Ex Parte Trichak

Board of Patent Appeals and Interferences

Mar 30, 2009

10989915 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANGELIQUE M. TRICHAK,
Appellant1
____________________

Appeal 2008-5412
Application 10/989,915
Technology Center 3700
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Decided: March 31, 20092
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Before CAROL A. SPIEGEL, DEMETRA M. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
Appellant appeals under 35 U.S.C. § 134 from an Examiner's final
rejection of claims 1-13, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

1 Angelique M. Trichak is also the real party in interest (Brief on Appeal
Under 37 CFR 41.37, filed 30 March 2007 ("Br.").
2 The two month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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A. Subject matter on appeal
The subject matter on appeal is directed to a flying saucer or disc, e.g.,
a Frisbee, having a plurality of clips on its top surface for removably
receiving disposable chemiluminescent tubes, e.g., glo-sticks, so that the
disc appears illuminated when spun in darkness. Claim 1 is illustrative and
reads (Br. App'x.3 1):
1. An illuminatable aerodynamic saucer,
comprising: a generally annular plastic saucer
having a generally flat disc portion with a central
axis of rotation and a curved downwardly turned
rim portion extending from the generally flat disc
portion, said disc portion having a top surface and
a bottom surface, said bottom surface being
smooth, continuous, and free of any downward
protrusions, said disc portion top surface having a
plurality of elongated clips adapted to removably
receive disposable chemiluminescent tubes.
Claim 7 requires the saucer to be made of a translucent material (Br. App'x
2).
B. The Examiner's position
The Examiner has rejected claims 1-13 as unpatentable under 35
U.S.C. § 103(a) over Davidson4 in view of Muira5 and Boatman6 (Ans.7 3-
5).

3 Appendix to Brief on Appeal Claims on Appeal, filed 30March 2007 ("Br.
App'x.").
4 U.S. Patent 5,474,482, Aerodynamic Rotor with Chemiluminescent Light
Source Holder, issued 12 December 1995 to Frankie G. Davidson
("Davidson").
5 U.S. Patent 4,165,580, Flying Toy, issued 28 August 1979, to Motoshi
Miura ("Miura").
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According to the Examiner, Davidson discloses an annular plastic
saucer having a flat disc portion (21a, 21b, 21c, 21d) with a central axis of
rotation and a rim portion (20), wherein the flat disc portion (21a, 21b, 21c,
21d) has top and bottom surfaces, wherein the bottom surface is free of any
downward protrusions and the top surface has a plurality of integrally
molded elongated clips (30, 32, 34) for receiving disposable
chemiluminescent tubes (80). Further according to the Examiner, Davidson
discloses that the saucer is made of a translucent material at column 6, lines
13-17. (Ans. 3-4).
Stating that Davidson does not disclose the bottom surface of the flat
disc portion "being smooth, continuous, and free of any downward
protrusions," the Examiner relies on Miura to teach a flying disc toy having
these features (Ans. 4). The Examiner concluded that it would been obvious
to modify Davidson by adding the features of Miura "since such a
modification would provide varied aerodynamic flight characteristics" (Ans.
4).
Acknowledging that Davidson does not disclose a rim which is
downwardly turned, the Examiner relies on Boatman as disclosing, at
column 1, lines 17-18, that a downwardly turned rim portion would
approximate the shape of an airfoil in a flying disc toy (Ans. 4-5). The
Examiner concluded that it would have been obvious to modify the rim of
Davidson as disclosed by Boatman to approximate the shape of an airfoil
(Ans. 5).

