Ex Parte Simonyan et al

Patent Trial and Appeal Board

May 6, 2016

12633367 (P.T.A.B. May. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/633,367 12/08/2009 MANVEL SIMONY AN
82357 7590 05/10/2016
James Ray & Associates Intellectual Property, LLC
4268 Northern Pike Rd
Monroeville, PA 15146
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.
MSS 09170 5533
EXAMINER
WONG, STEVEN B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/10/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
jray@jrayassoc.com
apogeegroup@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANVEL SIMONY AN and SARKIS SIMONY AN
Appeal2014-003401
Application 12/633,367
Technology Center 3700
Before MICHELLE R. OSINSKI, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Manvel Simonyan and Sarkis Simonyan (Appellants) seek review,
under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1, 2,
and 4--13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-003401
Application 12/633,367
BACKGROUND
The disclosed subject matter "relates to a puzzle game in which pieces
can be arranged in a frame creating different images." Spec. 1, 11. 8-10.
Claims 1 and 9 are independent. Claim 1 is reproduced below:
1. An apparatus for providing puzzle
enthusiasts with a creative type of puzzle, said
apparatus comprising:
(a) a substantially rectangular frame member
for containing such puzzle, said frame member
formed of a first predetermined material, wherein
said frame member has a top portion, bottom
portion, and two side portions substantially shorter
than said top and bottom portions, each portion
having two spaced-apart sides;
(b) a plurality of sticks having a second
predetermined shape and formed of a second
predetermined material and having a predetermined
size, said sticks having a preprinted design thereon
for placing in said frame member to create a design
therein;
( c) an opening disposed between said two
spaced-apart sides at said top portion of said frame
member, wherein said sticks are one of added and
removed independent of removal of other sticks
from said frame by means of said opening in a
manner so as to form such design therein that is
viewable through said frame.
2
Appeal2014-003401
Application 12/633,367
REJECTION 1
Claims 1, 2, and 4--13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wetzel (US 1,257,432, issued Feb. 26, 1918) and Wilson
(US 5,377,434, issued Jan. 3, 1995).
DISCUSSION
Appellants argue the patentability of the two independent claims in
this rejection---claims 1 and 9-based on the same arguments; Appellants do
not provide separate arguments for any dependent claims. Appeal Br. 7-12.
We select claim 1 as representative, with the remaining claims standing or
falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2013).
In rejecting claim 1, the Examiner found that "Wetzel discloses a
puzzle game comprising a rectangular frame (b) for containing a puzzle, the
frame having top, bottom and two side portions" and discloses "a plurality of
sticks (a) having preprinted designs thereon for arrangement into a
completed design" but that "Wetzel lacks the teaching for an opening for
permitting removal and addition of the sticks within the frame." Final Act. 3
(citing Wetzel, Fig. 3). The Examiner found, however, that "Wilson reveals
that it is well known in the art of signs and displays to provide a frame with
an opening along the top of the frame in order to permit insertion and
1 The Examiner rejected claim 8 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention. See Final Act. 2 (dated Feb. 26, 2013). In
the Answer, the Examiner withdraws this rejection. See Ans. 4. The
Examiner also rejected claim 8 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. See Final Act. 2.
Although not addressed in the Answer, this rejection was explicitly
withdrawn in an Advisory Action, dated July 12, 2013. Adv. Act. 2.
3
Appeal2014-003401
Application 12/633,367
removal of display elements from the frame." Id. (citing Wilson, Fig. 2).
The Examiner stated that it would have been obvious ( 1) "to provide the
frame of Wetzel with a slot in order to permit addition and removal of the
sticks from the frame" and (2) "to form the puzzle such that the top portion
is the long side of the puzzle in order to provide a different orientation for
the puzzle with the completed design being a panoramic type scene." Id.
First, Appellants contend that "dividers 76 and 78 of Wilson, that play
an important role of guiding and positioning elements, must be included into
consideration of combining Wilson with Wetzel." Appeal Br. 8; see also,
e.g., Wilson, Fig. 10 (showing dividers 76 and 78). Appellants argue that
"[ o ]therwise, reliance on Wilson solely 'for his teaching[] ... of the frame
with an opening[,'] does not consider Wilson's invention 'as a whole."'
Appeal Br. 8 (quoting Adv. Act. 2 and MPEP § 2142.02).2 Appellants argue
that, if included, "these dividers would obscure the final puzzle picture to be
generated by manipulation of the sticks/rods" and render the modified
device "inoperable for the intended purpose of constructing/manipulating [a]
picture puzzle by way of removal and addition of sticks." Id.
We are not apprised of error because Appellants do not address the
rejection as articulated. The Examiner does not rely on Wilson for the
teaching of dividers 76/78, but rather, as noted by the Examiner, "merely for
2 Appellants cite section 2142.02 of the MPEP as providing: "A prior
art reference must be considered in its entirety, i.e., as a whole, including
portions that would lead away from the claimed invention." Appeal Br. 8
(citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721F.2d1540 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984)). The current version of the MPEP
includes this statement, but in a different section. See MPEP § 2141.02 (VI)
(9th ed., Rev. 07.2015, Nov. 2015).
