Ex Parte RolfDownload PDFPatent Trials and Appeals BoardOct 16, 201410552027 - (D) (P.T.A.B. Oct. 16, 2014) Copy Citation 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. Appeal 2012-008594 Application 10/552,027 2 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). Appeal 2012-008594 Application 10/552,027 3 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 Appeal 2012-008594 Application 10/552,027 4 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 16, page 2100152; 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 Appeal 2012-008594 Application 10/552,027 5 [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. Appeal 2012-008594 Application 10/552,027 6 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. Appeal 2012-008594 Application 10/552,027 7 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. Appeal 2012-008594 Application 10/552,027 8 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. Appeal 2012-008594 Application 10/552,027 9 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 llw Copy with citationCopy as parenthetical citation