Ex Parte Rolf

Patent Trial and Appeal Board

Oct 16, 2014

10552027 (P.T.A.B. Oct. 16, 2014)

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.
10/552,027 10/03/2005 Theodorus Suibertus Anthonius Rolf P/1336-199 6889
2352 7590 10/16/2014
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
KLAYMAN, AMIR ARIE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
10/16/2014 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 THEODORUS SUIBERTUS ANTHONIUS ROLF
________________

Appeal 2012-008594
Application 10/552,027
Technology Center 3700
________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 17–35. Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was
held on October 2, 2014.
We REVERSE.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a toy building block.”
Spec. 1. Independent claim 17, reproduced below, is illustrative of the
claims on appeal.
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17. A toy building block capable of being stacked,
comprising:
a top surface of the block having thereon at least one stud
with a plurality of circumferentially arranged, substantially
equally spaced teeth with rounded crests and interspersed
rounded grooves, the stud having a height extending above the
top surface of the block by at least about 30% of the height of
the block; and
a bottom surface of the block having at least one recess
with sidewalls, at least one sidewall of the recess having a
substantially vertically extending land shaped complementary
to and extending into a respective one of the rounded grooves
of the stud, wherein the stud is configured and operable to be
insertable in the recesses of other like toy building blocks, and
the stud on one block is guided into a recess of another of the
blocks by the lands in the recess of the other block wherein
the recesses are shaped such that one of the studs inserted
in one of the recesses is guided by at least three zones of
contact, and at least one of the zones is a land in the recess of
another of the blocks engageable in one of the rounded grooves
in the stud.

THE REJECTIONS ON APPEAL
A. Claims 17–20, 22, and 25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cyrus (US 6,129,605; iss. Oct. 10, 2000).
B. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cyrus, Brettingen (US 3,487,579; iss. Jan. 6, 1970),
Fischer (DE 3503211 A1; pub. Aug. 7, 1986), and Orgass (US 4,582,495;
iss. Apr. 15, 1986).
C. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cyrus and Simmons (US 6,088,987; iss. Jul. 18,
2000).
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D. Claim 26 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cyrus and Glynn (US 5,725,411; iss. Mar. 10, 1998).
E. Claim 27 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cyrus and Garpow (US 6,506,091 B1; iss. Jan. 14, 2003).
F. Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cyrus, Simmons, and Lindenmeyer (US 2,609,638;
iss. Sept. 9, 1952).
G. Claims 30, 34, and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cyrus, Simmons, Lindenmeyer, and Garpow.
H. Claim 31 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cyrus, Simmons, Lindenmeyer, and Deahr (US
5,498,188, iss. Mar. 12, 1996).
I. Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cyrus, Simmons, and Garpow.

ANALYSIS
A. Claims 17–20, 22, and 25 — Unpatentable over Cyrus
Regarding the limitation in claim 17 that requires the stud to have a
height extending above the top surface of the block by at least 30% of the
height of the block, the Examiner acknowledges that “Cyrus is silent”
regarding whether “the stud has a height extending above the top surface of
the block by at least 30% the height of the block” and notes that “‘[w]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
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experimentation.’” Ans. 6, quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955). The Examiner concludes that “it would have been obvious at the
time the invention was made to one of ordinary skill in the art to provide
Cyrus’s stud’s height to be at least 30% of the block’s height for the reason
that a skilled artisan would have been motivated to optimize a stud’s height
in order to provide the best secured position between one block to another
while at least two blocks are secured/stacked to each other using one block’s
stud inserted into another block’s recess.” Id.
Appellant argues that “[a] particular parameter must first be
recognized as a result-effective variable, i.e., a variable which achieves a
recognized result, before the determination of the optimum or workable
ranges of said variable might be characterized as routine experimentation.”
Appeal Br. 6, quoting the Manual of Patent Examining Procedure (MPEP),
§ 2144.05(II)(B), lines 16, page 2100152; citing In re Antonie, 559 F.2d
618 (CCPA 1977). Appellant contends that “[t]he Examiner has not
demonstrated that the prior art has recognized the stud’s height as a result-
effective variable” and more particularly, Cyrus “does not recognize the
stud’s height as a result-effective variable” (Appeal Br. 6) because “height is
not the sole determining factor of whether a secured male/female connection
is formed between a stud and a corresponding female recess.” Reply Br. 4–5.
In support of Appellant’s contention, Appellant argues that Cyrus
relies on “the male/female connection between female fittings in one column
[or block] and male fittings in another column [or block] to obtain a secure
attachment . . . [and] not on the height of the male fittings.” Appeal Br. 5.
Appellant points out that
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[Cyrus] teaches a male/female connection between adjacent
columns, the male and female fittings being of the same
configuration and orientation, which produces such a secure
connection . . . . In contrast, since in the instant application, the
connection between studs and recesses is not limited to a
male/female connection, where the stud and recesses are of the
came [sic] configuration and orientation and are, thus, in
complete contact with each other, either by terms of the claims
or by the disclosure (see, e.g., Figs. 2, 5, 15, 17, 18), the present
claims seek to optimize the strength of that connection by
optimizing the height of the studs.”
Appeal Br. 6. Appellant further points out that Cyrus depicts a center recess
on the stud and argues that
based upon the disclosure of [Cyrus] of a male/female
connection between studs and recesses, no single range of stud
height can be stated to be obvious when a secured male/female
connection is a function of the independent variables of the
perimeter of the stud, the perimeter of the center recess, the
surface area of the bottom of the center recess, and the surface
area of the top of the stud.
In other words, stud height is not disclosed [in Cyrus] to
be a result-effective variable for achieving a secured
male/female connection when such stud height, considered
alone, is insufficient to achieve that result.
Reply Br. 5–6.
The Examiner asserts that “Cyrus does recognize the stud’s height as
essential feature to connect one block to another block, and thus the claimed
30% relation . . . is a result-effective variable determination of the optimum
or workable ranges of the stud’s height characterized as routine
experimentation.” Ans. 22.
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We are persuaded by Appellant that, on this record, the Examiner has
not provided sufficient evidence and reasoning to support the Examiner’s
assertion. Cyrus does not discuss such ratio or even the height of male
fittings, but rather teaches that
[m]ale fittings 20 are preferably located on top 16 of column
12. Each male fitting 20 has a peripheral wall 22 and a center
recess 24. . . . Bottom 18 of column 12 preferably has a
plurality of female fittings in the same configuration and
orientation as the male fittings 20 on top 16 column 12. The
male fittings 20 on top 16 and the female fittings on bottom 18
of column 12 allow for secure, removable vertical stacking of a
plurality of columns 12 . . . . While male fittings 20 on top 16
of column 12 are substantially clover leaf in shape, the male
fittings discussed herein, as well as the female fittings, can be
of any shape that provides removable attachment of two
components with a secure connection when attached.
Cyrus 7:59 to 8:23. Although height is an inherent parameter of Cyrus’ stud,
shape is expressly identified in Cyrus as a variable that affects the security of
the connection. Therefore, the Examiner has not established that Cyrus
recognizes that the ratio of the height of the stud extending above the top
surface of the block to the height of the block is a result effective variable
with respect to the security of the connection. Accordingly, we do not
sustain the Examiner’s rejection of independent claim 17, and claims 18–20,
22, and 25 which depend therefrom.

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B. Claim 21 — Unpatentable over Cyrus, Brettingen, Fischer, and Orgass
Claim 21 depends from claim 17. None of Brettingen, Fischer, or
Orgass cures the deficiencies in the rejection of claim 17 discussed supra.
Accordingly, we do not sustain the Examiner’s rejection of claim 21.
C. Claims 23 and 24 — Unpatentable over Cyrus and Simmons
Claims 23 and 24 ultimately depend from claim 17. Simmons does
not cure the deficiencies in the rejection of claim 17 discussed supra.
Accordingly, we do not sustain the Examiner’s rejection of claims 23 and
24.
D. Claim 26 — Unpatentable over Cyrus and Glynn
Claim 26 depends from claim 17. Glynn does not cure the
deficiencies in the rejection of claim 17 discussed supra. Accordingly, we
do not sustain the Examiner’s rejection of claim 26.
E. Claim 27 — Unpatentable over Cyrus and Garpow
Claim 27 depends from claim 17. Garpow does not cure the
deficiencies in the rejection of claim 17 discussed supra. Accordingly, we
do not sustain the Examiner’s rejection of claim 27.
F. Claims 28 and 29 — Unpatentable over Cyrus, Simmons, and
Lindenmeyer
Claims 28 and 29 ultimately depend from claim 17. Neither Simmons
nor Lindenmeyer cures the deficiencies in the rejection of claim 17
discussed supra. Accordingly, we do not sustain the Examiner’s rejection of
claims 28 and 29.
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G. Claims 30, 34, and 35 — Unpatentable over Cyrus, Simmons,
Lindenmeyer, and Garpow
Claims 30, 34, and 35 ultimately depend from claim 17. None of
Simmons, Garpow, or Lindenmeyer cures the deficiencies in the rejection of
claim 17 discussed supra. Accordingly, we do not sustain the Examiner’s
rejection of claims 30, 34, and 35.
H. Claim 31 — Unpatentable over Cyrus, Simmons, Lindenmeyer, and
Deahr
Claim 31 ultimately depends from claim 17. None of Simmons,
Lindenmeyer, or Deahr cures the deficiencies in the rejection of claim 17
discussed supra. Accordingly, we do not sustain the Examiner’s rejection of
claim 31.
I. Claims 32 and 33 — Unpatentable over Cyrus, Simmons, and Garpow.
Claims 32 and 33 ultimately depend from claim 17. Neither Simmons
nor Garpow cures the deficiencies in the rejection of claim 17 discussed
supra. Accordingly, we do not sustain the Examiner’s rejection of claims 32
and 33.

DECISION
A. The Examiner’s decision to reject claims 17–20, 22, and 25 under
35 U.S.C. § 103(a) as being unpatentable over Cyrus is reversed.
B. The Examiner’s decision to reject claim 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Cyrus, Brettingen, Fischer, and Orgass
is reversed.
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C. The Examiner’s decision to reject claims 23 and 24 under
35 U.S.C. § 103(a) as being unpatentable over Cyrus and Simmons is
reversed.
D. The Examiner’s decision to reject claim 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Cyrus and Glynn is reversed.
E. The Examiner’s decision to reject claim 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Cyrus and Garpow is reversed.
F. The Examiner’s decision to reject claims 28 and 29 under
35 U.S.C. § 103(a) as being unpatentable over Cyrus, Simmons, and
Lindenmeyer is reversed.
G. The Examiner’s decision to reject claims 30, 34, and 35 under 35
U.S.C. § 103(a) as being unpatentable over Cyrus, Simmons, Lindenmeyer,
and Garpow is reversed.
H. The Examiner’s decision to reject claim 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Cyrus, Simmons, Lindenmeyer, and
Deahr is reversed.
I. The Examiner’s decision to reject claims 32 and 33 under
35 U.S.C. § 103(a) as being unpatentable over Cyrus, Simmons, and
Garpow is reversed.

REVERSED
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