Ex Parte del Pinal et al

Patent Trial and Appeal Board

Jun 23, 2014

12369164 (P.T.A.B. Jun. 23, 2014)

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.
12/369,164 02/11/2009 Erwin del Pinal 545 186 3328
85444 7590 06/23/2014
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
WILLIAMS, MONICA L
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
06/23/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERWIN DEL PINAL and ANDREW MURRER
____________

Appeal 2011-010165
Application 12/369,164
Technology Center 3600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
LORA M. GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 7-16 (App. Br. 1).
Examiner entered a rejection under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is Worldwise, Inc. (App. Br. 1).
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Application 12/369,164

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STATEMENT OF THE CASE
The claims are directed to a plush pet toy (claims 7-9 and 13-16) and a
pet toy (claims 10-12). Claims 7 and 10 are representative and are
reproduced in the Claims Appendix of Appellants’ Brief.
Claims 7-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Herrenbruck2 and Kopelle.3
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellants disclose that “plush [chew toys] having a fabric or fur-
like outer surface while being configured in the shape of an animal or food
item and sized to be bitten down upon by a dog” are known in the art (Spec.
1: 15-17).
FF 2. Herrenbruck’s “invention relates to a toy for a pet . . . that can record
and playback sounds, and that can dispense treats or other desirable objects
when manipulated” (Herrenbruck 1: [0002]; see generally Ans. 3-4).
FF 3. Herrenbruck suggests covering a pet toy with “a generally flexible
sheathing” that “may be any suitable material such as a plush material” (id.
at 5: ¶¶ [0064]-[0065]; Ans. 3).

2 Herrenbruck, US 2002/0115377 A1, published August 22, 2002.
3 Kopelle, US 2004/0077280 A1, published April 22, 2004.
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FF 4. Herrenbruck’s Figure 5 is reproduced below:

FIG 5. Is a “perspective view[] of a sound unit suitable for use with . . .
[Herrenbruck’s] treat dispensing toy” (Herrenbruck 2: ¶ [0017]).
FF 5. Herrenbruck’s “sound module comprising an integrated circuit . . .,
power source . . . and speaker . . . [are] housed within a shell (502)” (Ans. 3;
see Herrenbruck 3: ¶ [0044]).
FF 6. Examiner finds that Herrenbruck fails to suggest “stuffing enclosed
within the body of the toy” and relies on Kopelle to make up for this
deficiency in Herrenbruck (Ans. 3; see Kopelle 2: ¶ [0013]).
FF 7. Kopelle suggests a plush toy comprising stuffing and a sound
module (Kopelle, Abstract, 2: ¶ [0013], 3: ¶¶ [0029]-[0030]).
FF 8. Examiner finds that Herrenbruck fails to suggest a “shell having a
thickness of approximately 2mm to 5mm and being composed of
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acrylonitrile butadiene styrene” (Ans. 7). Examiner makes no finding to
suggest that Kopelle makes up for this deficiency in Herrenbruck (id.).
ANALYSIS
Based on the combination of Herrenbruck and Kopelle, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious to have made the: (1) “plush toy of Herrenbruck
include stuffing as taught by Kopelle in order to be soft and pliable . . . and
to reduce stress and anxiety;” (2) with “the sidewall of the shell having a
thickness between approximately 2mm and 5mm in order to make the shell
sufficiently strong to protect the circuitry inside;” and (3) a “button battery
spring biased with the cage in order to hold the battery in place” (Ans. 4-5).
Claim 7:4
Herrenbruck suggests a pet toy having a plush outer surface (FF 3; Cf.
FF 1). Therefore, we are not persuaded by Appellants’ contention that
Herrenbruck fails to suggest this feature of Appellants’ claimed invention
(App. Br. 3-4; Cf. Ans. 5-6). We are also not persuaded by Appellants’
contention that “a plush cover does not make a pet toy a plush pet toy”
(Reply Br. 1; see FF 1 (Appellants disclose that “plush [chew toys] hav[e] a
fabric or fur-like outer surface”); Cf. FF 3).
Appellants’ claim 7 is open to include other components, including a
“barrier member[] to retard egress of . . . treats” as suggested by
Herrenbruck (see Appellants’ Claim 7; Reply Br. 1-2). Therefore, we are
not persuaded by Appellants’ unsupported contention that the features of
Herrenbruck’s toy “would not lend themselves to a plush construction”

4 Claims 13-16 stand or fall with claim 7 (App. Br. 4).
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(Reply Br. 2). In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel cannot take the place of evidence).
Herrenbruck suggests a pet toy comprising a sound module housed
within a shell (FF 5). Therefore, we are not persuaded by Appellants’
contentions that: (1) Kopelle fails to suggest “housing these components
within a shell” and Herrenbruck fails to suggest “a sound module resistant to
an animal’s bite” (App. Br. 4; Reply Br. 2; Cf. Ans. 6-7). There is no
evidence on this record to suggest that the sound module shell of
Herrenbruck’s pet toy is not resistant to an animal’s bite.
Herrenbruck suggests a pet toy comprising a plush outer surface and a
sound module (FF 3). Kopelle suggests placing stuffing in a toy comprising
a plush outer surface and a sound module (FF 7). Therefore, we are not
persuaded by Appellants’ contention that the combination of Herrenbruck
and Kopelle fails to suggest a pet toy comprising a plush outer surface,
stuffing, and a sound module (Reply Br. 2).
Claims 8-12:
Appellants claimed invention comprises, inter alia, a shell having a
thickness of approximately 2mm to 5mm (see claims 8 and 10-12) that is
composed of acrylonitrile butadiene styrene (see claims 9 and 10-12).
Examiner recognizes that neither Herrenbruck nor Kopelle suggest the
shell required by Appellants’ claimed invention (FF 8). Nevertheless, to
make up for this evidentiary void, Examiner concludes that the selection of
shell thickness is simply the discovery of “optimum or workable ranges
involv[ing] only routine skill in the art” and that the specific material
required by the claim is an “obvious design choice,” wherein “a known
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material [is selected] on the basis of its suitability for the intended use”
(Ans. 4). We are not persuaded.
Examiner correctly asserts that “it is not inventive to discover the
optimum or workable ranges by routine experimentation” In re Aller, 220
F.2d 454, 456 (CCPA 1955). This is, however, true “where the general
conditions of a claim are disclosed in the prior art.” Id. On this record,
Examiner failed to establish an evidentiary basis, or articulate a rationale,
that supports a conclusion that a person of ordinary skill in this art would
have considered that a side wall thickness of between approximately 2 mm
and 5 mm would have been the optimum or workable range for the shell
material suggested by the combination of Herrenbruck and Kopelle (see
App. Br. 4 (“Examiner has merely concluded that it would have been
obvious to one having ordinary skill in the art at the time the invention was
made to have made the shell as claimed”); Cf. Ans. 4). In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness 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”). In addition, while Examiner concludes that it
is no more than an obvious design choice to select a material that is suitable
for a particular intended use, Examiner failed to establish that acrylonitrile
butadiene styrene would be a suitable material for a shell housing a sound
module for a pet toy (see Ans. 4).
We recognize, but are not persuaded by, Examiner’s attempt to shift
the evidentiary burden to Appellants (see Ans. 7 (“Herrenbruck does not
disclose the shell having a thickness of approximately 2mm to 5mm and
being composed of acrylonitrile butadiene styrene, however the Appellant
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[sic] has failed to disclose why it would not [have] be[en] obvious to use this
particular material in this claimed range”)). “[E]xaminer bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). On this record, Examiner failed to carry this initial burden.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with regard to Appellants’ claim 7. The rejection
of claim 7 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Herrenbruck and Kopelle is affirmed. Claims 13-16 fall with claim 7.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with regard to Appellants’ claims 8-12.
The rejection claims 8-12 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Herrenbruck and Kopelle is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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