Ex Parte Tsengas

Board of Patent Appeals and Interferences

Sep 14, 2006

11009164 (B.P.A.I. Sep. 14, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN TSENGAS
____________

Appeal No. 2006-1927
Application No. 11/009,164
Technology Center 3600
____________

ON BRIEF
____________

Before CRAWFORD, LEVY and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-8, all of the claims pending in the application.
We affirm in part.
Appeal No. 2006-1927 Page 2
Application No. 11/009,164

BACKGROUND
The appellant's invention relates to a canine chew toy. Claim 1 is
representative of the subject matter on appeal, and a copy of this claim can be
found in the appendix to the appellant’s brief.

The examiner relies upon the following as evidence of unpatentability:
Jiminez 6,634,970 Oct. 21, 2003

The appellant seeks our review of the examiner’s rejection of claims 1-8
under 35 U.S.C. § 102(e) as being anticipated by Jiminez.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed March 20, 2006) for the examiner's complete reasoning
in support of the rejection and to the appellant's brief (filed February 23, 2006) and
reply brief (filed April 3, 2006) for the appellant's arguments.
OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, the evidence submitted
by the appellant, and the respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the determinations that
follow. It is our view that, after consideration of the record before us, the
disclosure of Jiminez anticipates the subject matter of claims 1-6. We reverse the
examiner’s rejection of claims 7 and 8.
Appeal No. 2006-1927 Page 3
Application No. 11/009,164

In the rejection of independent claim 1, the examiner has determined that
Jiminez discloses a generally spherical body (12) having a plurality of
circumferential channels (14, 16, 18) for receiving and housing a plurality of rings
(20, 22, 24). (Examiner’s Answer, p. 3).
The appellant urges that the limitation of a “chew toy” as recited in the
preamble of claim 1, gives “life and meaning” to the remainder of the claim and
thus should be a structural limitation of the claim. (Appellant’s Reply Brief, p. 3).
The examiner has determined that the preamble is not limiting because the portion
of the claim following the preamble is a self-contained description of the structure
not depending for completeness upon the introductory clause.
We agree with the examiner that the preamble of claim 1 is not necessary to
breathe life or meaning to the remainder of the claim, and as such, the preamble is
not a limitation of the claim. “[W]here a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.” Rowe v.
Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). “The
determination of whether preamble recitations are structural limitations or mere
statements of purpose or use ‘can be resolved only on review of the entirety of the
patent to gain an understanding of what the inventors actually invented and
intended to encompass by the claim.’” Rowe, 112 F.3d at 478, 42 USPQ2d at
1553 (citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,
1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989)).
Appeal No. 2006-1927 Page 4
Application No. 11/009,164

Inspection of the written description, claims and figures reveals that “chew
toy” is not a structural limitation of the claims. First, the body of the claim defines
a structurally complete invention. Second, the “chew toy” recitation in the
preamble does not provide antecedent basis for any elements in the claim body, nor
does it set out any relationship among the elements in the claim body. As such, we
hold that the phrase “chew toy” in the preamble is not a structural limitation of the
claim but is merely a recitation of the intended use of the claimed structure.
The appellant further contends that the basketball disclosed in Jiminez is not
capable of being used as a chew toy, because the standard size for a basketball (i.e.,
nine to ten inches in diameter) is not suitable for use as a chew toy. The appellant
cites in support of his argument the FIBA (International), National Basketball
Association and NCAA standards for basketball sizing. (Appellant’s Brief, p. 6).
The examiner has determined that the basketball of Jiminez is capable of being
employed as a chew toy, and the appellant has not provided any evidence to
support his position that the basketball of Jiminez is incapable of such use.
(Examiner’s Answer, pp. 4-5).
We find that the prior art basketball of Jiminez contains all of the limitations
of claim 1 and is capable of performing the intended use of a chew toy and thus
meets the claim. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997) (“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.”) We do not find
persuasive the appellant’s argument that the basketball of Jiminez must necessarily
Appeal No. 2006-1927 Page 5
Application No. 11/009,164

conform to the size of a regulation basketball. As such, we sustain the examiner’s
rejection of claim 1.
With regard to claims 2-5, the appellant does not present arguments as to the
separate patentability of these claims. As such, we sustain the examiner’s rejection
of these dependent claims on the grounds provided by the examiner in the Answer.
With regard to claim 6, the examiner has determined that Jiminez discloses
rings defined by a toroidal form and snap-fit into a corresponding one of the
channels. (Examiner’s Answer, p. 3).
The appellant contends that “snap fit” means,
a mechanical joint system where part-to-part attachment
is accomplished with locating and locking features
(constraint features) that are homogenous with one or the
other of the components being joined. Joining requires
the (flexible) locking features to move aside for
engagement with the mating part, followed by return of
the locking feature toward its original position to
accomplish the interference required to latch the
components together. Locator features, the second type
of constraint feature, are inflexible, providing strength
and stability in the attachment. (Appellant’s Brief, p. 6).
The examiner responds that the specification is silent as to the specific
requirements of a “snap fit” as argued by the appellant in his brief, and that the
specification discloses only that the “snap-fitting relationship relates such a fitting
to a frictional fit.” (Examiner’s Answer, p. 5). The examiner has further
determined that the elastic rings of Jiminez are removably received within the
respective grooves and are flexible so that they can deform and then snap back into
Appeal No. 2006-1927 Page 6
Application No. 11/009,164

their original shape to be held by a frictional snap-fit within the groove.
(Examiner’s Answer, p. 5).
We agree with the examiner.
We first construe the meaning of the word “snap-fit” as used by the
appellant in the claims. We determine the scope of the claims in patent
applications “not solely on the basis of the claim language, but upon giving claims
their broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d
1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (quoting In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)).
The specification does not provide any description of the specific elements of a
“snap-fit.” In contrast, the specification generally describes the fit between the
ring and channel as an “interference” or “frictional fit.” (Specification, page 5, line
3). As such, the broadest reasonable construction of “snap-fit” in light of the
specification includes any connection made using an interference fit or frictional
fit. The term “snap-fit” is not limited to the specific mechanical joint system as
urged by the appellant.
Jiminez discloses an elastic ring 20 in the form of a wedge that is retained
within its respective, similarly wedge-shaped slot “in a non-slip condition”.
(Jiminez, Figures 5 and 7 and col. 5, lines 1-13 and 27-40). We understand the
non-slip condition of Jiminez to refer to a frictional fit between the elastic ring and
the slot in the ball. As such, we find that Jiminez discloses toroidal rings that are
Appeal No. 2006-1927 Page 7
Application No. 11/009,164

snap-fit into corresponding channels as recited in claim 6. Accordingly, we sustain
the examiner’s rejection of claim 6.
With regard to claims 7 and 8, the examiner has determined that Jiminez
discloses making the rings of elastic “which is known in the art to usually comprise
a rubber material which is known to be a well known component of animal chew
toys and therefore the rings of Jiminez are considered to comprise a tasteful flavor
and an appealing scent attractive to canines.” (Examiner’s Answer, p. 4). As
such, the examiner has determined, “Jiminez, while not positively stated,
inherently discloses through the choice of material, a device having a scent and
flavour considered appealing to a canine.” (Examiner’s Answer, p. 6).
The appellant contends that the examiner has failed to provide any evidence
in support of the position that the elastomeric or rubber material of Jiminez
inherently possesses a tasteful flavor and scent attractive to a canine and that the
examiner’s unsupported assertions are insufficient to support an anticipation
rejection. (Appellant’s Reply Brief, p. 3).
We decline to sustain the examiner’s rejection of claims 7 and 8, because the
examiner has failed to provide any evidentiary support for the assertion that an
elastomeric or rubber material comprises “a tasteful flavor appealing and attractive
to a canine” or “a pleasant and appealing scent attractive to a canine.” We find
unpersuasive the examiner’s reasoning that because it is known to make canine
chew toys from rubber material that such material is necessarily a tasteful flavor or
a pleasant and appealing scent attractive to a canine.
Appeal No. 2006-1927 Page 8
Application No. 11/009,164

CONCLUSION
To summarize, we sustain the rejection of claims 1-6, and we do not sustain
the rejection of claims 7 and 8.

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

)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-1927 Page 9
Application No. 11/009,164

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