Ex parte Perthou

Board of Patent Appeals and Interferences

Apr 28, 2000

08629991 (B.P.A.I. Apr. 28, 2000)

In the division-continuation application transmittal1
form filed April 8, 1996, appellant requested an amendment
to the specification to identify appellant’s parent
application. It does not appear that this amendment was
entered.
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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER M. PERTHOU
__________
Appeal No. 1998-1946
Application No. 08/629,9911
__________
HEARD: April 5, 2000
__________
Before MCCANDLISH, Senior Administrative Patent Judge, NASE
and GONZALES, Administrative Patent Judges.
MCCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-1946
Application No. 08/629,991
Claim 14 was amended after the final rejection. See2
the amendatory paper filed May 9, 1997.
Appellant’s specification contains guidelines or3
standards for determining the scope of the various terms
of degree recited in claim 13, namely the words “thin,”
“relatively” and “substantially.” For instance,
numerical examples are disclosed for measuring the scope
of the term “thin,” and an example of a plastic material
is disclosed for ascertaining the scope of the term
“relatively” in the phrase “relatively rigid.” Thus,
appellant’s specification appears to provide the
standards required in Seattle Box Co. v. Industrial
Crating & Packing Inc., 731 F.2d 818, 826, 221 USPQ 568,
574 (Fed. Cir. 1984).
2
This is a decision on an appeal from the examiner’s final
rejection of claims 13 and 15 through 18. No other claims2
are pending in the application.
Appellant’s invention relates to a method for producing a
flying toy. According to claim 13, the only independent claim
on appeal, the toy is cut from “a thin planar sheet of
relatively rigid plastic . . . along planes substantially
perpendicular to the plane of the sheet” to provide the toy3
with “a plurality of equiangularly spaced arms extending from
a central hub.” Claim 13 additionally recites that the toy is
“devoid of any airfoil shaped surface.”
Appeal No. 1998-1946
Application No. 08/629,991
3
A copy of the appealed claims is appended to
appellant’s brief.
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejections under 35 U.S.C. § 103:
Gleason 2,816,764 Dec. 17, 1957
Block et al. (Block) 3,881,729 May 6, 1975
Walker 4,335,537 Jun. 22, 1982

