Ex Parte Scherba

Patent Trial and Appeal Board

Jan 29, 2015

12765511 (P.T.A.B. Jan. 29, 2015)

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.
12/765,511 04/22/2010 Robert J. Scherba SCEE 200025US02 9563
27885 7590 01/30/2015
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/30/2015 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 ROBERT J. SCHERBA
____________

Appeal 2013-000414
Application 12/765,511
Technology Center 3700
____________

Before LINDA E. HORNER, ANNETTE R. REIMERS, and
SCOTT A. DANIELS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Robert J. Scherba (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 21–27, 29, 40–43, and 45.
Claims 1–20 are canceled, and claims 28, 30–39, 44, and 46 are allowed.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER NEW GROUNDS OF REJECTION of
claims 21–26 and 40–42 pursuant to our authority under 37 C.F.R.
§ 41.50(b).
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THE INVENTION
Appellant’s claimed invention relates to “an inflatable device that can
be used as a[n] educational and entertaining safety tool.” Spec. 1, ll. 5–6.
Of the claims on appeal, claims 21 and 40 are independent. Claim 21,
reproduced below, is illustrative of the subject matter on appeal.
21. A method of setting up an inflatable device for teaching
safety information to a plurality of people, said method
comprising the steps of:
a. transporting a physical activity feature and a non-fully
inflated meeting venue to a desired location; a majority of said
meeting venue being an inflatable structure; said meeting venue
designed to enable a plurality of humans to simultaneously
reside in said meeting venue so that the humans can view
information about safety; said meeting venue including an
inflatable room that is at least partially enclosed, and a plurality
of inflatable walls that at least partially enclose said room and
form an interior and exterior inflatable wall surface; said
meeting venue including a plurality of safety information
printed on at least one interior surface of said meeting venue;
said plurality of safety information includes two or more types
of information selected from the group consisting of i) a
drawing on an interior surface of said meeting venue of one or
more safety devices selected from the group consisting of a
smoke detector, a sprinkler system, a CO detector, a fire
extinguisher, and a heat detector, ii) written information on an
interior surface of said meeting room regarding one or more
safety devices that are printed on said interior surface of said
meeting room, iii) written information on an interior surface of
said meeting room regarding a printed picture on said interior
surface of said meeting room, said printed picture including one
or more pictures selected from the group consisting of a fire, an
electric spark, smoke, an electric outlet, a fireplace, window
bars, a candle, a stove, a ceiling crack, and dripping water, and
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iv) written information on an interior surface of said meeting
room regarding one or more types of information selected from
the group consisting of how to safely open a window, how to
safely escape through a window, how to safety break a window,
how to safely pass through a broken window, how to lock a
window, how to unlock a window how to open a window, how
to close a window, safety tips about opening a door, safety tips
about talking to strangers, safety tips about using appliances,
safety tips about using sharp objects, safety tips about hot
liquids, safety tips about cold liquids, safety tips about wet
surfaces, safety tips about slippery surfaces, safety tips about
climbing on counters, safety tips about climbing on objects,
safety tips about electricity, safety tips about cleaning solutions,
safety tips about potentially dangerous liquids, safety tips about
using a phone in an emergency, safety tips about leaving
objects on the floor, safety tips about placing flammable objects
on lights, and safety tips about placing flammable objects on
hot objects; said physical activity feature including a slide, an
inflatable slide, a bouncing area, an inflatable bouncing area, an
obstacle course, an inflatable obstacle course, a climbing rope, a
ladder, an inflatable ladder, a climbing wall, an inflatable
climbing wall, a climbing or sliding pole, an inflatable climbing
or sliding pole, and combinations thereof;
b. pumping fluid into said meeting venue to inflate a
majority of said meeting venue; and,
c. setting up said physical activity feature at least closely
adjacent to said meeting venue.
THE EVIDENCE
The Examiner relies upon the following evidence:
Micale US Des. 314,024 Jan. 22, 1991
Berman US 6,722,084 B2 Apr. 20, 2004
Peterson US D522,082 S May 30, 2006
Field US 7,300,354 B2 Nov. 27, 2007
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FEMA Publication, No. FA-294, “Home Fire Sprinklers,” March
2005 (“FEMA 1”)
FEMA Publication, “Get Out Safely! A Factsheet on Fire Escape
Planning,” March 2006 (“FEMA 2”)
Appellant’s Admitted Prior Art, untraversed official notice that
“posters are displayed on interior surfaces including walls”
(“AAPA”)
THE REJECTIONS
Appellant seeks review of the following Examiner’s rejections:
1. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Field, Peterson, FEMA 1, and AAPA.
2. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Field, Peterson, FEMA 1, AAPA, and Berman.
3. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Field, Peterson, FEMA 1, AAPA, and FEMA 2.
4. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Field, Peterson, FEMA 1, AAPA, Berman, and FEMA 2.
5. Claims 27 and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Field, Peterson, FEMA 1, AAPA, and Micale.
6. Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Field, Berman, FEMA 1, and AAPA.
