Ex Parte Walterscheid

Patent Trial and Appeal Board

Jan 31, 2017

12982761 (P.T.A.B. Jan. 31, 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.
12/982,761 12/30/2010 Steve Walterscheid Zing-22 9007
32132 7590 02/02/2017
LAMORTE & ASSOCIATES P.C.
P.O. BOX 434
YARDLEY, PA 19067
EXAMINER
HYLINSKI, ALYSSA MARIE
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
uspatlawl @ verizon.net
mail@uspatlaw.com
malamorte@verizon.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE WALTERSCHEID
Appeal 2015-0039311
Application 12/982,7612
Technology Center 3700
Before PHILIP J. HOFFMANN, ROBERT L. KINDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3—10, and 12—18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention is directed “to toy characters
that have suction cups at their base[, and] to toy characters that are packaged
1 Our decision references Appellant’s Specification (“Spec.,” filed Dec. 30,
2010), Appeal Brief (“Br.,” filed Aug. 4, 2014), and Reply to Notification of
Non-Compliant Appeal Brief (“Reply to Notification”), as well as the Final
Office Action (“Final Action,” mailed Mar. 4, 2014) and the Examiner’s
Answer (“Answer,” mailed Nov. 28, 2014).
2 Appellant indicates that KMA Concepts Limited is the real party in
interest. Br. 2.
Appeal 2015-003931
Application 12/982,761
in hard plastic capsules, such as those used in bulk vending machines.”
Spec. 11. Claims 1 and 10 are the only independent claims. See Reply to
Notification 2—\. We reproduce both independent claims, below, as
representative of the appealed claims.
1. An assembly comprising:
a capsule having a first half and a second half that
selectively interconnect, wherein said capsule defines an interior
and an access opening that extends through said capsule for
providing access to said interior;
a toy figure positioned within said interior of said capsule;
a suction cup external of said capsule; and
a neck that interconnects said toy figure with said suction
cup, said neck extending through access opening, wherein the
access opening engages said neck with a friction fit, therein
positioning said toy figure within said interior of said capsule
without said toy figure contacting said capsule and preventing
said toy figure from inadvertently moving relative said capsule.
10. A toy structure, comprising:
a plurality of capsules, each of said capsules having a first
half and a second half that selectively join together by a snap fit
interconnection;
a plurality of toy assemblies, wherein each of said toy
assemblies includes a toy figure and at least one suction cup that
extends from said toy figure, wherein each of said plurality of
capsules receives one of said toy assemblies so that each said toy
figure is positioned inside one of said capsules and each said
suction cup is positioned external of one of said capsules;
wherein each of said plurality of capsules are
interconnected into said toy structure by each said suction cup
extending from said toy assemblies within said plurality of
capsules.
Id.
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Appeal 2015-003931
Application 12/982,761
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 3—6, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Fontlladosa (GB 2 277 511 A, pub. Nov. 2, 1994),
Barricini (US 2,469,589, iss. May 10, 1949), and Coleman (US 5,874,119,
iss. Feb. 23, 1999).
The Examiner rejects claims 7, 8, 10, and 12—18 under 35 U.S.C.
§ 103(a) as unpatentable over Fontlladosa, Barricini, Coleman, and Dogliotti
(US 4,106,657, iss. Aug. 15, 1978).
Final Action 3—5; see also Answer 2.
ANALYSIS
With respect to the rejection of independent claim 1, the claim recites,
among other limitations, “a neck that interconnects said toy figure with said
suction cup, said neck extending through [the capsule’s] access opening,
wherein the access opening engages said neck with a friction fit.” Reply to
Notification 2. Appellant argues that “[n]one of the prior art discloses or
suggests ... [a] capsule engaging] the neck with a friction fit to hold the toy
and suction cup in a fixed position relative the surrounding capsule.” Br. 9.
Based on our review of the Answer and Final Action, we agree with
Appellant—the Examiner does not find that any reference discloses or
renders obvious such a friction fit.
Instead, the Examiner’s rejection is based on the determination that
“such a modification would have involved a change in size and changes in
size have been held to be within the level of ordinary skill in the art. See In
re Rose.'” Answer 3 (citation omitted); see also Final Action 3^4
(“[R]egard[ing] . . . [the] friction fit. . . [,] such a modification would have
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Appeal 2015-003931
Application 12/982,761
been an obvious matter of design choice since such a modification would
have involved a mere change in the size of the access opening and changes
in size . . . [are] within the level of ordinary skill.... See In re Rose”) We
determine, however, that Rose (220 F.2d 459 (CCPA 1955)) does not
support the Examiner’s conclusion that it would have been obvious to resize
the prior art’s opening to provide a friction fit with a neck extending
therethrough. In Rose, the Court found that the “claim recite[d] that the
package is of appreciable size and weight so as to require handling by a lift
truck[,] whereas . . . [the prior art’s] packages can be lifted by hand.” Rose,
220 F.2d at 463. The Court concluded that “[such a] limitation is [not]
patentably significant since it at most relates to the size of the article under
consideration^] which is not ordinarily a matter of invention.” Id. (citation
omitted). Thus, Rose’s claim is unlike claim 1, inasmuch as claim 1 does
not recite that the opening or neck is of a different size than the prior art, but,
instead, the claim recites that regardless of their respective sizes, the opening
and neck must engage with a friction fit therebetween.
Inasmuch as the Examiner does not provide an adequate reason for
modifying the prior art to provide a friction fit between an opening and a
neck, we do not sustain the rejection of claim 1. Further, because the
Examiner does not establish that any other reference remedies this
deficiency in the rejection of claim 1, we do not sustain either of the
rejections of claims 3—9 that depend from claim 1.
With respect to independent claim 10, the claim requires, among other
limitations, “each of said plurality of capsules are interconnected into said
toy structure by each said suction cup extending from said toy assemblies
within said plurality of capsules.” Reply to Notification 4. Thus, based on
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Appeal 2015-003931
Application 12/982,761
the portion of the claim reproduced above, the Examiner’s determination
that this language recites an “intended use” is erroneous. See Answer 3.
Instead, claim 10 expressly requires that the capsules are, in fact,
interconnected to each other by use of suction cups. Inasmuch as the
Examiner does not explain how or why it would have been obvious, based
on the applied prior art references, to connect capsules to one another with
suction cups, we do not sustain the rejection of claim 10, or of claims 12—18
depending from claim 10. See Br. 11—14.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1, 3—
10, and 12-18.
REVERSED
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