Ex Parte Johnson et al

Patent Trial and Appeal BoardApr 23, 2015

11132035 (P.T.A.B. Apr. 23, 2015)

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. 11/132,035 05/19/2005 Jeff Johnson 00039-40680 6091 92702 7590 04/23/2015 Spyros J. Lazaris 2133 S. Bentley Ave Suite 107 Los Angeles, CA 90025 EXAMINER HYLINSKI, ALYSSA MARIE ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 04/23/2015 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 JEFF JOHNSON, NADER HAMDA, and LINDA SUH ____________ Appeal 2013-005530 Application 11/132,035 1 Technology Center 3700 ____________ Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jeff Johnson et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claim 28 under 35 U.S.C. § 103(a) as unpatentable over Roy (US 2004/0007710 A1, pub. Jan. 15, 2004), Lipman (US 4,497,582, iss. Feb. 5, 1985), and Kosoff (6,894,434 B1, iss. May 17, 2005). Claims 1– 27 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Cloud B, Inc. Appeal Br. 1 (filed Aug. 17, 2012). Appeal 2013-005530 Application 11/132,035 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellants’ invention relates to “a toy having a light emitting feature.” Spec. 1, ll. 13–14. Claim 28, the sole claim, is representative of the claimed invention and reads as follows: 28. A nightlight consisting of: a turtle shaped housing including a body having a turtle shell-shaped top, a head and a tail; at least three light emitting members comprising a first light emitting member contained inside of the housing, a second light emitting member contained inside of the housing and a third light emitting member contained inside of the housing, each of the first light emitting member, the second light emitting member and third light emitting member of a different color; a color selector switch positioned on the turtle shell- shaped top, in electrical communication with each of said light emitting member and adapted to turn on any one of said three light emitting members without turning on either remaining two of the three light emitting members; the turtle shell-shaped top formed of an opaque material and having a plurality of star-shaped apertures formed through said top; and, the plurality of apertures arranged in a predetermined form of a constellation of stars. ANALYSIS It is well settled that the transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520 (CCPA 1931). In other words, the use of the transitional phrase Appeal 2013-005530 Application 11/132,035 3 “consisting of” limits the claim only to the elements recited. In this case, as correctly noted by Appellants, the resulting nightlight of Roy, Lipman, and Kosoff “would necessarily include several structures excluded by appealed claim 28.” Appeal Br. 12. At the outset, we agree with Appellants that Roy discloses five embodiments. See Appeal Br. 12. In the first embodiment and third embodiments, Roy discloses a nightlight including a container 22 (housing) 2 , three LEDs 20 (light emitting members), a light control switch 18 (color selector switch), transparent substrate 12, and objects 14, 15. See Roy, ¶¶ 10, 11, 16 and Figs. 1, 3. Roy’s second and fourth embodiments are similar to the first embodiment, but the second embodiment lacks a substrate, whereas the fourth embodiment lacks a container. See id., ¶¶ 15, 17 and Figs. 2, 4. Finally, in Roy’s fifth embodiment, the container completely envelops the substrate, which takes the form of a gaseous or liquid state. See id., ¶ 18; see also Reply Br. 14–15. Appellants argue that because “common to all of Roy’s five embodiments are embedded ‘objects’,” they constitute additional elements and are thus excluded. Appeal Br. 15. In response, the Examiner takes the position that Roy’s objects 14 include “a void of the substrate (paragraphs 3 &13) and as such require no additional elements to the device and therefore provide no additional limitations to the claimed invention which also requires voids or apertures to be located in the body.” Ans. 3. 2 Parenthetical terminology refers to the claim language. Appeal 2013-005530 Application 11/132,035 4 Although we appreciate the Examiner’s position that object 14 may take the form of “a void of substrate,” nonetheless, we agree with Appellants that in Roy’s first, third, and fifth embodiments, in addition to the claimed elements, the nighlight of Roy, Lipman, and Kosoff includes an additional element, namely, transparent substrate 12. Appeal Br. 13–15. As such, even assuming arguendo that Roy’s objects are mere “voids or apertures,” as the Examiner opines, nonetheless, Roy’s substrate 12 would be an additional element that would correctly be excluded by the use of the transitional phrase “consisting of.” Moreover, with respect to Roy’s fifth embodiment, we agree with Appellants that if “container (22) was formed as a dome with star shaped apertures, as apparently proposed in the final rejection, then all of the liquid or gas would leak out of the container,” and hence, the nightlight of Roy, Lipman, and Kosoff would not function as intended. See id. at 20. As to Roy’s second embodiment, we disagree that an interpretation of Roy’s objects 14 as “a void of the substrate” is reasonable because the second embodiment lacks a substrate. See Roy, Fig. 2. As such, in order for the nightlight of Roy, Lipman, and Kosoff to create visual effects, objects 14 cannot be “voids or apertures” of a non-existing substrate, but rather must take a solid form which is excluded by the use of the transitional phrase “consisting of.” Lastly, in Roy’s fourth embodiment, substrate 12 serves as its own container, i.e. housing. See Roy, ¶ 17 and Fig. 4. However, as Appellants correctly note, in the fourth embodiment, objects 14 take the form of air bubbles or particles. See Appeal Br. 14; see also Roy, ¶ 17. As such, even if substrate 12 constitutes the claimed “housing including a body,” Appeal 2013-005530 Application 11/132,035 5 nonetheless, the existence of either air bubbles or particles constitutes additional elements that are excluded by the use of the transitional phrase “consisting of.” Furthermore, even assuming arguendo that Roy’s objects are mere “voids or apertures,” as the Examiner opines (see Ans. 3), nonetheless, because the nightlight of Roy, Lipman, and Kosoff already includes “a plurality star-shaped apertures” formed in a top of the housing (as per Lipman), objects 14 of Ray, i.e., “voids or apertures,” located within substrate 12 would constitute additional elements. In conclusion, for the foregoing reasons, the nightlight of Roy, Lipman, and Kosoff includes additional elements that are excluded by the use of the transitional phrase “consisting of.” Accordingly, we do not sustain the rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable over Roy, Lipman, and Kosoff. SUMMARY The Examiner’s decision to reject claim 28 is reversed. REVERSED llw