4
Appeal2014-003401
Application 12/633,367
its teaching that [it] is well known in the art of[] frame displays to provide
an opening or slot in the frame in order to permit removal and insertion of
the display into the frame." Ans. 4--5.
In addition, the statements from W.L. Gore (reflected in the MPEP) do
not require an Examiner to incorporate all elements of a secondary reference
into the modified device. Instead, that decision, in relevant part, counsels
against "considering ... references in less than their entireties, i.e., in
disregarding disclosures in the references that diverge from and teach away
from the invention at hand." W.L. Gore, 721 F.2d at 1550. Appellants have
not shown Wilson to include such disclosures.
As to the argument regarding "hindsight" (Appeal Br. 8-9),
Appellants have not identified any knowledge that the Examiner relied upon
that was gleaned only from the Specification and that was not otherwise
within the level of ordinary skill at the time of the invention. See In re
McLaughlin, 443F.2d1392, 1395(CCPA1971).
Second, Appellants argue that "Wetzel provides a frame that is closed
on all sides" and that modifying Wetzel as proposed with the "opening of
Wilson will at least change the principle of operation of Wetzel (primary
reference) where care must be at least taken to prevent unintended lateral
movement of the sticks, if not destroy Wetzel's operability." Appeal Br. 9
(discussing MPEP § 2143.01 andin re Ratti, 270 F.2d 810 (CCPA 1959)).
Appellants also argue that "even though Wetzel stipulates change of the
order of the rod arrangement, he does not provide any enabling disclosure as
to structural requirements that would afford such change in order without
[e]ffect on operability of his puzzle." Id.
5
Appeal2014-003401
Application 12/633,367
Here, Appellants have not persuasively demonstrated that modifying
container "b" in Wetzel with slot 70 from Wilson, as proposed, would
change the basic principle under which Wetzel operates-i.e., allowing a
user to adjust the order and orientation of rods "a" (shown, for example, in
Figures 1 and 2) to display different designs. See Wetzel, p. 1, 11. 82-93. In
the modified device, this adjustment would occur using the added slot,
whereas, in Wetzel, it would occur through other means. On the facts here,
modifying how such adjustment occurs does not change the basic principles
of operation. Cf Ratti, 270 F.2d at 813 (stating that the proposed
modification would "require a substantial reconstruction and redesign of the
elements shown in [the prior art] as well as a change in the basic principles
under which the [prior art] was designed to operate").
For similar reasons, Appellants have not persuasively demonstrated
that the proposed modification would render the device of Wetzel unfit for
its intended purpose (i.e., would "destroy Wetzel's operability"). Cf In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing a rejection because
modifying the prior art by turning a filter upside down would render it
incapable of filtering, and thus, inoperable for its intended purpose).
As to the alleged lack of "any enabling disclosure," this argues against
Wetzel individually for not disclosing the relied-upon slot in Wilson. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.").
Third, Appellants contend that "Wetzel, even if operable for the sake
of argument, must include such slot in the side edge (perpendicular to the
direction of corrugations) so as to change order of arrangement" and that
6
Appeal2014-003401
Application 12/633,367
"mere evidence of the slot of Wilson at a top edge of a vertically disposed
frame is not sufficient to incorporate a slot within the frame of Wetzel."
Appeal Br. 9. According to Appellants, the "Examiner's
assertion/interpolation" from page 2 of the Advisory Action "that the slot
can be in the top edge, as viewed in Wetzel' s figures, is in error as the
corrugations are running parallel to such top edge" such that the slot "must
be in the side edge of Wetzel's frame as viewed in his figures." Id. at 9-10.3
Although Appellants are correct that Wilson teaches slot 70 on the top
of the frame (as depicted in, for example, Figure 2), Appellants have not
shown error in the findings and conclusions that it would have been obvious
to have ( 1) modified one of the sides of the frame of Wetzel (as depicted in,
for example, Figures 2 and 3) in order "to permit addition and removal of the
sticks from the frame" without interference by the corrugations (see Wetzel,
p. 1, 11. 71-80) and (2) rotated the modified device "to form the puzzle such
that the top portion is the long side of the puzzle in order to provide a
different orientation for the puzzle with the completed design being a
panoramic type scene." Final Act. 3; see also Ans. 5---6 (addressing the
"second aspect" and "third aspect"). In this manner, the proposed slot would
have been added to what would be the top of the modified device.
Fourth, Appellants argue that "Wetzel already provides for changing
the order of rods, and his invention operates successfully for the intended
purpose" and that the "[s]lot feature of Wilson would not have afforded
Wetzel with more than he already possessed." Appeal Br. 10.
3 Appellants do not identify the particular statement( s) at issue from
the Advisory Action.
7
Appeal2014-003401
Application 12/633,367
The Examiner responds that "while Wetzel may already provide for a
means for the changing of his rods, this teaching provides a suggestion to
one of ordinary skill in the art that other means may be provided that would
also permit this changing." Ans. 6; see also id. at 5 (stating that "Wetzel
teaches change of the order of the rod arrangement" (citing Wetzel, p. 1, 11.
90-93)). The Examiner states that "Wilson teaches one such method by
providing a slot in his frame which permits the changing of the display in the
frame" and that it would have been obvious to "provide the frame of Wetzel
with the slot of Wilson in order to provide a means for changing the display
or an alternative means for changing the display." Id. at 6.
For the Examiner's reasons as set forth above, we are not apprised of
error. See also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
("[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.").
Fifth, Appellants contend that "the edge slot [of the modified device]
would require a greater effort to insert/remove [the] rods of Wetzel, as each
rod must be aligned with and position[ed] into a cavity between a pair of
corrugations." Appeal Br. 10. As noted by the Examiner (Ans. 6), this
argument lacks evidentiary support. Even if the modified device did require
"greater effort," an inferior combination is not necessarily inapt for
obviousness purposes. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012).
Sixth, Appellants argue that "paragraph ( c) of ... claim 1 requires
'independent removal and addition of the sticks."' Appeal Br. 10.
Appellants quote passages from Wetzel (p. 1, 11. 23-28; p. 1, 11. 76-80) and
8
Appeal2014-003401
Application 12/633,367
argue that "Wetzel operates on the principle of rotating the sticks with,
perhaps, first changing an order of stick arrangement (see right column on
page 1 lines 90-93[)], so as to arrive at a desired design, but without
removal and additions of sticks/rods to achieve such desired design." Id. at
10-11. According to Appellants, "the apparatus of Wetzel is based on
rotation of sticks/rods and Wetzel further provides specific structure and
operates to prevent 'independent removal and addition of the sticks.'" Id. at
11. Appellants argue that "Wetzel is moot as to 'independent removal and
addition of sticks['] and Wilson fails to cure such deficiency as he is not
concerned with puzzles." Id. Thus, Appellants conclude that "the prior art
is not capable of performing the intended use." Id.
The Examiner responds that the modified device is "obviously
capable of permitting independent removal of the sticks from the frame" and
that the "combination of Wetzel in view of Wilson does not teach any
structure which would prevent a user from adding or removing sticks
independent of removal of other sticks from the frame." Ans. 7. As to the
first of the two passages relied on by Appellants, the Examiner states that the
argument "that Wetzel teaches that the sticks be held constantly in contact
with one another to produce the desired effect but be allowed to be rotated
relates to the flutes or corrugations that Wetzel provides and the lateral
movement of the rods within the frame." Id. As to the second passage, the
Examiner states that "providing an opening at the top of the frame would
permit their movement and would not prevent the puzzle from producing the
desired effect, namely maintaining the rods in their disposed position and
permitting rotation thereof." Id.
9
Appeal2014-003401
Application 12/633,367
"It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). As noted by the Examiner,
"[t]he limitation 'wherein said sticks are one of added or removed
independent of removal of other sticks from said frame' relates to the
intended use of the invention." Ans. 6-7. The fact that neither Wetzel nor
Wilson discloses the specific use recited does not demonstrate that the
limitation at issue structurally distinguishes over the proposed combination
of prior art. See Schreiber, 128 F.3d at 1477-79. Further, for the reasons
stated by the Examiner as set forth above, Appellants have not shown that
the modified device is incapable of the recited use.
Seventh, quoting from the nonprecedential decision in Ex parte
Clapp, 227 USPQ 972, 973 (BP AI 1985), Appellants assert that the
references relied on "fail to 'expressly or impliedly suggest the claimed
invention"' and argue that "the reasoning for combination is a 'mere
conclusory statement' and [that] the Examiner failed to present required
'convincing line of reasoning' with factual underpinning." Appeal Br. 12.
The Examiner responds that "Wetzel states that in order to increase
the difficulty of his puzzle the user may also be required to change the order
in which the rods have been previously arranged in the box" and thus,
"Wetzel provides a suggestion to one of ordinary skill in the art to provide
access to the rods via the frame." Ans 7-8 (citing Wetzel, p. 1, 11. 90-93).
The Examiner also states that "Wilson teaches that a known means for
permitting access to a display frame to permit removal and insertion of the
display is by providing an opening in the top of the frame" and that it would
have been obvious to "provide the frame of Wetzel with an opening at the
10
Appeal2014-003401
Application 12/633,367
top of the frame in order to permit removal and insertion of the rod display
in the frame." Id. at 8.
Although Appellants contend that the Examiner has failed to provide
sufficient articulated reasoning, Appellants do not persuasively address the
reasoning provided by the Examiner (Final Act. 3; Ans. 7-8). We determine
that the Examiner's reasoning supports a prima facie case of obviousness of
claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By not
persuasively addressing the reasoning provided, Appellants have not shown
error in the relevant findings or the conclusion as to obviousness. See id.
For the reasons above, we sustain the rejection of claim 1 as
unpatentable over the combined teachings relied upon by the Examiner.
Claims 2 and 4--13 fall with claim 1.
DECISION
We AFFIRM the decision to reject claims 1, 2, and 4--13.
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
11