Ex Parte Weiss et al

Patent Trial and Appeal Board

Dec 28, 2016

13281822 (P.T.A.B. Dec. 28, 2016)

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.
13/281,822 10/26/2011 Adrienne WEISS T9050-19603US04 6373
181 7590 12/30/2016
MILES & STOCKBRIDGE PC
1751 PINNACLE DRIVE
SUITE 1500
TYSONS CORNER, VA 22102-3833
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
ipdocketing @ milesstockbridge. com
sstiles @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIENNE WEISS, BRAULIO F. PARAJON,
LAWRENCE S. ANDREINI, M. DAVID ARMSTRONG,
EDWARD JABBOUR JR., DONALD W. AMADIO,
DAVID G. WATKINS, DAVID WAYNE FINNEGAN,
LEE NADLER, RIZAL K. OEI, RICHARD DEAN DWYER,
and YUK KEI CHAN
Appeal 2015-0027181
Application 13/281,822
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1—20. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify Ridemakerz, Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2015-002718
Application 13/281,822
The invention relates generally to an in-store experience involving
self-assembly of a purchased item. Spec. 1.
Claim 1 is illustrative:
1. A method of providing a customer with a toy vehicle
purchasing and assembling experience, the method comprising:
providing a customized toy assembling area allowing the
customer to assemble a customized toy vehicle by selecting from
a plurality of toy styles and optional accessories, wherein the
plurality of toy styles includes a toy vehicle body selected from
among various style bodies and a toy vehicle chassis selected
from among various toy vehicle chassis styles;
the assembling area comprising a tool that is grasped by
the customer when assembling the toy vehicle and a timer with a
display;
wherein the assembling comprises the customer directly
grasping and operating the tool to directly drive an attachment
member into a selected toy vehicle body and a selected toy
vehicle chassis;
wherein the assembling further comprises the customer
starting the timer immediately prior to the assembling, and
stopping the timer when the assembling is complete, and
displaying the elapsed time;
providing electronically readable identifiers that identify
the selected toy style and optional accessories; and
reading the electronically readable identifiers at a first
computer and generating an electronic profile for the customer
based on the readable identifiers, wherein the electronic profile
comprises a computer generated image of the customized toy that
is based on the selected toy style and optional accessories.
Claims 1—6, 8—13, and 15—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wajihuddin (US 2007/0198117 Al, pub. Aug. 23, 2007),
All-Star: Pit Crew Challenge preview, pub. May 18, 2005 (retrieved from
http://www.motorsport.com/nascar-cup/news/all-star-pit-crew-challenge-
2
Appeal 2015-002718
Application 13/281,822
preview) (hereinafter “PCC), and Kirby (US 2004/0043806 Al, pub. Mar. 4,
2004).
Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wajihuddin, PCC, Kirby, and Gillanders (US 5,580,021, iss. Dec. 3,
1996).
We AFFIRM.
ANALYSIS
Claims 1—6, 8—13, and 15—20
Appellants argue independent claims 1,8, and 15 together as a group
(Appeal Br. 3), so we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by Appellants’ argument that Wajihuddin fails
to disclose a customer directly grasping a tool, because Wajihuddin discloses
a customer may instead pull levers and triggers and push buttons to control a
tool, which is indirectly using tools without direct contact with an “actual
tool.” Appeal Br. 3—5; see also Reply Br. 2—3. Wajihuddin discloses:
The child can further participate by pulling trigger/pushing
buttons to operate "tools" e.g., installing bolts using power drills,
or checking a tire's air pressure using a pressure gauge. The child
might pull a lever at the assembly line and a component slips
down into place or a robotic hand slips down to install a
component into place. Similarly, the child can touch a button at
the assembly line and a laser which cuts the shape of the floor of
the chassis, is activated or inactivated.
Wajihuddin para. 85. We interpret the buttons and levers that control the
tools as part of the tools themselves, thus, meeting the claim language.
Appellants next argue Kirby fails to disclose the claim language of:
3
Appeal 2015-002718
Application 13/281,822
providing electronically readable identifiers that identify
the selected toy style and optional accessories; and
reading the electronically readable identifiers at a first
computer and generating an electronic profile for the customer
based on the readable identifiers, wherein the electronic profile
comprises a computer generated image of the customized toy that
is based on the selected toy style and optional accessories.
Appellants argue this is because in “Kirby, the toy vehicle is already
assembled, so that the code and subsequent virtual vehicle remains the same
even if the toy vehicle is somehow modified.” Appeal Br. 6; see also Reply
Br. 4.
We are not persuaded by Appellants’ argument. The claim language
does not address when the vehicle is profiled, such as before final assembly,
or whether a subsequent modification must be incorporated, so Appellants
are arguing limitations not present in the claim language. In addition,
Wajihuddin discloses “displaying an image of a car incorporating the design
choices at each step of a design process.” Wajihuddin para. 75.
We are also not persuaded by Appellants’ argument that “PCC does
not disclose or suggest using the timing methods for a toy vehicle
purchasing experience as opposed to an actual race vehicle environment.”
Appeal Br. 6. The Examiner finds the assembly of a toy vehicle in
Wajihuddin, not PCC, as PCC is relied upon instead for disclosure of a
timer. Final Act. 12—15. The timer is introduced to incorporate an element
of competition, which competition is discussed, for example, at paragraph 6
of Kirby.
We are unpersuaded by Appellants’ argument that there is no
motivation to combine Kirby with Wajihuddin other than through
impermissible hindsight. Reply Br. 3^4. The Examiner has established
4
Appeal 2015-002718
Application 13/281,822
three different rationales for the combination, none of which depend upon
Appellants’ disclosure: “so that Wajihuddin's vehicle parts and accessories
can be easily tracked and entered into the computer system for association
with a customer toy (e.g., through bar codes, SKU numbers),” “so that the
user’s parts and accessories are accurately reflected on the virtual/electronic
profile version of the toy car,” and because the combination merely involves
old elements each performing the same function after combination as before,
with predictable results. Final Act. 16—18. The Examiner has, thus,
sufficient provided “articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
Appellants finally argue that there is no motivation disclosed in
Wajihuddin, to incorporate the PCC timing function. Reply Br. 4. To the
extent Appellants seek an explicit suggestion or motivation in the reference
itself, this is no longer the law in view of the Supreme Court’s recent
holding in KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). In
addition, the Examiner established two reasons for the combination with
PCC: “so that children can compete with each other,” and because the
combination merely involves old elements each performing the same
function after combination as before, with predictable results. Final Act. 14.
For these reasons, we sustain the rejection of independent claims 1, 8,
and 15, as well as dependent claims 2—6, 9—13, and 16—20, rejected along
with claims 1, 8, and 15, that were not argued separately.
5
Appeal 2015-002718
Application 13/281,822
Claims 7 and 14
Appellants have not advanced arguments specifically directed to
claims 7 and 14, so we sustain the rejection pro forma.
DECISION
We affirm the rejections of claims 1—20 under 35 U.S.C. § 103(a).
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
6