10668049 (B.P.A.I. Feb. 8, 2012)

Ex Parte Theel

Board of Patent Appeals and InterferencesFeb 8, 2012

10668049 (B.P.A.I. Feb. 8, 2012)

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. 10/668,049 09/22/2003 Julie Theel Theel.PetToy 7272 23616 7590 02/08/2012 LAW OFFICES OF CLEMENT CHENG 17220 NEWHOPE STREET #127 FOUNTAIN VALLEY, CA 92708 EXAMINER HYLINSKI, ALYSSA MARIE ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 02/08/2012 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 JULIE THEEL ____________ Appeal 2010-008889 Application 10/668,049 Technology Center 3700 ____________ Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008889 Application 10/668,049 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 21-30, 41-47, and 55-62. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to a toy for a dog that rips apart and can be reassembled for reuse (Spec. 1:23-24). Claim 21, reproduced below, is further illustrative of the claimed subject matter. 21. A pet toy device for a house pet, the device comprising: a pet toy main member having an exterior surface and one or more interface surfaces, wherein the main member exterior surface is non-destructively gripable by a house pet using its mouth and paws, wherein the main member is adapted to teeth of a dog and to withstand biting, chewing, and rending, and wherein the pet toy main member is shaped and sized to prevent swallowing by a house pet; and one or more pet toy secondary members, each pet toy secondary member having an exterior surface that is non- destructively gripable by a house pet using its mouth and paws; each pet toy secondary member further having an interface surface that corresponds to the main member interface surfaces, wherein the secondary members are adapted to teeth of a dog and to withstand biting, chewing, and rending, and wherein the pet toy secondary members are shaped and sized to prevent swallowing by a house pet; wherein the interface surfaces of the main member and the interface surfaces of the secondary members are attachable by a human to create an attached toy state, non-destructively detachable by a house pet using its mouth and paws to create a detached toy state, and repeatably reattachable by a human to recreate an attached toy state after being detached by a house pet; thereby enabling a house pet to tear apart the main and secondary members of the toy by gripping the exterior surfaces of the toy with its paws and mouth, and subsequently enabling a Appeal 2010-008889 Application 10/668,049 3 human to easily reassemble the toy by reattaching the interface surfaces of the main member and secondary members. Claims 21-25, 28-29, 41-47, and 55-62 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Shamitoff (US 6,887,120 B2, iss. May 3, 2005)1; claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Shamitoff in view of Russell (US 5,195,917, iss. Mar. 23, 1993); claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Shamitoff in view of Alonso (US 3,375,604, iss. Apr. 2, 1968); claim 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Shamitoff in view of Essebaggers (US 5,108,100, iss. Apr. 28, 1992). We AFFIRM. ANALYSIS We are not persuaded the Examiner erred in asserting Shamitoff does not render obvious independent claim 21 (App. Br. 4-5). Appellant asserts that Shamitoff does not disclose a dog toy (App. Br. 4). However, many objects are capable of being dog toys. Accordingly, whether or not an object is a dog toy must be distinguished with structural differences. Appellant does claim “[t]he main member and secondary members being adapted to teeth of a dog” (App. Br. 4). However, the Examiner properly cites In re Leshin, 277 F.2d 197, 199 (CCPA 1960) for the proposition that mere selection of known materials on the basis of suitability for the intended use is entirely obvious (Exam’r’s Ans. 4, 7-8). 1 Page 3 of the Examiner’s Answer lists the rejection of claims 21-25, 28-29, 41-44, and 46-47 as unpatentable over Shamitoff, while pages 6-7 of the Examiner’s Answer lists the rejections of claims 45 and 55-62 on the same grounds. Appeal 2010-008889 Application 10/668,049 4 Accordingly, we agree it would have been obvious to select a material for the main and second members of Shamitoff that are “adapted to teeth of a dog and to withstand biting, chewing, and rending,” as recited in independent claim 21. Appellant also asserts that Shamitoff discloses “small detachable portions [that] are extremely small and easy to swallow by a common pet dog such as a Labrador Retriever” (App. Br. 4). However, “small” is a relative term, as there are dogs “small” enough that the detachable portions would be too large for them to swallow, and “small” detachable portions large enough that no dog could swallow them. Moreover, the Examiner properly cites In re Rose, 220 F.2d 459, 463 (CCPA 1955) for the proposition that a mere change in the size of a component would be obvious to one of ordinary skill in the art (Exam’r’s Ans. 4-5, 7-8). Accordingly, we agree it would have been obvious to change the sizes of the detachable components such that they “[are] shaped and sized to prevent swallowing by a house pet,” as recited in independent claim 21. Furthermore, Figure 2 of Shamitoff discloses an embodiment with none of the “small detachable portions” referenced at column 5, lines 5-8. Appellant asserts that Shamitoff teaches away from being used as a dog toy (App. Br. 4). However, a teaching away requires discouragement. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be said to teach away when a person of ordinary skill, upon [examining] 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”). Shamitoff makes no mention of, let alone discouragement for, using any of the disclosed toys as dog toys. Appeal 2010-008889 Application 10/668,049 5 Appellant also presents a Declaration under 37 C.F.R. § 1.132 of Julie Theel, dated August 21, 2009, for secondary considerations of non- obviousness (App. Br. 4-5). However, Appellant is not permitted to enter previously unentered affidavits or evidence after filing a notice of appeal, with limited exceptions that do not apply here. See 37 C.F.R. § 41.33(d)(2). DECISION The decision of the Examiner to reject claims 21-30, 41-47, and 55-62 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). AFFIRMED hh