Halloween at the PTAB

Halloween has inspired many great inventions, which means most patent attorneys love Halloween. One patent attorney that was inspired to create his own invention is attorney Barry Shuman. I don’t know Barry but I can imagine has we sick and tired of ungrateful and impolite kids taking too many treats from a bowl outside his front door. He invented a device to solve this problem and filed an application (20100128588) with the USPTO.

As he explains in his patent application, his invention is “designed to help young children remember to say ‘trick or treat’ and ‘thank you.’” This is a lofty goal and I can attest not an easy one to achieve with kids hopped up on sugar and excited to fill their bag with as much candy as possible. But Barry was also concerned with first timers, as explained in his application:

… as many parents of young children can attest to, trick-or-treating can be a little chaotic. Frequently, the children run from one house to another, commonly forgetting to say “trick or treat,” and perhaps more commonly forgetting to say “thank you.” And as many parents of “first time” trick-or-treaters have realized, the whole Halloween experience can be a little overwhelming for very young children. These “first time” trick-or-treaters probably have a very limited vocabulary. Therefore, these “first timers” might not really know what they are supposed to say.

The invention is summarized in claim 1 that was eventually take up on appeal to the PTAB:

1. A Halloween greeting system comprising: a Halloween treat container comprising a voice recorder/audio player combination device; and a remote control unit for triggering said voice recorder/audio player combination device to play a recorded message.

This combination enabled a unique solution to the problems recognized by Barry. For example, as explained in his application:

Parents may want to have their child record the phrases “trick or treat” and “thank you” as two separate recordings on the voice recorder prior to the beginning of trick-or-treating. When the child arrives at a residence and the door opens, the parents may want to wait to hear if their child says “trick or treat.” If the child does not say “trick or treat,” the parent can then press a key/button on a remote control unit for the “trick or treat” phrase to be played by the audio player. Presumably, the playing of the phrase will prompt the child to then say “trick or treat.” Similarly, as the child is ready to depart a residence, the “thank you” recording can then be triggered, if warranted. The use of the child's actual voice, as opposed to a canned “trick or treat” or canned “thank you” is preferable as it is more genuine and customizes the greetings. However, if the child has a disability that impairs/prevents speaking, the use of another person's voice (e.g., that of an older sibling who wants to help) might be a welcome alternative. … And since it is Halloween, spooky Halloween music and/or scary Halloween sounds would be appropriate.

Surprisingly, the patent examiner could not find Barry’s invention in the state of the art. Nevertheless, the claims were rejected as obvious based on a first reference that had a motion-sensing triggered recording playback, and another reference related to a remote-control. In fact, Barry had to appeal twice - the first appeal brief resulted in the dreaded “re-opening” where the examiner abandoned the original references for the ones noted above. In the second appeal, the examiner’s position was essentially that while the one reference utilized motion sensing, it would be obvious to use a remote-control as another way to trigger the playback.

Unfortunately Barry was unsuccessful in his appeal at the PTAB. So-called “simple” obviousness issues can be difficult at the Board. Here, Barry tried to rely on teaching away, and that the combination would destroy the intended functionality.

Whether there might have been amendments or other ways to overcome the cited art we will never know as the case is now abandoned. But the case illustrates how such arguments can run into trouble at the PTAB.