Mark Barthold et al.

Patent Trials and Appeals Board

Dec 30, 2019

13397187 - (D) (P.T.A.B. Dec. 30, 2019)

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.
13/397,187 02/15/2012 Mark Barthold 16933(1) 8981
92231 7590 12/30/2019
Edell, Shapiro & Finnan LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
KIM, EUGENE LEE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK BARTHOLD and WILLIAM MIEKINA
____________

Appeal 2018-002469
Application 13/397,187
Technology Center 3700
____________

Before SCOTT A. DANIELS, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–7, 9–14, and 17–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Mattel, Inc., as the real-party-in-
interest. Appeal Br. 3.
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Application 13/397,187
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THE INVENTION
Appellant’s invention is a play set, i.e., a toy boxing or wrestling ring
and stage including horizontal ring ropes that are attached to corner posts by
an adjustable turnbuckle for tightening the ropes. Spec. 2. The play set
further includes a removable turnbuckle pad for covering the turnbuckle and
rope at the corner posts where the turnbuckle pad is held in place by “a
removable coupler for mounting the turnbuckle pad to the rope.” Id.
Claim 1 is reproduced below, with certain limitations of importance
shown in italics, and is illustrative of the subject matter on appeal.
1. A toy ring, comprising:
a platform;
a plurality of posts attached to the platform;
a rope coupled to each of the posts; and
a turnbuckle pad removably mounted to the rope at the
attachment point between the rope and one of the posts, the
turnbuckle pad being formed to facilitate placement of the
turnbuckle pad on the rope, the turnbuckle pad including a
first end portion, a second end portion opposite the first end
portion, and a removable coupler for mounting the turnbuckle
pad to the rope, the coupler including a base and at least two
pegs integrally molded to the base and extending
substantially therefrom, one of the pegs including a shaft that
engages the first end portion and the second end portion of
the turnbuckle pad to couple them together.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Winterhoff US 804,696 Nov. 14, 1905
Hayden US 2,900,203 Aug. 18, 1969
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Application 13/397,187
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Chang US 4,710,049 Dec. 1, 1987
Baron US 5,715,553 Feb. 10, 1998
Paolitto US 6,254,532 B1 July 3, 2001
Kavanaugh US 2008/0256760 A1 Oct. 23, 2008

Wikipedia2 http:/en.wikipedia.org/wiki/Turnbuckle, dated July 13,
2014 (“Wikipedia”).

The following rejections are before us for review:
1. Claims 1, 2, 7, and 9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wikipedia and Chang.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wikipedia, Chang, and Hayden.
3. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wikipedia, Chang, and Baron.
4. Claims 6, 10, 13, and 17–20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wikipedia, Chang, Kavanaugh, and Paolitto.
5. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wikipedia, Chang, Kavanaugh, Paolitto, and Hayden.
6. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wikipedia, Chang, Kavanaugh, Paolitto, and Winterhoff.

2 The http:/en.wikipedia.org/wiki/Turnbuckle webpage was apparently found
using the “Wayback Machine,” https://web.archive.org (hereinafter
“Wikipedia”). See Wikipedia, 1.
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OPINION
New ground of rejection for claims 1–7 and 9 under 35 U.S.C. 112(b)2

Claim 1
Claim 1 is an independent claim. Appeal Br., Claims App’x.
In the Final Office Action, the Examiner concedes that Wikipedia
lacks a removable coupler for mounting the turnbuckle pad to the rope and
turnbuckle. Final Act. 2. The Examiner further concedes that Wikipedia
fails to disclose “the coupler including a base and at least two pegs integrally
molded to the base and extending substantially therefrom,” as recited in
claim 1. Id. at 2–3. The Examiner relies on Chang as teaching the
removable coupler including a base and two pegs, the two pegs having
respective shafts that engage opposing first and second end portions of a
protective hinge pad on an infant playpen. Id. at 3. The Examiner finds
specifically that Chang’s planar member 36 is the claimed “base,” and that
Chang’s connector pins 50 are commensurate with the claimed “pegs” and
“shaft.” Id. The Examiner further finds that it would have been obvious as a
matter of routine skill for one of ordinary skill in the art to form the base and
pegs as an integral structure. Id. (citing Howard v. Detroit Stove Works, 150
U.S. 164 (1893)).
The term “integrally molded” was added to claim 1 by an amendment
submitted December 12, 2016, by Appellant during prosecution. Appellant
argues that neither Wikipedia nor Chang teach or disclose the at least two
pegs being integrally molded to the base. Appeal Br. 19. Appellant argues
that Chang’s pins 50 are separate from planar base member 36 as they are

2 Claim 8, as well as claims 15 and 16 stand as canceled. Appeal Br.,
Claims App’x.
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described as being inserted through holes in planar base 36. Id. at 20 (citing
Chang, col. 3, 1. 67– col. 4, l. 4; Fig. 2).
What is not explained sufficiently by Appellant, however, is the
meaning and scope of the term “integrally molded.” The second paragraph
of 35 U.S.C. § 112 requires claims to set out and circumscribe a particular
invention with a reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In determining whether this
standard is met, the definiteness of the language employed in the claim must
be analyzed, not in a vacuum, but always in light of the teachings of the
prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
Id.
Although Appellant states that Chang’s pins 50 are different from the
claimed invention because they “are threaded or fed through apertures 38 of
the planar member 36,” beyond this, Appellant does not provide any
explanation or advocate any certain meaning to the term “integrally
molded.” Appeal Br. 20. Appellant also does not point to any evidence or
explanation in the Specification explaining the meaning of the term
“integrally molded.” See id. at 19–22. The Specification states mainly that
“fastener 34 comprises a base 46 and at least two pegs 42 fixed substantially
perpendicular to the base 46.” Spec. 11 (emphasis added). Therefore, the
claim requirements, read in light of the Specification, do not specify to a
reasonable degree a standard by which to discern if a particular fastener
meets a particular requirement. The Specification’s brief disclosure does not
provide a qualitative or quantitative metric, formula, or other guideline to
allow one of ordinary skill to know when the claim limitation is satisfied.
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See Halliburton Energy Serv., Inc., v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008) (“the Court held indefinite claims that recited only ‘inaccurate
suggestions of the functions of the product.’”) (citing United Carbon Co. v.
Binney & Smith Co., 317 U.S. 228, 234 (1942). Instead, the word “fixed” in
the Specification renders the meaning of “integrally molded” even more
ambiguous as to any particular embodiment meeting the claimed
requirements and does not offer sufficient guidance as to what constitutes
the “integrally molded” requirement. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211–12 (BPAI 2008) (precedential) (“The USPTO is justified in
using a lower threshold showing of ambiguity . . . because the applicant has
an opportunity and a duty to amend the claims during prosecution to more
clearly and precisely define the metes and bounds of the claimed invention
and to more clearly and precisely put the public on notice of the scope of the
patent”).
Because the limitation is indefinite, the prior art rejections must fall
because they are necessarily based on a speculative assumption as to the
meaning of the claims. In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). It
should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
Claims 2–7 and 9
Because claims 2–7 and 9 depend either directly or indirectly on
claim 1, these claims are also rejected under 35 U.S.C. 112(b), and that the
related prior art rejections also must fall. Id.
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Unpatentability of Claims 6, 10, 13, and 17–20
over Wikipedia, Chang, Kavanaugh, and Paolitto

Independent Claims 10 and 19
Claims 10 and 19 are independent claims, and notably, do not include
the “integrally molded” limitation as in claim 1. Appeal Br., Claims App’x.
Different from claim 1, claim 10 recites that the turnbuckle pad includes
“two side portions and two dimples where each of the side portions includes
one of the dimples,” and “wherein the two dimples contour the turnbuckle
pad to the rope at an attachment point between the rope and the turnbuckle.”
Id. Claim 19 is similarly drawn to a “dimple” with “each of the turnbuckle
pads having angled side portions with dimples formed therein that facilitate
the mounting of the turnbuckle pad to the rope.” Id.
In the Final Office Action, the Examiner concedes that Wikipedia
lacks a removable turnbuckle pad having two dimples on opposing sides of
the turnbuckle pad to facilitate mounting the pad to the rope and turnbuckle.
Final Act. 9. The Examiner relies on Chang as teaching that the turnbuckle
pads are removable, adding that making the pads removable would have
been known to those of ordinary skill in the art for “easily replacing or
repairing the pad.” Id. at 9–10. The Examiner turns to Kavanaugh for
disclosure of opposing side portions for securing and “contouring the
fastening device to the rope,” and finally to Paolitto “to provide projections
in the form of dimples.” Id. at 11–12.
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
The patent applicant may then attack the Examiner’s prima facie
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determination as improperly made out, or the applicant may present
objective evidence tending to support a conclusion of nonobviousness. In re
Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). However, where the
Examiner fails to set forth a prima facie case of obviousness, the burden to
rebut the Examiner’s findings and conclusion never shifts to Appellant. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Here, the Examiner did not make out a prima facie case of
obviousness. First, Kavanaugh does not disclose structure or function that
meets the limitations recited in independent claims 10 and 19 with respect to
the claimed turnbuckle pad. Second, the Examiner has not provided
sufficient reasoning supported by rational underpinnings as to why a person
of ordinary skill in the art would have combined Paolitto with any of
Kavanaugh, Wikipedia, and Chang. We address Kavanaugh and Paolitto in
turn below.
The Examiner relies on Kavanaugh as disclosing “two side portions
with projections formed therein that facilitate mounting of the turnbuckle
pad to the rope.” Final Act. 7. The Examiner reasons that “such a
modification would permit quick attachment of an object to the rope.” Id.
We agree that Kavanaugh’s device is intended to attach to a rope, line or
cord. See Kavanaugh para. 2 (“[T]he attachment device of the present
invention is attachable to and remains in a fixed position on a line without
knotting the line.”). Kavanaugh is, however, different structurally and
functionally from the claimed invention because Kavanaugh’s inner
projections grip and affix the device to the line. Id., Fig. 5. The claimed
turnbuckle is not, nor intended to be, attached and affixed to the rope or line
in the manner of Kavanaugh. The claimed turnbuckle pad is not attached to
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the rope nor does it have projections that fixedly engage the rope. Claim 10
does not require attachment of the turnbuckle pad to rope. To the contrary,
claim 10 defines the turnbuckle pad as having “an attachment point between
the rope and post.” Appeal Br., Claims App’x.
It is also unexplained by the Examiner why one of ordinary skill in the
art would have modified the turnbuckle pad to include rope attachment
projections that maintain the turnbuckle pad in a fixed position on the rope
as taught by Kavanaugh. Appellant argues, persuasively, that Kavanaugh’s
structure and function are entirely different because, for a boxing or
wrestling ring “the rope is required to slide through the eyelet of the
turnbuckle, especially when ‘adjusting the tension or length of ropes’ or
when a person or object is forced against the ropes.” Appeal Br. 24.
Kavanaugh’s device is contrary to the disclosure in Wikipedia which
explains that the turnbuckle eyelets permit the ropes and cable to slide in
order for “adjusting the tension or length of ropes.” Wikipedia, first
paragraph. The Examiner’s finding does not rely on factual findings or
provide sufficient explanation as to why a person of ordinary skill in the art
would have combined Kavanaugh and Wikipedia for expediency of
attaching or detaching the claimed turnbuckle pad with a rope to meet the
present claims. See Appeal Br. 7 (The Examiner alleges that modifying
Wikipedia with Kavanaugh’s device “would permit quick attachment of an
object to the rope.”). Further, the Examiner’s finding also fails to explain
how the modified turnbuckle pad with Kavanaugh’s projections gripping the
rope meets the limitation of, “an attachment point between the rope and the
turnbuckle,” as called for in claim 10.
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Application 13/397,187
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In addition, the Examiner makes no plausible findings supported by
persuasive reasoning and rational underpinnings that support a conclusion
that one of ordinary skill in the art would have combined Paolitto’s dimple
and hole retention arrangement with any of the above- discussed prior art
references to achieve the claimed invention. The Examiner states that
combining Paolitto “would entail substituting a known means in order to
obtain a predictable result such as providing an alternate anchoring means
(citing KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).”
Paolitto teaches a surgical apparatus such as a sternum retractor or clamp for
cardiac surgery. Paolitto, col. 1, ll. 4–6. Paolitto describes as part of the
surgical apparatus “a pre-loaded, formed steel spring 182 [that] has a pair of
ears 183, 184 having inwardly formed dimples for location in holes 162, 163
respectively.” Id. at col. 9, ll. 42–44. A person of ordinary skill in the art
would not have viewed the dimple and hole structure and function in
Paolitto as a dimple for contouring and mounting a turnbuckle pad over a
rope. To the extent a dimple and hole, i.e., a detent, retention mechanism is
a known structure, it is not explained how, or why, a person of ordinary skill
in the art would have viewed the dimple and hole retention structure in
Paolitto as dimples that “contour the turnbuckle pad to the rope,” as recited
in claim 10 or how the dimples “facilitate the mounting of the turnbuckle
pad to the rope,” as called for in claim 19. The claimed “dimples,” as they
contour and permit mounting of the turnbuckle pad to the rope, do not
fixedly attach the turnbuckle pad to the rope, as Paolitto’s device is intended
to directly attach two structures together. Since the Examiner’s factual
finding here is not adequately supported, the Examiner’s conclusion of
obviousness lacks rational underpinning. See In re Kahn, 441 F.3d 977, 988
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(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (“[R]ejections
on obvious grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
Inasmuch as the Examiner fails to make out a prima facie case of
unpatentability, we need not address Appellant’s arguments and evidence in
detail. We do not sustain the rejection of independent claims 10 and 19.
Claims 13, 17, 18, and 20 depend, either directly or indirectly, from
claims 10 and 19 and add various dependent limitations. The Examiner’s
rejection of these claims suffers from the same infirmities that we have
discussed above with respect to independent claims 10 and 19. For the same
reasons, we do not sustain the rejection of these dependent claims.
Claim 6
Claim 6 depends from claim 1, and includes limitations similar to
independent claims 10 and 19, relating to “a dimple.” Appeal Br., Claims
App’x. The Examiner’s rejection of claim 6 over Wikipedia, Chang,
Kavanaugh, and Paolitto, suffers from the same deficiencies that we have
discussed above with respect to independent claims 10 and 19. For the same
reasons, we do not sustain the rejection of dependent claim 6.
Unpatentability of Claims 11, 12, and 14
Claims 11, 12, and 14 depend from claim 10 and are rejected over
Wikipedia, Chang, Kavanaugh, and Paolitto in combination with various
other references. We have reviewed the additional cited art and the
Examiner’s findings, and we determine that these additional references do
not cure the deficiencies we have noted above with respect to the rejection of
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claims 6, 10, 13, and 17–20. For the same reasons, we do not sustain the
rejection of claims 11, 12, and 14.
CONCLUSION
We enter new grounds of rejection under 35 U.S.C. § 112,
second paragraph. We reverse, without reaching the merits of the
prior-art rejections as to claims 1–7, and 9. We reverse the
rejections of claims 10–14, and 17–20.
Overall outcome:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–7, 9 112(b) Indefinite 1–7, 9
1, 2, 7, 9 103 Wikipedia, Chang 1, 2, 7, 9
3 103 Wikipedia, Chang,
Hayden
3
4, 5 103 Wikipedia, Chang,
Baron
4, 5
6, 10, 13,
17–20
103 Wikipedia, Chang,
Kavanaugh,
Paolitto
6, 10, 13,
17–20

11, 12 103 Wikipedia, Chang,
Kavanaugh,
Paolitto, Hayden
11, 12
14 103 Wikipedia, Chang,
Kavanaugh,
Paolitto,
Winterhoff
14
Overall
outcome
6, 10–14,
17–20
1–7, 9

This decision contains new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
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Application 13/397,187
13
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:

(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED; 37C.F.R. § 41.50(b)