2021002309 (P.T.A.B. Sep. 28, 2021)

Elida Greene

Patent Trials and Appeals BoardSep 28, 2021

2021002309 (P.T.A.B. Sep. 28, 2021)

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. 15/003,965 01/22/2016 Elida Leticia Greene 7004-002 7836 24112 7590 09/28/2021 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER VAN BUSKIRK, JAMES M ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 09/28/2021 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 ELIDA LETICIA GREENE ____________ Appeal 2021-002309 Application 15/003,965 Technology Center 3700 ____________ Before EDWARD A. BROWN, WILLIAM A. CAPP, and BRANDON J. WARNER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WARNER. Opinion concurring filed by Administrative Patent Judge CAPP. WARNER, 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 1 and 3–6, which are all the pending claims. See Appeal Br. 1; Final Act. 1 (Office Action Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Elida Leticia Greene. Appeal Br. 2. Appeal 2021-002309 Application 15/003,965 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “relates generally to carrying trays for food containers and, more particularly, to a carrying tray designed to carry food containers of varying sizes.” Spec. ¶ 2. Claim 1, reproduced below with emphasis added, is the sole independent claim and is representative of the subject matter on appeal. 1. A carrying tray comprising: a base including a support surface configured to support articles to be transported; a plurality of peg openings formed in said support surface; a plurality of pegs for insertion by a user into selected ones of said peg openings during use of the carrying tray to restrain one or more articles supported on said support surface; a generally rectangular storage recess formed in said support surface for storing said pegs when said carrying tray is not in use, said storage recess configured to store the pegs in side-by-side relationship; a finger access extension protruding from one side of the storage recess configured to allow insertion of the user’s fingers into the storage recess to retrieve the storage pegs; a strap having ends secured to the support surface on opposing sides of the storage recess and extending across said storage recess to retain said pegs in said storage recess; and a channel formed in the support surface configured to catch food that spills during transport, said channel at least partially surrounding the storage recess. Appeal 2021-002309 Application 15/003,965 3 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Adams US 5,097,957 Mar. 24, 1992 Lillelund US 5,676,252 Oct. 14, 1997 Dalhamer US 7,267,244 B1 Sept. 11, 2007 Kotula US 2011/0048988 A1 Mar. 3, 2011 Torlai US 2015/0257608 A1 Sept. 17, 2015 REJECTIONS The following rejections are before us for review: I. Claims 1, 3, 5, and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable over Adams, Kotula, Lillelund, and Torlai. Final Act. 2–5. II. Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable over Adams, Kotula, Lillelund, Torlai, and Dalhamer. Id. at 5–6. ANALYSIS All the claims are directed to a carrying tray that includes, in relevant part, a base with a support surface, a plurality of peg openings and a channel that are formed in the support surface, a storage recess with a finger access extension that is formed in the support surface to store and provide access to pegs, and a strap with ends thereof “secured to the support surface on opposing sides of the storage recess and extending across said storage recess to retain said pegs in said storage recess.” Appeal Br., Claims App. For the rejections on appeal, the Examiner relies on a combination of teachings from Appeal 2021-002309 Application 15/003,965 4 Adams, Kotula, Lillelund, and Torlai to support a determination that the subject matter claimed would have been obvious. See Final Act. 2–6. Of particular relevance to Appellant’s arguments, the Examiner relies on Kotula for teaching a finger access extension to provide access to items in a storage recess, and on Lillelund for teaching the strap as claimed. Id. at 3–4. Appellant argues that the rejections are deficient, based on assertions of problems with the Examiner’s reliance on Kotula and Lillelund in the rejections presented. See Appeal Br. 8–13. Most of these assertions are unpersuasive of Examiner error. Initially, Appellant asserts that the use of Kotula and Lillelund as teaching references is in some way tainted by hindsight. Appeal Br. 9–10; see Reply Br. 2–3. But Appellant does not identify any knowledge relied on by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so long as a conclusion of obviousness is based on a reconstruction that “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction is proper”). Thus, Appellant’s assertion of improper hindsight is unsupported. Appellant also asserts that the use of Kotula is problematic because it is not analogous art. Appeal Br. 12–13; see Reply Br. 3. Regarding the standard for analogous art, we note that the proper two-prong test to define the scope of analogous prior art is (1) “whether the art is from the same field of endeavor, regardless of the problem addressed,” and (2) even “if the reference is not within the field of the inventor’s endeavor, whether the Appeal 2021-002309 Application 15/003,965 5 reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citation omitted). Here, Kotula is analogous art at least because it is reasonably pertinent to the problem facing Appellant with respect to accessing items in a storage recess. As the Examiner explains, the “structure and function” of Kotula’s finger access aperture (an opening to provide ready access to items in an adjoining storage recess) is “the same as” Appellant’s finger access extension. Ans. 10. Appellant’s assertion of Kotula being non-analogous art is misplaced. Nevertheless, dispositive to resolution of this appeal, Appellant persuasively asserts that the Examiner’s reliance on Lillelund is insufficient to teach a strap as claimed. See Appeal Br. 10–12; Reply Br. 3–6. While the carrier of Lillelund does include an element identified as “strap” 46, as relied on by the Examiner, this element does not include all of the relevant limitations of the claim. Even if we were to presume that Lillelund’s strap is “secured to the support surface on opposing sides of the storage recess” (deep-side container surface 22), as the Examiner found (Final Act. 4), we do not see how the strap could be considered to “extend[] across said storage recess to retain said pegs in said storage recess,” as also claimed. Although the Examiner states that “the strap of Lillelund could easily be combined with the container of Adams to retain the storage rods of Adams,” (Ans. 9), such capability is not evident from the record. Instead, from a review of Lillelund’s disclosure, Figures 1–3 show strap 46 extending up and over the entirety of tray 14 (including deep-side container surface 22, identified as the storage recess) as part of cover 18, rather than extending across any portion of the identified storage recess. As Appeal 2021-002309 Application 15/003,965 6 Appellant correctly observes, “[t]he strap in Lillelund is integrally formed with the cover of the food tray.” Appeal Br. 10; see also Lillelund, col. 3, ll. 8–14 (strap 46 of handle 18 is “integrally and rigidly joined to the cover”). It is unclear from the record before us how Lillelund’s strap structure could function as claimed. Ultimately, we agree with Appellant that “none of the [cited] references disclose a strap as recited in the claims that extends across the storage recess to retain pegs in [the] storage recess,” as claimed. Appeal Br. 11. This shortcoming pervades both rejections before us on appeal. Accordingly, because the Examiner’s rejections of the claims are premised on a finding that is not supported by a preponderance of the evidence, we do not sustain the rejections of claims 1 and 3–6. DECISION We REVERSE the Examiner’s rejection of claims 1, 3, 5, and 6 under 35 U.S.C. § 103 as being unpatentable over Adams, Kotula, Lillelund, and Torlai. We REVERSE the Examiner’s rejection of claim 4 under 35 U.S.C. § 103 as being unpatentable over Adams, Kotula, Lillelund, Torlai, and Dalhamer. Appeal 2021-002309 Application 15/003,965 7 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 6 103 Adams, Kotula, Lillelund, Torlai 1, 3, 5, 6 4 103 Adams, Kotula, Lillelund, Torlai, Dalhamer 4 Overall Outcome 1, 3–6 REVERSED Appeal 2021-002309 Application 15/003,965 8 CAPP, Administrative Patent Judge, concurring. I concur in the result reached by the majority only because I agree that Lillelund is a particularly poor reference for teaching the claimed strap limitation. I write separately lest there be any confusion as to whether I believe Appellant has achieved a patentable invention. As depicted in Figure 1 of Appellant’s disclosure, a plurality of pegs 60 are stored in recess 40. Spec., Fig. 1. Recess 40 is essentially a container with an open top. Id. Strap 50 is used to secure pegs in recess 40. Id. Without strap 50, or perhaps a closeable lid, pegs 60 would be susceptible to inadvertent departure from recess 40 in the event that tray 10 is jostled. Any layman who has ever carried a plurality of loose items on a tray, or in an open-top container, would immediately recognize this as an obvious problem. The question thus presented is whether something more than mere ordinary skill is required to solve this obvious problem. Stated differently, would it have been obvious to implement a solution to this problem? In my opinion, the answer is yes. One of the ways in which a patent application’s subject matter can be shown to be obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the claims. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007). In my opinion, using a strap to secure a plurality of loose pegs in a recess is an obvious solution to a known problem. Id. Securing loose items with a strap is so simple and straightforward that implementation of a securing strap in Appellant’s invention requires no more than the exercise of common sense. Common sense may be used to fill in a missing limitation when the Appeal 2021-002309 Application 15/003,965 9 limitation in question is, as here, unusually simple and the technology particularly straightforward. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). I surmise that there may be untold numbers of examples of the use of straps to secure loose items in the prior art. In my opinion, the Examiner could have, and should have, found a better reference than Lillelund as disclosing a strap for such use. However, the Board is under no obligation to conduct its own independent prior art search and Appellant is reminded that the Board enters a new ground of rejection at its discretion, such that no inference should be drawn from a lack of exercising that discretion. See 37 C.F.R. § 41.50(b); see also MPEP § 1213.02. The law deems obvious those modest, routine, everyday, incremental improvements of an existing product that do not involve sufficient inventiveness to merit patent protection. Ritchie v. Vast Resources, Inc., 563 F.3d 1334, 1337 (Fed. Cir. 2009). Such, in my opinion, is the case here. Otherwise, I concur in the result reached by the majority.