Ex Parte Oakes

Patent Trial and Appeal Board

Sep 13, 2017

13156073 (P.T.A.B. Sep. 13, 2017)

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.
13/156,073 06/08/2011 Shawn A. Oakes 20760-USA 4288
31743 7590 09/13/2017
fTenraia-Paoifio T T C EXAMINER
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
09/13/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAWN A. OAKES
Appeal 2016-005791
Application 13/156,073
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shawn A. Oakes (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 24—33, which are all the
pending claims. Appeal Br. 2. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Dixie Consumer
Products LLC. Appeal Br. 2.
Appeal 2016-005791
Application 13/156,073
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to a system and method for
holding disposable cutlery together.” Spec. 12. Claims 24 and 33 are
independent. Claim 24, reproduced below, is illustrative of the subject
matter on appeal.
24. A module of cutlery, the module comprising:
more than two utensils comprising a formable material,
each of the utensils comprising a handle with a top face, a
bottom face, and pair of sides,
wherein the more than two utensils are separably coupled
to one another via a unitary coupler in the form of a common
portion of the formable material formed along a length of the
utensils by softening or melting and by allowing the softened or
melted portion to cool so as to stack the top face of a utensil
below the bottom face of an adjacent utensil in a substantially
parallel configuration.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Bartlett US 5,199,756 Apr. 6, 1993
Harris US 2005/0116482 A1 June 2,2005
Jabr US 7,249,793 B1 July 31, 2007
Kamishina2 JP 09294662 A Nov. 18, 1997
2 An English-language translation of Kamishina was entered into the
record of the present application on September 16, 2015. Any references
herein to paragraphs of Kamishina are to this English-language translation
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Application 13/156,073
REJECTIONS
The following rejections are before us for review:
I. Claims 24—33 stand rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 2—3.
II. Claims 24—26 and 28—33 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Kamishina. Id. at 3—5.
III. Claims 24, 25, 28—31, and 33 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Harris. Id. at 6—7.
IV. Claims 24—26, 28—31, and 33 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Jabr. Id. at 7—9.
V. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kamishina. Id. at 10.
VI. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harris. Id.
VII. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jabr and Bartlett. Id. at 11.
ANALYSIS
Rejection I— Claims 24—33 as failing to comply
with the written description requirement
The stated basis for the Examiner’s rejection under 35 U.S.C. § 112,
first paragraph, is that Appellant’s Specification provides insufficient written
description support for “more than two utensils,” as recited in claims 24 and
33. See Final Act. 2—3. According to the Examiner, “it is clearly set forth
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Application 13/156,073
multiple times in the original [Specification that a ‘plurality of utensils’
includes ‘at least two of the utensils’ and not ‘more than two.’” Ans. 12.
Appellant argues that “the limitation of ‘more than two utensils’ is
amply supported in the [Specification.” Appeal Br. 5. In particular,
Appellant points to paragraphs 29, 30, and 54 of the Specification {id.),
which describe that “any number of utensils 12 is contemplated for
module 10” (Spec. Tflf 29, 30, 54 (emphasis added)).
We agree with Appellant that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. The embodiments depicted
in Figures 1, 3A—3F, and 5, as well as the corresponding descriptions of
these embodiments provided in the Specification, would reasonably convey
to one having ordinary skill in the art that Appellant had possession of a
module of cutlery including “more than two utensils,” as called for in
claims 24 and 33. See AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc). Accordingly, we do not sustain the
rejection of independent claims 24 and 33, and of claims 25—32 depending
from claim 24, under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Rejections II and V— Claims 24—33 as anticipated by,
or unpatentable over, Kamishina
Independent claim 24 recites, in relevant part, a module of cutlery
including “more than two utensils [that] are separably coupled to one
another via a unitary coupler.” Appeal Br. 12, Claims App. Independent
claim 33 recites a similar limitation. Id. at 13, Claims App. Appellant
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Application 13/156,073
argues that Kamishina fails to disclose such a feature. In particular,
Appellant asserts that Kamishina’s “three sticks are not ‘separably coupled
to one another via a unitary coupler.’” Id. at 6. We agree.
In rejecting claim 24, the Examiner found that “Kamishina discloses a
module of cutlery (chopsticks), the module comprising a plurality of utensils
(each stick)[,] . . . wherein at least two of the utensils are separably] coupled
(capable of being separated) to one another via a unitary coupler (1 lb).”
Final Act. 3 (citing Kamishina, Fig. 2b). The Examiner explains that
“Figures 2(a) and 2(b) of Kamishina show[] three resin chopsticks all
coupled together at their integrally formed ends.” Ans. 13. According to the
Examiner, “[tjhese ends are capable of being separated at that coupling,
whether by fatigue hand bending, an external cutting implement, or another
tearing, cutting or bending device.” Id.
Appellant persuasively asserts that, “[although one of the sticks
possibly could be broken and removed, there is no teaching or disclosure of
doing such.” Appeal Br. 6. Instead, Kamishina discloses, with reference to
Figure 2(a), an embodiment having three chopsticks that are coupled “by
integrally forming the rear end 1 lb of the three chopsticks member 11.”
Kamishina 116. Kamishina also discloses embedding metal plate 5 in the
integrally-formed end of the chopsticks during molding to “prevent[\
breakage of the trailing edge 1 lb as well as to be able to maintain the state
of the chopsticks shape.” Id. 117 (emphasis added). In this regard, we
agree with Appellant that Kamishina’s “three sticks are intended to be used
together.” Appeal Br. 6. Given that Kamishina uses metal to reinforce the
integrally-formed ends of the chopsticks and to “prevent breakage,”
Kamishina’s chopsticks are structurally designed to remain coupled and not
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Application 13/156,073
to be separable.3 To construe “separably” so broadly as to encompass a
device specifically reinforced and designed to maintain the integral nature of
the device is unreasonable and fails to give the term “separably” any
meaningful effect, since virtually anything put together could be forcefully
separated in some way. In short, the Examiner has not established by a
preponderance of the evidence that Kamishina discloses “more than two
utensils [that] are separably coupled to one another via a unitary coupler,” as
recited in the claims.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims—we do not sustain the rejection of independent
claims 24 and 33, and of claims 25, 26, and 28—32 depending from claim 24,
under 35 U.S.C. § 102(b) as anticipated by Kamishina.
Regarding Rejection V of claim 27, which depends from claim 24, we
note that this rejection is premised on the same purported disclosure from
Kamishina discussed above. See Final Act. 10. Accordingly, for the same
reasons, we likewise do not sustain the rejection of claim 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Kamishina.
3 Given Kamishina’s structural design, it is evident to one of ordinary
skill in the art that the chopsticks are meant to be operable together as one
utensil. Although Kamishina discloses multiple sticks extending from the
integrally-formed end, the combination of sticks functions as one utensil,
rather than a plurality of utensils. Such structure is analogous to a fork
(i.e., one utensil) having a plurality of tines extending from a common base.
In this regard, the tines are coupled at their ends, and one of ordinary skill in
the art would not consider the individual tines of the fork to be a plurality of
utensils.
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Rejections III and VI— Claims 24, 25, and 27—31, and 33 as anticipated by,
or unpatentable over, Harris
Appellant argues that Harris fails to disclose “more than two utensils,”
as recited in independent claims 24 and 33. See Appeal Br. 8. In particular,
Appellant asserts that, in Harris, “only a pair of chopsticks is shown.” Id. In
response, the Examiner acknowledges that “Harris does not disclose more
than two utensils and only discloses chopsticks having two utensils.”
Ans. 15 (emphasis added). However, the Examiner refers to the rejection of
these claims under 35 U.S.C. § 112, first paragraph, and explains that “[t]he
two chopsticks of Harris do anticipate the previously set forth limitations of
‘a plurality of utensils’ and the rejection was maintained under that
premise.” Id. (emphasis added); see also Final Act. 6—7 (the Examiner
finding that Harris discloses “a plurality of utensils”).
The Examiner’s reference to a previously set forth limitation is
unavailing with respect to the instant rejection because the claims currently
recite “more than two utensils.” In other words, regardless of whether
Harris may have anticipated an earlier version of the claims, the instant
claims that are subject to the rejection requires “more than two utensils.”
An anticipation rejection requires a finding of each and every element
or step as set forth in the claim in a single reference. See Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Here,
given the Examiner’s acknowledgement that Harris fails to disclose an
element recited in claims 24 and 33, the rejection fails to establish by a
preponderance of the evidence that Harris anticipates the subject matter of
these claims. Consequently, we do not sustain the rejection of independent
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claims 24 and 33, and of claims 25 and 28—31 depending from claim 24,
under 35 U.S.C. § 102(b) as anticipated by Harris.
Regarding Rejection VI of dependent claim 27, we note that this
rejection is premised on the same purported disclosure from Harris discussed
above. See Final Act. 10. Accordingly, for the same reasons, we likewise
do not sustain the rejection of claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over Harris.
Rejections IV and VII— Claims 24—26 and 28—33 as anticipated byJabr,
or as unpatentable over Jabr and Bartlett
Regarding Rejection IV, the Examiner’s rejection suffers from a
deficiency similar to that of Rejections III and VI discussed above. Namely,
although the Examiner found that Jabr anticipates the subject matter of
independent claims 24 and 33 (see Final Act. 7, 9), the Examiner
acknowledges in the Answer that “Jabr does not disclose more than two
utensils[,] and only discloses chopsticks with two utensils” (Ans. 15
(emphasis added)). The Examiner takes the position that “[t]he two
chopsticks of Jabr do anticipate the previously set forth limitations of ‘a
plurality of utensils’ and the rejection was maintained under that premise.”
Id. at 15—16.
Given the Examiner’s acknowledgement that Jabr fails to disclose an
element recited in claims 24 and 33, the rejection fails to establish by a
preponderance of the evidence that Jabr anticipates the subject matter of
these claims. Consequently, we do not sustain the rejection of independent
claims 24 and 33, and of claims 25, 26, and 28—31 depending from claim 24,
under 35 U.S.C. § 102(b) as anticipated by Jabr.
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Regarding Rejection VII of dependent claim 32, we note that this
rejection is premised on the same purported disclosure from Jabr discussed
above, and the Examiner relied on Bartlett for teaching additional features,
but not to cure the aforementioned deficiency of Jabr. See Final Act. 11.
Accordingly, for the same reasons, we likewise do not sustain the rejection
of claim 32 under 35 U.S.C. § 103(a) as being unpatentable over Jabr and
Bartlett.
DECISION
We REVERSE the Examiner’s decision rejecting claims 24—33 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We REVERSE the Examiner’s decision rejecting claims 24—26 and
28—33 under 35 U.S.C. § 102(b) as anticipated by Kamishina.
We REVERSE the Examiner’s decision rejecting claims 24, 25,
28—31, and 33 under 35 U.S.C. § 102(b) as anticipated by Harris.
We REVERSE the Examiner’s decision rejecting claims 24—26,
28—31, and 33 under 35 U.S.C. § 102(b) as anticipated by Jabr.
We REVERSE the Examiner’s decision rejecting claim 27 under
35 U.S.C. § 103(a) as being unpatentable over Kamishina.
We REVERSE the Examiner’s decision rejecting claim 27 under
35 U.S.C. § 103(a) as being unpatentable over Harris.
We REVERSE the Examiner’s decision rejecting claim 32 under
35 U.S.C. § 103(a) as being unpatentable over Jabr and Bartlett.
REVERSED
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