Ex Parte Chan et al

Patent Trial and Appeal BoardMar 28, 2017

13151988 (P.T.A.B. Mar. 28, 2017)

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. 13/151,988 06/02/2011 Patricia Chan 1389.0194C/16661(1) 5954 92231 7590 03/30/2017 Edell, Shapiro & Finnan LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 EXAMINER CEGIELNIK, URSZULA M ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 03/30/2017 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): epatent@usiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICIA CHAN, KELLY RAE MATHENY, STEVEN RYNIKER, and JAMES P. ZIELINSKI Appeal 2015-003325 Application 13/151,988 Technology Center 3700 Before: JAMES P. CALVE, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1—7, 9-12, 14, and 16—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-003325 Application 13/151,988 CLAIMED SUBJECT MATTER The claims are directed to a toy figure with a reconfigurable clothing article and an output generating system. Spec. 40 (Abstract). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A reconfigurable doll, comprising: a body having a torso portion, an output generating system, and an actuator coupled to the body and connected to the output generating system; and a clothing article coupled to the body, the clothing article has an upper portion and a lower portion coupled to the upper portion, the clothing article being movable between a first configuration and a second configuration relative to the body, the upper portion of the clothing article covers the torso portion when the clothing article is in its first configuration, and when the clothing article is moved to the second configuration, the upper portion is folded down proximate to the lower portion and the clothing article can be engaged by a user to contact the actuator to cause an output to be generated by the output generating system. Appeal Br. 31 (Claims App.). The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Aidenland Yamaguchi Jurmain Kaoh US 2,697,224 Dec. 21, 1954 US 4,878,873 Nov. 7, 1989 US 6,428,321 B1 Aug. 6, 2002 US 2007/0283604 A1 Dec. 13, 2007 2 Appeal 2015-003325 Application 13/151,988 REJECTIONS (I) Claims 1,2, and 9—11 are rejected under 35 U.S.C. § 102(b) as anticipated by Jurmain, or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Jurmain and Aidenland.1 (II) Claims 3—7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jurmain, Aidenland, and Yamaguchi.2 (III) Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jurmain and Yamaguchi. (IV) Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Jurmain, Yamaguchi, and Kaoh (V) Claims 17—19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jurmain and Yamaguchi or Jurmain, Yamaguchi, and Aidenland. (VI) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Jurmain, Yamaguchi, and Kaoh or Jurmain, Yamaguchi, Aidenland, and Kaoh. OPINION Rejection (I) 1 Although the Examiner provides a separate heading for the rejection of claim 2 without including Aidenland, we understand the rejection of claim 2 to fall under Rejection (I) inasmuch as claim 2 depends from claim 1, and the Examiner does not cite any new references in the rejection of claim 2. See Non-Final Act. 2—\\ see also Appeal Br. 31 (Claims App.). 2 Although the Examiner does not list Aidenland in the heading for Rejection (II), we understand Rejection (II) to include Aidenland, as applied to claim 1, inasmuch as claims 3—7 depend from claim 1. See Non-Final Act. 4—6; see also Appeal Br. 31—32 (Claims App.). 3 Appeal 2015-003325 Application 13/151,988 Anticipation by Jurmain The Examiner finds that Jurmain discloses all the features recited in claim 1, including a doll with an actuator (diaper change switch 62) and a clothing article coupled to the body, wherein (i) the upper portion of the clothing article covers the torso portion when the clothing article is in its first configuration, and, (ii) when the clothing article is moved to the second configuration, the upper portion is folded down proximate to the lower portion. See Non-Final Act. 2—3. Specifically, the Examiner finds that Jurmain discloses that “([in] Figure 4a, the lower portion [is] proximate reference part label 60, and the upper portion being proximate figure label 4a), the clothing article being movable between a first configuration and a second configuration relative to the body (10).” Id. at 2. Thus, the Examiner relies on the portion of diaper 60 at the top of Figure 4a (near reference label 60a) for the recited lower portion. The Examiner makes different findings in the Answer, stating: In Figure 4a [of Jurmain], the drawing as is, can be the first configuration where the diaper is in an unfolded (flat) configuration, and the diaper portion proximate reference label 60a can be the upper portion and the lower portion being proximate figure label 4a. The upper portion as identified above, can be folded down (that is, with the user standing overhead the doll, folding upper portion toward the torso of the doll to engage the magnet 61 in order for the magnet switch 61 to be in close proximity to the diaper change switch 62 (and at the same time, the upper portion in contact with the lower portion) located on the doll’s body which would be the second configuration. Therefore, in the second configuration or folded position, the upper portion will be folded down so that the upper and lower portion will be proximate with one another. Ans. 13 (emphases added). Thus, in the Answer, the Examiner relies on portion of diaper 50 at the top of Figure 4a (near 60a) for the recited upper 4 Appeal 2015-003325 Application 13/151,988 portion. The Examiner relies on Figure 4a of Jurmain to teach the first configuration of diaper 60 and relies on a folded arrangement of diaper 60 (i.e., the state in which the doll wears diaper 60) for a second configuration. In the second configuration, as found by the Examiner, the relatively wide area 60a is the upper portion and is folded downward, toward the relatively narrow area near Figure 4a’s label, “log. 4a,” (the lower portion). Ans. 13. In other words, doll 10 would be in an upside-down position in order for the second configuration to be the result of a downward folding action.3 We reproduce Figure 4a of Jurmain below. Figure 4a of Jurmain depicts a perspective view of diaper 60. Jurmain 6:34—36. Appellants argue, “Jurmain fails to teach that the diaper 60 could be reconfigured from a first configuration and second configuration as 3 The Examiner’s frame of reference to provide a downward motion when this folding action occurs appears to be Figure 4a of Jurmain rather than a frame of reference based on the orientation of the doll. See Ans. 13 (the user standing overhead the doll so upper portion can be folded down). 5 Appeal 2015-003325 Application 13/151,988 described in the claims while remaining coupled to the body of the doll 10.” Reply Br. 1—2. Specifically, Appellants assert that diaper 60 of Jurmain is not coupled to the doll’s body in both configurations. See id. at 1. We agree with Appellants on this point. The arrangement of diaper 60 shown in Figure 4a of Jurmain (the “first configuration”) is not “coupled” to the body of doll 10. Instead, as Appellants note (Reply Br. 4), diaper 60 is not worn by doll 10 in Figure 4a and therefore it is not coupled to doll 10 in both first and second configurations. In other words, Jurmain discloses one configuration of diaper 60 coupled to doll 10, but not two. The Examiner’s finding that Jurmain discloses that the diaper may be fitted over the doll, and there is coupled to the doll (Ans. 14), does not address this argument and requirement for the clothing article to remain coupled to the body in both the first and the second configurations. Appellants further contend that Jurmain does not generate outputs via a “folding down proximate to the lower portion” movement to a second configuration. Appeal Br. 19. We also agree with Appellants on this point. The outputs generated in Jurmain are not a result of a folding down movement to the second configuration. As discussed above, to provide, via a downward folding motion, a second configuration in which the first and second portions of the clothing are proximate each other, the doll must be in an upside-down position. However, to place the doll in an upside-down orientation such that placement of the diaper on the doll results from a “folding down” action is not consistent with Appellants’ Specification. Figure 1 depicts doll 10 in an upright position and arrow “C” indicates the “downward” direction is relative to the orientation of doll 10. See Spec. 1 69 (stating “After the clothing article 100 has been rotated and opened, the upper portion 110 is 6 Appeal 2015-003325 Application 13/151,988 folded downwardly along the direction of arrow ‘C’ on the rear side of the doll body 20.”). Figure 4 is consistent with this interpretation of “down” as in reference to the orientation of doll 10. Thus, the Examiner’s finding that Jurmain discloses the recited “folding down” limitation of claim 1 relies on an interpretation of the term “down” that is inconsistent with the Specification. Accordingly, for the reasons discussed above, we reverse the Examiner’s rejection of claim 1 and claims 9—11 depending therefrom as anticipated by Jurmain. Obviousness: Jurmain and Aidenland The Examiner states: If Applicant doubts that Jurmain discloses the diaper covering the torso, Aidenland teaches clothing covering the torso. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the clothing article covering the torso as taught by Aidenland, since such a modification would provide alternative clothing that covers the torso. Non-Final Act. 3. Appellants assert that Jurmain does not generate an output from a configuration where an upper portion is folded down to be located proximate a lower portion as claimed, and Aidenland generates no output at all. See Appeal Br. 20-21; see also Reply Br. 5—6. Therefore, according to Appellants, the Examiner’s proposed combination of Jurmain and Aidenland would not include such a feature. We agree with Appellants’ arguments inasmuch as the Examiner’s discussion of the proposed combination of Jurmain and Aidenland merely replaces diaper 60 with the clothing article disclosed by Aidenland. The 7 Appeal 2015-003325 Application 13/151,988 Examiner does not explain how the resultant combination would satisfy the limitation that “the clothing article can be engaged by a user to contact the actuator to cause an output to be generated by the output generating system” when the clothing article is in a folded down state. In other words, even if the Examiner’s reasoning for replacing diaper 60 of Jurmain with the clothing article of Aidenland, to “provide alternative clothing that covers the torso” (Non-Final Act. 3), is sufficient to replace diaper 60 with the garment Aidenland discloses, this reasoning falls short of supporting a modification to Jurmain that meets all the requirements of claim 1. Accordingly, we reverse the Examiner’s rejection of claim 1 and claims 9—11 depending therefrom as unpatentable over Jurmain and Aidenland. Rejection (II); Jurmain, Aidenland, and Yamaguchi Claims 3—7 depend from claim 1. See Appeal Br. 31—32 (Claims App.). The Examiner’s use of Yamaguchi does not remedy the deficiencies discussed above regarding Rejection (I). Accordingly, for the same reasons discussed above regarding Rejection (I), we reverse the Examiner’s rejection of claims 3—7 as unpatentable over Jurmain, Aidenland, and Yamaguchi. Rejection (III); Jurmain and Yamaguchi Independent claim 12 recites, in part, “a clothing article coupled to the body, the clothing article being movable between a first configuration and a second configuration.” Appeal Br. 34 (Claims App.). The Examiner relies on Jurmain for this feature. See Non-Final Act. 7. Appellants contend that Jurmain does not disclose two configurations of a clothing article coupled to the doll body. See Appeal Br. 23—24. We agree with Appellants on this point for the reasons discussed above regarding Rejection (I). The Examiner’s use of Yamaguchi does not remedy this deficiency. See Non-Final Act. 7—8. Indeed, the Examiner makes no 8 Appeal 2015-003325 Application 13/151,988 finding that Yamaguchi discloses clothing. Id. Accordingly, we reverse the Examiner’s rejection of claims 12 and 14 as unpatentable over Jurmain and Yamaguchi. Rejection (IV); Jurmain, Yamaguchi, and Kaoh Claim 16 depends from claim 12 (Appeal Br. 35 (Claims App.), and the Examiner’s use of Kaoh does not remedy the deficiencies discussed above regarding Rejection (III). Accordingly, for the same reasons, we reverse the Examiner’s rejection of claim 16 as unpatentable over Jurmain, Yamaguchi, and Kaoh. Rejection (V); Jurmain, Yamaguchi, and Aidenland Independent claim 17 recites, in relevant part, a clothing article coupled to the doll body, the clothing article being reconfigurable between a first configuration and a second configuration, the clothing article in its first configuration covers the translucent portion, and the clothing article in its second configuration is configured to engage the actuator to actuate the light emitting device. Appeal Br. 35 (Claims App.). The Examiner relies on Jurmain to teach the clothing article coupled to the doll body in two different configurations. See Non-Final Act. 9—10. Appellants contend that Jurmain does not disclose two configurations of a clothing article coupled to the doll body. See Appeal Br. 23—24. We agree with Appellants on this point for the reasons discussed above regarding Rejection (I). The Examiner’s reasoning for incorporating the disclosure of Aidenland is the same as the Examiner’s reasoning in Rejection (I). See Non-Final Act. 3,11. Similar to the deficiency discussed above regarding Rejection (I), the Examiner’s reasoning on this point falls short of providing a combination of Jurmain and Aidenland that addresses 9 Appeal 2015-003325 Application 13/151,988 engagement of the actuator in the second configuration. The Examiner’s use of Yamaguchi does not remedy this deficiency. See Non-Final Act. 8—9. Accordingly, we reverse the Examiner’s rejection of claims 12 and 14 as unpatentable over Jurmain, Yamaguchi, and Aidenland. Rejection (VI); Jurmain, Yamaguchi, Aidenland, and Kaoh Claim 20 depend from claim 17, and the Examiner’s use of Kaoh does not remedy the deficiencies discussed above regarding Rejection (V). See Non-Final Act. 11—12. Accordingly, for the same reasons, we reverse the Examiner’s rejection of claim 20 as unpatentable over Jurmain, Yamaguchi, Aidenland, and Kaoh. DECISION The Examiner’s decision to reject claims 1—7, 9—12, 14, and 16—20 is reversed. REVERSED 10