In honor of the Holidays and all of the innovative toys we see this time of year, this post highlights a recent PTAB decision on the ubiquitous David Weeks transformable toys. One example, illustrated below, allows the parts to transform into many shapes, including a humanoid or a square.

David Weeks Studios is well known for their innovative designs and according to Wikipedia has created products for both commercial and residential uses, "from desk lamps and home accessories to floor lamps, chandeliers, mobiles, lounge seating and custom retail, commercial and residential lighting installations." This list also includes toys, and I am sure there are some children who will receive one of these toys as a present this season.

Unfortunately for the inventor, the patent application has been stalled on appeal, until just recently. The PTAB affirmed some rejections, but did reverse on one independent claim (claim 15). The claims related to a three-dimensional transformable toy comprising: a first outer mating component to which a first end of an elastic element is secured; a second outer mating component to which a second end of the elastic element is secured; and at least one inner mating component each defining a bore, wherein each inner mating component comprises a distal and a proximal slot, wherein the first, second and at least one inner mating components are aligned such that the elastic element extends linearly from the first outer mating component, through each bore of the at least one inner mating components, passes into a slot and to the second outer mating components, and wherein adjacent slots are linear [sic] aligned such that at least one of the mating components rotatably, foldably, and slidably couples to an adjacent mating component. 

Claim 15 specifically required the functional limitation that the claimed “component assemblies” were “capable of being coupled rotatably, foldably, and slidebly.” The Examiner relied on Stuart as showing this element. The figure below shows Stuart's invention. 

While the Examiner had relied on the idea that the structure was the same and thus the function was inherent, the applicant effectively pointed out that Stuart had explicit disclosure that precluded the claimed function. Namely, Applicant argued that “Stuart discloses structural elements that may only be ‘rotated about the common rotational axis,’ effectively limiting the movement of adjacent cube elements to merely ‘angular movements." Therefore, Stuart could not be capable of being configured to have “‘slideable’ articulation or movement.” The PTAB therefore reversed the rejection and gave the inventor an early present.

So, do not be afraid to rely on functional distinctions when the cited prior art has explicit disclosure that precludes the claimed function. Such cases may be difficult before an examiner, but can be successful on appeal.