Ex Parte Valle et al

Patent Trials and Appeals Board

May 24, 2019

13676457 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/676,457 11/14/2012
22919 7590 05/29/2019
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Andrea Valle
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PM-US155419 4878
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
05/29/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA VALLE and JONATHAN WILLINGER
Appeal2017-010787
Application 13/676,457 1
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1, 5, 9, 11-13, 21-23, and 25. 2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ). The Appellants
requested an oral hearing and elected to waive hearing attendance. Request
for Oral Hearing (filed Aug. 11, 2017); Notice of Hearing (filed May 6,
2019).
We REVERSE.
1 "[T]he real party in interest is Doskocil Manufacturing Company, Inc."
Appeal Br. 3.
2 Claims 2--4, 6-8, 10, 14--20, and 24 are cancelled. Appeal Br., Claims
App.
Appeal2017-010787
Application 13/676,457
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants' invention "is directed to one or more embodiments of
pet toys, each of which is resistant to destruction caused by the chewing
action of a pet." Spec. 1:8-9.
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A destruction resistant pet toy comprising:
a first member constructed from a first material, the first
member defining a shell having an opening, the shell having a
first portion and a second portion, the first portion being a
substantially spherical surface, the second portion being a
concave surface with respect to the spherical surface of the first
portion, the concave surface including the opening;
a second member extending through the opening of the
shell of the first member from an inner space of the pet toy such
that the second member extends outwardly away from the inner
space farther than the entirety of the first member, the second
member being constructed of a destruction resistant nylon
material having a Shore D hardness that is harder than the first
material, the second member having a retention structure
configured to secure the second member to the first member,
the retention structure including a backing plate and a receiving
groove arranged adjacent to the backing plate,
the first member having a section arranged in the
receiving groove of the second member.
Rejections
Claims 1, 9, 11-13, 21-23, and 25 are rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Suchowski et al. (US 6,474,268 Bl,
2
Appeal2017-010787
Application 13/676,457
issued Nov. 5, 2002) (hereinafter "Suchowski") and Dubinins et al.
(US 6,981,471 Bl, issued Jan. 3, 2006) (hereinafter "Dubinins"). 3
Claim 5 is rejected under pre-AIA 35 U.S.C. § I03(a) as unpatentable
over Suchowski, Dubinins, and Nunn et al. (US 2012/0090554 Al,
published Apr. 19, 2012) ("Nunn").
ANALYSIS
Independent claim 1 calls for a destruction resistant pet toy including
a first member defining a shell having a first portion with a substantially
spherical surface, and a second portion being a concave swface with respect
to the spherical surface of the first portion. See Appeal Br., Claims App.
The Examiner finds that Suchowski teaches a destruction resistant pet
toy including a first member (substantially spherical frame) 502 defining a
shell having a first portion with a substantially spherical surface and a
second portion being a concave surface with respect to the spherical surface
of the first portion. See Non-Final Act. 3--4 ("Non-Final Act." refers to the
Non-Final Office Action mailed Aug. 5, 2016); Ans. 2-3. The Examiner
explains the curved surface portion in Suchowski' s Figure 6 corresponds to
the claimed first portion of the shell. See Non-Final Act. 3. The Examiner
annotates Suchowski's Figure 5 to identify a concave surface with respect to
the spherical surface of the first portion, which the Examiner finds
corresponds to the claimed second portion of the shell. See id. at 4; Ans. 3.
Figure 5, as annotated by the Examiner, is reproduced below:
3 The rejections of claim 24 in the Non-Final Office Action, mailed Aug. 5,
2016, at pages 2 and 6-7, are moot because the claim is cancelled. Appeal
Br., Claims App.
3
Appeal2017-010787
Application 13/676,457
Ans. 3. Suchowski' s Figure 5 "is a plan view of a chew toy constructed in
accordance with a second embodiment of the invention" (Suchowski, col. 2,
11. 4--5) and the Examiner's annotations include two arrows each having a
label "concave surface."4
The Appellants argue that, contrary to the Examiner's finding, the
"alleged 'concave surfaces' are merely edges of the studs 520 that appear
concave in two-dimensional drawings" and frame 502 remains entirely
spherical and lacks a concave surface as required by claim 1. Reply Br. 3--4
( citing Suchowski, Figs. 5, 6); see Appeal Br. 7-8. The Appellants submit
that "one of ordinary skill would understand [that] the surface indicated as
concave by the Examiner would not appear concave on the actual three-
dimensional product." Reply Br. 3. The Appellants' argument is persuasive
as the Examiner fails to adequately support the finding that the identified
4 Annotated Figure 5 also includes two straight lines positioned at a right
angle to one another. The significance of the lines is not explained by the
Examiner or apparent from the rejection. Therefore, we understand the
inclusion of the two straight lines in the annotated figure as insignificant.
4
Appeal2017-010787
Application 13/676,457
surfaces (in the annotated version of Suchowski' s Figure 5) are concave with
evidence and technical reasoning. 5
One of ordinary skill in the art would understand that the plan view of
Figure 5 is a top view of a three dimensional object, i.e., Suchowski's chew
toy. The annotated version of Figure 5, as shown above, points to curved
lines between substantially spherical frame 502 and studs 520. The
embodiment is depicted in a different view in Figure 6, which is reproduced
below:
504·····/·
508
FIG.6
Figure 6 is a cross-sectional view of the embodiment shown in Figure 5. See
Suchowski, col. 2, 11. 6-7. Figure 6' s cross sectional view shows a space
between the outside surface of substantially spherical frame 502 and the flat
bottom of stud 520's chew portion 530. See also id. at Fig. 7 (flat bottom
584). In viewing Figure 6 along with Figure 5, one of ordinary skill in the
art would understand that the curved lines identified by the Examiner in the
5 "The [E]xaminer did not consider[] the chamfered edges 528 [sic 582] as
the concave surfaces as appeared to be interpreted by [ the A Jppellant[ s]."
Ans. 3; see also Reply Br. 4.
5
Appeal2017-010787
Application 13/676,457
annotated version of Figure 5 is an outline of chew portion 530 in a top
view. Hence, the curved lines that the Examiner labels as curved surfaces-
in the annotated version of Figure 5 - is not a depiction of a concave
portion of substantially spherical frame 502; i.e., a first member defining a
shell having a second portion being a concave surface with respect to the
spherical surface of the first portion, as called for by claim 1. Additionally,
the Examiner does not support the finding with a citation to Suchowski's
written disclosure.
Further, the Examiner fails to rely on Dubinins or Nunn in any
manner which would remedy the deficiency in the Examiner's rejection as
discussed above.
Thus, we do not sustain the Examiner's rejections of claims 1, 5, 9,
11-13, 21-23, and 25 under pre-AIA 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 5, 9, 11-
13, 21-23, and 25.
REVERSED
6