Ex parte Tucker

Board of Patent Appeals and Interferences

Mar 5, 1999

08516245 (B.P.A.I. Mar. 5, 1999)

Application for patent filed August 17, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES I. TUCKER
__________
Appeal No. 98-1048
Application 08/516,2451
___________
ON BRIEF
___________
Before COHEN, PATE, and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
James I. Tucker appeals from the final rejection of
claims 1 through 8, all of the claims pending in the
application. We reverse.
The invention relates to "the fabrication of dolls and
Appeal No. 98-1048
Application 08/516,245
2
toy figures and particularly to the head attachment used
therein" (specification, page 1). Claim 1 is illustrative and
reads as follows:
1. A doll comprising:
a body;
a head attachment post integrally formed with said body
and defining an extending neck portion having a spherical
surface, a ball end joined to said neck portion and a narrow
portion formed at the junction of said spherical surface and
said ball end; and
a head defining an interior cavity for receiving a
portion of said head attachment post, said head including a
spherical recess having a surrounding wall and a tapered
aperture extending from said spherical recess forming an
inwardly extending edge between said spherical recess and said
tapered aperture,
said wall stretching to receive said ball end into said
interior cavity through said spherical recess and said
aperture and contracting to engage said narrow portion of said
head attachment post such that said inwardly extending edge is
seated within said narrow portion and said tapered aperture is
seated upon said ball end and said spherical recess is seated
upon said spherical surface.
The references relied upon by the examiner as evidence of
obviousness are:
Rovex 1,354,189 May 22, 1974
British Patent Document

Takara 64-7795 Feb. 10, 1989
Appeal No. 98-1048
Application 08/516,245
An English language translation of this reference,2
prepared on behalf of the Patent and Trademark Office, is
appended hereto.
3
Japanese Patent Document2
Claims 1 through 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over Rovex in view of Takara.
Reference is made to the appellant's brief (Paper No. 9)
and to the examiner's answer (Paper No. 10) for the respective
positions of the appellant and the examiner with regard to the
merits of this rejection.
Rovex discloses a doll having a body (Figure 1) and a
head (Figure 2) connected via a ball and socket joint. The
head 1, which is formed of resilient P.V.C., includes a socket
3 and the body includes a neck having a ball element 4 at its
upper end. As described in the reference,
[t]he socket 3 in the head . . . has a first,
downwardly facing opening 3a and a second upwardly
facing opening 3b of smaller diameter than the
first. . . .

The ball element 4 is formed at the upper end of
the neck and has a projection from its top in the
Appeal No. 98-1048
Application 08/516,245
4
form of a cone 5 connected to the ball element at
its base and which is of substantially the same
diameter as the ball. The neck joint is assembled
by forcing the cone 5 through the first opening 3a
into the socket 3 and then forcing it through the
second opening 3b during which operation the ball
element 4 passes though the first opening into the
socket 3. This involves stretching the material
around the second opening 3b which then returns to
its original diameter which is substantially less
than that of the base of the cone 5. The undercut
nature of the cone 5 makes it virtually impossible
for the cone 5 to be withdrawn again through the
second opening 3b to break the joint. In
consequence of this the head 1 may be moved on the
neck to extreme positions in which the material of
the socket 3 is appreciably deformed without risk of
removing the head from the neck [page 2, lines 18
through 53].
The examiner concedes (see page 3 in the answer) that
Rovex does not teach, and would not have suggested, a doll
meeting the limitations in independent claims 1 and 4
requiring a head attachment post having a ball end (claims 1
and 4) and a head having a tapered (claim 1) or upwardly open
(claim 4) aperture for seating upon or against the ball end.
The examiner's reliance on Takara to overcome these
deficiencies is not well taken.
Takara discloses a doll comprising a body 20 and a head
Appeal No. 98-1048
Application 08/516,245
5
22. The body includes an engagement projection 21 and the
head includes a neck hole 23 for receiving the engagement
projection. As shown in Figure 1, the engagement projection
has a generally ball-shaped end, a cylindrical base and a
narrow portion therebetween, and the neck hole has internal
surfaces which seat upon these elements.
According to the examiner,
[i]t would have been obvious to have provided the
non-spherical enlarged retaining end (5) of Rovex .
. . with an enlarged ball-like end (21) of Takara.
As further taught by Takara, this requires
complimentary [sic] shaped walls to engage such a
wide end retainer and would also have been obvious
to have provided with Rovex. Specifically, this
complimentary [sic] wall structure includes a
tapered aperture (where contact with ball 21 is made
in the figure) extending from the neck (23) recess
toward the top of the end ball, forming an inwardly
extending edge which lockingly engages the narrowed
portion [answer, page 4].
The examiner has not explained, however, nor is it
apparent, why one of ordinary skill in the art would have
found this modification of the Rovex doll to be obvious.
Indeed, the importance Rovex places on the stark undercut
shape embodied by cone 5 to the attainment of a secure
Appeal No. 98-1048
Application 08/516,245
6
connection between the head and body of the doll seemingly
would have led the artisan away from the proposed
modification. We therefore conclude that the examiner has
engaged in an impermissible hindsight reconstruction of the
invention set forth in claims 1 and 4 by using these claims as
a blueprint to selectively pick and choose from among isolated
features in the prior art.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claims 1 and 4, or of claims 2, 3 and 5
through 8 which depend therefrom, as being unpatentable over
Rovex in view of Takara.
Appeal No. 98-1048
Application 08/516,245
7
The decision of the examiner is reversed.
REVERSED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 98-1048
Application 08/516,245
8
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