Ex Parte SMOOT et alDownload PDFPatent Trial and Appeal BoardAug 28, 201814230873 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/230,873 03/31/2014 63652 7590 08/30/2018 DISNEY ENTERPRISES, INC. c/o Marsh Fischmann & Breyfogle LLP 8055 East Tufts A venue Suite 450 Denver, CO 80237 FIRST NAMED INVENTOR LANNY STARKES SMOOT 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. 09-DIS-067-PR-US-DIV 3303 EXAMINER HYLINSKI, ALYSSA MARIE ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): PTOMail@mfblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LANNY STARKES SMOOT, KATHERINE MAY BASSETT, and MARCUS HAMMOND 1 Appeal2017-003827 Application 14/230,873 Technology Center 3700 Before JOHN C. KERINS, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lanny Starkes Smoot et al. (Appellants) appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8 and 11-18. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Disney Enterprises, Inc. is identified as the real party in interest in this appeal. Br. 1. Appeal2017-003827 Application 14/230,873 THE INVENTION Appellants' invention is directed to a prosthetic eye assembly. Claims 1 and 8, reproduced below, are illustrative. 1. A prosthetic eye assembly, comprising: a spherical, hollow outer shell for positioning within a human eye socket of a prosthesis recipient, wherein the outer shell includes a front portion transmitting light with a first index of refraction; a suspension liquid contained within the outer shell, the suspension liquid transmitting light with a second index of refraction substantially matching the first index of refraction; a spherical body suspended within the liquid; and a magnetic drive assembly comprising a set of magnetic elements provided on a great circle of the spherical body and a magnetic field generator positioned a distance apart from the outer shell, wherein the magnetic field generator generates magnetic forces rotating the spherical body. 8. A prosthetic eye assembly, comprising: an outer shell; a suspension liquid contained within the outer shell; a spherical body suspended within the suspension liquid; and 2 Appeal2017-003827 Application 14/230,873 a magnetic drive assembly comprising magnetic elements on or in the spherical body and a magnetic field generator selectively generating magnetic forces interacting with the magnetic elements to position the spherical body within the outer shell, wherein the magnetic elements comprise a plurality of permanent magnets positioned equidistally on a great circle of the spherical body. REJECTIONS The Examiner rejects: (i) claims 1--4, 8, 11, and 15-17 under 35 U.S.C. § 103(a) as being unpatentable over Schavoir (US 1,981,333; issued November 20, 1934) in view of Erten (US 6,879,082 B2; issued April 12, 2005); and (ii) claims 1-8 and 11-18 under 35 U.S.C. § 103(a) as being unpatentable over Inamoto (JP 2007-143919 A; issued June 14, 2007) in view ofErten and further in view of Schavoir. ANALYSIS Rejection (i) - claims 1-4, 8, 11, and 15-17 over Schavoir in view of Erten Claims 1-4 The Examiner finds, for independent claim 1, that Schavoir discloses an artificial eye assembly having hollow outer shell 5, suspension liquid contained within the outer shell 5, and spherical body 6 suspended in the suspension liquid, wherein the outer shell includes a front portion transmitting light with a first index of refraction and the suspension liquid transmitting light with a second index of refraction substantially matching the first index of refraction. Final Act. 2-3. The 3 Appeal2017-003827 Application 14/230,873 Examiner finds that Schavoir does not disclose a magnetic drive assembly. Final Act. 3. The Examiner cites to Erten as teaching a magnetic drive assembly, and concludes that it would have been obvious to modify the device of Schavoir to include a magnetic drive assembly for the purpose of creating realistic eye movement. Final Act. 3. Appellants argue that Schavoir and Erten fail to account for the use of a suspension liquid with an index of refraction substantially matching the index of refraction of the outer shell. Br. 7. The Examiner cites page 1, line 119, through page 2, line 3, of Schavoir as disclosing this subject matter. Final Act. 2. The Examiner also cites a document titled Refractive Index of some common Liquids, Solids and Gases (hereinafter "Refractive Index document") as evidence regarding the indices of refraction of some of the materials disclosed in Schavoir. Final Act. 5. Referring to values disclosed in the document, the Examiner asserts that various materials identified in Schavoir are "capable of having combinations with substantially matching indexes of refraction", such as an index of refraction of 1.4 7 for an alcohol such as glycerol and an index of refraction of 1.5 for a glass. Ans. 2. The Examiner acknowledges "combinations having greater differences are also possible." Ans. 2. We agree with Appellants that the Schavoir reference is not sufficiently specific such that it can be said to disclose or suggest a suspension liquid with an index of refraction that would substantially match the index of refraction of the outer shell. Schavoir does not mention the index of refraction of the materials used, and does not disclose any particular combination of materials for the suspension liquid and the outer shell. Instead, Schavoir discloses that outer shell 5 may be made of celluloid, glass, or other suitable transparent material, and separately discloses that the suspension liquid may be alcohol, white oil, or other 4 Appeal2017-003827 Application 14/230,873 suitable clear liquid. Schavoir, page 1, lines 93-95, and page 1, line 120, through page 2, line 1. The Examiner does not identify any teaching or reason to use the specific combination of glass for the outer shell and alcohol for the suspension liquid, and does not identify any portion of Schavoir that would suggest to the person of ordinary skill in the art that glycerol should be selected as the specific type of alcohol. Moreover, the document cited by Examiner providing indices of refraction of various materials does not establish that glass necessarily has an index of refraction of 1.5, but instead discloses that crown glass has a refractive index of 1.5-1.62 and flint glass has a refractive index of 1.57-1.75. Refractive Index document, page 4. As to the Examiner's point that materials in Schavoir are "capable of having combinations" which result in the claimed configuration, even assuming this assertion is correct, it is insufficient, without a reasoned explanation as to why such materials would have been chosen, to establish obviousness of the claim limitation. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (that a prior art device can be modified using only an ordinary level of skill in the art does not establish that it would have been obvious to do so). Regarding the same limitation in claim 1, the Examiner alternatively asserts that this limitation is obvious "since it has further been held that the mere selection of known materials on the basis of suitability for the intended use would be entirely obvious (In re Leshin, 125 USPQ 416 (CCPA 1960))." Ans. 2. Appellants cite the original Specification as disclosing that the substantially matching refractive indices provide a particular advantage-giving the appearance that the entire eye is moving, when only the spherical body is actually moving. Br. 7. Therefore, Appellants contend, the subject matter at issue is not merely a matter of choosing a known suitable material, but instead is a selection of a particular 5 Appeal2017-003827 Application 14/230,873 material property for two different claim elements which provides a result not suggested by the prior art. Br. 11. We agree with Appellants that the Examiner's reliance on In re Leshin is misplaced in the present instance because the requisite factual findings have not been established. Specifically, it has not been established that the feature at issue is a selection of a known material based merely on suitability for the intended use. The Leshin precedent cited by the Examiner does not stand for the proposition that every claim feature involving a selection of materials is per se obvious. The Examiner has failed to provide an adequate reason as to why it would have been obvious to provide a suspension liquid with an index of refraction substantially matching the index of refraction of the outer shell. The rejection of claim 1 is therefore not sustained. The rejections of claims 2--4 are deficient for the same reasons discussed above with respect to claim 1, from which they depend, and these rejections are therefore not sustained. Claim 8 Appellants argue that a combination of Schavoir and Erten would not include a suspension liquid and a magnetic drive, but instead would have a magnetic drive with direct rolling contact between the inner sphere and the outer element. Br. 12. Appellants' argument does not address the rejection as articulated by the Examiner, which is that it would have been obvious to use a magnetic drive assembly in the device of Schavoir. Final Act. 3. Further, Appellants do not cite evidence showing that a skilled artisan would have viewed the magnetic drive assembly of Erten as being unsuitable for use with a suspension liquid, such that Appellants' version of the modification would be the 6 Appeal2017-003827 Application 14/230,873 only feasible one. To the contrary, Erten discloses that surfaces 22, 26 may be separated by a fluid. Erten, column 5, lines 62---63. Appellants do not provide an explanation as to why providing a magnetic drive assembly to a device that uses a suspension liquid would have been nonobvious, but instead merely state that, in their view, the combined teachings of the references would lead to a different configuration that would not correspond to the claim. This argument does not apprise us of Examiner error, and the rejection of claim 8 is sustained. Claims 11 and 15-17 Appellants contend that the rejection of independent claim 15 is erroneous because the combination of Schavoir and Erten does not account for the suspension liquid having a specific gravity to provide a neutral buoyancy to the spherical body. Br. 13, 15. The Examiner finds that this feature is accounted for by the disclosure of Schavoir that the inner sphere is "floatingly suspended" within the liquid. Ans. 3. Alternatively, the Examiner asserts that "a specific value for the specific gravity is not disclosed to provide a particular structural characteristic" and therefore "it is merely a recitation of the intended use." Ans. 4. Appellants have the better position. Schavoir discloses that member 6 "is adapted to float" in the liquid, and is "floatingly suspended." Schavoir, page 2, lines 1-5. These disclosures are sufficiently specific to establish that member 6 has buoyancy in the liquid, but are not sufficiently specific to establish that a specific gravity of the liquid provides neutral buoyancy. Regarding the assertion of the Examiner that the claim language is interpreted as a statement of intended use, this interpretation is unreasonably broad. Specific gravity is a characteristic or property of the suspension liquid, not an intended use. The rejection of claim 15 is not sustained. 7 Appeal2017-003827 Application 14/230,873 The rejections of claims 16 and 17 are deficient for the same reasons discussed above with respect to claim 15, from which they depend, and these rejections are therefore not sustained. Claim 11, which depends from independent claim 8, includes a limitation identical to that discussed above with respect to claim 15, and the rejection of claim 11 is therefore deficient for the same reason. The rejection of claim 11 is not sustained. Rejection (ii)- claims 1---8 and 11-18 over Inamoto/Erten/Schavoir The Examiner finds that Inamoto discloses an artificial eye assembly including artificial eye 5, wearable frame 1, and means 2 for tracking movement of a functioning eye of the prosthesis recipient. Final Act. 3--4. The rejection relies on the Schavoir and Erten references in the same manner as that discussed above. Final Act. 4--5. The rejection does not cite any portion of the Inamoto reference which would cure the deficiencies in the rejections discussed above. The rejections of claims 1-7, 11, and 15-18 are therefore deficient for the same reasons, and these rejections are not sustained. Appellants assert that the rejection of claim 8 over Inamoto, Erten, and Schavoir is erroneous for the same reasons discussed above with respect to the rejection over Schavoir and Erten. Br. 15. As noted above, we are not apprised of error in the Examiner's rejection of claim 8. As such, the rejection is sustained for the same reasons appearing above. No separate arguments for patentability of dependent claims 12 and 13 are advanced by Appellants. Those claims fall with independent claim 8. Appellants assert, with respect to claim 14, which also depends from claim 8, that the rejection is erroneous because it does not account for placing the 8 Appeal2017-003827 Application 14/230,873 magnetic field generator on the wearable frame. Br. 15. Regarding the limitation that the magnetic field generator be positioned in the wearable frame, Examiner cites In re Japikse, 181 F .2d 1019 (CCP A 1950) and asserts that this subject matter is an obvious change in positioning of a component. Ans. 4. Appellants contend that this rejection is deficient because there "is no discussion of the benefits or even possibility/practicality of placing a drive device" on the wearable frame. Br. 15, emphasis omitted. However, Appellants' own application does not include any evidence or even a discussion of specific benefits that result from the positioning required by the claim. Paragraph 61 of the Specification discusses the positioning of the magnetic field generator "in or on" frame 720, and thereafter describes the selective generation of a magnetic field to move the inner sphere. However, the function of magnetic field generator in generating a magnetic field is not disclosed as being related to or improved by the position of the magnetic field generator. Appellants' arguments, which merely state that benefits and practicality result from the claimed subject matter, are not persuasive to demonstrate Examiner error. The rejection of claim 14 is sustained. DECISIONS We reverse the rejections of claims 1-7, 11, and 15-18. We affirm the rejections of claims 8 and 12-14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation