Ex Parte WeeksDownload PDFPatent Trial and Appeal BoardNov 29, 201713305185 (P.T.A.B. Nov. 29, 2017) Copy Citation 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. 13/305,185 11/28/2011 David Weeks 41DC-200963 5037 30764 7590 12/01/2017 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 12275 EL CAMINO REAL, SUITE 200 SAN DIEGO, CA 92130 EXAMINER MENDIRATTA, VISHU K ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): DOCKETING@ SHEPPARDMULLIN.COM S heppardMullin_Pair @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID WEEKS Appeal 2016-008311 Application 13/305,185 Technology Center 3700 Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-008311 Application 13/305,185 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claims are directed to a transformable toy robot. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A three-dimensional transformable toy comprising: a first outer mating component to which a first end of an elastic element is secured; a second outer mating component to which a second end of the elastic element is secured; and at least one inner mating component each defining a bore, wherein each inner mating component comprises a distal and a proximal slot, wherein the first, second and at least one inner mating components are aligned such that the elastic element extends linearly from the first outer mating component, through each bore of the at least one inner mating components, passes into a slot and to the second outer mating components, and wherein adjacent slots are linear [sic] aligned such that at least one of the mating components rotatably, foldably, and slidably couples to an adjacent mating component. REFERENCES Criest Hawkins Frigard US 1,329,959 US 2,825,178 US 6,482,063 B1 Feb. 3, 1920 Mar. 4, 1958 Nov. 19, 2002 2 Appeal 2016-008311 Application 13/305,185 Stuart Loring GB 2,298,586 A GB 14,213 Sept. 11, 1996 Aug. 3, 1916 REJECTIONS1 Claims 15-20 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 2. Claims 1-11 stand rejected under 35 U.S.C. § 102(b) as anticipated by Hawkins. Id. at 4. Claims 1-11 stand rejected under 35 U.S.C. § 102(b) as anticipated by Frigard. Id. at 6. Claims 15-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by Stuart. Id. at 8. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Frigard and either Criest or Foring. Id. at 10. ANAFYSIS Claims 15—20—Indefiniteness The Examiner finds that claims 15-20 are indefinite. Final Act. 2-3. Claim 15 is independent, and claims 16-20 depend from claim 15. App. Br. 26-29 (Claims App.). The Examiner determines that these claims “are narrative in form and replete with indefinite language.” Final Act. 3. The Examiner further determines that Appellant “is claiming an apparatus by describing the functionality/use of the apparatus and in process terms rather than structure that defines the apparatus.” Id. The Examiner also identifies 1 The Examiner has withdrawn (1) the objection to the Specification and (2) the 35 U.S.C. § 112, second paragraph indefmiteness rejection for claims 12- 14. See Ans. 10; see also Final Act. 2. 3 Appeal 2016-008311 Application 13/305,185 several limitations that the Examiner characterizes as “run-on limitations with narrative functional limitations that are considered indefinite.” Id.\ see also Ans. 11 (claim 15 “is clearly convoluted, confusing and jumbled up to interpret and unconceivable to anyone”). Appellant disputes that claims 15-20 are indefinite. App. Br. 15-18. Appellant asserts that the Examiner’s rejection “is conclusory in nature, and cites to words taken out of context to make a naked allegation that they are ‘run-on limitations with narrative functional limitations.” Id. at 16. Appellant also asserts that “[fjunctional language does not, in and of itself, render a claim improper.” Id. at 17 (quoting MPEP § 2173.05(g)). The Examiner has not persuaded us that claims 15-20 are indefinite. First, the Examiner explains that the claims are “narrative in form” or “run- on” (thereby rendering them unpatentable), due to the multiple use of the phrase “such that.” Final Act. 3. The Examiner’s argument is not persuasive. Second, as Appellant points out, functional language, by itself, does not render a claim indefinite. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that “[a] patent applicant is free to recite features of an apparatus either structurally or functionally”). Finally, although we acknowledge that claim 15 is difficult to follow, the indefmiteness inquiry “is whether the claim meets the threshold requirements of clarity and precision [set forth in 35 U.S.C. § 112, second paragraph], not whether more suitable language or modes of expression are available.” See MPEP § 2173.02(11). The Examiner’s analysis does not specifically identify how claim 15 fails to meet “the threshold requirements of clarity and precision” required by the statute. Accordingly, we do not sustain the Examiner’s rejection of claims 15-20 for indefmiteness. 4 Appeal 2016-008311 Application 13/305,185 Claims 1—11—Anticipation by Hawkins Appellant does not offer arguments in favor of independent claim 7 or dependent claims 2-6 or 8-11 separate from those presented for independent claim 1. See App. Br. 19. We select claim 1 as the representative claim, and claims 2-11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Hawkins discloses all the structural limitations of claim 1. Final Act. 4 (citing Hawkins, Fig. 2). The Examiner regards the limitation requiring mating components to be “rotatably, foldably, and slidably coupled to an adjacent mating component” to be a functional limitation, and finds that Hawkins’ device is capable of performing the claimed function. Id. at 4-5 (citing Hawkins, Fig. 2). Appellant does not dispute that Hawkins discloses claim l’s structural limitations. See App. Br. 19. Appellant does dispute, however, that Hawkins’ blocks are “foldably coupled” to an adjacent block. Id. Appellant asserts that Hawkins’ “mating components are only capable of moving in a lateral horizontal direction, because the ‘side and end faces of adjacent blocks are arranged in an angular relationship with respect to one another.’” Id. (quoting Hawkins, 1:42^15, Figs. 1, 2). Thus, according to Appellant, “it is structurally and physically impossible for the blocks in Hawkins to foldably couple to an adjacent component.” Id. We are not persuaded that the Examiner erred in finding that Hawkins anticipates claim 1. In particular, we are not persuaded that the Examiner erred in finding that Hawkins’ blocks are foldably coupled to adjacent blocks. As an initial matter, Appellant misquotes Hawkins. The cited excerpt actually states, “side and end faces of adjacent blocks may be disposed in a common plane when adjacent blocks are arranged in angular 5 Appeal 2016-008311 Application 13/305,185 relationship with respect to one another.” Hawkins, 1:42-45. In any event, Appellant provides no evidence or persuasive argument demonstrating that, based on this excerpt, it is impossible for Hawkins’ blocks to be foldably coupled. Conversely, the Examiner’s explanation (based on similarity of structure) supports a prima facie case that Hawkins’ blocks are inherently capable of folding with respect to an adjacent block. See In re Schreiber, 128 F.3d at 1478-79 (holding that functional limitations do not distinguish a claimed apparatus from prior art apparatus inherently capable of performing the claimed function). The Specification makes clear that it is the claimed structure that provides the claimed foldability. See Spec. ^ 21 (disclosing that because each block has one or two cut slots and is secured to adjacent blocks by an elastic cord threaded through through-holes, the blocks may “fold in different ways in conjunction to their adjoining piece”). Because, as the Examiner finds, Hawkins teaches this same structure, and this structure permits foldability, Hawkins meets the claimed functional language. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as anticipated by Hawkins. We sustain the Examiner’s rejection of claim 1 as anticipated by Hawkins. We further sustain the Examiner’s rejection of claims 2-11, which fall with claim 1. Claims 1 11—Anticipation by Frigard Appellant does not offer arguments in favor of independent claim 7 or dependent claims 2-6 or 8-11 separate from those presented for independent claim 1. See App. Br. 20. We select claim 1 as the representative claim, and claims 2-11 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 6 Appeal 2016-008311 Application 13/305,185 The Examiner finds that Frigard discloses all the structural limitations of claim 1. Final Act. 6 (citing Frigard, Figs. 5a-5c). The Examiner regards the limitation requiring mating components to be “rotatably, foldably, and slidably coupled to an adjacent mating component to be a functional limitation, and that Frigard’s device is capable of performing the claimed function. Id. at 6-7 (citing Frigard, Figs. 1-3, 6, 7 a- 7c). Appellant does not dispute that Frigard discloses claim l’s structural limitations. App. Br. 20. Instead, Appellant asserts that “Frigard fails to disclose the ‘slidable’ mating component presented in the claimed subject matter.” Id. Further, according to Appellant, “Frigard only discloses slots on each block configured at 90 degree angles from each other,” and consequently, “that structure cannot possible achieve a ‘slidable’ coupling as required by the present claims.” Id. We are not persuaded that the Examiner erred in rejecting claim 1 as anticipated by Frigard. In particular, we are not persuaded that the Examiner erred in finding that Frigard’s blocks are slidably coupled to adjacent blocks. First, Appellant is incorrect that “Frigard only discloses slots on each block configured at 90 degree angles from each other.” On the contrary, it is evident from Figures 1-3 of Frigard that some of the blocks are depicted with multiple slots aligned with each other (see Frigard, Fig. 2) and with slots that are aligned with slots of adjacent blocks (see Frigard, Figs. 1, 3). Moreover, Appellant does not explain why blocks having slots “configured at 90 angles from each other” cannot be slidably coupled with respect to each other. See App. Br. 20; see also Reply Br. 5. 