STATEMENT OF THE CASE

(Reprinted from the Opinion of the Board)

Application 11/428,660

This is a decision on appeal, under U.S.C. § 134(a), from a rejection of claims 1-3, 5, and 7-9. Br. 1, 5. Claims 4 and 10-19 have been withdrawn while claim 6 has been cancelled. Br. 5.  We have jurisdiction under U.S.C. § 6(b). We REVERSE.

CLAIMED SUBJECT MATTER

The disclosed subject matter is directed to "an adjustable animal throw toy." Spec. 1.  Independent claim 1 is representative of the claims on appeal and is reproduced below:

1. A throw device, comprising a throw object; a cord attached to the throw object; a handle coupled to the cord, wherein the throw object weighs more than the handle; and a cord retention device comprising a switch to release the cord coupled between the throw object and the handle.

THE REJECTIONS ON APPEAL

1. Claims 1-3, 5, and 8 are rejected under 35 U.S.C. § 102(b) as being anticipated by Bross. Ans. 3.

2. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bross in view of Gentile. Ans. 4.

ANALYSIS

Sole independent claim 1 includes the limitations of a "throw object," a handle" and "wherein the throw object weighs more than the handle." The Examiner has determined that these limitations are disclosed in Bross and more specifically that "it is inherent[] that member (2) weighs more than handle (26) since member (2) has more components (such as motor drive system (40), wheels (44), commutator assembly (54,51,52,53)) with more masses therein/thereon." Ans. 3, 6.  Appellant disagrees. Br. 12.

Bross is silent regarding relative weights of the Examiner's identified throw object (2) and the handle (26). We note that when a reference is silent about an asserted inherent characteristic, it must be clear that the missing descriptive matter is necessarily present int he reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). "The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3 743, 745 (Fed. Cir. 1999) (citations omitted). Here, the Examiner relies on additional mass in vehicle 2 such as the motor drive system 40 and associated commutator assembly. Ans. 3, 6. However, Bross teaches that "the vehicle may be powered by an electric or mechanical driving system" and that "an additional driving force in the form of an electric motor drive system 40, 41" can be employed. Bross 3:32-33, 9:56-57 and 11:4-6. Further, Bross teaches that power supply 41 can be "contained within the control handle 26" and not necessarily located in vehicle 2. Bross 10:10-11. Such optional employment of Bross' drive system 40 and power supply location does not sway us that the Examiner has established by a preponderance of the evidence that it is necessarily inherent that Bross' throw object 2 weighs more than the handle 26.

Accordingly, and based on the record presented, we are not persuaded that Bross anticipates independent claim 1. We reverse the rejection of claim 1 and dependent claims 2, 3, 5, and 8.

The Examiner further rejects dependent claims 7 and 9 in view of Bross and Gentile. Gentile is relied upon by the Examiner to show that "it is old and well known in the art of winding to use a spring-loaded spool/reel." Ans. 4. This teaching of Gentile identified by the Examienr does not cure the deficiencies noted above with respect to Bross. Accordingly, we likewise reverse the rejection of dependent claims 7 and 9.

DECISION

The rejections of claims 1-3, 5 and 7-9 are reversed.