Richard Kinmont

Patent Trials and Appeals Board

May 21, 2020

2019006227 (P.T.A.B. May. 21, 2020)

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.
15/708,070 09/18/2017 Richard C. Kinmont JR. KMT-006U-1 6246
52966 7590 05/21/2020
Schramm-Personal-ACT
Michael R. Schramm
350 West
2000 South
Perry, UT 84302
EXAMINER
HYLINSKI, ALYSSA MARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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):
mike@schrammpatent.com
mikeschramm@besstek.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD C. KINMONT JR.

Appeal 2019-006227
Application 15/708,070
Technology Center 3700

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the invention relates “to toys having
parachutes for use in launching projectiles and watching the projectiles
slowly descend due to wind resistance.” Spec. ¶ 2. Claims 1 and 10 are the

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as “Michael
R. Schramm and SonicDad Enterprises, LLC (SDE).” Appeal Br. 2.
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Application 15/708,070
2
independent claims on appeal. Below, we reproduce independent claim 1,
with additional formatting added, as illustrative of the appealed claims.
1. A parachute toy having
a hinged hollow spherically shaped housing having latch
members,
an elastomeric member connected to said housing so as to
apply an open-biasing-load to said housing,
shroud lines connected to a canopy on a first end and to
said housing on a second end, and
a lanyard connected to a handle on a first end and to a latch
member on a second end,
wherein said shroud lines and said canopy are packed
within said housing, and
wherein said lanyard is threaded through said latch
members so as to apply a closing-load to said housing.
REJECTIONS AND PRIOR ART2
The Examiner rejects the claims as follows:
I. Claims 1–4 and 10–13 under U.S.C. § 103 as unpatentable over
Lent3 and Moore4;
II. Claims 5–9 under U.S.C. § 103 as unpatentable over Lent,
Moore, Johnson5, and DeRennaux.6

2 We combine rejections relative to the Final Office Action. See Final
Action 3–4. Also, in the Answer, the Examiner withdraws an indefiniteness
rejection from the Final Office Action. See id. at 2; see Answer 3.
3 Lent et al. (US 1,723,793, issued Aug. 6, 1929) (“Lent”).
4 Moore et al. (US 2,042,270, issued May 26, 1936) (“Moore”).
5 Johnson (US 5,951,354, issued Sept. 14, 1999).
6 DeRennaux et al. (US 2009/0017714 A1, published Jan. 15, 2009)
(“DeRennaux”)
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Application 15/708,070
3
ANALYSIS
Rejections I and II—Obviousness rejections of claims 1–13
Although Appellant argues claims 1–3 and 10–12 as one group,
claims 4 and 13 as another group, and claims 5–9 as yet another group,
Appellant’s argument for each group of claims is substantively the same.
See Appeal Br. 3–8. Thus, although our analysis references independent
claim 1, the analysis is equally applicable to every claim. In this case, after
carefully reviewing the record, which includes the disclosures of Lent and
Moore, a Declaration of coassignee Michael R. Schramm dated February 13,
2019 (“Declaration”), and an apparently redacted Licensing Agreement from
coassignee and licensor Michael R. Schramm to coassignee and licensee
SonicDad Enterprises (SDE) with a last signature date of September 13,
20177 (“Licensing Agreement”), we determine that the Examiner adequately
supports that it would have been obvious to combine the references as
independent claim 1 recites, and Appellant does not persuade us that the
Examiner errs.
Appellant argues that it is entitled to a presumption that there is a
nexus between the claims and product sold under the license agreement.
See, e.g., Appeal Br. 3–4. For our analysis, we will presume that such a
nexus is present. Appellant further argues that it is error in an obviousness
analysis to disregard objective indicia of nonobviousness (sometimes
referred to as “secondary considerations”), such as licensing when there
exists a nexus between the licensed product and the claims. See, e.g., id.
We agree with Appellant. We also agree with Appellant that “objective

7 The signature associated with the September 13, 2017 date, on behalf of
licensee SDE, appears to also have been redacted.
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evidence of nonobviousness mu[st] always be considered” in an obviousness
analysis, and that such evidence “must be considered before reaching an
obviousness conclusion, . . . as part of the obviousness analysis, not as an
afterthought.” Id. (citations and internal quotation marks omitted).
Thereafter, Appellant essentially argues that because a licensing
agreement exists with a nexus between the claims and the licensed product,
the Examiner errs by determining “that the objective indicia of
nonobviousness . . . was still not enough to cause her to reverse the
obviousness rejection.” Appeal Br. 4 (internal quotation marks and
emphases omitted). This argument by Appellant does not show error by the
Examiner. As set forth in NuVasive, Inc. v. Iancu—a case on which
Appellant relies—a “nexus finding, of course, does not mean that these
secondary considerations require a finding of nonobviousness. . . . [The
Office] simply [is] require[d] . . . to evaluate these secondary considerations
when considering the obviousness inquiry as a whole.” NuVasive, Inc. v.
Iancu, 752 F. App’x 985, 996 (Fed. Cir. 2018). This is what occurred in the
present application—the Examiner does not err because the Examiner
indicates appropriate consideration of the evidence, but, after considering the
obviousness inquiry as a whole, maintains the rejection.
Further, we agree with the Examiner that Appellant’s evidence is not
persuasive that claim 1 is nonobvious. To the extent that the Declaration
provides evidence, the evidence amounts to a sentence from the inventor that
“I aver that the license agreement was entered into based on the merits of the
claimed invention and that SDE was not motivated to enter such license
based on factors other than the merits of the claimed invention,” and a
sentence indicating that “[s]ince at least September 13, 2017, SDE has been
engaged inter alia in the business of making and selling product which is the
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Application 15/708,070
5
very embodiment of the invention disclosed and claimed in the . . .
application . . . which has resulted in royalties generated therefrom.”
Declaration 2. To the extent that the Licensing Agreement provides
evidence, the evidence amounts to an agreement that “SDE shall pay
Schramm a five percent (5%) royalty on all gross wholesale SDE sales of
product . . . covered by the” “[a]pplication or any patent resulting
therefrom.” Licensing Agreement 1–2. That a single company agrees to
pay a 5% royalty on an unknown total amount of dollars in sales for an
unknown number of units, resulting in an unknown total being paid to the
licensor, is not, in this case, persuasive evidence of nonobviousness. This
evidence, taken as a whole, is not enough to persuade us that the Examiner
errs, or that the claimed invention covered by the license is nonobvious.
CONCLUSION
We AFFIRM the Examiner’s obviousness rejections of claims 1–13.
In summary:

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 10–13 103 Lent, Moore 1–4, 10–13
5–9 103 Lent, Moore,
Johnson,
DeRennaux
5–9
Overall
Outcome
1–13