Ex parte Spector

Board of Patent Appeals and Interferences

Aug 8, 2001

08709764 (B.P.A.I. Aug. 8, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD SPECTOR
____________
Appeal No. 1998-0235
Application No. 08/709,764
____________
ON BRIEF
____________
Before CALVERT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to allow
claims 1, 4, 5 and 8, as amended subsequent to the final rejection.
These claims constitute all of the claims pending in this
application.
We REVERSE.
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Application No. 08/709,764
Page 2
BACKGROUND
The appellant's invention relates to a toy projectile and
platform assembly. A copy of claim 1 under appeal is set
forth in the opinion section below. A copy of claims 4, 5 and
8 under appeal is set forth in the appendix to the appellant's
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Uhrig 773,692 Nov. 1,
1904
Flora 847,755 Mar. 19,
1907
Fortunato 3,286,392 Nov.
22, 1966
Johnson 4,512,690 Apr. 23,
1985
Claims 1, 4, 5 and 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over Uhrig in view of Fortunato, Johnson
and Flora.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
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Application No. 08/709,764
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rejection, we make reference to the answer (Paper No. 11,
mailed October 24, 1997) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 10,
filed June 25, 1997) and reply brief (Paper No. 12, filed
November 5, 1997) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1, 4, 5 and 8
under
35 U.S.C. § 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears
the initial burden of presenting a prima facie case of obviousness.
Appeal No. 1998-0235
Application No. 08/709,764
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See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993). A prima facie case of obviousness is established by
presenting evidence that would have led one of ordinary skill in the
art to combine the relevant teachings of the references to arrive at
the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016,
173 USPQ 560, 562 (CCPA 1972).
Claim 1, the only independent claim on appeal, reads as
follows:
A toy projectile and platform assembly comprising:
A. A projectile molded of resilient foam plastic
material in the form of a figure having a head forming a
nose of the projectile, a torso joined to the head, a
pair of aims outstretched to resemble wings extending
from an upper end of the torso, and a pair of legs
extending from a lower end of the torso and a crotch
therebetween;
B. an internal elongated cavity formed in the torso
having an open front end at said crotch and a closed rear
end in an upper region of the torso in line with the
head;
C. An elastic spring received in the cavity having a
normal length which is shorter than the length of the
cavity to allow for expansion of the spring, said spring
being formed by a condom having a ring mounted at the
front end of the cavity and a stretchable shank extending
from the ring whose normal length is shorter than the
length of the cavity; and
D. A platform provided with a probe which when a
player pushes the figure down on the platform then enters
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Application No. 08/709,764
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the front end of the cavity to engage and stretch the
spring toward the rear end of the cavity and thereby
develop a latent force which when the player releases the
figure produces a thrust force as the spring resumes its
normal length to propel the figure into space whereby the
figure appears to be flying without any visible means of
propulsion.
Uhrig's invention relates to "a springing and dancing
puppet which first stands still and then after a certain time
springs high of itself" (lines 10-13). As shown in Figure 1,
Uhrig's invention includes (1) a box 1 provided with a border
b, a bottom c and a pin d; (2) a puppet h provided with a tube
e in which a spiral spring g is arranged; and (3) a rubber
ring f provided on the tube e. Uhrig's invention operates
(see lines 20-25) by
(1) pressing the tube e of puppet h down over the pin d so
that rubber ring f is below border b, thus compressing spring
g;
(2) permitting the rubber ring f to gradually proceed upwardly
through the border b; and (3) upon the rubber ring f passing
the border b, the puppet h springs high.
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Fortunato's invention relates to toys designed to
simulate actual weapons and rockets. As shown in Figures 1-2,
Fortunato's invention includes a hollow rocket body 10 having
therein a rubber band 16 to propel the rocket body through the
air when the rubber band is stretched by a launcher push rod
19 of launcher assembly 24.
Johnson's invention relates to a toy glider. Johnson
teaches (column 1, lines 60-68) that the toy glider can be
made from Styrofoam® and be formed in the configuration of a
super hero such as "Superman."
Flora's invention relates to a pneumatic toy. Flora
teaches (page 1, lines 55-92) that the pneumatic toy is first
inflated, then a pouch or sack 4 is pressed inwardly causing
an increase in pressure in the pneumatic toy, and then upon
release of the pneumatic toy, the pouch or sack 4 will assume
its normal position causing the pneumatic toy to leap or jump.
The appellant argues (brief, p. 7) that nothing in the
applied prior art suggests the claimed condom spring in an
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Application No. 08/709,764
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internal cavity extending inwardly from the crotch of a
projectile. We agree. In that regard, while the combined
teachings of the applied prior art may suggest a rubber band
be provided in an internal cavity extending inwardly from the
crotch of a projectile, the combined teachings of the applied
prior art do not teach or suggest using a condom spring in an
internal cavity extending inwardly from the crotch of a
projectile. In our view, the teachings of Flora are not
sufficient for a person of ordinary skill in the art at the
time the invention was made to have replaced either the
elastic spring of Uhrig (i.e., spring g) or the elastic spring
of Fortunato (i.e., rubber band 16) with a condom spring as
recited in the claims under appeal (i.e., a condom having a
ring mounted at the front end of the cavity (an internal
elongated cavity formed in the torso having an open front end
at the crotch and a closed rear end in an upper region of the
torso in line with the head)) and a stretchable shank
extending from the ring whose normal length is shorter than
the length of the cavity because Flora's pouch is used to
increase pressure in the toy and not as an elastic spring.
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In our view, the only suggestion for modifying Uhrig in
the manner proposed by the examiner to meet the above-noted
condom spring limitation stems from hindsight knowledge
derived from the appellant's own disclosure. The use of such
hindsight knowledge to support an obviousness rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). It follows that we cannot
sustain the examiner's rejection of claims 1, 4, 5 and 8.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 4, 5 and 8 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-0235
Application No. 08/709,764
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KEITH D. NOWAK
LIEBERMAN & NOWAK, LLP
350 FIFTH AVENUE
NEW YORK, NY 10118
Appeal No. 1998-0235
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