Ex Parte Sears

Board of Patent Appeals and Interferences

Aug 27, 2010

11161141 (B.P.A.I. Aug. 27, 2010)

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.
11/161,141 07/25/2005 Suzanne Sears SS 0101 PUS 2140
27256 7590 08/27/2010
Dickinson Wright PLLC
38525 Woodward Avenue
Suite 2000
Bloomfield Hills, MI 48304
EXAMINER
HYLINSKI, ALYSSA MARIE
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUZANNE SEARS
____________

Appeal 2009-008574
Application 11/161,141
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Suzanne Sears (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision finally rejecting claims 14-18 as unpatentable over
Spector (US 5,975,982, issued Nov. 2, 1999), Gullickson (US Des. 297,852,
issued Sep. 27, 1988), and Shure (US 5,377,996, issued Jan. 3, 1995).
Claims 1-13 have been canceled and claims 19 and 20 have been withdrawn.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to an advertising system 10 including a
tossing means 12, such as hair or cord, a recognizable face 14, an impact
detection device 16, an audio generator 18, a power supply 20, and a soft or
semi-soft housing 22. Spec. 2, para. 14 and fig. 2.
Claim 14, the sole independent claim, is representative of the claimed
invention and reads as follows:
14. An advertising system comprising:
a head-shaped device comprising a recognizable face and an
impact absorbing material;
a flexible handle coupled to said head-shaped device having an
appearance of hair and extending outwardly from said head-shaped
device such that a user may thereby toss the advertising system from
momentum generated by slinging said head-shaped device with said
flexible handle;
a power supply enclosed within said head-shaped device
powering said impact sensor and said audio-clip generator;
an impact sensor enclosed within said head-shaped device; and
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an audio clip generator enclosed within said head-shaped device
activating in response to signals from said impact sensor and
generating an audio clip specific to said recognizable face.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant does not present any separate arguments for the
patentability of claims 15-18 apart from independent claim 14. Br. 4 and 6.
Thus, in accordance with 37 C.F.R. 41.37(c)(1)(vii), dependent claims 15-18
stand or fall with claim 14.
Appellant first argues that the “fundamental difference between the
cited art and the claimed invention . . . stems from its use as an advertising
tool.” Br. 5. We agree with the Examiner that Appellant’s argument is
related to the functional aspect of Appellant’s invention, namely, its use for
advertising.2 See Ans. 4. It is well established that features of an apparatus
may be recited either structurally or functionally, however, claims directed
to an apparatus must be distinguished from the prior art in terms of structure
rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997). “[A]pparatus claims cover what a device is, not what a device does.”

2 An ordinary and customary meaning of the term “advertising” that is
most consistent with the Specification and the understanding of those of
ordinary skill in the art is “to call public attention to esp. by emphasizing
desirable qualities so as to arouse a desire to buy or patronize: PROMOTE.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).

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Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
Therefore, as long as the device of Spector, modified as proposed by
the Examiner in view of the teachings of Gullickson and Shure, is capable
of acting as an advertising system, the device satisfies the limitation of an
“advertising system,” as called for by claim 14. Like the Examiner, we find
that Spector specifically teaches a device that is an effigy of a well-known
character such as a wrestler seen on TV. Ans. 3. See also, Spector, col. 5, ll.
18-21 and fig. 6. Accordingly, the device of Spector functions as an
“advertising system” because it calls public attention to, that is, promotes to
the public both the wrestler and the TV program on which the wrestler
appears. The modifications proposed by the Examiner do not alter that
function. As such, because the modified Spector device is capable of acting
as an advertising system, we conclude that the device satisfies the limitation
of an “advertising system,” as called for by claim 14.
Appellant further argues that “there is not proper motivation to
combine Shure and Spector” because “[t]he powered sensors in Shure are
not taught for determining the change in momentum of the device as a
whole,” but rather, “they are surface sensors utilized to register when a ball
hits the surface.” Br. 5-6. In other words, Appellant appears to argue that
that the sensors of Shure are not capable of working with the device of
Spector.
First, we note that claim 14 does not require “powered sensors . . . for
determining the change in momentum of the device as a whole,” but merely
“an impact sensor.” See Br. 5-6; Claims Appendix. It is well established
that limitations not appearing in the claims cannot be relied upon for
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patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore,
Appellant has not provided any evidence that the sensors of Shure are not
capable of working with the device of Spector. An attorney's arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). We agree with the Examiner that Spector discloses an impact
detection device 22 and Shure discloses an impact responsive system having
a power supply that powers both the impact sensor and the audio clip device.
Ans. 3-4.
Further, it is our finding that when the toy device of Spector is caught
by a person, the resulting impact causes contact M to flex and engage
contact C, thereby closing the switch 22 to activate chip 24 to output
recorded sounds to loudspeaker 25. Spector, col. 4, ll. 1-14 and fig. 4.
Similarly, in Shure, impact sensors 32a-32c are switches that are depressed
upon impact so as to activate integrated circuit 68 to output recorded sounds
to loudspeaker 70. Shure, col. 4, ll. 57-62; col. 5, ll. 35-45; and fig. 2.
Hence, the modification proposed by the Examiner appears to be nothing
more than “the simple substitution of one known element for another.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). That is, the mechanical
switch 22 of Spector is substituted by the electrically powered switch
(impact sensor) 32a-32c of Shure. Like the Examiner, we find that a person
of ordinary skill in the art would have readily appreciated that it would have
been advantageous to replace the mechanical switch in the toy device of
Spector with the electrically powered switch (impact sensor) 32a-32c of
Shure “in order to create a solely electronic [toy] device.” See Ans. 4.
“Applying modern electronics to older mechanical devices has been
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commonplace in recent years.” Leapfrog Enterprises, Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).
In conclusion, we do not find any flaws in the Examiner’s reason for
combining the teachings of Spector, Gullickson, and Shure. Therefore, the
rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Spector,
Gullickson, and Shure, and of claims 15-18 standing or falling with claim
14, is sustained.

SUMMARY
The decision of the Examiner to reject claims 14-18 is affirmed.
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) (2007).

AFFIRMED

mls

DICKINSON WRIGHT, PLLC
38525 WOODWARD AVENUE, SUITE 2000
BLOOMFIELD HILLS, MI 48304