Ex Parte Paculdo

Patent Trial and Appeal Board

Aug 24, 2016

13689662 (P.T.A.B. Aug. 24, 2016)

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.
13/689,662 11/29/2012 Sara Paculdo 545.301 3399
85444 7590 08/24/2016
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
WONG, JESSICA BOWEN
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
08/24/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SARA PACULDO
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Appeal 2014-0089091,2
Application 13/689,662
Technology Center 3600
____________

Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the “invention involves a cat grooming
device for enabling a cat to self[-]groom.” Spec. 1, ll. 4–5. Independent

1 Our decision references Appellant’s Specification (“Spec.,” filed Nov. 29,
2012) and Appeal Brief (“Br.,” filed Mar. 31, 2014), as well as the Final
Office Action (“Final Action,” mailed Jan. 8, 2014) and the Examiner’s
Answer (“Answer,” mailed June 10, 2014).
2 According to Appellant, Worldwise, Inc. in the real party in interest.
Br. 1.
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claim 1 is the only independent claim under appeal. See Br., Claims App.
We reproduce independent claim 1, below, with additional formatting added,
as representative of the appealed claims.
1. A device for facilitating a cat’s self grooming, said
device comprising
a pad for residing upon a planar surface and
first and second grooming elements,
said first and second grooming elements having
nodules extending therefrom and each releasably
appended to said pad and to one another such that said
grooming elements are selectively detachable from said
pad and from one another.
Id.

REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 1, 2, and 5 under 35 U.S.C. § 102(b) as anticipated by Udelle
(US 5,517,946, iss. May 21, 1996); and
claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Udelle.
See Answer 2–4.

ANALYSIS
Anticipation rejection of claims 1, 2, and 5
Independent claim 1, from which claims 2 and 5 depend, recites “first
and second grooming elements having nodules extending therefrom and
each releasably appended to said pad and to one another such that said
grooming elements are selectively detachable from said pad and from one
another.” Br., Claims App. The Examiner and Appellant disagree as to
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whether Udelle discloses first and second grooming elements releasably
appended to one another and to a pad as claimed. See, e.g., Answer 2–3;
see, e.g., Br. 3–4. To summarize, Appellant argues that the claim limitation
“releasably appended to one another” requires that no intermediate grooming
element is connected between the claimed first and second grooming
elements, while the Examiner determines that the broadest reasonable
interpretation of the claim does not exclude Udelle’s arrangement showing
an intermediate grooming element connected between first and second
grooming elements.
Based on our review of the record, we agree with the Examiner.
Appellant does not provide a line of reasoning or point to evidence, such as a
statement in the Specification or an express limitation in the claim, for
example, sufficient to persuade us that claim 1 requires that the first and
second elements must be directly connected to one another, so that no
intermediate grooming element is connected between the first and second
elements. See Br. 3–4. Thus, based on the foregoing, we determine that the
broadest, reasonable interpretation of the claim phrase “first and second
grooming elements . . . each releasably appended . . . to one another,” which
is consistent with Appellant’s Specification, includes an arrangement in
which first and second grooming elements are connected to one another
through an intermediate grooming element. Inasmuch as the Examiner finds
that Udelle discloses such an arrangement, and we conclude that the
Examiner’s finding is reasonable, we sustain the rejection of claim 1. See
Final Action 2; see also Answer 2–3. Further, because Appellant argues
claims 1, 2, and 5 together under the same heading, claims 2 and 5 fall with
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claim 1. See Br. 3–4; see 37 CFR § 41.37(c)(iv). Thus, we sustain the
rejection of claims 2 and 5.
Obviousness rejection of claims 3 and 4
With respect to claims 3 and 4, Appellant argues the obviousness
rejection is erroneous because Udelle does not disclose all of the limitations
of claim 1, from which claims 3 and 4 depend. See Br. 4–5. Inasmuch as
we sustain the anticipation rejection of claim 1, however, this argument is
not persuasive. With respect to Appellant’s other argument that it would not
have been obvious to modify one of Udelle’s straight portions 45 to be
curved, we agree with the Examiner that the proposed modification would
have been obvious. See Answer 4. Specifically, we agree with the
Examiner that it would have been obvious to modify one of Udelle’s straight
portions 45 to be curved based on the teaching of curved portions in another
one of Udelle’s embodiments. See id., referencing Udelle’s Figs. 5, 6, 12.
Further, we note that Appellant does not establish persuasively that the use
of a curved grooming element provides any unexpected result, but instead
argues that the proposed modification would change the geometry of
Udelle’s arrangement, which is not persuasive of error. See Br. 5. Thus, we
sustain the rejection of claims 3 and 4.

DECISION
We AFFIRM the Examiner’s anticipation and obviousness rejections
of claims 1–5.

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Application 13/689,662

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED