Ex Parte Shuman

Patent Trial and Appeal Board

Sep 7, 2016

12315136 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/315, 136 11/26/2008
7590 09/08/2016
Barry M. Shuman
21616 Califa Street, Apt 126
Woodland Hills, CA 91367
FIRST NAMED INVENTOR
Barry M. Shuman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4806
EXAMINER
TRAN,CONP
ART UNIT PAPER NUMBER
2654
MAILDATE DELIVERY MODE
09/08/2016 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 BARRY M. SHUMAN1
Appeal2015-003020
Application 12/315, 136
Technology Center 2600
Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and STEVEN M.
AMUNDSON Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1 through 17, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Inventor Shuman is a registered patent agent prosecuting this application
Pro Se.
Appeal2015-003020
Application 12/315, 136
Il'.JVENTI ON
The invention is directed to a Halloween greeting system including a
container that has a voice recorder/audio player which is triggered by a
remote control to play a recorded message. See Abstract of Appellant's
Specification.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the invention and reproduced below:
1. A Halloween greeting system comprising:
a Halloween treat container comprising a voice
recorder/audio player combination device; and
a remote control unit for triggering said voice
recorder/audio player combination device to play a
recorded message.
REFERENCES AND REJECTIONS AT ISSUE
The Examiner rejected claims 1 through 10, 12, 13, 15, and 16 under
35 U.S.C. § 103(a) as being unpatentable over Leeds et al. (U.S.
2009/0018841 Al, Jan. 15, 2009) and Lafleur et al. (US 2007/0146153 Al,
June 28, 2007). Ans. 2-11. 2
The Examiner rejected claims 11, 14, and 17 under 35 U.S.C. § 103(a)
as being unpatentable over Leeds et al., Lafleur and Inotsume (US
5,038,401, Aug. 6, 1991). Ans. 11-12.
2 Throughout this Opinion we refer to the Appeal Brief dated August 21,
2014, and the Examiner's Answer mailed on December 2, 2014.
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Application 12/315, 136
ISSUES
Appellant argues on pages 8 through 13 of the Appeal Brief, that the
Examiner's rejection of independent claim 1 is in error. These arguments
present us with the following issues:
1) Did the Examiner err in finding that the teachings of Lafleur do
not teach away from the use of a remote control unit?
2) Did the Examiner err in combining the teachings of Leeds and
Lafleur as the combination would render Lafleur' s device
unsatisfactory for its intended purpose?
3) Did the Examiner err in combining the teachings of Leeds and
Lafleur as the combination would change the principle of
operation of Lafleur' s device?
ANALYSIS
We have reviewed Appellant's arguments in the Brief, the Examiner's
rejections and the Examiner's response to the Appellant's arguments.
Appellant's arguments have not persuaded us of error in the Examiner's
rejections of claims 1 through 17.
With respect to the first issue, Appellant argues that Lafleur is
directed to a motion sensing device and as such teaches away from using a
remote control unit. App Br. 8. Appellant argues that Lafleur, which
discusses the prior art as limiting the monitoring of the item by requiring
user interaction, discourages the use of a remote control. App. Br 8 (citing
Lafleur, para 8). The Examiner in response finds that Lafleur does not state
that a remote control could not be used and that Lafleur as a whole teaches
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Application 12/315, 136
an ornamental member attached to a sound-producing device which is
similar to Leeds' teaching. Ans. 14 (citing Lafleur Fig. 6, i-f 19 and Leeds
Figs. 1-3, 7, 8). We concur with the Examiner. "'A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant."' Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332
(Fed. Cir. 2008) (quoting Optivus Tech., Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 989 (Fed. Cir. 2006)). A reference does not teach away if it
merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, while the Lafleur reference does make use of a motion sensor
and not a remote control, as identified by the Examiner, Lafleur does not
expressly discourage use of a remote control. We do not consider LaFleur's
discussion of the use of a motion sensor as being an improvement over the
prior art, which uses more direct user interaction, to discourage the use of a
remote control; rather it is just another mechanism to trigger the sound
circuit in the ornamental member (Halloween container). Thus, Appellant's
arguments directed to the first issue have not persuaded us of error in the
Examiner's rejection of claim 1.
Appellant's arguments regarding the second issue assert that Lafleur
is directed to motion sensing as its primary objective and that modifying
Lafleur to include a remote control renders it unsatisfactory for this purpose.
App. Br. 9-10. Further, Appellant asserts that modifying Leeds to use
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Application 12/315, 136
motion sensing would render Leeds unsatisfactory for its intended pu1 pose.
App. Br 12. The Examiner responds by finding that the rejection is based
upon combining Leeds' remote control with LaFleur's trick-or-treat bag with
a sound-producing device. The combination does not change the principle
of operation as the trick-or-treat bag's purpose has not been changed. Ans.
15-16. We are not persuaded of error. Further, as discussed above the
Examiner's rejection is based on Lafleur' s teaching of attaching a sound-
producing device on an ornamental member (Halloween container). This
purpose of LaFleur's device is not changed by incorporating Leeds' remote
control audio player; rather it is just adding a different triggering mechanism
for the sound-producing device (i.e. the modified device still has the
operation of a sound-producing device on a Halloween container). With
respect to Appellant's argument directed to using the motion sensing in
Leeds' device, we are not persuaded of error as that is not the rejection put
forth by the Examiner (see Ans. 19). Thus, Appellant's arguments directed
to the second issue have not persuaded us of error in the Examiner's
rejection.
Appellant's arguments regarding the third issue assert that Lafleur is
directed to motion sensing as its primary objective and to change the
motion-sensing technology would change the principle of operation of
Lafleur. App. Br. 10. Further, Appellant argues that modifying Leeds to
make use of motion sensing would change the principle of operation of
Leeds. App. Br 2. Similar to the Examiner's response to the first issue, the
Examiner relies upon Lafleur' s teaching of a sound-producing device on a
Halloween container. Ans. 17. In combination with Leeds, the Examiner
finds that the claims are obvious. Id. We concur, while Leeds does disclose
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a motion-activated sound-producing device, it also teaches that such devices
can be attached to other devices such as Halloween containers. It is the
operation of having a sound-producing device on a container that is relied
upon for the combination, and this operation is not changed. The fact that
there are other aspects which may be changed is the nature of an
obviousness rejection. With respect to Appellant's argument directed to
using the motion sensing in Leeds' device, we are not persuaded of error as
that is not the rejection put forth by the Examiner (see Ans. 20). Thus,
Appellant's arguments directed to the third issue have not persuaded us of
error in the Examiner's rejection.
As the arguments directed to these three issues have not persuaded us
of error in the Examiner's rejection of claim 1, we sustain the Examiner's
rejection of claim 1. Appellant's arguments have grouped claims 2 through
10, 12, 13, 15, and 16 with claim 1. Accordingly, we similarly sustain the
Examiner's rejection of these claims.
Appellant's arguments directed to claims 11, 14, and 17 assert the
additional teaching of Inotsume does not remedy the deficiencies in the
rejection of claim 1. As discussed above, Appellant's arguments have not
persuaded us of deficiencies in the rejection of claim 1. Accordingly, we
sustain the Examiner's rejection of claims 11, 14, and 17 for the same
reasons as claim 1.
DECISION
We sustain the Examiner's rejections of claims 1 through 17 under 35
U.S.C. § 103(a).
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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)(l )(iv).
AFFIRMED
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