Mega Brands America, Inc. v. Hasbro, Inc.
Appeal 2010008455; Reexam. Control 95/000,098; Patent No. 6,729,932; Tech. Center 3900
Decided June 7, 2011
The patent on appeal was directed to a toy, in the form of an illuminated polyhedron having apertured sides into which colored translucent pegs are inserted to create designs. (If you're an old timer like me, that sounds like a variation of a "Lite Brite" – which is now available for a new generation as an iPad app.)
Fig. 1 of the patent is shown below.
One of the independent claims on appeal read:
30. An illumination toy for simultaneous use by a plurality of users, comprising:
an illuminated polyhedron having
a plurality of sides extending upwardly from the base, every side extending upwardly from the base having an interactive activity disposed thereon,
wherein at least one of the sides comprises an apertured side having a plurality of apertures, and
an illumination source disposed between the sides such that the illumination source provides simultaneous illumination to all of the plurality of sides; and
a plurality of translucent pegs;
wherein the apertures of the at least one apertured side are adapted to receive the translucent pegs and retentively engage the translucent pegs.
All claims were rejected as obvious under several different combinations.
Claim 30 (shown above) was rejected as obvious over Anderson in view of Maxim. The primary reference Anderson was a spherical globe alleged to include all claimed features except the polyhedron. Anderson also taught that the sphere could be "any hollow structure or housing of any shape." The secondary reference Maxim was a color-change puzzle game in the shape of a cube, pyramid, or sphere. The Examiner alleged it would have been obvious "to make globe of Anderson in the shape of a polyhedron" because the selection of the shape would be a matter of design choice.
On appeal, the Patentee argued with respect to claim 30 that the primary reference Anderson taught away from flat aperture surfaces as required by the claim. According to the Patentee, Anderson's reference to a globe of "any shape" meant "shapes other than spherical, but not including shapes having a flat aperture surface such as cylindrical, ovoid, conical, football, etc."
The Board was not persuaded by this teaching away argument. First, the same passage in Anderson referring to "any shape" specifically mentioned known toy devices having a flat apertured surface. Furthermore, Anderson taught that increasing pegboard surface area would be beneficial. The Board noted that one way to increase the area is to increase the number of flat surfaces. The fact that Anderson's embodiment achieved the benefit of increased surface area in a different way (using a sphere) "does not show that the prior art is 'teaching away' from the invention claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.2004)."
The Board then affirmed the rejection of independent claim 30.
The Patentee separately argued dependent claim 32, which further included "a plurality of opaque sheets" with "indicia thereon corresponding to positions of at least some of the apertures." The Examiner asserted that the peg templates in Anderson corresponded to the opaque sheets. The Patentee disagreed with this characterization of Anderson. According to the Patentee, not only Anderson did not teach that the peg templates were opaque, there was no reason for the peg templates in Anderson to be opaque since the part behind the template was opaque.
The Board was not persuaded by this argument about silence in the reference. The Board drew the opposite inference from the reference's silence – that the reference was probably opaque:
[W]e think the Patent Owner's reliance of lack of specific disclosure in Anderson as to opacity of the template is misplaced. We observe that most common materials are opaque, and materials that are not opaque are distinguished as being transparent or translucent. Anderson's silence with regard to the light transmissivity of the peg template makes it more likely than not that the disclosed peg template is opaque.The Board also found that Anderson's drawing of the peg template (shown below) provided further evidence that the template was opaque rather than transparent.
The Reexam Requester had argued a transparent surface would have been represented in a different manner:
As can be seen in FIG. 3, the front openings, but not the rear openings, of the apertures 40 are shown in the figure. In view of conventional USPTO drafting rules, had the peg template 38 been non-opaque (e.g., transparent), the apertures' rear openings would have been visible from the front through the peg template 38 and would therefore have been illustrated in FIG. 3. The fact that only the front openings of the apertures 40 are illustrated in FIG. 3 evidences that the peg template 38 shown therein is opaque.
The Board found this reasoning persuasive, stating that
Figure 3 of Anderson which shows a perspective view of a peg template 38 supports this finding in that the apertures 40 and the lower right edges of the peg template are not illustrated to show their depth dimension. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (Drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art.).
The Board thus affirmed the obviousness rejection of dependent claim 32.
My two cents: I was originally troubled by the inference the Board drew from the reference's absence of teaching about opaque vs. transparent. After all, it's also possible that the reference didn't choose to describe the opacity or transparence because it was unimportant to the invention. That is, silence with regard to a characteristic doesn't necessarily mean the characteristic takes the most common form.
But on more careful reading, the Board didn't say that silence implied opaque, but rather that silence implied probably opaque. Clearly not good enough for anticipation. Good enough for obviousness? I'm not sure how probabilities play into obviousness. On further reflection, I decided I don't disagree with the Board's reasoning on this point.
I thought the Reexam Requester's drawing argument was clever. Maybe stretching it a bit, but clever nonetheless. I find clever arguments are more common in reexam than during normal prosecution, presumably because so much more is at stake.
I'm not sure exactly what "conventional drafting rule" the Requester was referring to. MPEP 1503.02 mentions transparency: "Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror."
Does everyone really follow all the PTO's drawing conventions, such that we can assume that the patent drafter really intended to convey an opaque rather than a transparent template? OK, an issued patent carries a presumption of validity, but I'm not sure this presumption extends as far as to presume compliance with all PTO drawing conventions.