Ex Parte Mann

Patent Trial and Appeal Board

Jan 4, 2017

11858675 (P.T.A.B. Jan. 4, 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.
11/858,675 09/20/2007 Charles David Mann 15599.0001US01 3183
23552 7590 01/06/2017
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
01/06/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
US PT023552@ merchantgould .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES DAVID MANN
Appeal 2014-009327
Application 11/858,675
Technology Center 3600
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles David Mann (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1,3,4, 6—8, 10, 17—27, and
29-35.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claim 36 is withdrawn from consideration, and claims 2, 5, 9, 11—16, and
28 are canceled. Appeal Br. 39, 40, 42, 43 (Claims App.); Final Act. 1
(Office Action Summary).
Appeal 2014-009327
Application 11/858,675
THE CLAIMED SUBJECT MATTER
Claims 1, 8, 21, and 32 are independent. Appeal Br. 39-43 (Claims
App.). Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A pet toy comprising:
(a) a first portion having a passage therethrough;
(b) a shaft having a first end, a second end and a middle
portion centrally located between the first end and the second
end, the shaft extending through the passage of the first portion
such that the first portion fully covers the middle portion of the
shaft;
(c) a second portion having an opening for receiving the
first end of the shaft which releaseably engages the second
portion to the first portion;
(d) a third portion having an opening for receiving the
second end of the shaft which releaseably engages the third
portion to the first portion;
(e) a treat-retaining region;
(f) wherein the second and third portions are constructed
such that the first and second ends of the shaft are fully embedded
within the second and third portions respectively when engaged
to the shaft, the second and third portions remaining engaged to
the shaft during pet use.
Id. at 39 (Claims App.).
THE REJECTION2
Claims 1, 3, 4, 6—8, 10, 17—27, and 29-35 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Wesely (US 2006/0060154 Al,
2 The Examiner withdrew rejections of claims 32—36 under 35 U.S.C. § 112,
first paragraph, and of claims 1,3,4, 6, 7, and 32—36 under 35 U.S.C. § 112,
second paragraph. Ans. 11—12.
2
Appeal 2014-009327
Application 11/858,675
pub. Mar. 23, 2006), Woltmann (US 2003/0188696 Al, pub. Oct. 9, 2003),
and Bolivar (US 5,022,345, iss. June 11, 1991).
DISCUSSION
Independent claims 1, 8, and 21 each require (1) a shaft; (2) a first
portion (claim 1), a base portion (claim 8), or a non-edible central piece
(claim 21) fully covering a centrally located middle portion of the shaft; and
(3) second and third portions (claim 1), first and second tip portions (claim
8), or first and second non-edible end pieces (claim 21) receiving or
secured/connected to the first and second ends, respectively, of the shaft
such that the first and second ends of the shaft are fully embedded within the
second and third portions (claim 1), first and second tip portions (claim 8),
or first and second non-edible end pieces (claim 21). Id. at 39-41 (Claims
App.). Independent claim 32 requires (1) a non-edible base portion, (2) first
and second non-edible tip portions, (3) first and second engagement
mechanisms, and (4) first and second edible treats, “wherein the base
portion, the first and second tip portions, and the first and second edible
treats are the only exposed components of the pet toy.” Id. at 42-43 (Claims
App.).
The Examiner’s rejection of each of these claims, as well as the
claims depending therefrom, is predicated on the Examiner’s determinations
that it would have been obvious (1) to substitute Woltmann’s threaded cap
66 for Wesely’s releasable fasteners 3, as a simple substitution of one known
element for another to obtain predictable results, and (2) to have Wesely’s
“first portion” (i.e., fastener 4 and inner chewing component 2) “fully
covering the middle portion of the shaft as taught by Bolivar . . . depending
3
Appeal 2014-009327
Application 11/858,675
on the user’s preference to have the shaft be fully cover[ed] or not so as to
further entice the pet to play with the toy.” Final Act. 5—6.
Appellant points out that Wesely discloses leaving a distance (5) of
the elongated member uncovered “to allow talon o[r] beak gripping onto the
elongated member” and that “every single embodiment of Wesely shows a
shaft that is uncovered at the middle portion of the shaft.” Appeal Br. 21,
27, 31 (citing Wesely 132); see also id. at 37 (reiterating that Wesely has an
elongated member with an exposed portion). Appellant additionally directs
our attention to paragraph 19 of Wesely, which states, “[t]he toy should be
. . . not so large in diameter or long that the bird can not grasp and hold the
toy with either its beak or talons” and “[f]or example,... the elongated
member is preferably about A inch in diameter.” Id. at 21, 28, 31. Thus,
according to Appellant, “there would be no reason one having ordinary skill
in the art would have modified Wesely with the teachings of Bolivar,” as
proposed by the Examiner, to arrive at the claimed subject matter. Id. at 22,
29, 32.
We agree with Appellant. A person having ordinary skill in the art
would have understood from at least paragraphs 19 and 32 of Wesely that
the toy is specifically adapted to be grasped and held by a bird with either its
beak or its talons at the exposed portion of the elongated member,
particularly distance 5 proximal to releasable fasteners 4. Thus, eliminating
such exposed portions of the elongated member would nullify this gripping
feature taught by Wesely. Consequently, a person having ordinary skill in
the art would not have been prompted to eliminate the exposed central
portion (distance 5) by having Wesely’s “first portion” (i.e., fastener 4 and
inner chewing component 2) fully cover the middle portion of the shaft, as
4
Appeal 2014-009327
Application 11/858,675
proposed by the Examiner, especially in concert with the other modification
proposed by the Examiner, namely, replacing Wesely’s releasable fasteners
3 with caps 66 as taught by Woltmann, which would eliminate the only other
exposed portions of Wesely’s elongated member. The Examiner reasons
that it would have been obvious to do so “to further entice the pet to play
with the toy,” but does not explain why modifying the “first portion”
comprising fastener 4 and inner chewing component 2 to fully cover the
middle portion of the elongated member would further entice the pet to play
with the toy. Final Act. 6; see also Ans. 13—16. Accordingly, the Examiner
fails to articulate an apparent reason, with rational underpinnings, why, in
the absence of hindsight gleaned improperly from Appellant’s underlying
disclosure, a person having ordinary skill in the art would have modified
Wesely as proposed by the Examiner to arrive at the subject matter of any of
independent claims 1, 8, 21, and 32. See St. Jude Med., Inc. v. Access
Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (reminding us that “we
must guard against ‘hindsight bias’ and ‘ex post reasoning’” in making
obviousness determinations (quoting KSR Int’l Co v. Teleflex Inc., 550 U.S.
398, 421 (2007))).
For the above reasons, we do not sustain the rejection of independent
claims 1, 8, 21, and 32, or of dependent claims 3, 4, 6, 7, 10, 17—20, 22—27,
29-31, and 33—35, under 35 U.S.C. § 103(a) as unpatentable over Wesely,
Woltmann, and Bolivar.
5
Appeal 2014-009327
Application 11/858,675
DECISION
The Examiner’s decision rejecting claims 1, 3, 4, 6—8, 10, 17—27, and
29-35 under 35 U.S.C. § 103(a) is reversed.
REVERSED
6