7. Claims 41 and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Field, Berman, FEMA 1, AAPA, and Peterson.
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8. Claims 43 and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Field, Berman, FEMA 1, AAPA, Peterson, and
Micale.
ISSUE
Independent claim 21 calls for “said meeting venue including a
plurality of safety information printed on at least one interior surface of said
meeting venue.” Independent claim 40 similarly calls for “said interior of
said activity room including a plurality of safety information on one or more
interior surfaces of said activity room.”
The Examiner found that “posters are displayed on interior surfaces
including walls” (AAPA) and that “[FEMA 1] discloses a poster that shows
a fire, a sprinkler, and written information about both.” Final Act. 5; id. at
16. As to claim 21, the Examiner determined that “it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify the combined Field and Peterson to place a poster on the interior
wall of the meeting venue because posters are intended to be placed on
walls.” Id. at 5. The Examiner made a similar obviousness determination as
to claim 40. Id. at 16. The Examiner further determined that it would have
been obvious to “use a fire safety posted as taught by [FEMA 1] because
Field specifically discloses making the meeting venue for children (col. 1,
lines 60–63) and because [FEMA 1]’s poster is directed at child fire safety
([FEMA 1]: sole exhibit).” Id. at 5, 16.
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Appellant argues that “there is no motivation to secure a poster
regarding home sprinklers to an inflatable play structure for children. Only
Appellant’s own disclosure would provide such motivation.” App. Br. 18.
The issue presented by this appeal is whether the Examiner has
articulated adequate reasoning with rational underpinning to support the
legal conclusion of obviousness.
ANALYSIS
FEMA 1 is a “home fire safety poster [that] displays children’s
drawings encouraging homeowners to install residential sprinklers to protect
their loved ones and property.” FEMA 1, p. 2. The poster is directed to fire
safety generally and is intended to be read by homeowners. Id. We find that
the Examiner’s articulation of a reason to place such a poster, intended to be
read by homeowners, in the children’s bouncer of Field is lacking rational
underpinning. As such, we do not sustain the rejections of independent
claims 21 and 40, or their dependent claims, each of which relies on the
same articulated reason to modify Field.
NEW GROUNDS OF REJECTION
Claims 21–26
We enter a new ground of rejection of claims 21–26 under 35 U.S.C.
§ 103(a) as unpatentable over Field, Peterson, and Berman.
Independent claim 21
We agree with and adopt as our own the Examiner’s findings as to the
disclosures of Field and Peterson and the articulated reason to modify
Field’s bouncer to add the partially enclosed meeting venue and slide of
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Peterson. Final Act. 2–4. In particular, we agree with the Examiner that the
combined teachings of Field and Peterson would render obvious to a person
having ordinary skill in the art at the time of the invention the claimed steps
of: transporting a physical activity feature (a slide) and a non-fully inflated
meeting venue to a desired location, the majority of said meeting venue
being an inflatable structure, said meeting venue designed to enable a
plurality of humans to simultaneously reside in said meeting venue, said
meeting venue including an inflatable room that is at least partially enclosed,
and a plurality of inflatable walls that at least partially enclose said room and
form an interior and exterior inflatable wall surface; pumping fluid into said
meeting venue to inflate a majority of said meeting venue; and setting up
said physical activity feature at least closely adjacent to said meeting venue.
Id.; Ans. 22.
The remainder of method claim 21 is directed to the plurality of safety
information printed on the interior surface of the meeting venue. Berman
discloses an inflatable structure having a meeting venue including an
inflatable room defined by at least three inflatable walls, and an interior
surface of the room including printed material on the walls. Berman, col. 3,
ll. 58–67; Figures 2 and 3. In particular, Berman shows an inflatable
structure adorned with visual images indicative of a house and having an
interior surface adorned with visual images and designs of the inside of the
house, including printed material depicting a room having a table, a radio, a
telephone stand, a telephone, a dog, and a bird in a birdcage. Id. As such,
Berman demonstrates that it was well known in the art that interior walls of
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inflatable structures could have “use-enhancing features” such as drawings
printed directly on the walls of an inflatable structure. Id.; id. at col. 4,
ll. 37–38. It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the bouncer of Field, as modified by
Peterson, to print features on the walls of the inflatable room as taught by
Berman because this technique has been used to improve an inflatable play
structure and a person of ordinary skill in the art would recognize that it
would improve similar inflatable play structures in the same way and
application of this technique is not beyond the skill level of one of ordinary
skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The
improvement of adding printed features to an inflatable play structure is the
predictable use of the prior art elements according to their established
functions. Id. In other words, the bouncer and slide of the combined Field
and Peterson disclosures function as an inflatable play structure and the
printed features taught by Berman provide use-enhancing features to the
inflatable play structure, in accordance with their functions as established by
Berman.
The remainder of claim 21 pertains to the specific types of safety
information printed on the interior wall surface of the meeting venue. This
safety information encompasses drawings and/or written information that
pertains to safety. This safety information is not functionally related to the
substrate on which it is printed. In other words, the inflatable structure will
still be able to be used as a meeting venue and slide without the printed
matter and the safety information would still be able to achieve its
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educational purposes without the inflatable structure. As a result, the
specific types of safety information do not distinguish the claimed invention
from Field, as modified by Peterson and Berman. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally
related to the substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability.”). In this case, all that the printed
matter does is provide information for use with a known device. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (distinguishing the patentable
printed band of Gulack and holding that a printed set of instructions cannot
be relied on to patentably distinguish a known kit from the prior art or else
“anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.”).
We recognize that in Ngai the applicant was entitled to patent his
invention of a new RNA extraction method; however, those method claims
included specific steps directed to the new method for amplifying and
normalizing RNA. Id. at 1337. By contrast, Appellant’s claims do not
include method steps directed to actually using the inflatable device to
instruct persons on fire safety. See also King Pharmaceuticals, Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010) (holding that an otherwise
anticipated method claim does not become patentable because it includes a
step of “informing” someone about the existence of an inherent property of
that method). The court in King Pharmaceuticals stated that the rationale
behind “printed matter” cases, viz, preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
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limitations, extends to the situation wherein an instructional limitation is
added to a method, as opposed to a product, known in the art. Id. at 1279.
The court added that “the relevant inquiry here is whether the additional
instruction limitation . . . has a ‘new and unobvious functional relationship’
with the known method . . . .” Id. (citations omitted). In this case, the
printed safety information does not have a new and unobvious functional
relationship with the method steps of transporting, pumping, and setting up
the inflatable device. As such, the combined disclosures of Field, Peterson,
and Berman render unpatentable the claimed method of setting up an
inflatable device for teaching safety information to a plurality of people as
called for in claim 21, and the specific content of the printed matter claimed
to be printed on the walls of the inflatable device cannot be relied upon to
patentably distinguish the claimed method over the prior art.
Dependent claims 22–26
We agree with and adopt as our own the findings of the Examiner as
to the disclosures in Peterson and Berman of the features called for in claims
22–24 and the articulated reasoning for modifying the bouncer of Field with
such features. Final Act. 5–7. Based on the same findings and reasoning
articulated by the Examiner, we determine that claims 22–24 are
unpatentable over the combination of Field, Peterson, and Berman.
Claims 25 and 26 are directed to further limitations as to the specific
types of safety information printed on the walls of the inflatable device. For
the same reasons set forth supra for the new ground of rejection of claim 21,
we determine that the types of safety information called for to be printed
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upon the walls of the inflatable device in claims 25 and 26 cannot be relied
upon to patentably distinguish the claimed method of transporting, pumping,
and setting up an inflatable device over the combined teachings of Field,
Peterson, and Berman.
Claim 40
We enter a new ground of rejection of claim 40 under 35 U.S.C.
§ 103(a) as unpatentable over Field and Berman.
Independent claim 40 is broader than claim 21 in that claim 40 does
not call for the method steps to include setting up a physical activity feature
at least closely adjacent to a meeting venue. Rather, claim 40 recites
“transporting a non-fully inflated meeting venue physical activity feature to
a desired location” and “pumping fluid into said meeting venue to at least
partially inflate said meeting venue.” We agree with and adopt as our own
the Examiner’s findings that Field discloses these two claimed steps by its
disclosure of an inflatable bouncer. Final Act. 13, ll. 9–18. In particular, we
agree with the Examiner that Field discloses the claimed steps of:
transporting a non-fully inflated meeting venue physical activity feature to a
desired location, and pumping fluid into said meeting venue to at least
partially inflate said meeting venue, a majority of said meeting venue being
an inflatable structure, said meeting venue designed to enable a plurality of
humans to simultaneously reside in said meeting venue. Id.
The remainder of claim 40 relates to the structure of the meeting
venue and the printed material on its walls. In particular, claim 40 calls for
“said meeting venue including an activity room that is defined by at least
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three inflatable walls, an interior surface of said activity room including
printed material so as to simulate one or more rooms selected from the group
consisting of a family room, a living room, a bathroom, a kitchen, a garage,
and a basement.” App. Br. 39. As to this claim language, we agree with the
Examiner and adopt as our own the finding that Berman discloses an
inflatable structure wherein the meeting venue includes an activity room
defined by at least three inflatable walls, and an interior surface of the
activity room including printed material so as to simulate one or more rooms
as called for in claim 40. Final Act. 14 (citing Berman, Figures 2 and 3). In
particular, Berman shows an inflatable structure adorned with visual images
indicative of a house and having an interior surface adorned with visual
images and designs of the inside of the house, including printed material
depicting a room having a table, a radio, a telephone stand, a telephone, a
dog, and a bird in a birdcage. Berman, col. 3, ll. 58–67; Figures 2 and 3.
The room shown in Figure 3 of Berman is simulating objects typically found
in a family room or living room of a home. As such, to the extent that the
particular subject matter printed on the walls of the claimed inflatable
structure are being relied upon to patentably distinguish the claimed method
over the combined prior art inflatable structures, we agree with the Examiner
that Berman shows the specific printed matter called for in the claim.
That said, we further note that even if it were found that the printed
matter in Berman does not simulate one of the specific rooms called for in
the claim, we nonetheless find Berman’s disclosure of printed material on
the interior surface of the inflatable structure as sufficient to render the
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subject matter of claim 40 unpatentable. In particular, the only arguable
difference between Field, as modified by Berman, and the claimed invention
lies in the particular type of features printed on the interior surface of the
inflatable structure. Berman depicts a room in a house. Simulation of a
different room in a house would be an obvious variation over the disclosure
in Berman. Further, for the same reasons articulated above in the rejection
of claim 21, the printing of features to simulate a particular room of a home
are not in any way functionally related to the inflatable structure (i.e., the
substrate) on which they are printed. As a result, the features of a particular
room of a home do not distinguish the claimed invention from Field
combined with Berman. In re Gulack, 703 F.2d at 1385.
The remainder of claim 40 pertains to the specific types of safety
information provided on the interior surfaces of the activity room. This
safety information encompasses drawings and/or written information that
pertains to safety. This safety information is not functionally related to the
substrate on which it is printed. In other words, the inflatable device will
still be able to be used as a meeting venue physical activity feature without
the printed matter, and the safety information would still be able to achieve
its educational purposes without the inflatable device. As a result, for the
same reasons discussed above with respect to independent claim 21, the
specific types of safety information do not distinguish the claimed invention
from Field, as modified by Berman. In this case, all that the printed matter
does is provide information for use with a known device. As with claim 21,
claim 40 likewise does not include method steps directed to actually using
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the inflatable device to instruct persons on fire safety. Rather, the claim is
directed to a method of setting up an inflatable device that includes the steps
of transporting the meeting venue physical activity feature to a desired
location and pumping fluid into the venue to at least partially inflate it. In
this case, the printed safety information does not have a new and unobvious
functional relationship with the method steps of transporting and pumping.
As such, the combined disclosures of Field and Berman render unpatentable
the claimed method of setting up an inflatable device for teaching safety
information to a plurality of people as called for in claim 40, and the specific
content of the printed matter claimed to be printed on the walls of the
inflatable device cannot be relied upon to patentably distinguish the claimed
method over the prior art.
Claims 41 and 42
We enter a new ground of rejection of claims 41 and 42 under
35 U.S.C. § 103(a) as unpatentable over Field, Berman, and Peterson. We
agree with and adopt as our own the findings of the Examiner as to the
disclosures in Peterson and Field of the features called for in claims 41 and
42 and the articulated reasoning for modifying the bouncer of Field with
such features. Final Act. 17. Based on the same findings and reasoning
articulated by the Examiner, we determine that claims 41 and 42 are
unpatentable over the combination of Field, Berman, and Peterson.

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CONCLUSION
The Examiner has not articulated adequate reasoning with rational
underpinning to support the legal conclusion of obviousness.
DECISION
The decision of the Examiner to reject claims 21–27, 29, 40–43, and
45 is REVERSED.
We enter new grounds of rejection, pursuant to 37 C.F.R. § 41.50(b),
of claims 21–26 and 40–42 under 35 U.S.C. § 103(a) as set forth supra.1
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

1 The exercise of authority under 37 C.F.R. § 41.50(b) to enter a new ground
of rejection is discretionary. As such, with respect to the remaining pending
claims in the present application, no inference should be drawn from a
failure to exercise that discretion. See Manual of Patent Examining
Procedure § 1213.02, 9th Ed. (March 2014).
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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).

REVERSED; 37 C.F.R. § 41.50(b)

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