Ex Parte O et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612979247 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/979,247 12/27/2010 66078 7590 06/01/2016 KOLISCH HARTWELL, P,C Mattel Customer Number 200 PACIFIC BUILDING 520 SW YAMHILL STREET PORTLAND, OR 97204 FIRST NAMED INVENTOR Stacy Lynn O'Connor 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 16137P/16259P 2686 EXAMINER CEGIELNIK, URSZULA M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): docketing@khpatent.com chuck@khpatent.com veronica@khpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STACY LYNN O'CONNOR and MICHAEL W. NUTTALL Appeal2014-003853 Application 12/979,247 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MARK A. GEIER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-16and18-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants, Appellants' legal representatives, and assignee are not aware of any related appeals or interferences other than a Pre-Appeal Brief Request submitted for serial No. 12/766,808 (App. Br. 2; Reply Br. 2), which application issued as United States Patent No. 8,690,632 on April 8, 2014. Appeal2014-003853 Application 12/979,247 THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to a "toy track set with interchangeable elements to provide numerous configurations." Spec. ,-r 5. Claims 1 and 16 are independent. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A relay segment for a toy track set, the relay segment compnsmg: an incoming track segment configured to receive a first toy vehicle thereon, the incoming track segment having an end portion pivotally mounted to the relay segment for adjustable movement with respect to the relay segment in a first plane; a trigger movably mounted to the relay segment for movement between a first position and a second position, the trigger being located proximate to the end portion of the incoming track segment such that a portion of the trigger is positioned above the incoming track segment, wherein the portion moves away from the incoming track segment as the trigger is moved from the first position to the second position by the toy vehicle, wherein the second position is vertically above the first position; and a launching element for launching another toy vehicle away from the relay segment when the trigger is moved from the first position to the second position. REFERENCE RELIED ON BY THE EXAMINER Mucaro US 4,513,966 Apr. 30, 1985 THE REJECTIONS ON APPEAL Claims 1-3, 5-11, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mucaro. Claims 16 and 18-20 are rejected under 35 U.S.C. § 102(b) as anticipated by Mucaro. 2 Appeal2014-003853 Application 12/979,247 Claims 4 and 12-14 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Mucaro. ANALYSIS The rejection of claims 1-3, 5-11, and 15 as unpatentable over Mucaro Independent claim 1 (and hence dependent claims 2, 3, 5-11, and 15) includes a limitation directed to a "trigger" and an "incoming track segment," and that the trigger has a portion "positioned above the incoming track segment." Additionally, claim 1 states that this trigger moves "vertically." The Examiner finds that Mucaro teaches these limitations. Final Act. 2-3. The Examiner further annotates Mucaro' s Figures 1--4 and identifies elements therein that correspond to these limitations. Final Act. 10-12. For example, in these annotated figures, the Examiner correlates both Mucaro' s handle 68 and projection 57 to the claimed "trigger," and the Examiner also correlates Mucaro' s first jumping ramp 20 to the claimed "incoming track segment." Final Act. 10, 12; see also Ans. 7. The Examiner explains that both items 68 and 57 are considered the "trigger" because parts 68 and 57 "are operably coupled to each other." Ans. 7. The Examiner clarifies, "[p ]rojection 57 can be broadly interpreted as a trigger as it interacts with the ratchets mechanism and is operably connected with the handle 68 in order to move track segment 28A or 30A in a vertical manner." Ans. 7. Hence, as understood, the Examiner deems a "trigger" to encompass distinct components so long as such components are "operably coupled to each other" or interact together. 3 Appeal2014-003853 Application 12/979,247 Appellants disagree and contend that projection 57 of Mucaro is not a trigger. App. Br. 11. "Appellants respectfully submit that parts 68 and 57 do not constitute a trigger as item 57 is a projection on the underside of the landing ramp." Reply Br. 5. Appellants contend, "projection 57 rests upon an inclined edge of a cam 56 that is rotated through actuation of a pawl 64" and that "in operation, movement of handle 68 sequentially raises the landing ramp via rotational engagement of cam 56 upon projection 57." Reply Br. 5. In short, projection 57 is not a "trigger" but instead more of a cam follower since "projection 57 is simply a surface the cam 56 acts upon." Reply Br. 5. Appellants' Specification does not expressly