6 U.S. Patent 4,207,702, Light Transmissive Flying Saucer with
Chemiluminescent Lightstick, issued 17 January 1980, to Boatman et al.
("Boatman").
7 Examiner's Answer mailed 27 August 2007 ("Ans.").
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B. Appellant's arguments
Appellant points out that Davidson elements 21a, 21b, 21c, 2d are the
angular blades of a flying rotor used to provide lift (Br. 7-8). Appellant
argues that modifying Davidson by providing a smooth and continuous
surface to 21a, 21b, 21c, 21d as taught by Miura would prevent the rotor of
Davis from being propelled upwardly by the angular blades, thereby
rendering the rotor incapable of flying, i.e., inoperative (Br. 10).
Appellant further argues that the bottom surface of Davidson's blades
are not "free of any downward protrusions" because Davidson expressly
discloses at column 5, beginning at line 44, that the chemiluminescent tube
holder 30 is integrally formed on the bottom surface of the blade and the
Examiner has provided no motivation to move the holder to the upper
surface of the blade (Br. 8-9).
Appellant also argues that the Examiner has failed to address the
limitation that the saucer be made of a translucent material as recited in
claims 7, 12, and 13 (Br. 10-11).
C. Issues
At issue is whether Appellant has shown (i) that the Examiner's
proposed modification of Davidson by Miura would render Davidson
inoperative, (ii) that the Examiner erred in finding the bottom surface of disc
portion 21a, 21b, 21c, and 21d is "free of any downward protrusions," and
(iii) that the Examiner erred in finding that Davidson disclosed a saucer
made of translucent material.

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II. Findings of Fact (FF)
[1] Davidson discloses a toy 10 comprised of a rotor 10a with an
attachable shaft 10b and a hand-held pull-cord launcher assembly 10c
shown in perspective view from the bottom side of the rotor in Figure
1 (Davidson 1:9-11; 4:5-9; 5:1-3). Figure 1 is reproduced below.

{Figure 1 is a perspective view of the toy of Davidson showing the bottom
side of the rotor and the holder for attaching the self-contained
chemiluminescent light source to one of the blades thereof; the shaft
attached to the rotor thereof; and the pull-cord launcher thereof.}

[2] According to Davidson, rotor 10a is preferably made of an integrally
molded plastic, e.g., polypropylene, which forms a system of pitched
blades (airfoils) 21a, 21b, 21c, 21d which converge horizontally to an
axis ring 22. An annular band 24 extends continuously from the
extreme outer edge of one blade to that of the next to form the
perimeter of the rotor. (Davidson 5:8-18.)
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[3] Further according to Davidson, holder 30 for a light source 80
comprises two U-shaped receptacles 33, 34 "on the bottom side of the
blade" 21a (Davidson 5:43-49).
[4] At column 6, lines 13-17, Davidson discloses that
[w]hen the rotor 10a is launched in the dark and
rotates rapidly, the luminescent device 80 creates a
glowing circle of light which is formed and
patterned by the direct light emitted from device
80 attached to the rotor 10a in motion.
III. Discussion
A. Legal principles
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). All claim
limitations must be considered. In re Royka, 490 F.2d 981, 985 (CCPA
1974). Where a proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg.
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984).
B. Analysis
The Examiner has not challenged, replied to or in any apparent way
rebutted Appellant's argument (Br. 10) that modifying the rotor blades of
Davidson into a smooth, continuous bottom surface free of any downward
protrusions would destroy the operability of the rotor. Effectively removing
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the blades from a rotor and replacing them with a smooth, continuous disc
would appear to remove the upward air lift/thrust capability of the rotor.
Secondly, Davidson expressly identifies a protrusion intentionally
formed on the bottom surface of disc portion 21a – holder 30 for light source
80 (FF 3). In response, the Examiner contends that Appellant has not recited
reversing the position of the chemiluminescent clips in the claims that Miura
is being relied upon to show this limitation (Ans. 5). The first contention is
irrelevant to the claimed invention and modifying Davidson by Miura to
provide a smooth, continuous bottom surface free of any downward
protrusions would destroy the intended purpose of Davidson as stated above.
Finally, it is unclear how column 6, lines 13-17 of Davidson (see FF
4) supports a finding that Davidson discloses a saucer made of translucent
material. At best, Davidson discloses a rotor preferably made of integrally
molded polypropylene plastic (FF 2) and is silent as to whether the
polypropylene plastic is translucent or not.
Thus, we are constrained to reverse the Examiner's rejection of claims
1-13 under § 103(a).
C. Conclusion
Appellant has shown (i) that the Examiner's proposed modification of
Davidson by Miura would render Davidson inoperative, (ii) that the
Examiner erred in finding the bottom surface of disc portion 21a, 21b, 21c,
and 21d is "free of any downward protrusions," and (iii) that the Examiner
erred in finding that Davidson disclosed a saucer made of translucent
material.

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IV. Order
Based on the foregoing, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-13 as
unpatentable under 35 U.S.C. § 103(a) over Davidson in view of Miura and
Boatsman is REVERSED.
REVERSED
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MAT

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