10465376 (P.T.A.B. Jun. 17, 2013)

Ex Parte Rudell et al

Patent Trial and Appeal BoardJun 17, 2013

10465376 (P.T.A.B. Jun. 17, 2013)

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. 10/465,376 06/18/2003 Elliot Rudell 155660-0213 4799 29000 7590 06/17/2013 IRELL & MANELLA LLP 1800 AVENUE OF THE STARS SUITE 900 LOS ANGELES, CA 90067 EXAMINER HYLINSKI, ALYSSA MARIE ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 06/17/2013 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 ELLIOT RUDELL and TOM GRIMM ____________________ Appeal 2011-003493 Application 10/465,376 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and HYUN J. JUNG, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003493 Application 10/465,376 2 STATEMENT OF THE CASE Elliot Rudell and Tom Grimm (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-7, 9-15, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Hayes (US 3,538,640, iss. Nov. 10, 1970) and Inoue (US 4,272,918, iss. Jun. 16, 1981). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The Claimed Subject Matter Claims 1 and 17, reproduced below, with emphasis added, are illustrative of the claimed subject matter.1 1. A toy vehicle, comprising: a housing; a wheel coupled to said housing; a motor coupled to said housing; a wireless receiver coupled to said motor and said housing said wireless receiver receives a wireless signal; and, a drive gear assembly that couples said motor to said wheel when said wireless receiver receives the wireless signal and automatically allows said wheel to freely rotate when said wireless receiver does not receive the wireless signal. 17. A method for playing with a toy vehicle, comprising: transmitting a wireless signal; activating a motor that drives a wheel of a toy vehicle with the wireless signal and coupling the motor to the wheel; terminating transmission of the wireless signal; de-coupling the wheel from the motor automatically within a drive gear assembly; and pushing the toy vehicle across a surface. 1 Independent claim 9 requires a drive gear means “for automatically de- coupling said motor from said wheel so that said wheel can freely rotate when said wireless receiver means does not receive the wireless signal.” Appeal 2011-003493 Application 10/465,376 3 OPINION Claims 17 and 18 All of Appellants’ arguments are premised on their assertion that Hayes and Inoue do not render obvious “a drive gear assembly that automatically allows the wheel to freely rotate when the wireless signal is not received” or “‘automatically’ allowing a wheel to freely rotate when a wireless signal is not received.” See App. Br. 5-6. Claim 17 does not include such a limitation. Claim 17 recites a step of “de-coupling the wheel from the motor automatically within a drive gear assembly” but does not specify the conditions under which the de-coupling step is performed. Notably, claim 17 does not require that the step of de-coupling the wheel from the motor be performed when a wireless signal is not received. Appellants do not identify error in the Examiner’s rejection of claim 17 as unpatentable over Hayes and Inoue. We therefore sustain the rejection of claim 17 and of claim 18, for which Appellants do not assert any separate arguments for patentability, as unpatentable over Hayes and Inoue. Claims 1-7 and 9-15 The issue raised in the appeal of the rejection of independent claims 1 and 9 is whether the combined teachings of Hayes and Inoue render obvious a toy vehicle having a drive gear assembly that automatically allows the wheel to freely rotate when the wireless signal is not received. See App. Br. 5-6; Ans. 4. Each of the embodiments of Hayes requires manual displacement of a mechanical actuator, such as a control plug 45 (fig. 2; col. 4, ll. 31-43), a control plug 93 (fig. 4; col. 5, ll. 42-54), or a switch means 193 (fig. 6; col. 6, ll. 13-23), to move the disconnect gear 25 or 75, via a disconnect lever, Appeal 2011-003493 Application 10/465,376 4 from a position in which it engages a wheel gear 31 or 81 to a position in which it is out of engagement with the wheel gear, thereby de-coupling the motor from the wheel to permit the wheel to freely rotate. See col. 3, l. 67 – col. 4, l. 30; col. 5, ll. 42-59. Inoue discloses using a radio signal transmitted from a signal sending means on a remote control to a signal receiving means on a remote control toy to actuate a control motor 50 to move a control gear 34 on the toy between predetermined positions into and out of meshing engagement with one or more selected output gears 32 in order to change between modes. Col. 4, ll. 28-34; col. 5, ll. 40-60; col. 6, ll. 6-14. Inoue’s control motor 50 is energized only for relatively short periods of time to effect a predetermined lateral displacement of the control gear 34 into engagement with the selected output gear 32. Col. 5, ll. 49-56. Inoue’s control motor 50 is activated by an electronic circuit responsive to the radio control signal to move the control gear 34 to change from one mode to another. Col. 6, ll. 7-10. Inoue discloses a drive motor 22, separate and distinct from the control motor 50, and an on-off switch, separate and distinct from the signal sending and transmitting means, for actuating the drive motor 22, to drive the toy, regardless of the mode in which the toy is set. Col. 3, ll. 4-16. Thus, even if the wireless signal emitter/receiver control of Inoue were substituted for the manual control of Hayes to move the disconnect gear into and out of engagement with the wheel gear, this would not result in the wheel being automatically de-coupled from the motor when the wireless receiver does not receive a signal. Rather, an affirmative signal would be required to run the control motor 50 to displace the actuator (e.g., switch Appeal 2011-003493 Application 10/465,376 5 means 193) to cause the disconnect gear to move from one position to the other. The Examiner points out that Hayes teaches a manual embodiment in which a switch in an activated position activates the motor and connects the wheels thereto but in a deactivated position the motor is turned off and the wheels and motor are disconnected (Fig. 6, column 6 lines 10-29) thereby teaching the desirability of having the functioning of the motor related directly to the connection of the wheels. Ans. 4. The Examiner is referring to Hayes’ third embodiment comprising a switch means 193 that can be manually moved between a solid line freewheel position, in which the spring 190 biases the disconnect gear, via the crank lever 186, out of engagement with the wheel gear and in which the drive motor is not energized, and a dashed lines power drive position, in which the disconnect gear is in meshing engagement with the wheel gear and in which the drive motor is energized. Fig. 6; col. 6, ll. 10-23; col. 4, ll. 13-30 (describing the power drive and freewheel positions of the disconnect gear 25 within the context of Hayes’ first embodiment). The position of the switch means 193 controls both the energizing of the motor and the coupling of the motor, via the positioning of the disconnect gear, to the wheel. Thus, as pointed out by the Examiner, the functioning of the motor is related directly to the connection of the wheels via the positioning of the switch means 193. However, Appellants’ claims do not require that the function of the motor be related directly to the connection of the wheels. Rather, Appellants’ claims 1 and 9 require a drive gear assembly that couples the motor to the wheel when the wireless receiver receives a wireless signal and Appeal 2011-003493 Application 10/465,376 6 automatically de-couples the motor from the wheel to permit the wheel to freely rotate when the wireless receiver means does not receive the wireless signal. Neither Hayes nor Inoue teaches such an arrangement, and the Examiner has not adequately explained why it would have been obvious to combine the teachings of Hayes and Inoue to arrive at such an arrangement. The Examiner reasons that [t]he combination discloses a drive gear means that can be coupled to a motor in response to a wireless signal but would automatically allow for the motor to be decoupled from the wheel to allow free rotation when a signal is not received since the device is biased toward the freewheeling position when not acted upon. Ans. 4. The Examiner’s reasoning is flawed, because Hayes’ spring biases the disconnect gear toward the freewheeling position only when the actuator (e.g., switch means 193), and hence the crank lever, are positioned in the freewheel position (e.g., the solid line position in figure 6), and Inoue’s wireless control arrangement runs a control motor, which requires receipt of a control signal, to change the lateral position of the cam follower connecting piece 70 to thereby change the lateral position of the control gear 34 (col. 5, ll. 45-48).2 Thus, application of Inoue’s wireless control technique to displace Hayes’ actuator from the power drive position to the freewheel position, which will allow the spring to bias the crank lever, and 2 This is in contrast to the figure 4 embodiment of Appellants’ invention, in which spring 62 automatically returns the carriage 58 to the neutral position, in which neither gear 54 nor gear 56 engages the wheel gear 24, when the motor 16 is deactivated by termination of receipt of a wireless signal. Spec. 8:20 – 9:7; id. at 6:20 – 7:1. Appeal 2011-003493 Application 10/465,376 7 hence the disconnect gear, to the freewheel position3 would not result in an arrangement that automatically de-couples the motor from the wheel when a wireless signal is not received. For the above reasons, the combined teachings of Hayes and Inoue do not render obvious a toy vehicle having a drive gear assembly that automatically allows the wheel to freely rotate when the wireless signal is not received. Accordingly, we do not sustain the Examiner’s rejection of claims 1-7 and 9-15 as unpatentable over Hayes and Inoue. DECISION The Examiner’s decision rejecting claims 1-7, 9-15, 17, and 18 is reversed as to claims 1-7 and 9-15 and is affirmed as to claims 17 and 18. 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)(1)(iv). AFFIRMED-IN-PART hh 3 Hayes also contemplates an arrangement, particularly suitable for the embodiment of figure 6, in which the biasing means actuates the disconnect lever to hold the gear into engagement until the actuator assembly moves the gear for disengaging the power transmission. Col. 5, l. 75 – col. 6, l. 6.