7 Appeal 2016-008311 Application 13/305,185 In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as anticipated by Frigard. We sustain the Examiner’s rejection of claim 1 as anticipated by Frigard. We further sustain the Examiner’s rejection of claims 2-11, which fall with claim 1. Claims 15—20—Anticipation by Stuart Appellant contends that Stuart fails to disclose “the ‘slidable coupling articulation element’” of Claim 15. See App. Br. 20-21 (emphasis omitted). In particular, Appellant contends that “Stuart discloses structural elements that may only be ‘rotated about the common rotational axis,’ effectively limiting the movement of adjacent cube elements to merely ‘angular movements.’” See id. at 20 (citing Stuart pages 1, 8). Appellant further contends that [the Examiner asserts] that “if a prior art structure can function or be used in the matter recited in the claims the claim . . . even if there is no express mention ... it would be inherent.” But, because it is structurally impossible for the arranged blocks in Stuart to slidably couple when the slots on each block are only limited to angular movements, Stuart fails to disclose inherent functional characteristics of the claimed subject matter. As a result, the structural components of Stuart fail to disclose each and every claimed element directly or inherently. App. Br. 20-21; see also Final Act. 9. The law governing functional limitations is well-settled: [WJhere the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty of the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant 8 Appeal 2016-008311 Application 13/305,185 to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an applicant can be put to this burdensome task, an examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the examiner’s belief that the functional limitation is an inherent characteristic of the prior art. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Stuart discloses According to the invention is provided a puzzle comprising a plurality of serially connected elements, adjacent elements having a common rotational axis and being angularly movable relative to each other about that common rotational axis; in which two or more serially arranged elements are angularly movable about a common rotational axis. The elements may be rotatable about the common rotational axis. Stuart, p. 1; see also id. at 8 (“Each cube element 12 is angularly movable relative to its neighbouring cube element. Adjacent cube elements are rotatable on a common axis.”). Given that “Stuart discloses structural elements that may only be ‘rotated about the common rotational axis,’ effectively limiting the movement of adjacent cube elements to merely ‘angular movements,”’ we agree with Appellant that Stuart fails to disclose “component assemblies” capable of being configured to have “‘slideable’ articulation or movement.” See App. Br. 20-21; see also Reply Br. 5; Final Act. 9; Ans. 12-13. Further, 9 Appeal 2016-008311 Application 13/305,185 the Examiner fails to provide sufficient evidence or technical reasoning to establish that Stuart’s “component assemblies” are inherently “capable of being coupled rotatably, foldably, and slidebly.” Final Act. 9; see also Ans. 12-13; App. Br. 20-21; Reply Br. 5. Moreover, we note that claim 15 recites, inter alia, a transformable toy that in an “expanded configuration” defines “a humanoid figure.” App. Br. 26-27 (Claims App.). The Examiner finds that “Stuart teaches a body . . . [that] can be treated as being a slender humanoid.” Final Act. 9 (citing Stuart, Figs. 1, 2) (emphasis omitted); see also Ans. 13. We disagree. None of Stuart’s figures depicts a humanoid figure, and Stuart does not describe its apparatus as capable of being configured into a humanoid figure.2 Accordingly, for the foregoing reasons, we do not sustain the Examiner’s rejection of claims 15-20 as anticipated by Stuart. Claims 12—14—Unpatentable over Frigard and either Criest or Coring Appellant argues that the Examiner fails to explain how Criest or Loring “teach or suggest the rotatable, foldable, or slidable limitations” of claims 12-14. App. Br. 22. But, as the Examiner notes (Ans. 13), the Examiner relies on Frigard, not Criest or Loring, to teach this limitation. Appellant further argues that Frigard “fails to expressly or inherently teach structures capable of rotatable, foldable, and slidable coupling.” App. Br. 23. We addressed this argument above, and found it unpersuasive. Accordingly, because we are not persuaded that the Examiner erred in 2 We note, however, Frigard teaches a transformable toy that is configurable into a humanoid figure. See Frigard, Fig. 1. 10 Appeal 2016-008311 Application 13/305,185 rejecting claims 12-14 as unpatentable over Frigard and either Criest or Loring, we sustain this rejection. DECISION We AFFIRM (1) the Examiner’s decision to reject claims 1-11 as anticipated by Hawkins; (2) the Examiner’s decision to reject claims 1-11 as anticipated by Frigard; and (3) the Examiner’s decision to reject claims 12- 14 as obvious over Frigard and either Criest or Loring. We REVERSE (1) the Examiner’s decision to reject claims 15-20 as indefinite; and (2) the Examiner’s decision to reject claims 15-20 as anticipated by Stuart. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation