Ex Parte EdgeDownload PDFPatent Trial and Appeal BoardOct 23, 201713261381 (P.T.A.B. Oct. 23, 2017) Copy Citation 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 Claims 2-19, 30, 31, 33, and 37 are canceled, and claims 38^44 are withdrawn.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 Appeal 2016-004171 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). 2 Appeal 2016-004171 Application 13/261,381 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. 3 Appeal 2016-004171 Application 13/261,381 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. 4 Appeal 2016-004171 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 5 Appeal 2016-004171 Application 13/261,381 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 6 Appeal 2016-004171 Application 13/261,381 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. 7 Appeal 2016-004171 Application 13/261,381 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. 8 Appeal 2016-004171 Application 13/261,381 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 9 Copy with citationCopy as parenthetical citation