define the claim term "trigger," but this term is used in Appellants' Specification consistent with its dictionary definition of "a device, as a lever, the pulling or pressing of which releases a detent or spring"2 and as "a piece (as a lever) connected with a catch or detent as a means of releasing it."3 See e.g., Spec. i-fi-125, 26, 37, 39, 54, 55, 85, 93, 117, 124; see also Comaper Corp. v Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). Accordingly, we construe the term "trigger" to mean a lever that functions to release a catch, detent, or spring. As stated supra, this definition is consistent with the meaning of "trigger" as used in Appellants' Specification wherein a trigger is actuated by a toy vehicle, or manually, to effect release or launch of a second toy vehicle whereby the second toy vehicle may perform a stunt. 2 The Random House College Dictionary, Revised Ed. (1980). 3 http://www.merriam-webster.com/dictionary/trigger (last visited May 12, 2016). 4 Appeal2014-003853 Application 12/979,247 In view the above, the Examiner's finding that a "trigger" includes components whose only relationship is that they are "operably coupled" to each other (Ans. 7) is unreasonably broad. In short, the Examiner does not explain how projection 57, that follows cam 56, can reasonably be deemed by one skilled in the art to be a lever that functions to release a catch, detent, or spring. See Mucaro 3:43--45 and Fig. 3. Projection 57 is a passive element that is raised or lowered via rotation of cam 56 acting thereon. On the other hand, however, we do not find it unreasonable to correlate the claimed "trigger" to Mucaro' s handle 68 since handle 68 is pivoted to engage and/or release a spring-biased ratchet. See, e.g., Mucaro 3: 47-52; 4:13-18, 4:50-57 and Fig. 2. As noted supra, each independent claim requires the "trigger" be "positioned above the incoming track segment." Focusing on Mucaro's handle 68 as the claimed "trigger," the Examiner finds that handle 68 "is located above the incoming track segment." Ans. 7. Appellants disagree providing an annotation of the Examiner's annotation of Figure 1 of Mucaro. App. Br. 12. Appellants point out that handle 68 is "simply not above the alleged incoming track segment 20 and cannot be contacted by a toy vehicle on [the] alleged[] incoming track section." App. Br. 12. The teachings of Mucaro are consistent with Appellants' arguments. See Mucaro Figs. 1-2. The Examiner has correlated Mucaro' s jumping ramp 20 as the claimed "incoming track segment" (Final Act. 10) however, handle 68 is not associated with or coupled to any jumping ramp, but instead is associated with and coupled to Mucaro's landing ramps 28 and 30. See Mucaro Fig. 1. The Examiner does not demonstrate or explain, whether in the annotated figures of Mucaro or anywhere else in the record, how Mucaro' s handle 68 5 Appeal2014-003853 Application 12/979,247 is associated with, coupled to, and/or actually positioned above Mucaro's incoming track segment 20 as claimed. Nor does the Examiner indicate where Mucaro might reasonably teach or suggest the same. Appellants further address the limitation where the trigger moves "vertically." App. Br. 12, 13; Reply Br. 6-8. Appellants do not dispute that Mucaro's handle rotates (App. Br. 13; Mucaro 3:45-50, 4:13-18) but Appellants contend that this movement is not "vertical with respect to the alleged incoming track segment 20 or any portion of jump 10 ofMucaro." App. Br. 12; see also Reply Br. 7. Indeed, Mucaro's handle 68 rotates about a vertical axis (see Mucaro Figs. 2, 3), but there is no indication that Mucaro's handle 68 moves vertically as claimed. The Examiner does not explain how Mucaro' s movement in a horizontal plane teaches or suggests the claimed "vertical" movement as recited. Accordingly, and based on the record presented, we agree with Appellants that Mucaro fails to disclose or suggest that handle 68 is positioned above the incoming track segment and also that handle 68 moves as claimed. We do not sustain the Examiner's rejection of claims 1-3, 5-11 and 15 as unpatentable over Mucaro. The rejection of claims 16 and 18-20 as anticipated by Mucaro Independent claim 16, and hence dependent claims 18-20, also includes limitations directed to a portion of the trigger being "positioned above the incoming track segment" and that this trigger portion "moves upwardly." For the same reasons previously expressed regarding claim 1, we do not sustain the Examiner's rejection of claims 16 and 18-20 as anticipated by Mucaro. 6 Appeal2014-003853 Application 12/979,247 The rejection of claims 4 and 12-14 as anticipated by or, in the alternative, as unpatentable over Mucaro Claims 4 and 12-14 depend indirectly from claim 1. We do not sustain their rejection for the reasons expressed above regarding parent claim 1. DECISION The Examiner's rejections of claims 1-16 and 18-20 are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation