Ex Parte Edge

Patent Trial and Appeal Board

Oct 23, 2017

13261381 (P.T.A.B. Oct. 23, 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.
DME301US 6461
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
13/261,381 07/19/2012
78569 7590 10/23/2017
DASCENZO Intellectual Property Law, P.C.
1000 SW Broadway, Suite 1555
Portland, OR 97205
David Matthew Edge
10/23/2017 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 DAVID MATTHEW EDGE
Appeal 2016-004171
Application 13/261,381
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Matthew Edge (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1, 20-29, 32, 34-36,
and 45-50. Final Office Action (December 2, 2014) (hereinafter “Final
Act.”). Claims 2-19, 30, 31, 33, and 37 are canceled, and claims 38^44 are
withdrawn. Id. at 1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a mechanical assembly
allowing the control of a plurality of concentrically orbiting pendulums
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Application 13/261,381
which may be made through a series of simple movements to revolve first in
coplanar and subsequently in non-coplanar orbits.” Spec. 1,11. 4-6. Claims
1, 20, and 45 are the independent claims on appeal. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below.
1. A mechanical assembly characterized by:
(a) a bearing or bearing surface which may be integral or
non-integral to a handle;
(b) a single freely rotating section which may be
permanently or removably positioned upon, and which is free to
rotate through 360 degrees upon or around, the bearing or
bearing surface and itself presenting, within a segment of no
more than 180 degrees as measured from the axis of rotation,
distinct points of attachment fixed within a common plane for;
(c) an array of two or more pendulums which may be
permanently or removably attached to the single freely rotating
section at respective attachment points, are free-swinging
directly from their respective attachment points, and whose
attached ends are, by reason of their attachment to the single
freely rotating section, constrained to a common axis of
revolution around the bearing or bearing surface and within the
common plane.
Appeal Brief (September 9, 2015) (“Br.”), Claims Appendix 1.
REJECTIONS
The Final Office Action includes the following rejections:
1. Claim 50 stands rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
2. Claims 1, 20-22, 25-29, 32, 34-36, 45, 48, and 50 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Rogers (US
1,915,868, issued June 27, 1933) and Somers (US 6,802,758 B2,
issued October 12, 2004).
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3. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rogers, Somers, and Felardo (US 1,858,145,
issued May 10, 1932).
4. Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rogers, Somers, and Batchelder (US 139,533,
issued June 3, 1873).
5. Claim 49 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Rogers, Somers, and Bloomfield (US 5,890,946, issued April
6, 1999).
ANALYSIS
First Ground of Rejection: Indefiniteness
Claim 50 depends from independent claim 20 and recites “wherein the
spaced-apart attachment points are all bound by an angle of less than 180
degrees relative to the axis.” Br., Claims Appendix 5. The Examiner finds
the claim language “bound . . . relative to the axis” to be unclear because the
attachment points are recited in claim 20 as being able to revolve about the
axis of the handle. Final Act. 2.1 * 3“Appellant does not disagree that the
attachments points can all swing 360 degrees around the axis, but Appellant
disagrees that this precludes the attachment points being bound by an angle
of less than 180 degrees relative to the axis.” Br. 9. Appellant contends that
person of ordinary skill in the art would understand the subject matter of
claim 50, when read in light of the Specification, to mean that “at any
1 Claim 20 recites that “the spaced-apart attachment points are fixed relative
to each other in all directions and within the plane, so that when the bail
rotates about the axis, the attachment points revolve about the axis, within
the plane, and all in the same direction.” Br., Claims Appendix 2.
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moment in time, wherein the bail 340 is spinning or stationary, all of the
attachment points remain fixed relative to each other, and thus are bound
relative to each other (and the axis, at that moment in time).” Id. (citing
Spec., Fig. 3).
We agree with Appellant that the claim language is not indefinite. In
particular, independent claim 20 already recites that the attachment points
are fixed relative to each other within the plane. Thus, a person skilled in
the art would understand claim 50 to further limit the locations of the
attachment points to reside in the plane within an angle of less than 180
degrees relative to the axis about which the bail rotates. This interpretation
is consistent with the depiction of the attachment points in the embodiment
of Figure 3. For these reasons, we do not sustain the Examiner’s rejection of
claim 50 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Second Ground of Rejection: Obviousness over Rogers and Somers
Independent claim 1 recites “a single freely rotating section” and
“points of attachment fixed within a common plane.” Br., Claims Appendix
1. Independent claims 20 and 45 contain similar limitations.2 * 4
The Examiner finds that Rogers teaches a mechanical assembly
comprising a bearing surface and a freely rotating section having “distinct
points of attachment within a common plane” that are “within a segment [of
2 Independent claim 20 recites “a single bail” and “spaced-apart attachment
points are fixed relative to each other in all directions and within the plane.”
Br., Claims Appendix 2. Independent claim 45 recites “a bail” and “spaced-
apart attachment points are fixed relative to each other in all directions
within the common plane.” Br., Claims Appendix 4.
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Application 13/261,381
the freely rotating section] of no more than 180 degrees as measured from
the axis of rotation.” Final Act. 3. In particular, the Examiner states that
“items 28 and 29, [F]ig. 5, when spinning together in the same direction . . .
are in a common plane.” Id. The Examiner further finds that when items 28
and 29 are spun in the same direction, they have “attachment points of no
more than 180 degrees.” Examiner’s Answer 12 (December 16, 2015)
(hereinafter “Ans.”). The Examiner acknowledges that Rogers does not
teach the attachment points being “fixed” in a common plane and does not
teach a single freely rotating section or bail. Final Act. 4.
The Examiner finds that Somers teaches a whirling entertainment toy
having a single bail with fixed connections in a single plane. Id. The
Examiner determines that it would have been obvious to one having ordinary
skill in the art to modify the toy of Rogers with the feature of a single bail
with fixed connections in a single plane, as taught by Somers, for “allowing
the device to be used to create a wider variety of amusing displays,. . .
making the device more versatile, more entertaining, and more attractive to
the users.” Id.', see also Ans. 12-13 (Examiner explaining that “Somers was
used to teach connection points being fixed in a common plane and a single
bail instead of two.”).
Appellant contends that this proposed modification “goes directly
against the express teachings of Rogers and would render the disclosed
devices inoperable for their intended purpose.” Br. 15. Appellant argues
that “Rogers repeatedly and only teaches that the purpose and function of the
disclosed whirling toy is to whirl, or rotate, the attached balls in ‘opposite
directions’ around the handle—something that simply is not possible if it is
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modified to result in the subject matter of independent claim 1.” Id. (citing
Rogers 1,11. 1—4, 25-31, 39^42 and 2,11. 56-60, 86-66). Appellant asserts
that because the proposed modifications “are so far removed from the
intended function and operation of Rogers ... a person of ordinary skill in
the art would not have been motivated to make such modifications.” Id. at
15-16. The Examiner responds that “[Rotating pendulums are taught by the
primary reference, and attachment points for rotating pendulums that are
fixed relative to each other in a single plane are taught in the secondary
reference.” Ans. 13.
The Examiner’s response misses the point of Appellant’s argument.
Simply because some features of the claimed subject matter can be found in
one prior art reference and other features of the claimed subject matter can
be found in another prior art reference, is not sufficient in this case to
demonstrate obviousness of the subject matter of claim 1. The Examiner
must articulate a reason that would have led a person having ordinary skill in
the art to combine the known elements in the manner claimed. KSR Int 7 Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Rogers is directed to a whirling toy. Rogers teaches that an object of
its invention is “to provide a toy whereby a number of skillful feats or tricks
may be performed in regard to the manner in which a plurality of balls or
other small objects are made to travel in reverse directions and through
different orbits without clashing with each other.” Rogers 1,11. 25-32. In
particular, Rogers shows a toy “equipped with two balls which are caused to
revolve in opposite directions in orbits of different sizes.” Id. at 1,11. 40 42.
Rogers’s toy is operated by the user holding a handle in one hand and a first
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one of the two balls in the other hand, oscillating the handle in a vertical
manner to cause the second ball to revolve around the handle, and while the
second ball is in motion, the user tosses the first ball overhand to cause it to
revolve in a direction opposite the direction of rotation of the first ball. Id. at
2,11. 48-60. The user continues the up and down motion of the handle to
cause the balls to continue to revolve around the handle. Id. at 2,11. 60-63.
Somers is directed to providing an amusing light display device that
can be used to display a variety of “patterns such as multi axis rotating
orbits, complex helixes, spiral flowers, and UFOs.” Somers, col. 2,11. 51-
57. Somers describes that such a display is an improvement over the
displays provided by the prior art method of placing one or more flashlights
or glow sticks on a string, holding them with one hand, and whirling them
around the hand. Id. at col. 1,11. 26-34 (Somers explaining that the glow
sticks or flashlights, by their nature, are not evenly balanced and thus
difficult to spin for any duration). Somers also describes that its display is
an improvement over displays provided by a lighted Yo-Yo toy, which does
not allow it to be spun axially while suspended with both hands parallel to
its axis, so that it is not possible to manipulate a yo-yo to provide certain
orbiting or spiral light patterns. Id. at col. 1,11. 35^43. Somers’s device
achieves the desired patterns through use of a hub 30, to which various light
emitted elements 72 are mounted and to which various satellite light
emitting elements 92 are attached via cords 170. Id. at col. 6,11. 37, 51-61,
Fig. 1 A. A tether 40 passes through the sides of the hub 30, and the operator
can place his hands through loops 41 on either side of tether 40 to spin the
hub 30. Id. at col. 6,11. 39^15, col. 9,1. 60 - col. 10,1. 24.
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Appellant’s arguments as to the express purpose of the toy of Rogers
demonstrate that the Examiner’s articulated reasoning for modifying the toy
of Rogers in the manner claimed lacks rational underpinnings. The
Examiner’s reasoning to “allow[] the device to be used to create a wider
variety of amusing displays” (Final Act. 4) ignores the facts that the object
of Rogers’ toy is to allow the balls to rotate in opposite directions and that
Somers achieves its displays by rotating its hub using a tether that passes
through the sides of the hub. It is not evident that one having ordinary skill
in the art would understand that the displays of Somers can be achieved
through the modifications to Rogers proposed by the Examiner, because
Rogers, as modified, uses a handle and does not employ the tether
arrangement of Somers. Further, the proposed modifications to Rogers
would render the toy of Rogers incapable of being used to spin the balls in
opposite directions. For these reasons, we find that the Examiner has failed
to articulate adequate reasoning supported by rational underpinnings to
explain how Rogers and Somers would have led one having ordinary skill to
subject matter of independent claims 1, 20, and 45. Accordingly, we do not
sustain the rejection of these independent claims, and dependent claims 21,
22, 25-29, 32, 34-36, 48, and 50, under 35 U.S.C. § 103(a) as unpatentable
over Rogers and Somers.
Third through Fifth Grounds of Rejection
The remaining grounds of rejection rely on the same deficient
combination of Rogers and Somers as discussed above. Accordingly, we
also do not sustain the rejection of dependent claims 23, 24, 46, 47, and 49.
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DECISION
The decision of the Examiner rejecting claim 50 under 35 U.S.C.
§112, second paragraph, is reversed.
The decision of the Examiner rejecting claims 1, 20-29, 32, 34-36,
and 45-50 under 35 U.S.C. § 103 is reversed.
REVERSED
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