Ex Parte WalterscheidDownload PDFPatent Trial and Appeal BoardJan 31, 201712982761 (P.T.A.B. Jan. 31, 2017) Copy Citation 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. 2 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 3 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 4 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 5 Copy with citationCopy as parenthetical citation