
obvious as a matter of routine or design choice absent a showing of some new or
unexpected result.
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Rejection (7)
This rejection, based upon the combination of Sisler with Maiden-Nesset, is
affirmed.
The claim at issue requires that the leg member terminate in a shoe having tieable
laces.
Maiden-Nesset show this expedient used on a doll for educational purposes, i.e. to
teach a child how to manipulate such items of wearing apparel.
Appellant argues that Maiden-Nesset is not combinable with Sisler since, according
to appellant, the Sisler doll is intended exclusively for enhancing artistic expression.
Appellant’s argument is unpersuasive since, as noted by the examiner, the doll of
Sisler is not intended to be used solely to enhance artistic expression. Sisler (column 3,
lines 43-51) explicitly teaches that the doll can be used for educational purposes, and the
doll even has shoes which may be adjusted or removed (column 3, lines 4-6).
Thus, Sisler and Maiden-Nesset are quite compatible with respect to intended use.
Accordingly, it would have been obvious, within the purview of 35 U.S.C. § 103, to
equip the doll of Sisler with shoes having tieable shoelaces to enhance its educational
value, as suggested by Maiden-Nesset.
Rejection (8)
This 35 U.S.C. § 103 rejection, based upon Sisler alone, is affirmed.
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The claim at issue requires that the plurality of indicia, i.e. accessories, be made of
a washable fabric or plastic.
The examiner took Official notice in his final rejection that it is known to manufacture
doll components from washable material for easy cleaning.
This is not disputed by appellant.
Furthermore, we note that Sisler (column 2, lines 61-67) suggests that doll
accessories may be made of any material such as “flannel”, in particular.
Flannel is a well known washable fabric.
For the foregoing reasons, an artisan in this field would have been expected to
ordinarily choose a washable fabric as the material for manufacturing doll accessories.
Appellant does not argue otherwise.
Rejection (9)
This rejection, based upon Natiw and Price, is affirmed. Natiw has been discussed
above. Price shows a hand puppet made of a material to which indicia can be attached to
parts of the body using a “Velcro” type fastening system.
Appellant argues that there is a lack of motivation to combine the two references
where one (Natiw) provides for relatively permanent attachment of indicia, whereas the
other (Price) provides for more easily removable attachment.
Appellant’s argument is unpersuasive since we agree with the examiner that
motivation for the combination can be found in Price’s suggestion of using a “Velcro” type
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fastening system for easy placement and removal of indicia on the body of a puppet,
thereby providing greater versatility. See Price (column 1, lines 7-47).
Rejection (10)
This rejection, based upon Natiw and Maiden-Nesset, is affirmed.
The claim at issue requires that the leg member terminate in a shoe having tieable
laces.
Appellant’s position with regard to this rejection is much the same as her position
regarding rejection (7). To the extent that appellant relies upon any differences in intended
use between the puppet doll of Natiw and the Maiden-Nesset doll, we note that intended
use forms no part of the product claim at issue. Thus, appellant’s argument is not
germane to the subject matter of the claim.
Be that as it may, we agree with the examiner that motivation for the combination
can be found in Maiden-Nesset’s suggestion to equip a doll with shoes having tieable
laces to enhance its value as an educational vehicle. As previously noted, Natiw discloses
that her doll can be modified by adding items of clothing thereto.
Rejection 11
This rejection is also affirmed.
The claim at issue is an amalgam of elements, all of which having been discussed
above. Accordingly, the reasoning which we have applied above with respect to rejections
(2), (4), (6), (7) and (8) in particular, apply with equal force to the instant rejection.
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For all of the foregoing reasons, the decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
EDWARD C. KIMLIN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
MLC/lp
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