Claims 13, 16 and 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over Block in view of Gleason, and
claims 15 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Block in view of Gleason and Walker.
Reference is made to the examiner’s answer for details of
these rejections.
With regard to the rejection of claim 13, appellant does
not appear to take issue with the examiner’s analysis of the
Block and Gleason references as set forth on pages 3 and 4 of
the answer. Instead, appellant’s main argument supporting
patentability of claim 13 is that the prior art lacks a
suggestion for combining the applied references in the manner
proposed by the examiner.
Appeal No. 1998-1946
Application No. 08/629,991
4
We have carefully considered appellant’s arguments
supporting patentability of claim 13 over the combined
teachings of Block and Gleason. However, we are not persuaded
that this rejection is improper.
The Block patent discloses a unitary flying toy (see
Figures 1-3 of Block’s drawings) which, like appellant’s
claimed toy, comprises a plurality of equiangularly spaced
arms 21-24 extending radially from a central hub 32. Block’s
specification states that the flying toy is “suitably cut and
formed from 80 mil polyethylene sheet material” (column 4,
lines 22-23). According to the examiner’s findings (see pages
3 and 4 of the answer), Block’s plastic sheet material is thin
and is also relatively rigid in the sense that the material
must be sufficiently rigid to make the toy work. Thus, the
step of providing a thin planar sheet of relatively rigid
plastic as defined in clause A of claim 13 is met by Block.
Appellant does not argue otherwise.
With regard to clause B of claim 13, the length of each
of Block’s arms 21-24 is roughly three times greater than the
width thereof (see column 4, lines 4-5 of the Block
specification), thus making the length of each arm
Appeal No. 1998-1946
Application No. 08/629,991
5
substantially greater than the width thereof. Appellant does
not argue otherwise.
With further regard to clause B of claim 13, appellant
seems to concede that Block discloses the concept of cutting
the flying toy from a sheet of plastic. He is understood to
argue, however, that Block does not teach that the cutting
step takes place along planes substantially perpendicular to
the plane of the sheet as recited in clause B of claim 13.
Appellant is also understood to argue that one of the side
edges of each arm in Block’s toy is beveled and therefore does
not extend perpendicular to the plane of the sheet.
Admittedly, Block does not explicitly describe the
specific orientation of cuts made by the cutting step
disclosed in column 4, lines 22-23 of the patentee’s
specification. However, as generally noted by the examiner on
page 5 of the answer, it is well known in the art to cut a
plastic sheet in order to produce a plastic article and it
also is well known in the art to make the cuts along planes
perpendicular to the plane of the sheet to simplify the
cutting operation. Appellant does not challenge these
determinations.
Appeal No. 1998-1946
Application No. 08/629,991
6
In evaluating an applied reference, such as the Block
patent, it is proper to take into account not only the
specific teachings of the reference, but also the reasonable
inferences that one of ordinary skill in the art would
reasonably have been expected to draw from the teachings of
that reference. In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968).
Given the configuration of Block’s toy and Block’s
express teaching of cutting the flying toy from a plastic
sheet, the reasonable inference that one of ordinary skill in
the art would reasonably have been expected to draw from
patentee’s teachings is that the sheet is initially cut along
planes perpendicular to the plane of the plastic sheet to form
the arms and hub of the toy. Id. In any case, it would have
been obvious to cut Block’s toy from the plastic sheet along
planes perpendicular to the plane of the sheet to simplify the
cutting operation according to the examiner’s unchallenged
finding on page 5 of the answer.
Furthermore, Block implicitly recognizes that it was
known in the prior art (as in Gleason) to form the arms of the
toy without the illustrated bevels 25 and hence with both side
Appeal No. 1998-1946
Application No. 08/629,991
7
edges of each arm extending perpendicular to the plane of the
toy or sheet from which the toy is cut. This implicit
recognition arises from Block’s teaching in column 3, lines
53-55 that the patentee’s beveled side edges 25 “provide a
smoother non-fluttering flight” ostensibly in comparison to a
corresponding toy without the beveled side edges.
Moreover, the inclusion of the bevels 25 in Block’s
flying toy does not constitute a distinction over the method
defined in appealed claim 13. This claim is open-ended in
that it is recited to comprise the steps of clauses A and B,
leaving the claim open to additional steps such as beveling.
Furthermore, the cutting step of clause B is not drafted in
such a way to exclude a further step of beveling one of the
side edges of each arm. In any event, it is well-established
patent law that the elimination of an element such as Block’s
bevels 25 together with their associated function (smoother
flight) would have been an obvious expedient. See In re
Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975).
In addition, the obviousness of eliminating the bevels 25
in Block’s flying toy is recognized in Gleason. Similar to
Block’s flying toy, Gleason’s flying toy comprises a plurality
Appeal No. 1998-1946
Application No. 08/629,991
8
of equiangularly spaced arms 2 radially extending from a
central hub. In Gleason’s flying toy, however, both side
edges of each of the arms are perpendicular to the plane
containing the entire body of the toy except for the bent tips
5. This teaching would have implicitly suggested to one of
ordinary skill in the art the concept of providing Block’s
arms 21-24 with side edges extending perpendicularly to the
plane of the toy for the self-evident purpose of eliminating
the manufacturing cost of forming the bevels on Block’s arms.
Admittedly, this suggestion to modify Block is not expressly
stated in Gleason. However, the suggestion to modify the
prior art need not be expressly articulated in one or all of
the references. See In re Sernaker, 702 F.2d 989, 995, 217
USPQ 1, 6 (Fed. Cir. 1983).
Appellant’s argument in the second full paragraph on page
6 of the brief seems to suggest that the claimed cutting step
somehow is not met by Block because Block states in column 4,
lines 22-23, that the toy is “cut and formed” from the plastic
sheet. We disagree. With respect to the embodiment shown in
Figures 1-3 of Block’s drawings, the mention of “forming”
Appeal No. 1998-1946
Application No. 08/629,991
9
obviously refers to the formation of the bent tips 26-29 after
the toy is cut from the plastic sheet.
Furthermore, claim 13 does not distinguish from Block by
reciting that the cutting step maintains the flying toy “in a
single plane.” In the first place, this limitation does not
require the toy to lie in a single plane after manufacture of
the toy is completed. As noted supra, claim 13 does not
exclude additional manufacturing steps that may place
portions, such as tips 26-29 or center post 30 in Block’s
illustrated embodiment, out of the plane of the body of the
toy.
In any case, as noted on page 3 of the answer, the
examiner does not rely on Block’s illustrated embodiment in
which the tips of the arms are bent out of the plane of the
toy’s body. Instead, the examiner expressly relies on the
embodiment in which the tips 26-29 of the arms 21-24 are not
turned and thus extend as “straight continuations of the arms”
as described in column 3, lines 16-21, of Block’s
specification. As a result, the toy resulting from the
cutting step will be maintained in a single plane as recited
in claim 13.
Appeal No. 1998-1946
Application No. 08/629,991
10
Block’s teaching of not bending the tips of the arms as
discussed supra cannot be ignored. Instead, a determination
under 35 U.S.C. § 103 requires consideration of the entirety
of the disclosure made by the reference. See In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 146 (CCPA 1976). As noted
in column 3, lines 16-21, of Block’s specification, the toy
will still fly even though the tips of the arms are not bent
and thus remain in the plane of the remainder of the arms.
In Block’s flying toy as shown in Figures 1-3, the center
post 30 admittedly extends out of the plane containing the hub
and arms of the toy. However, as noted supra, claim 13 does
not exclude the step of adding the post to the planar body
that is cut from the plastic sheet. In any event, the
elimination of the post and its associated function set forth
in column 4, lines 25-26, would have been an obvious
expedient. See In re Kuhle, 526
F.2d at 555, 188 USPQ at 9. Like the elimination of the
bevels 25, the elimination of Block’s post 30 would not render
the toy inoperative.
Finally, the arms and hub of Block’s flying toy are flat
sided and thus lack an airfoil shaped surface in the sense
Appeal No. 1998-1946
Application No. 08/629,991
11
that the term “airfoil” is used in appellant’s specification.
Consistent with appellant’s specification (see page 9, lines
23-24, page 14, line 17 and page 15, lines 22-23) an airfoil
surface is interpreted to be one that provides lift.
In view of the foregoing, we are satisfied that the
subject matter of claim 13 would have been obvious to one of
ordinary skill in the art from the collective teachings of the
applied references under the test set forth in In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Accordingly, we will sustain the rejection of claim 13 and
also the rejection of dependent claims 16 and 17 which stand
or fall with claim 13 (see page 3 of the main brief and page 1
of the reply brief).
However, we will not sustain the rejection of claims 15
and 18. Both of these claims recite the step of forming
visible indicia on a translucent plastic (namely polyvinyl
chloride) to produce an optically perceived pattern. The
Walker patent is silent as to the nature of the features on
the wings 28. However, even if it is assumed for the sake of
argument that these features constitute indicia, there is no
suggestion in Walker or any of the other applied references of
Appeal No. 1998-1946
Application No. 08/629,991
12
applying such indicia to arms made of translucent plastic so
as to produce an optically perceived pattern upon spinning the
arms during flight of the toy.
The examiner’s decision rejecting the appealed claims is
affirmed with respect to claims 13, 16 and 17, but is reversed
with respect to claims 15 and 18.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Harrison E. McCandlish, Senior )
Administrative Patent Judge )
)
)
)
Jeffrey V. Nase ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John F. Gonzales )
Administrative Patent Judge )
tdl
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