Ex Parte Tsengas

Board of Patent Appeals and Interferences

Jun 29, 2011

11223551 (B.P.A.I. Jun. 29, 2011)

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.
11/223,551 09/09/2005 Steven Tsengas 1523 9874
33055 7590 06/29/2011
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
06/29/2011 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 STEVEN TSENGAS
____________

Appeal 2009-011981
Application 11/223,551
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011981
Application 11/223,551

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STATEMENT OF THE CASE
Steven Tsengas (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to finally reject claim 25 under 35 U.S.C. § 112, second
paragraph, as being indefinite; under 35 U.S.C. § 103(a) claims 4, 12, 14, 15,
171 and 18 as unpatentable over Markham (US 6,129,053, iss. Oct. 10, 2000)
and Godsey (US 5,912,285, iss. Jun. 15, 1999); claim 10 as unpatentable
over Markham, Godsey, and Edwards (US 4,513,014, iss. Apr. 23, 1985);
and claims 16, 20, 21 and 23-25 as unpatentable over Markham, Godsey and
Mathers (US 6,578,527 B1, iss. Jun. 17, 2003).2 Claims 1-3 and 6-8 have
been withdrawn by the Examiner. Claims 5, 9, 11, 13, 19, 22, and 26 have
been canceled.3 We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a pet toy having an interactive
stimulus that actively engages the pet’s senses during use. Spec. 1:25-26
and figs. 1, 3, and 4.
Claim 4, the sole independent claim, is representative of the claimed
invention and reads as follows:

1 In the Appeal Brief filed Jun. 26, 2008 (hereafter “App. Br.”), claim 17
depends from claim 13. However, claim 13 has been canceled. As such, for
the purpose of this appeal, we shall consider claim 17 to depend from claim
14. See After-Final Amendment (filed May 19, 2008) at 3; See also,
Advisory Action (mailed Jun. 2, 2008), paras. 1 and 7.
2 The rejection of claims 14-16, 20, 21, 23, and 24 under 35 U.S.C. § 112,
second paragraph, as being indefinite has been withdrawn by the Examiner.
Miscellaneous Communication p.2, mailed Jun. 5, 2009.
3 Appellant canceled Claim 5 in an Amendment after Final, filed May 19,
2008. The amendment was entered in an Advisory Action, mailed Jun. 2,
2008.
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Application 11/223,551
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4. A pet toy having an interactive stimulus that actively
engages a pet’s senses when tossed and rolled, said pet toy
comprising:

a spherical outer body that forms a hollow inner body, said
outer body is a plastic or a rubber material impregnated with an
aroma, an oil or a juice during said outer body’s manufacture
by means of a molding technique; and

at least one interactive stimulus means to stimulate said pet’s
senses selected from the group comprising sight, smell, sound.
SUMMARY OF DECISION

We AFFIRM-IN-PART.

OPINION
The indefiniteness rejection
In the Final Action dated April 28, 2008, claim 25 was rejected under
35 U.S.C. § 112, second paragraph, as being indefinite. Appellant concedes
that the Examiner’s rejection of claim 25 under 35 U.S.C. § 112, second
paragraph, is proper. Reply Br. 2. Accordingly, we summarily affirm the
Examiner’s rejection of claim 25 under 35 U.S.C. § 112, second paragraph,
as being indefinite.

The obviousness rejection over Markham and Godsey
Claims 4 and 12
Appellant argues that the pet toy of Markham fails to include a hollow
inner body, as required by independent claim 4. App. Br. 14. We disagree.
In this case, like the Examiner, we find that the inner surface of sidewall 12
of Markham defines the hollow inner body of pet toy 10. We further agree
with the Examiner that because Markham discloses inserting a treat 56
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Application 11/223,551
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through sidewall 12 from an exterior area into an interior area through
aperture 54, the inner surface of sidewall 12 of Markham defines the hollow
inner body of Markham’s pet toy 10. See Ans. 8. See also Markham, figs.
11 and 12. Since the inner surface of sidewall 12 of Markham defines the
hollow inner body of Markham’s pet toy 10, we find that Markham discloses
a hollow inner body, as called for by claim 4.
Accordingly, for the foregoing reasons, the rejection of independent
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Markham and
Godsey is sustained.
Appellant does not argue the rejection of dependent claim 12 separate
from independent claim 4. App. Br. 15. As such, the rejection of claim 12
over the combined teachings of Markham and Godsey is likewise sustained.

Claims 14, 15, 17, and 18
Regarding dependent claim 14, the Examiner found that laterally
spaced grooves 30, 36 form an open-cell exoskeleton that encloses spherical
outer body 10. Ans. 5. Appellant argues that laterally spaced grooves 36 of
Markham’s body member 10 do not enclose the spherical outer body of
Markham. App. Br. 14. At the outset, we note that Appellant’s
Specification does not expressly define the term “enclose” or otherwise
indicate that this term is used in a manner other than its ordinary and
customary meaning. We find that an ordinary and customary meaning of the
term “enclose” that is most consistent with the Specification and the
understanding of those of ordinary skill in the art is “1 a (1) : to close in :
surround.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th
ed. 2005). In this case, although we agree with the Examiner that grooves
(channels) 32, 34, and 36 of Markham can retain treats 18 (See Ans. 9 and
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Application 11/223,551
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Markham, col. 3, ll. 36-41, and fig. 7), we could not find any portion of
Markham and the Examiner has not pointed to any portion which discloses
that the grooves (channels) 32, 34, and 36 surround (encircle) Markham’s
spherical body member 10. Hence, Markham does not disclose an open-cell
exoskeleton that encloses a spherical outer body, as called for by claim 14.
The addition of Godsey does not remedy the deficiencies of Markham as
discussed above. Accordingly, the rejection of claim 14, and its respective
dependent claims 15, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable
over Markham and Godsey cannot be sustained.

The obviousness rejection over Markham, Godsey, and Edwards
Claim 10 requires that the pet toy be made from a material such that
the toy is buoyant in an aqueous liquid. App. Br., Claims App. Appellant
argues that, (1) “[the toy of Edwards] is manufactured from a material that
makes it slightly heavier than water”; and (2) “[t]he present invention
provides a benefit not available in Edwards[, mainly,] it reduces steps of
manufacture required to accomplish the buoyancy objectives.” App. Br. 15.
Regarding Appellant’s first argument, although we agree with
Appellant that Edwards discloses a pet toy made from a material slightly
heavier than water, Edwards also discloses that the same material may be
foamed or impregnated with air so as to make the pet toy lighter than water.
Edwards, Abstr. and col. 5, ll. 18-28. As such, since Edwards discloses a
material lighter than water, we find that Edwards discloses a pet toy that is
buoyant in an aqueous liquid, as called for in claim 10.

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Application 11/223,551
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With respect to Appellant’s second argument, we are not persuaded
because patentability of a product does not depend on its method of
production. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations
omitted).
In conclusion, for the foregoing reasons, the rejection of claim 10
under 35 U.S.C. § 103(a) as unpatentable over Markham, Godsey, and
Edwards is sustained.

The obviousness rejection over Markham, Godsey, and Mathers
Claims 16, 20, 21, and 23-25 depend from claim 14. The addition of
Mathers does not remedy the deficiencies of Markham and Godsey as
described above. Accordingly, we shall not sustain the rejection of claims
16, 20, 21, and 23-25 as unpatentable over Markham, Godsey, and Mathers.

DECISION
The decision of the Examiner is affirmed as to claims 4, 10, and 12
and reversed as to claims 14-18, 20, 21, and 23-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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