Ex Parte Peterson et al

Patent Trial and Appeal Board

Jan 24, 2017

13215049 (P.T.A.B. Jan. 24, 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.
13/215,049 08/22/2011 Robert L. Peterson TAL 3879.0007 1458
152 7590 01/24/2017
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
111 SW Columbia Street
Suite 725
PORTLAND, OR 97201
EXAMINER
ARYANPOUR, MITRA
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/24/2017 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 ROBERT L. PETERSON and
ROBERT JAMES UNDRILL
Appeal 2014-009654
Application 13/215,049
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
ANNETTE R. REIMERS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert L. Peterson and Robert James Undrill (Appellants)1 appeal
under 35U.S.C. § 134 from the Examiner’s final decision rejecting claims
1—15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Allied Power
Products, Inc. Appeal Br. 2.
Appeal 2014-009654
Application 13/215,049
THE CLAIMED SUBJECT MATTER
Claims 1, 8, 10, 14, and 15 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter on appeal.
1. A mobile practice dummy comprising:
(a) a self-propelled base: and
(b) an upper body simulating a. portion of a human body
and adapted to be supported and movable by the base, the upper
body securable to the base to avoid detachment when at least one
of a speed and a direction of the base changes but detachable
from the base when engaged by a person exerting a force to
change a position of the upper body.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Brown
Feather
Pin-Houn Lin
Williams
Szoke
Getchell
Rios
Ungari
Hartigan
US 2,757,482
US 3,379,441
GB 2 027 349 A
US 4,519,787
US 5,713,783
US 6,796,915 B2
US 7,357,760 B1
US 2010/0035724 A1
WO 2010/122540 A2
Aug. 7, 1956
Apr. 23, 1968
Feb. 20, 1980
May 28, 1985
Feb. 3, 1998
Sept. 28, 2004
Apr. 15,2008
Feb. 11,2010
Oct. 28, 2010
REJECTIONS2
I. Claims 1—3 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Brown. Final Act. 11.
II. Claims 4—13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Brown and Szoke. Id. at 12—14.
2 The rejections of: (i) claims 1—13 under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
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III. Claims 1—4, 8, 10, and 11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Williams. Id. at 15—16.
IV. Claims 1^4 and 8—11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Williams. Id.
V. Claims 1—4, 8, 10, 11, 14, and 15 stand rejected under pre-AIA
35 U.S.C. § 102(e) as anticipated by Hartigan. Id. at 17—22.
VI. Claim 5 stands rejected under pre-AI A 35 U.S.C. § 103(a) as
unpatentable over Hartigan and one of Rios and Getchell. Id. at 22—
23.
VII. Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartigan and one of Ungari, Feather, and Pin-Houn
Lin. Id. at 23—24.
VIII. Claims 9, 12, and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Hartigan and Rios. Id. at 25—26.
OPINION
Rejection I
The Examiner finds that Brown discloses all of the limitations of
independent claim 1, including, inter alia, a self-propelled base (carriage
structure 10) and an upper body (a plurality of elements including driver 16)
securable to the base to avoid detachment during speed and direction
changes, but detachable when contacted by another object. Final Act. 11
(citing Brown, 1:70—71,4:51—60).
description requirement; (ii) claims 1—3 under 35 U.S.C. § 102(b) as
anticipated by Salosky (US 2,803,920, iss. Aug. 27, 1957); and (iii) claims
4—13 under 35 U.S.C. § 103(a) as unpatentable over Salosky and Szoke
(Final Act. 2—10) have been withdrawn and are not before us on appeal.
Ans. 3.
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Appellants argue that Brown’s carriage structure 10 is not self-
propelled because it “require[es] an external energy source, typically a child,
to energize a friction motor of the power unit 22 by pushing the toy over a
surface.” Appeal Br. 12 (citing Brown, 4:23—25). The Examiner responds
that carriage 10 includes power unit 22 which “can be a friction motor
actuated by rotating the wheels (17, 18).” Ans. 31. The Examiner explains
that the child pushing the toy to activate the power unit “is not any different
than [A]ppellant[s’] use of a remote control” to activate the propulsion unit.
Id. Appellants reply that there is a “difference between providing a control
for a means of propulsion and providing a means of propulsion.” Reply Br.
2.
We agree with the Examiner that carriage 10 is self-propelled in that it
contains within itself the means for its own propulsion, namely, wheels 17,
18 and power unit 22. We also agree with the Examiner that this is not
negated by the fact that power unit 22 is typically actuated by a child
initially pushing the toy in order to start rotation of wheels 17, 18. More
particularly, we agree with the Examiner that actuation by wheel rotation is
akin to actuation by a remote control.
Appellants also argue that driver 16 is not detachable from the base
when engaged by a person exerting a force to change a position of driver 16
because “the fender units and the top unit shield the driver figure from
engagement by a person attempting to exert force to move the driver figure”
and because driver 16 is “not detachable until the front bumper is displaced
by contact with another object (col. 4: line(s) 51—60) changing the speed
and/or direction of the carriage structure which releases a second latch
enabling springs 25 to eject the body parts (col. 2: line(s) 22—24).” Appeal
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Br. 12. The Examiner responds that “[t]he claims do not require the upper
body to be directly impacted in order to be displaced.” Ans. 32—33. We
agree with the Examiner that nothing in the claims requires the upper body
to be detachable from the base only by direct contact with the upper body,
and that driver 16 is detachable from the base (even despite its shielding
parts) when engaged by a person exerting a force to change a position of
driver 16 (such as by causing the car to sustain an impact), and that this is
sufficient to meet the language of the claim.
For the foregoing reasons, we sustain the rejection of independent
claim 1 under 35 U.S.C. § 102(b) as anticipated by Brown. We also sustain
the rejection of claims 2 and 3 which depend therefrom and for which
Appellants present no new arguments or reasoning beyond that which we
found unpersuasive in connection with the independent claim. See Appeal
Br. 12.
Rejection II
The Examiner acknowledges that Brown does not disclose “using
compl[e]mentary hook-and-loop material” as required by the dependent
claims. Final Act. 12. The Examiner turns to Szoke for teaching that
“detachable components [in a toy crash vehicle] can be held together using
. . . VELCRO” and concludes that it would have been obvious to
“substitute] one known fastener with another to achieve the predictable
result of detachably connecting portions of a vehicle which jar loose from
the vehicle as a result of impact.” Id.
Appellants argue that Brown and Szoke are non-analogous art because
they are not “in the field of endeavor of a mobile practice dummy . . . nor
pertinent to the problem of providing a mobile user engageable resilient
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body supported by a self-propelled base and intended to simulate a live
player during training for activities involving physical contact, such as
tackling or blocking, by an opposing player.” Appeal Br. 13. The Examiner
responds that Appellants define the problem being addressed more narrowly
than justified by the claim. Ans. 34.
The established precedent of our reviewing Court sets up a twofold
test for determining whether art is analogous: “[‘] (1) whether the art is from
the same field of endeavor, regardless of the problem addressed and, (2) if
the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.”’ In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
One problem with which Appellants were involved is releasably
securing an upper body to a mobile base unit to allow the upper body to
change speed and direction rapidly without separating the upper body from
the base unit, but also allowing separation of the upper body and the base
unit under certain other conditions when desirable. See Ans. 34; Spec. 116.
Brown similarly teaches selectively securing and separating an upper body
(e.g., the plurality of elements including driver 16) from a mobile base unit
(carriage structure 10). See Ans. 34; Brown, 4:51—60. Szoke similarly
teaches fasteners for selectively securing and releasing interchangeable body
panels support 10 from chassis 2. See Ans. 34; Szoke, Abstr., 4:17—18,
Accordingly, we agree with the Examiner that the teachings of Brown and
Szoke are reasonably pertinent to a particular problem with which the
inventor was involved. Ans. 34.
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Appellants also argue that one of ordinary skill in the art would not be
led to substitute Brown’s fastener with Szoke’s hoop and loop fastener
because it would “change the principle of operation of Brown’s car” and
Brown teaches away therefrom. Appeal Br. 13. Appellants maintain that
Brown desires “locking the upper body parts to the carriage in order to
‘enable the car to be manipulated safely’” (Reply Br. 4 (citing Brown, 3:13—
17)) and suggests that a hook and loop fastener would not be able
sufficiently to carry out that purpose (id. at 4—5).
The “principle of operation” referred to by Appellants relates to the
“basic principles” under which the prior art device was designed to operate.
In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination
of references would require a substantial reconstruction and redesign of the
elements shown in [the primary reference] as well as a change in the basic
principles under which the [primary reference] construction was designed to
operate.”) (emphasis added). Under Ratti, “a change in the basic principles”
refers to change that is fundamental in scope so as to relate to scientific or
technical principles under which the invention is designed to operate. We
are not persuaded that a “change in basic principles” occurs by substituting
Brown’s fastener with Szoke’s hook and loop fastener as a hook and loop
fastener continues to function as a fastener.
As to Appellants’ teach away argument, “[a] reference may be said to
teach away when a person of ordinary skill, upon reading the reference . . .
would be led in a direction divergent from the path that was taken by the
applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting
Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir.
1999)). In order to “teach away,” a reference must “criticize, discredit, or
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otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). Appellants have not sufficiently identified where
Brown criticizes or discourages the use of a different fastener.
Although Appellants present “further reasons” as to why the rejection
of dependent claims 5—7, 12, and 13, in particular, should be reversed, the
additional reasoning amounts to a recitation of the claim elements and a
“naked assertion” that the elements are not in the prior art. See Appeal Br.
14. Such reasoning is not persuasive. See 37 C.F.R. § 41.37(c)(l)(iv); In re
Lovin, 652 F.3d 1349, 1357 Fed. Cir. 2011) (holding that the Board had
reasonably interpreted the same language in the prior rule under 37 C.F.R.
§ 41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
For the foregoing reasons, we sustain the rejection of claims 4—13
under 35 U.S.C. § 103(a) as unpatentable over Brown and Szoke.
Rejection III
The Examiner finds that Williams discloses all of the limitations of
independent claim 1, including, inter alia, a self-propelled base (“column 40
which rests on enclosure 21”) and an upper body (“doll figure 203”)
securable to the base to avoid detachment during speed and direction
changes, but detachable when contacted by another object. Ans. 12—13;
Final Act. 15. The Examiner takes the position that the combination of
elements 21 and 40 of Williams are a “self-propelled” base because they
“provide[] mobility to the assembly” and Appellants “ha[ve] not claimed a
particular type of movement or motion.” Ans. 39-40. The Examiner finds
in particular that “[ejnclosure 21 houses a portion of the propulsion
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mechanism and support column 40 houses the other portion of the
propulsion mechanism.” Id. at 40.
Appellants argue that Williams fails to disclose a self-propelled base
in that “neither the housing 21 nor the column 40 contains within itself the
means for its own movement, much less a means for its own propulsion.”
Reply Br. 5. We agree with Appellants in that the Examiner has not
adequately explained how housing 21 or column 40 contains a means for
propulsion, when considering that “propulsion” relates to the action of
driving or pushing forward. Rather than driving or pushing forward,
Williams teaches motors 101, 102 that impart rotary motion to pinion wheel
48 and pinion wheel 74, respectively. Williams, 3:17—22, 25—29. The rotary
motion of pinion wheel 48 is imparted to vertical support column 40. Id. at
3:23—24. It is unclear how the rotary motion imparted to vertical support
column 40 constitutes “propulsion” originating from support column 40
itself. The rotary motion of pinion wheel 74 has a “vertical reciprocal
component, which will be imparted to the miniature animal body, by virtue
of the linkage assemblie[s] 50 and 70, to produce the simulated ‘bucking’
action of the device.” Id. at 3: 29-32 (emphasis omitted). Again, it is
unclear how the vertical component of the rotary motion imparted to the
assembly of Williams renders the column (the “base” as the Examiner has
interpreted claims 1 and 10) or the propulsion unit (claim 8) themselves
“self-propelled.” Moreover, linkages 50 and 70 are not contained within
housing 21 nor column 40.
For the foregoing reasons, we do not sustain the rejection of
independent claims 1, 8, and 10 under 35 U.S.C. § 102(b) as anticipated by
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Williams. We also do not sustain the rejection of claims 2-4 and 11, which
depend therefrom.
Rejection IV
The Examiner alternatively rejects claims 1—4, 8, 10, and 11 under 35
U.S.C. § 103(a) as obvious over Williams. Final Act. 15. The Examiner
takes the position that to the extent Williams is not considered to inherently
include means for adjusting speed and/or direction, it would be “obvious to
incorporate in the device in order to simulate an actual bull.” Id. The
Examiner also rejects claim 9 under 35 U.S.C. § 103(a) as obvious over
Williams. Id. at 16—17. The Examiner acknowledges that Williams “does
not expressly disclose the particular means for securing propulsion unit to
the cover,” but concludes it would be obvious to use old and well-known
means of securement “in order to provide a permanent or semi-permanent
attachment between two elements.” Id. at 16.
The rejection of these claims relies on the Examiner’s erroneous
findings as to Williams disclosing a self-propelled base. Final Act. 15—17.
The Examiner does not explain how it might have been obvious to provide
Williams with a self-propelled base. Accordingly, we do not sustain the
rejection of claims 1^4 and 8—11 under 35 U.S.C. § 103(a) as unpatentable
over Williams.
Rejection V
The Examiner finds that Hartigan discloses all of the limitations of
independent claims 1, 10, and 14, including, inter alia, a self-propelled base
(sled 4). Final Act. 17, 19, 20. With respect to independent claims 8 and 15,
the Examiner finds that Hartigan’s “ground engaging inflatable ring 21
which is part of base or sled 4” is the claimed propulsion unit arranged for
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self-propelled movement. Id. at 18; see also id. at 21. The Examiner’s
position is based on an interpretation of “self-propelled” as “mounted on or
fired from a moving vehicle” where “[t]he moving vehicle can be
mechanical, electrical[,] or a person propelling the object.” Ans. 44-45.
The Examiner finds that Hartigan’s sled “can be pulled by a person or any
motive means, whether it be a human or a prime mover,” and as such, meets
the claim under a broadest reasonable interpretation. Id. at 45.
Appellants argue that the alternative interpretation for “self-propelled”
as “containing within itself the means for its own propulsion” “is the
definition most consistent with the [Appellants’] use of the term in
describing the mobile practice dummy having a self-propelled base
comprising a propulsion unit including ground engaging elements, a
motor(s) to power the ground engaging elements and energy storage to
provide power to the motor.” Reply Br. 2 (citing Spec. H 11—12).
When read in light of the Specification, we determine that it is
unreasonable to interpret the term “self-propelled” to mean “mounted on a
moving vehicle” as the Examiner proposes. This is because in the context of
the Specification, the term “self-propelled” relates to a base unit that
includes elements designed to enable the base unit to propel itself (Spec.
1111—12) and is contrasted with sled mounted dummies that can be moved
by members of the coaching staff {id. 13). The Examiner’s finding that
Hartigan discloses a self-propelled base and/or a propulsion unit arranged
for self-propelled movement as recited in independent claims 1, 8, 10, 14,
and 15 is not adequately supported by the reference when the term is given
its broadest reasonable interpretation.
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For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Hartigan discloses all of the limitations of independent claims
1, 8, 10, 14, and 15, and we do not sustain the rejection of claims 1, 8, 10,
14, and 15 under 35 U.S.C. § 102(e) as anticipated by Hartigan. We also do
not sustain, under 35 U.S.C. § 102(e), the rejection of claims 2-4 and 11,
which depend therefrom, as anticipated by Hartigan.
Rejections VI, VII, and VIII
Claim 5 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartigan and one of Rios and Getchell. Final Act. 22—23.
Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hartigan and one of Ungari, Feather, and Pin-Houn Lin.
Id. at 23—24. Claims 9, 12, and 13 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Hartigan and Rios. Id. at 25—26. Claims 5—7
depend, directly or indirectly, from independent claim 1. Appeal Br. 19-20
(Claims App.). Claim 9 depends directly from independent claim 8, and
claims 12 and 13 depend, directly or indirectly, from independent claim 10.
Id. at 21—22 (Claims App.).
The rejection of these claims relies on the Examiner’s erroneous
findings as to Hartigan disclosing a self-propelled base and/or a propulsion
unit arranged for self-propelled movement. Final Act. 22—26. The
Examiner does not explain how Rios, Getchell, Ungari, Feather, and/or Pin-
Houn Lin might cure this underlying deficiency. Accordingly, we do not
sustain the rejections, under 35 U.S.C. § 103(a), of: claim 5 as unpatentable
over Hartigan and one of Rios and Getchell; claims 6 and 7 as unpatentable
over Hartigan and one of Ungari, Feather, and Pin-Houn Lin; and claims 9,
12, and 13 as unpatentable over Hartigan and Rios.
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DECISION
The Examiner’s decision to reject claims 1—3 under 35 U.S.C.
§ 102(b) as anticipated by Brown is affirmed.
The Examiner’s decision to reject claims 4—13 under 35 U.S.C.
§ 103(a) as unpatentable over Brown and Szoke is affirmed.
The Examiner’s decision to reject claims 1—4, 8, 10, and 11 under
35 U.S.C. § 102(b) as anticipated Williams is reversed.
The Examiner’s decision to reject claims 1—4 and 8—11 under
35 U.S.C. § 103(a) as unpatentable over Williams is reversed.
The Examiner’s decision to reject claims 1—4, 8, 10, 11, 14, and 15
under 35 U.S.C. § 102(e) as anticipated by Hartigan is reversed.
The Examiner’s decision to reject claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Hartigan and one of Rios and Getchell is reversed.
The Examiner’s decision to reject claims 6 and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Hartigan and one of Ungari, Feather, and Pin-
Houn Lin is reversed.
The Examiner’s decision to reject claims 9, 12, and 13 under 35
U.S.C. § 103(a) as unpatentable over Hartigan and Rios is reversed.
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-IN-PART
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