Arnold Wesley. Cross

Patent Trials and Appeals Board

Apr 21, 2020

15103825 - (D) (P.T.A.B. Apr. 21, 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.
15/103,825 06/10/2016 Arnold Wesley Cross ACROS.001NP 8095
20995 7590 04/21/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNOLD WESLEY CROSS
Appeal 2018-008032
Application 15/103,825
Technology Center 1700
Before MICHELLE N. ANKENBRAND, MONTÉ T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8–11. See Final Act. 3–9. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 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 “Arnold Wesley
Cross.” Appeal Br. 2.
Appeal 2018-008032
Application 15/103,825

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CLAIMED SUBJECT MATTER
The claims are “directed to an article of tableware for personal
consumption of food items soaked in fluid.” Spec. 1. Claim 8, reproduced
below, is illustrative of the claimed subject matter:
8. An article of tableware for the consumption of cookies and
milk, comprising:
a monolithic vessel comprising a chamber configured to
hold an amount of liquid substantially equal to an amount of
liquid in a conventional drinking cup, the chamber defined by:
a level floor with a flat top surface, the level floor
extending from a substantially curved distal edge to a proximal
edge and between a left edge and a right edge that are
substantially parallel to each other, the level floor having a length
and a width commensurate with a predetermined size of one
cookie which is sized to fit one at a time by spoon in a human
mouth,
a sloped floor with an inclined top surface, the sloped floor
extending from the proximal edge of the level floor at a constant
angle to a proximal end of a rim of the vessel, the sloped floor
having a left edge that extends to the left edge of the level floor
and the sloped floor having a right edge that extends to the right
edge of the level floor, the left and right edges of the sloped floor
being substantially parallel to each other, the sloped floor having
a width commensurate with the size of said cookie and extending
along a length that is greater than the length of the level floor,
and
a wall that extends along the right edge of the sloped floor,
the right edge of the level floor, the curved distal edge of the level
floor, the left edge of the level floor and the left edge of the
sloped floor, the wall rising up vertically from the level floor and
the sloped floor to the top edge of the vessel,
wherein said chamber is supported by an undercarriage
structure such that the rim of the chamber is horizontal when the
vessel is supported on a horizontal surface.
Claims Appendix (Appeal Br. 13–14).
Appeal 2018-008032
Application 15/103,825

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REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Goldman US 4,102,468 July 25, 1978
Wilmers US 2012/0312823 A1 Dec. 13, 2012
Cox GB 2265816 A Mar. 16 1992

REJECTIONS2
Claims 8–11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Wilmers and Cox. Final Act. 4; Ans. 3.
Claims 8–10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Goldman. Final Act. 7; Ans. 6.
OPINION
Rejection of Claim 8 (Wilmers & Cox)
The Examiner rejects claim 8 over Wilmers and Cox. Final Act. 4–7.
The Examiner finds that Wilmers discloses a food packaging article having
most of claim 8’s limitations. Id. at 4. The Examiner acknowledges that
Wilmers does not teach the recited “substantially curved distal edge,” but
finds that it “is merely a matter of design choice.” Id. at 4. The Examiner
explains that a cookie may have various shapes including round and square,
and that the shape of the distal edge does not change the function or utility of
apparatus recited in claim 8. Ans. 9.

2 The Examiner rejects claims 8–11 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre–AIA). Final Act. 2–3. The Examiner withdraws the rejection in
the Examiner’s Answer. Ans. 9. This rejection, therefore, is not before us on
appeal.
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Appellant argues that the Examiner reversibly erred because Wilmers
teaches away from the recited “substantially curved distal edge.” Appeal
Br. 7. In support of the argument, Appellant cites paragraph 57 of Wilmers
which is reproduced in its entirety below:
As shown in FIG. 1, first end wall 40 in combination
with a portion of top wall 46 define a plane on which package
30 may stand. In this manner, as long as package 30 defines a
plane (i.e., at least three points of contact) on which package 30
can rest, the shape of body 32 and interior compartment 44 is
immaterial. In an embodiment, package 30 may rest in a
substantially vertical or upright position or may rest in a
position that tilts toward or away from a consumer, depending
on the shape of package 30. Regardless of the shape of package
30, if intended to stand substantially upright, package 30 must
be able to stand in a stable manner on the plane. In other words,
package 30 must be so constructed and arranged so that it will
not easily fall over when filled with consumable products.
Appellant argues that Wilmers’ device “‘is arranged to stand substantially
upright’ (see abstract), and ‘the package 30 must be able to stand in a stable
manner on the plane [and] must be so constructed and arranged so that it
will not easily fall over when filled with consumable products.’” Appeal
Br. 7. Appellant argues that modifying Wilmers’ device with the recited
“substantially curved distal edge” would have resulted in an unstable device
when placed in the upright position and, therefore, Wilmers teaches away
from the subject matter of claim 8. Id. at 8–9.
This argument is not persuasive because it has no support in the
record. Paragraph 57 of Wilmers, in its entirety, does not require the package
to be in the upright position. Rather, it states that “package 30 may rest in a
substantially vertical or upright position” and that package 30 “may rest in a
position that tilts toward or away from a consumer, depending on the shape
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of package 30.” Wilmers ¶ 57 (italics added). Wilmers, therefore, expressly
teaches that the upright position is only one of the embodiments and that its
package may take various shapes.
Consistent with paragraph 57, Wilmer further states: “In addition to
standing substantially upright, package 30 may also be configured to lay
substantially flat on top wall 46 of body 32 or bottom wall 38.” Id. ¶ 58.
Appellant’s argument that Wilmers requires the device to stand upright,
therefore, is inconsistent with the record.
Moreover, a change of shape does not make a product nonobvious
where the claimed shape is not of functional significance and accomplishes
the same purpose as the prior art shape. See In re Dailey, 357 F.2d 669,
672–73 (CCPA 1966). Appellant’s argument here is unpersuasive also
because the argument does not identify reversible error in the Examiner’s
finding that the recited “substantially curved distal edge” is a design choice
without a functional significance or utility. Compare Ans. 9, with Reply
Br. 2–3.
More specifically, Appellant argues that the recited “substantial
curved distal edge” has a “specific utility.” Appeal Br. 8. Appellant cites the
Specification for the disclosure that “[t]he amount of milk used is similar to
the amount that would be used in a cup for the same purpose” but does not
explain why or how the amount of milk relates to the recited shape at issue.
Id (citing “Summary of the Invention”). Likewise, Appellant does not
explain why the statement that “[t]he scooping end 10 is partially bounded
by a wall 30 which at that end resembles a circumferential half of the wall of
a coffee cup” shows utility. Id. Appellant’s argument that the recited shape
may provide an “ease with which a spoon may be employed to remove a
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soggy cookie” does not find support in the record evidence. Id. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
Appellant’s argument that modifying Wilmers would have changed
Wilmers’ principle of operation is unpersuasive for the same reasons. We
sustain the rejection of claim 8 over Wilmers and Cox accordingly.
Rejection of Claims 9 & 10 (Wilmers & Cox)
Appellant does not raise separate arguments for the rejection of claims
9 and 10 over Wilmers and Cox. See Appeal Br. 8 (merely arguing that
claims 9 and 10 each “recites a unique combination of features that are not
taught or suggested by the cited art”). “[I]t has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections . . . .” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Appellant’s unelaborated statement does not identify error in the rejection of
claims 9 and 10 over Wilmers and Cox and we sustain the rejection
accordingly. See 37 C.F.R. § 41.37(c)(1)(vii).
Rejection of Claim 11 (Wilmers & Cox)
Claim 11 depends from claim 8 and additionally requires “one or
more protrusions in the wall that extends along the right or left edge, said
protrusions configured to support a spoon at rest within the chamber.”
Appellant acknowledges that Wilmers’ device has gripping portion
48, which the Examiner cites in support of the rejection of claim 11. Appeal
Br. 9; see also Final Act. 7. Appellant, however, argues that the Examiner
has not made any findings supporting the prior art gripping portion 48 is
“configured to support a spoon at rest within the chamber” as claim 11
requires. Appeal Br 9.
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We agree with Appellant that the record before us does not show that
Wilmers teaches or suggests the limitation “configured to support a spoon at
rest within the chamber.” The Examiner’s finding with regard to claim 11 is
limited to “Wilmers discloses protrusions (48) that extend along the left and
right walls,” which does not explain how Wilmers’ protrusions are
“configured to support a spoon at rest within the chamber” as claim 11
requires. See Final Act. 7. We further note that the Examiner’s statement
“[c]laim 11 merely states that it is configured to hold a spoon at rest” (Ans.
9–10) omits the remaining claim limitation “within the chamber” and is
inaccurate.
Based on the foregoing, we do not sustain the rejection of claim 11
over Wilmers and Cox.
Rejection of Claims 8–10 (Goldman)
Appellant argues that Goldman does not teach or suggest “a
monolithic vessel” as claim 8 recites because Goldman’s device is “a paint
tray with separate legs, where the legs can be inserted in sockets in the tray.”
Appeal Br. 9.
The Examiner, on the other hand, finds that “the vessel of Goldman
could be made as a single piece and therefore the legs would not be
separate,” thereby teaching or suggesting the recited “monolithic vessel.”
Ans. 10. The record before us, however, does not include factual evidence to
support this finding. We, therefore, do not sustain the rejection of claim 8
over Goldman. We likewise do not sustain the rejection over Goldman of
dependent claims 9 and 10.

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Application 15/103,825

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CONCLUSION
The Examiner’s rejection is affirmed-in-part.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
8–11 103 Wilmers, Cox 8–10 11
8–10 103 Goldman 8–10
Overall
Outcome:
  8–10 11

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART