Lawrence Epstein et al.

Patent Trials and Appeals Board

Jun 12, 2020

2019003117 (P.T.A.B. Jun. 12, 2020)

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.
12/792,482 06/02/2010 Lawrence Epstein PPT 0102 PUSP 4832
22045 7590 06/12/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
06/12/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE EPSTEIN, AL FOTHERINGHAM, and
MARK POE
Appeal 2019-003117
Application 12/792,482
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejection of claims 1 and 3–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 The subject application was previously before the Patent Trial and Appeal
Board in Appeal No. 2015-000693. See Decision dated November 8, 2016.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Pressed Paperboard
Technologies LLC. Appeal Br. 1.
Appeal 2019-003117
Application 12/792,482
2
CLAIMED SUBJECT MATTER
The claims are directed to a multi-compartment food tray. Claims 1,
8, and 17 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A multi-compartment food tray, comprising:
a first compartment and a second compartment formed of
a paperboard material, each compartment including a
compartment lip; and
a carrier formed of a paperboard material and including
one or two pairs of openings receiving the first and second
compartments, respectively, and a divider area between the one
or two pairs of openings, the carrier uninterruptedly extending
from edge to edge except for only the one or two pairs of
openings,
wherein each of the first and second compartment lips is
coupled to the carrier to form an inseparably coupled interface
between the carrier and the first compartment and between the
carrier and the second compartment during exposure to
extremely high heat during baking or cooking.
REJECTIONS
Claims 1 and 3–20 are rejected under 35 U.S.C. §:
I. 112, first paragraph, as failing to comply with written
description requirement;
II. 112, second paragraph, as being indefinite;
III. 102(b) as being anticipated by or 103(a) as being unpatentable
over Galluch (US 2007/0108089 A1, pub. May 17, 2007); and
IV. 102(b) as being anticipated by or 103(a) as being unpatentable
over Anghileri (US 4,986,432, iss. Jan. 22, 1991).

Appeal 2019-003117
Application 12/792,482
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OPINION
I. New Matter - 35 U.S.C. § 112, ¶¶ 1, 2; Objections to Specification and
Drawings
It is the examiner’s “initial burden [to] present[ ] evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” (In re Wertheim, 541
F.2d 257, 263 (CCPA 1976)). However, just as when analyzing the question
of obviousness, when reviewing the question of written description support
it must be remembered that one of skill in the art is not an automaton. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is . . . not an automaton.”).
35 U.S.C. § 112, ¶ 1
The Examiner finds that the following claim limitations lack written
description support: “one or two pairs of openings;” “a divider area
between the one or two pairs of openings;” ‘uninterruptedly extending
from edge to edge except for only the one or two pairs of openings;” and
“each of the first and second compartment lips is coupled to the carrier to
form an inseparably coupled interface.” Final Act. 5–7. For the reasons
expressed below, we reverse.
“one or two pairs of openings”
The claimed “one or two pairs of openings” is included in three of the
noted phrases above. The Examiner finds that “[c]onceptually a pair or two
pairs of openings is simply not taught anywhere in the original disclosure.”
Id. at 5. The Examiner acknowledges that two openings are disclosed in
Figure 3 and discussed in the Specification. Id. at 15. The Examiner also
acknowledges that Figure 6 teaches a number of openings. Id. at 16; see
Spec., Figure 6 (showing 4 openings). However, the Examiner determines
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that because the word “pair” is not used, the concept of a pair is not
disclosed. Id. at 15–16.
The Examiner construes “pair” as requiring “a relationship between
the two entities that goes beyond the fact that there are two of them in
number.” Ans. 8 (citing Webster’s II New Riverside University Dictionary,
“pair” (1984)). The Examiner’s statement is consistent with the cited
dictionary, where a pair is “two corresponding . . . items, similar in form and
function, and matched or associated.” Ans. 7–8 (quoting Webster’s II New
Riverside University Dictionary, “pair” (1984)). However, the Examiner
does not establish that the written description lacks support for “one or two
pairs of openings” based on this construction of “pair.” Further, the
Examiner does not contend that the proposed definition is consistent with
Appellant’s disclosure.
The Examiner is correct that the term “pair” is not used in Appellant’s
Specification. At the same time, there is no requirement that the
Specification include a claim term word for word to provide written
description support. See Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d
1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”). Nonetheless,
the disclosure must convey with reasonable clarity to those skilled in the art
that the inventor was in possession of the invention. See id.
As noted above, the Examiner acknowledges that two openings are
disclosed in Figure 3 and discussed in the Specification. Final Act. 15. The
Examiner further admits that “they are arranged with respect to each other in
a particular manner.” Ans. 4. However, the Examiner determines that this is
not a pair because the openings do not have identical shapes. Id. at 5.
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Identity of form or shape is not required by the Examiner’s construction or
the cited definition. We determine that one of skill in the art would
understand the openings in Figure 3 have similar form and identical
functions. We further determine that one of skill in the art would understand
the openings to be matched and associated because, as stated by the
Examiner, “they are arranged with respect to each other in a particular
manner.” Ans. 4. This is at least because there are only two openings in the
carrier.
As also noted above, the Examiner acknowledges that Figure 6
teaches a number of openings. Final Act. 16; see Spec., Figure 6 (showing 4
openings). The Examiner determines that “[t]here is no specific relationship
between [any of these] apertures.” Ans. 8. We determine that one of skill in
the art would understand the openings in Figure 6 to have identical form and
function. We further determine that one of skill in the art would understand
Figure 6 to disclose two pairs of openings at least because the two on the
right are positioned closer together and the two on the left are positioned
closer together. Appellant’s Specification does not discuss a particular level
of matching or association required, and we therefore determine that the
requirement for two similar items to be matched or associated is a low bar.
Thus, we do not sustain the Examiner’s 35 U.S.C. § 112, ¶ 1 rejection
on these grounds.
“a divider area between the one or two pairs of openings”
The Examiner admits that the Specification teaches divider area 41
between two openings in Figure 3. Ans. 4–5; see also Spec 6, ln. 25. As
discussed above, we determine that the Specification provides written
description support for a pair of openings in Figure 3. Thus, the
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Specification provides support for a divider area between one pair of
openings.
Appellant argues that
As with “divider area 41 between the openings 37 and 39[”]
. . . , a divider area exists between the four circular openings
and each pair of circular openings of Figs. 6 and 8. The
“placement” of reference numeral 68 on Fig. 6 is supported by
the original written description regarding this embodiment and
the drawings for the other embodiments relating to divider area
41.
Appeal Br. 6.
We agree that one of skill in the art, reviewing the disclosure of the
divider area 41 in Figure 3, would understand that Figure 6 includes a
similar divider area. As we previously found that the Specification provides
written description support for one or two pairs of openings, we therefore
determine that the phrase “a divider area between the one or two pairs of
openings” also has written description support.
“uninterruptedly extending from edge to edge except for only the one
or two pairs of openings”
The Examiner determines that the phrase “uninterruptedly extending
from edge to edge except for only the one or two pairs of openings” does
not have written description support because “this issue has already been
decided by the Board in the decision rendered on 11/8/16.” Final Act. 7
(citing Decision 5).
However, this statement is inaccurate. Our previous decision
addressed the phrase “uninterruptedly extending from edge to edge except
for the first and second openings.” Decision 3. We determined that this
phrase was indefinite because Appellant was arguing for a meaning based at
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least in part on Figure 6 (showing four openings), which is inconsistent with
the prior phrase from the claims. Id. at 4.
Appellant has now amended the claims such that they are no longer
inconsistent with what is shown in Figure 6, or Figure 3. Thus, we do not
sustain the Examiner’s 35 U.S.C. § 112, ¶ 1 rejection on these grounds.
“each of the first and second compartment lips is coupled to the
carrier to form an inseparably coupled interface”
The Examiner determines that “the original disclosure did not refer to
a feature that corresponds to the claimed ‘inseparably coupled interface.’”
