Ex Parte Floyd et al

Patent Trial and Appeal Board

Sep 17, 2018

14716863 (P.T.A.B. Sep. 17, 2018)

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,
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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
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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,
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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
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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
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