Ex Parte Floyd et alDownload PDFPatent Trial and Appeal BoardSep 17, 201814716863 (P.T.A.B. Sep. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/716,863 05/19/2015 85444 7590 09/17/2018 Bay Area Technolgy Law Group PC 2171 E. Francisco Blvd., Suite L San Rafael, CA 94901 FIRST NAMED INVENTOR Charles Floyd 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 545.424 1062 EXAMINER TOPOLSKI, MAGDALENA ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 09/17/2018 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 CHARLES FLOYD, SARA P ACULDO, and AIMEE DISKIN Appeal2017-009226 Application 14/716, 863 1 Technology Center 3600 Before MEREDITH C. PETRA VICK, PHILIP J. HOFFMANN, and ROBERT J. SILVERMAN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner's rejection of claims 1-5 and 7-12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Claims 1 and 9 are the independent claims on appeal. Below, we reproduce claim 1, as illustrative of the appealed claims. 1 According to Appellants, the real party in interest is W orldwise, Inc. Appeal Br. 1. Appeal2017-009226 Application 14/716,863 1. A cat scratcher, hideout and carrier device comprising a base, sidewalls appended to said base and a handle region forming an interior space, said base having a first surface external to said interior space and a second surface residing within said interior space, a cat scratcher supported by said second surface of said base for providing a scratching surface within said interior space and wherein at least a portion of one of said sidewalls being at least partially and selectively detachable from other sidewalls to expose said interior space, said interior space being completely enclosed when sidewalls remain attached to one another. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1-5 and 7-12 under 35 U.S.C. § I02(a)(l) and (a)(2) as anticipated by Christie (US 4,736,707, iss. Apr. 12, 1988); II. Claims 1-5 and 7-10 under 35 U.S.C. § 103 as unpatentable over Pemberton et al. (US 5,839,392, iss. Nov. 24, 1998) ("Pemberton") and Salzman (US 2010/0006037 Al, pub. Jan. 14,20IO);and III. Claims 11 and 12 under 35 U.S.C. § 103 as unpatentable over Pemberton, Salzman, and Diep (US 7,011,043 B2, iss. Mar. 14, 2006). ANALYSIS Rejection I Based on our review of the record, including Appellants' Appeal Brief and Reply Brief, and the Examiner's Final Office Action and Answer, 2 Appeal2017-009226 Application 14/716,863 Appellants do not persuade us that the Examiner errs in rejection claims 1-5 and 7-12 as anticipated by Christie. Thus, we sustain the rejection. As set forth above, independent claim 1 recites, in relevant part, "[a] cat scratcher, hideout and carrier device comprising ... a cat scratcher supported by said second surface of [a] base for providing a scratching surface within [an] interior space." Appeal Br., Claims App. (emphasis added). As summarized by Appellants, "[Appellants] and the Examiner are in basic disagreement as to whether urination barrier 12 of Christie can be considered a cat scratcher." Id. at 4. More specifically, Appellants argue that [i]t is well known that a scratching surface suitable for cats must be a surface [that] is rough[,] enabling the cat to embed its claws therein to satisfy its instinct to scratch. By contrast, central floor portion 12 of insert 10 of Christie is anything but a scratching surface. The inserts is undoubtedly smooth[,] as it is intended to act as a barrier in the event the pet urinated while being enclosed within the carrier. . . . Christie teaches the preferred embodiment of this material is [a] "wax layer" which, again, could not possibly act as a scratching surface. . . . By contrast, [Appellants'] scratcher 30 is ideally composed of corrugated cardboard having corrugations [that] are open to the pet[,] as illustrated in [F]igures 2, 3 [,] and 4. The [S]pecification also teaches that the scratcher could be, for example, carpet[,] which again presents a rough surface enabling a cat to embed its claws therein. Id. ( citations omitted). With the Appeal Brief, Appellants also present new evidence "that a wax layer used to trap urin[ e] would not be considered a scratcher by anyone skilled in the art." Id. at 5. As an initial matter, an Appeal Brief "shall not include any new or non-admitted ... [e]vidence." 37 C.F.R. § 41.37(c)(2). Thus, we do not consider Appellants' new evidence. Further, Appellants fail to establish 3 Appeal2017-009226 Application 14/716,863 persuasively that anything in the claims or Specification, or any admitted evidence, shows that a wax layer "would not be considered a [cat] scratcher [ comprising a scratching surface,] by anyone skilled in the art." Appeal Br. 4. Instead, Appellants' argument appears to be speculation. Thus, in the absence of persuasive evidence or argument to the contrary, we agree with the Examiner that claim 1 's recitation of a scratching surface may include any surface at which a cat scratches. See, e.g., Answer 2-3. We also agree with the Examiner that it would be expected that a cat will scratch at Christie's insert 10 "when placed at the bottom of a pet transport box," and, as such, we agree with the Examiner's finding that Christie discloses the recitation under discussion. Id. at 3. Based on the foregoing, we sustain the anticipation rejection of claim 1. Appellants argue claims 1 and 9 as a group, and we choose claim 1 for our analysis above. See 37 C.F.R. § 4I.37(c)(l)(iv) (Requiring that "[ e Jach ground of rejection contested by appellant must be argued under a separate heading," and allowing the Board to "select a single claim from the group or subgroup and ... decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone."). As a result claims 1 and 9 stand or fall together. Similarly, we do not consider separately Appellants' arguments regarding dependent claims 11 and 12 because Appellants did not argue claims 11 and 12 under a separate subheading. See id. ("Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claims( s) by number.") Appellants make no separate argument for claims 2-5, 7, 8, 4 Appeal2017-009226 Application 14/716,863 and 10. Thus, we also sustain the anticipation rejection of claims 2-5, 7, 8, and 10-12 that depend from the independent claims. Re} ection II Based on our review of Appellants' Appeal Brief and Reply Brief, Appellants do not persuade us that the Examiner errs. Thus, we sustain the Examiner's obviousness rejection of claims 1-5 and 7-10. Appellants argue that [ a ]lthough Salzman discloses a scratcher element, it must be attached to a frame and the frame appended to a sidewall of the interior of the enclosure . . . . [T]his not only teaches away from the present invention[,] which requires the scratcher to be on the interior of the base of the carrier but the combination of Salzman with Pemberton would be unworkable for the frame of Salzman would make it difficult, if not impossible, to fold the carrier of Pemberton, which is a requirement of the device. Appeal Br. 5 (citations omitted). We note, however, that in the Examiner's rejection, "Salzman ... is solely relied upon to teach a scratcher within a pet box. The mounting structure of Salzman is not relied upon." Answer 7. Further, even if we agreed with Appellants that combining the references as the Examiner proposes "would make it difficult, if not impossible, to fold the carrier," Appellants do not persuade us that the ability to fold the carrier "is a requirement of [Pemberton's] device," such that modification of Pemberton's device so that it may no longer fold would be an impermissible modification. Appeal Br. 5. Appellants argue claims 1 and 9 as a group, and we chose claim 1 for our analysis above. See 37 C.F.R. § 41.37(c)(l)(iv). As a result, claim 9 stands or falls with claim 1. Thus, based on the foregoing, we sustain the Examiner's obviousness rejection of claims 1 and 9. We also sustain the 5 Appeal2017-009226 Application 14/716,863 obviousness rejection of claims 2-5, 7, 8, and 10 that depend from the independent claims, as Appellants do not argue separately the rejection of the dependent claims. Rejection III Appellants argue that the obviousness rejection of claims 11 and 12 is in error because no reference remedies the deficiency in claim 1 's obviousness rejection. Appeal Br. 6-7. Inasmuch as there is no deficiency in claim 1 's rejections for the reasons discussed above, we sustain the rejection of claims 11 and 12. DECISION We AFFIRM the Examiner's anticipation and obviousness rejections of claims 1-5 and 7-12. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation