Ex Parte Piety et al

Patent Trial and Appeal Board

Aug 29, 2016

12459756 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/459,756 0710712009 Jennifer Piety
34018 7590 08/31/2016
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
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.
059765.015300 8731
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
j arosikg@gtlaw.com
chiipmail@gtlaw.com
escobedot@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER PIETY, ROGER MAN, JENNIFER CROTTY, and
MARIANN STRAUB
Appeal2014-004875
Application 12/459,7561
Technology Center 3600
Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3---6, 9, and 10. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An oral hearing was held on August 16,
2016.
We AFFIRM.
1 According to the Appellants, "[t]he real party in interest is Petstages, Inc."
Appeal Br. 2.
Appeal2014-004875
Application 12/459,756
Claimed Subject Matter
Claim 1 is representative of the subject matter on appeal and is
reproduced below with added notations and paragraphs.
1. A multiple sound-emitting pet toy apparatus for reducing the
likelihood of choking hazard to pets, which pet toy comprises:
[1] a dedicated pet toy body incapable of alternatively
retaining and selectively dispensing a liquid,
[2] said pet toy body including a first compressible sealed
sound-emitting chamber, having a front side and a back side
opposite said front side;
[3] said first compressible sealed sound-emitting chamber
having operably associated therewith a first squeaker, said first
squeaker comprising the only passageway through which air can
enter and exit the first compressible sealed sound-emitting
chamber,
[3a] said first squeaker in said first compressible
sealed sound-emitting chamber being incapable of being
replaced by a valve structure for alternatively retaining
and selectively dispensing a liquid;
[ 4] said dedicated pet toy body ±hrther including at least a
second compressible sealed sound-emitting chamber, having a
front side and a back side opposite said front side;
[5] said second compressible sealed sound-emitting chamber
having operably associated therewith a second squeaker, said
second squeaker comprising the only passageway through which
air can enter and exit the second compressible sealed sound-
emitting chamber,
[5a] said second squeaker in said second
compressible sealed sound-emitting chamber being
incapable of being replaced by a valve structure for
alternatively retaining and selectively dispensing a liquid;
[ 6] said first and second squeakers in each of said first and
second compressible sealed sound-emitting chambers operating
independently of each other upon the respective compression of
said first and second compressible sealed sound-emitting
chambers to emit a squeaker sound,
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[7] said first and at least second compressible sealed sound-
emitting chambers being arranged such that their back sides are
juxtaposed immediately adjacent to one another;
[8] said first and second squeakers being located on the front
sides of each of said juxtaposed first and second compressible
sealed sound-emitting chambers, respectively, and
[9] a fabric covering immediately surrounding and
substantially encasing said juxtaposed first and second
compressible sealed sound-emitting chambers of said pet body,
without substantial layers of materials interposed between said
fabric covering and said juxtaposed first and second
compressible sealed sound-emitting chambers;
[l OJ said fabric covering contributing to the maintenance of the
physical orientation and alignment of said first and second
compressible sealed sound-emitting chambers, and
[ 11] said juxtaposed first and second compressible sealed
sound-emitting chambers collectively forming the entire pet toy
body.
Rejections
Claims 1, 3---6, 9, and 10 are rejected under 35 U.S.C. § l 12(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
Claims 1, 3---6, 9, and 10 are rejected under 35 U.S.C. § l 12(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention.
Claims 1, 3---6, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Edwards (US 2009/0266306 Al, pub. Oct. 29, 2009) and
Mann (US 2002/0134318 Al, pub. Sept. 26, 2002).
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ANALYSIS
Written Description
Paragraph [l]
The Examiner finds that "a dedicated pet toy body incapable of
alternatively retaining and selectively dispensing a liquid," as recited in
paragraph [ 1] of claim 1 (emphasis added), fails to comply with the written
description requirement of 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph.2 Final Act. 2. The Examiner construes the phrase
"incapable of alternatively retaining and selectively dispensing a liquid" to
be a negative limitation. See id., Ans. 12-13. Moreover, we note that the
negative limitation is directed to the functionality of the "pet toy body" and
that paragraph [ 11] of claim 1 identifies the entirety of the "pet toy body" to
be the "juxtaposed first and second compressible sealed sound emitting
chambers."
The Appellants argue that the written description "is clear that the
claimed pet toy incorporates squeakers, which one of skill in the art would
recognize as devices for directing the passage of air for the purpose of
generating noise -- devices that preclude the very possibility of retaining
liquid." Appeal Br. 13; see Reply Br. 2. The Appellants assert that "[w]hen
liquid passes through Applicant's squeaker, no noise is generated, and the
purpose of the squeaker is frustrated." Reply Br. 7. The Appellants also
assert that because "squeakers inherently comprise holes or 'passageways'
through which air can travel, squeakers are not capable of retaining or
2 We do not understand the phrase "dedicated pet toy body" to be relevant
to the Examiner's rejection of claim 1 as failing to comply with the written
description requirement. See Final Act. 2-3, Ans. 11.
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selectively dispensing liquid, which liquid will inevitably seep through the
holes and escape the chamber, regardless of a pet toy user's desire to retain
or selectively dispense such liquid." Id.; see also id. at 8-10. The
Appellants' argument and assertions are not persuasive.
The Appellants' argument and assertions appear to assume that the
"pet toy body" must be able to emit sounds at the same time the "pet toy
body" is incapable of alternatively retaining and selectively dispensing a
liquid. We disagree with this assumption. Claim 1 does not require the "pet
toy body" to emit sounds and, at the same time, be incapable of alternatively
retaining and selectively dispensing a liquid. Moreover, we fail to
understand how the "pet toy body" of claim 1 is "incapable of alternatively
retaining and selectively dispensing a liquid." For example, water can enter,
be retained, and be selectively dispensed in a similar manner as how air - a
different type of fluid - can enter, be retained, and be selectively dispensed
through the squeaker of the pet toy body. See Ans. 5. Accordingly, we fail
to understand how the negative limitation of paragraph [1] is described in
the Specification in such a way as to reasonably convey to one skilled in the
relevant art that the Appellants, at the time the application was filed, had
possession of the claimed invention. As such, we agree with the Examiner
that the negative limitation of paragraph [ 1] fails to comply with the written
description requirement.
Paragraphs [3a] and [5a]
The Examiner finds that "said first squeaker in said first compressible
sealed sound-emitting chamber being incapable of being replaced by a valve
structure for alternatively retaining and selectively dispensing a liquid," i.e.,
paragraph "[3a]" and similarly, "said second squeaker in said second
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compressible sealed sound-emitting chamber being incapable of being
replaced by a valve structure for alternatively retaining and selectively
dispensing a liquid," i.e., paragraph "[5a]," as recited in claim 1, fail to
comply with the written description requirement of 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph. Final Act. 2. The Examiner
construes the limitations recited in paragraphs [3a] and [5a] to be negative
limitations. See id. at 2-3, Ans. 12-13. The Examiner also finds that
"nothing in the specification explains how the squeakers would be incapable
of being replaced by a valve structure because if there are openings in the
chambers for insertion of the squeakers, then a valve structure can also be
inserted in the same openings." Final Act. 3.
The Appellants argue that because "the specification as a whole
conveys to one of ordinary skill that the fabric covering would prevent a pet
owner from replacing the valves with squeakers (or vice versa), the negative
limitation is adequately supported by the disclosure." Appeal Br. 15. The
Appellants' argument is not persuasive.
The Appellants' argument suggests that the negative limitations
recited in paragraphs [3a] and [5a] are not directed to the functionality of the
first and second squeakers, but are directed to the fabric covering. We
disagree. The negative limitations, recited in paragraphs [3a] and [5a],
specifically recite functionality of the squeakers themselves.
The Appellants also appear to argue the limitations of paragraphs [3a]
and [ 5a] for similar reasons as paragraph [ 1] discussed above. See Appeal
Br. 12-13, Reply Br. 6-10. For similar reasons as discussed above, the
Appellants' arguments are not persuasive.
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Accordingly, we fail to understand how the negative limitations of
paragraphs [3a] and [5a] are described in the Specification in such a way as
to reasonably convey to one skilled in the relevant art that the Appellants, at
the time the application was filed, had possession of the claimed invention.
As such, we agree with the Examiner that the negative limitations of
paragraphs [3a] and [5a] fail to comply with the written description
requirement.
In conclusion, we sustain the Examiner's rejection of independent
claim 1 and dependent claims 3---6, 9, and 10 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
Indefiniteness
The Examiner determines that the term "dedicated" in the phrase "a
dedicated pet toy body," of paragraph [1] of claim 1, is indefinite. Final
Act. 5. The Examiner's position is that the term "dedicated" is unclear
because it is uncertain how only a pet can play with the toy body. Id. The
Appellants assert that the Examiner misinterprets the term "dedicated" as
modifying the term "pet" in the phrase "dedicated pet toy body." Appeal Br.
13-14. The Appellants assert that "the claim term 'dedicated pet toy body'
refers to a body that is dedicated for use as a pet toy, and not as any other
type of product." Reply Br. 5; see Appeal Br. 14. Based on the foregoing, it
is clear that the Examiner and the Appellants are in dispute as to the
interpretation of the term "dedicated" in the phrase "a dedicated pet toy
body."
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
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Application 12/459,756
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. See In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
At the outset, we note that the term "dedicated" is not used in the
Specification. As discussed above, paragraph [ 11] of claim 1 identifies the
entirety of the "pet toy body" to be the "juxtaposed first and second
compressible sealed sound emitting chambers." In other words, claim 1
requires that any structure other than the "juxtaposed first and second
compressible sealed sound emitting chambers" of the "multiple sound-
emitting pet toy apparatus," such as "fabric," is not a part of the claimed "pet
toy body." We also note that the ordinary meaning of the term "dedicated"
includes: first, "set apart or reserved for a specific use or purpose"; and
second, "[o]f equipment, a facility, etc.: designed, manufactured, or installed
so as to be available only for a particular purpose or a particular category of
user." DICTIONARY.COM UNABRIDGED ("dedicated," def. 2.
http://www.dictionary.com/ browse/dedicated (last visited Aug. 29, 2016));
Oxford English Dictionary ("dedicated," def. 2. http://www.oed.com/
view/Entry/48548?redirectedFrom=dedicated#eid (last visited Aug. 29,
2016) (emphasis added)).
The term "dedicated" in the phrase "a dedicated pet toy body" could
be interpreted by one of ordinary skill in the art to refer to a body that is set
apart or reserved for a specific use, i.e., a pet toy. This interpretation is
consistent with the first definition of" dedicated." In other words, the body
is intended to be used specifically as a pet toy. Notably, this interpretation
of "dedicated pet toy body" does not preclude other uses of the claimed
body.
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Additionally, the term "dedicated" in the phrase "a dedicated pet toy
body" could be interpreted by one of ordinary skill in the art to refer to a
structure that is designed only as a "pet toy body." As such, one would
understand that the design of the "body" is for a "pet toy" only. This
interpretation is consistent with the second definition of "dedicated."
Notably, this interpretation of "dedicated pet toy body" precludes the
claimed "body" to be designed with another purpose.
Both interpretations of "dedicated" in the phrase "a dedicated pet toy
body" are included in the broadest reasonable construction in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
As such, the term "dedicated" in the phrase "a dedicated pet toy body" could
be interpreted in two different ways. And, as such, "the US PTO is justified
in requiring the applicant to more precisely define the metes and bounds of
the claimed invention by holding the claim ... indefinite." Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Hence, we
determine that the term "dedicated" in the phrase "a dedicated pet toy body"
is indefinite.
Thus, we sustain the rejection of independent claim 1 and dependent
claims 3---6, 9, and 10 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA, the applicant, regards as the invention.
Obviousness based on Edwards and Mann
Paragraphs [2] and [ 4] of independent claim 1 require that a pet toy
body include a first and second compressible sealed sound-emitting
chamber, each having a front and back side. Additionally, paragraphs [2],
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[4], [7], and [8] of claim 1 require that squeakers for each sound emitting
chamber are located on the front side, that the back sides of the chambers are
opposite the front side, and that the chambers are "arranged such that their
back sides are juxtaposed immediately adjacent to one another."
The Examiner appears to rely on the embodiment disclosed in
Edwards's Figure 8, and alternatively, Figure 9, to correspond to the
foregoing requirements of claim 1. See Final Act. 5-7, Ans. 5---6. The
Examiner does not rely on Mann's teachings to correspond to these
requirements.
In applying Figure 8 to the aforementioned claim requirements, the
Examiner finds that the first and second chambers correspond to any of
sections 34, 36, and 38. Final Act. 5---6. The Examiner finds that the front
and back sides of each of the sections, respectively, are depicted on the side
where squeak element 32 is located and the side that is opposite the front
side, i.e., where element numbers 34, 36, and 38 are pointing. Id. However,
the back sides of chambers 34, 36, and 38 are not 'juxtaposed immediately
adjacent to one another," as required by claim 1. See Appeal Br. 17. The
Examiner also finds that "each chamber 34, 36, 38 has a top and a bottom,
[and] the bottoms are back to back to each other." Final Act. 14. However,
the locations of the tops and bottoms of chambers 34, 36, and 38 are not
opposite the front side, i.e., where the squeak element 32 is located. See
Appeal Br. 16, 17.
Alternately, in applying Figure 9 to the aforementioned claim
requirements, the Examiner finds that the first and second chambers
correspond to chambers 42. Final Act. 5---6. It appears that the Examiner
finds that the front and back sides of each of the chambers, respectively, are
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Application 12/459,756
depicted on the side where squeak element 32 is located and the side that is
opposite the front side. See id. However, the back sides of chambers 42 are
not arranged such that they "are juxtaposed immediately adjacent to one
another," as required by claim 1. See generally Appeal Br. 17.
Thus, we do not sustain the rejection of independent claim 1 and
dependent claims 3---6, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable
over Edwards and Mann.
DECISION
We AFFIRM the Examiner's decision rejecting: claims 1, 3---6, 9, and
10 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph,
as failing to comply with the written description requirement; and claims 1,
3---6, 9, and 10 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite.
We REVERSE the Examiner's decision rejecting claims 1, 3---6, 9,
and 10 under 35 U.S.C. § 103(a) as unpatentable over Edwards and Mann.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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