Final Act. 7. The Examiner again appears to be requiring that the exact
phrase be included in the original disclosure to provide written description
support. This is not required. The Examiner admits the Specification
teaches “that the carrier does not separate from the compartments”; thus, it is
unclear why the Examiner concludes that this “is not disclosure of a
structural feature that is an inseparably coupled interface.” Final Act. 7.
We agree with Appellant where it is argued:
The original specification discloses that “once coupled, carrier
36 does not separate from the compartments 32 and 34 when
exposed to extreme temperatures.” . . . The original
specification also discloses that once coupled, carrier 36 may
not separate from each compartment 32 and 34 during exposure
to extremely high heat during baking or cooking.” The phrase
“inseparably coupled interface” describes the originally
disclosed phrase “does not separate” and “may not separate.”
Appeal Br. 11; see Spec 6, lines 9–23.
Thus, we do not sustain the Examiner’s 35 U.S.C. § 112, ¶ 1 rejection
on these grounds.
35 U.S.C. § 112, ¶ 2
Having determined that certain phrases lack written description
support, the Examiner also determines that these same phrases “are
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indefinite because they cannot be properly interpreted” because of the lack
of written description support. Final Act. 8.
We first note that just because a phrase lacks written description
support does not necessarily render a phrase indefinite. Further, as we
reverse herein the Examiner’s rejections for lack of written description, we
reverse the Examiner’s related rejections for indefiniteness.
Objections to Specification and Drawings
Typically, we do not address the merits of objections to the
Specification or Drawings because an Examiner’s objection is a petitionable
matter–not an appealable matter. 37 C.F.R. §§ 1.113(a), 1.181; see also
MPEP § 2163.06(II) and MPEP § 706.01 (“[T]he Board will not hear or
decide issues pertaining to objections and formal matters which are not
properly before the Board.”). However, there are times where objections are
properly before the Board. For example, MPEP § 2163.06(II) states that
where “both the claims and specification contain new matter either directly
or indirectly, and there has been both a rejection and objection by the
examiner, the issue becomes appealable and should not be decided by
petition.” See also Appeal Br. 5. Such is the case here.
The Examiner objected to certain amendments to the Specification
and Drawings for containing new matter. Id. at 2–3. As noted above, we
determine that the Specification-as-originally-filed, including the drawings,
provides written description support for all of the features of the claims
addressed by the Examiner’s rejection under 35 U.S.C. § 112. Presumably,
Appellant proposed the amendments to the Specification and Drawings as a
way to address the Examiner’s concerns. We determine that these new
matter objections are properly before us, and reverse based on the prior
showing of written description support. See In re Hengehold, 440 F.2d
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1395, 1404 (CCPA 1971) (holding that Board had no jurisdiction to review
restriction requirement but stating “the kind of adverse decisions of
examiners which are reviewable by the board must be those which relate, at
least indirectly, to matters involving the rejection of claims”).
For example, based on our determination of written description
support for these claim elements, we agree with Appellant that one of skill in
the art would understand the area newly marked “68” in Figure 6 to be a
divider area based on the original disclosure. See Appeal Br. 6–7. Thus, we
also agree with Appellant that adding reference numeral “68” to the
Specification does not amount to new matter. We further determine that the
inclusion of the claimed phrases addressed by the Examiner’s rejection
under 35 U.S.C. § 112 and the related reference numerals in the amendments
to the Specification do not amount to new matter.
Because the Examiner determined that “one or two pairs of
openings” lacked written description support, the Examiner objected to the
drawings for not showing this feature under 37 C.F.R. § 1.83(a). Final Act.
3. However, as noted above, the drawings do in fact provide written
description support for “one or two pairs of openings.” Thus, we do not
sustain the Examiner’s objection to the drawings on this basis.
At the same time, we agree with the Examiner that newly added
Figures 7 and 8 include new matter. As discussed above, the Specification
provides written description support for openings and pairs of openings;
however, we agree with the Examiner that the original disclosure does not
provide clear disclosure of the exact shapes of the openings in new Figures 7
and 8. See Final Act. 2–3. Contrary to Appellant’s argument, though the
shapes shown by Appellant seem likely, it is possible that the openings could
be shaped differently or even have a different size in relation to the carrier.
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See Appeal Br. 7. Thus, we agree with the Examiner that new Figures 7 and
8 introduce new matter. At the same time, we find that original Figures 3
and 4 indicate the location of openings 37, 39, and we determine that one of
skill in the art would understand original Figure 6 to include openings in the
same manner. Thus, the exact shape of the openings shown in new Figures
7 and 8 is not supported, and the reference to Figures 7 and 8 in the amended
Specification amounts to new matter.

II. 35 U.S.C. § 102 / 103 - Galluch
Galluch is directed to “an ovenable tray including a plurality of
serving containers connected by a detachable support matrix.” Galluch,
Abstract. The serving containers can detach from the support matrix in one
of many ways, such as melting hot melt glue during baking, and breaking
along perforations in the support matrix. Id. at Abstract, ¶¶ 21, 24.
The Examiner rejects the claims separately over three different groups
of embodiments (Fig. 1, Figs. 5–6, Fig. 7). Final Act. 9–12. We address
Figure 1 and then Figures 5–7 in turn.
Figure 1
In rejecting the claims, the Examiner first points to Galluch Figure 1,
reproduced below, stating: “[a]ny two openings can be one pair and any two
others the second pair” and ‘“[] the divider area’ is the appropriate surface
(or surfaces) between the openings.” Final Act. 9.
Appeal 2019-003117
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Galluch Figure 1 shows a baking tray.
The Examiner also finds that “during baking or cooking to up to
between 250–275 degrees the carrier does not separate from the
compartments therefore it appears that there is some inseparably coupled
interface between the carrier and the compartments at up to these
temperatures.” Final Act. 10. The Examiner determines that the use of
other adhesives separable at other temperatures would have been “a matter
of obvious choice of design . . . in order to provide optimal baking or
cooking for particular food items.” Id. at 12. The Examiner further explains
that Galluch “suggests that other adhesives could be used to facilitate
separation at other temperature ranges depending on the baking or cooking
requirements (which in turn would depend on factors such as exactly what
was being baked or cooked or how ‘well-done’ one wanted to cook a
particular dish).” Id. (citing Galluch ¶ 21).
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Appellant highlights two different claim elements as not shown by
Galluch:
Independent claim 1 recites “the carrier uninterruptedly
extending from edge to edge except for only the one or two
pairs of openings,” independent claim 8 recites “the carrier
having an uninterrupted upper surface except for only the one
or two pairs of openings,” and independent claim 17 recites
“the exposed top surface of the carrier uninterruptedly
extending from edge to edge except for only the one or two
pairs of openings.”
and
Pending claims 1, 8 and 17 also each recite that “each of the
first and second compartment lips is coupled to the carrier to
form an inseparably coupled interface between the carrier and
the first compartment and between the carrier and the second
compartment during exposure to extremely high heat during
baking or cooking.”
Appeal Br. 14. We agree that these are not taught or suggested by Galluch.
For example, as can be seen in Figure 1, Galluch’s carrier includes
twelve openings, which are more than the only “one or two pairs of
openings” required by the claims. The Examiner states that the claims are
not “limited to four openings” because of the use of the term “comprising.”
Ans. 10. However, the claim term “comprising” is later limited by the term
“only.” The claims require that the carrier extend uninterruptedly “from
edge to edge except for only the one or two pairs of openings.” Any
additional openings are prohibited interruptions in the carrier. See Appeal
Br. 16–17.
The second issue is that Galluch teaches “the support matrix is
attached to the serving containers by hot melt glue which melts during
baking or heating to automatically release the support matrix from the
serving containers.” Galluch, Abstract. This is the opposite of the claim
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requirement that the compartments and carriers have “an inseparably
coupled interface” “during exposure to extremely high heat during baking or
cooking.” Galluch teaches separation “at a temperature preferably within a
range of 250° F.–275° F.” Galluch ¶ 21. This is not “extremely high heat
during baking or cooking.”
The Examiner’s determination that it would be a matter of design
choice for other, presumably much higher, temperatures is also not
supported by the record. See Final Act. 12. In particular, the Examiner’s
reasoning hinges on the determination that there is an established
relationship between separating the compartments from the carrier on the
one hand and the cooking temperature “to provide optimal baking or
cooking” on the other. Id. Galluch does not provide any such rationale or
relationship.
Figures 5-7
The Examiner also points to the embodiments in Galluch Figures 5–7
in rejecting the claims. Final Act. 10–11. Similar to Figure 1, these
embodiments also show twelve openings, which are more than the only “one
or two pairs of openings” required by the claims. As previously noted, the
claims require that the carrier extend uninterruptedly “from edge to edge
except for only the one or two pairs of openings.” Any additional openings
are prohibited interruptions in the carrier. See Appeal Br. 16–17.
The Examiner also determines that perforations shown in Galluch
Figures 5 and 6 and the slots in Figure 7 are not interruptions. Final Act.
10–11. This finding is erroneous. The Examiner’s reasoning is that “there is
no indication anywhere in the application that perforation lines [or slots] are
to be considered interruptions and since in any event the spaces between the
actual perforations would appear to be uninterrupted.” Id. at 11. It is
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unclear why the Examiner is stating that the application needs to provide a
definition of every feature that is to be considered an interruption. This is
well within the skill of one of the art.
Conclusion
For all of the above reasons, we do not sustain the Examiner’s
rejection of claims 1 and 3–20 as anticipated by or obvious over Galluch.

III. 35 U.S.C. § 102 / 103 - Anghileri
Anghileri suffers from many of the same issues as Galluch discussed
above. For example, Anghileri shows six openings where the claims are
limited to only “one or two pairs of openings.” Further, the Examiner
commits reversible error in determining that in Anghileri the “tear lines 5 are
not . . . interruptions,” “[n]or are the shaped holes 7.” Final Act. 12–13.
These are clearly interruptions in the carrier, which are prohibited by the
claims. Thus, the Examiner has not established that Anghileri anticipates
claims 1 and 3–20.
Concerning the obviousness of the claims, the Examiner states:
“baking apparatus of the kind disclosed in Anghileri but not having tear lines
or shaped holes is conventional.” Id. at 13 (citing Galluch). The Examiner
then determines that “it would have been obvious to construct the Anghileri
apparatus without these elements as a matter of obvious choice of design or
to facilitate a more economical construction (such as when separation
between the compartments was not required).” Id. The Examiner’s analysis
is incomplete.
For example, the Examiner cites Galluch, which is focused on
separation, as the only supporting reference for evidence to support “when
separation between the compartments was not required.” Id. The Examiner
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provides no analysis of the reason to modify Anghileri in the context of the
claim limitations. Further, even as modified, Anghileri is still not limited to
only “one or two pairs of openings.” Thus, the Examiner has not established
that Anghileri renders obvious claims 1 and 3–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 3–20 112, ¶ 1 Written Description 1, 3–20
1, 3–20 112, ¶ 2 Definiteness 1, 3–20
1, 3–20 102(b) or 103(a) Galluch 1, 3–20
1, 3–20 102(b) or 103(a) Anghileri 1, 3–20
Overall
Outcome:
  1, 3–20
We also affirm the Examiner’s objection under 35 U.S.C. § 132(a) to
new Figures 7–8 and the related amendments to the Specification.3 See
Final Act. 2–3. We reverse the Examiner objections under 35 U.S.C.
§ 132(a) to the amendments to the Figures and amendments to the
Specification on all other grounds. See id. We also reverse the Examiner’s
objection to the Drawings under 37 C.F.R. § 1.83(a). See id. at 3.
REVERSED

3 Though we affirm an objection, this does not impact the status of the
claims. As all of the rejections of the claims are reversed herein, the
decision is deemed a reversal, as opposed to an affirmance in part.