Erika Buck et al.

Patent Trials and Appeals Board

Sep 23, 2020

2019005848 (P.T.A.B. Sep. 23, 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.
15/601,763 05/22/2017 Erika Buck 9857.0001 8689
152 7590 09/23/2020
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
111 SW Columbia Street
Suite 725
PORTLAND, OR 97201
EXAMINER
VU, STEPHEN A
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
patent.docket@chernofflaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIKA BUCK and LARRY BUCK

Appeal 2019-005848
Application 15/601,763
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–14, 16, 17, 23, and 24. We have
jurisdiction under 35 U.S.C. § 6(b). The Appellant’s arguments were heard
in an oral hearing held on September 11, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies “[t]he real party in interest in this
appeal is Erica Buck and Larry Buck, inventors of the captioned
application.” Appeal Br. 2.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 10 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A food serving apparatus, comprising:
a bottom surface integrally formed with opposed first and
second perimeter side walls configured to be resiliently
deformable toward each other automatically in response to
insertion of said food serving apparatus into an open snack bag
so as to maintain the opening of the snack bag in an expanded
configuration, and without rupturing the sides of said snack
bag, the bottom surface substantially flat over at least a major
portion of the distance between said first and second perimeter
side walls.
Appeal Br., Claims App.
References
The prior art relied upon by the Examiner is:
Name Reference Date
Graham US 3,740,238 June 19, 1973
Schelling US D674,569 S Jan. 15, 2013
Rejections
Claims 1, 2, 4, 6–9, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Prior Art2 and Graham. Ans. 3–5.
Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over Prior
Art, Graham, and Schelling. Id. at 5–6.
Claims 10–14, 16, 17, and 24 are rejected under 35 U.S.C. § 103 as
unpatentable over Schelling and Graham. Final Act. 6–8.

2 “Prior Art” refers to Graham’s Figure 1, which “illustrates a stack of
packages exemplary of the prior art.” Graham col. 2, ll. 37–38.
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ANALYSIS
Independent Claim 1 and Dependent Claims 2–4, 6–9, and 23
The food serving apparatus of claim 1 includes “opposed first and
second perimeter side walls” that are “configured to be resiliently
deformable toward each other automatically in response to insertion of said
food serving apparatus into an open snack bag so as to maintain the opening
of the snack bag in an expanded configuration, and without rupturing the
sides of said snack bag.” Appeal Br., Claims App.
The Examiner finds that Prior Art (i.e., “Graham’s Figure 1”) teaches
food serving apparatus T, which includes opposed first and second perimeter
side walls. Ans. 3. The Examiner’s application of Graham’s Figure 1 to the
subject matter of claim 1 is best shown in Exhibit 5.3 Exhibit 5 is a copy of
the first page of Graham’s patent with annotations added to Figure 1, which
depicts “a stack of packages exemplary of the prior art.” The annotated
version of Figure 1 is reproduced below.

3 The Examiner’s Answer includes Exhibit 5 as an attachment. Ans. 3.
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Figure 1 shows a stack of packages P, with each package P including tray T
enclosed by lightweight intermediate flexible wrap W. Graham col. 2,
ll. 37–48. Each tray T defines a pair of elongate compartments Y for
cookies C, and each compartment Y includes a floor, an inner side wall, and
an outer side wall. See id. The Examiner’s annotations include an
identification of the outer side wall of compartment Y as a first perimeter
side wall and the inner side wall of the same compartment Y as a second
perimeter side wall. Notably, the outer side wall is in contact with wrap W,
but the inner side wall is not in contact with wrap W.
The Examiner also finds that Graham’s Figure 1 “does not show that
the first and second perimeter side walls are configured to be resiliently
deformable toward each other automatically in response to insertion of said
food serving apparatus into an open snack bag (W).” Ans. 3. To remedy
this deficiency the Examiner turns to Graham’s improved cookie package,
which teaches the use of thin, resiliently flexible tray 12, made of plastic
(e.g., polypropylene) to contain cookies. Graham col. 2, ll. 21–22, 59–61.
The Examiner finds that Graham’s tray 12 includes:
opposed first and second perimeter side walls (24,26) configured
to be resiliently deformable (constructed of polystyrene,
polypropylene to provide resiliently flexible characteristic
properties . . .) toward each other automatically in response to
insertion of said food serving apparatus into an open snack bag
(14) . . . so as to maintain the opening of the snack bag in an
expanded configuration . . . , and without rupturing the sides of
said snack bag.
Ans. 4 (citing Graham col. 3, ll. 50–63). The Examiner determines it would
have been obvious to modify the food serving apparatus T shown in
Graham’s Figure 1 with the resiliently flexible materials, as taught by
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Graham, to allow the body of tray T to be resiliently flexible for easy
insertion back into wrap W. See id.
The Appellant argues Graham fails to disclose “opposed first and
second perimeter side walls configured to be resiliently deformable toward
each other automatically in response to insertion of said food serving
apparatus into an open snack bag so as to maintain the opening of the snack
bag in an expanded configuration, and without rupturing the sides of said
snack bag,” as recited in claim 1. See Appeal Br. 8–9; Reply Br. 3–5. The
Appellant asserts that “the flexibility of [Graham’s improved] tray need only
be sufficient to absorb vertical impact shocks to keep the cookies from
bottoming out and contacting the top of cookies stacked below.” Reply
Br. 4; see Appeal Br. 9 (citing Graham col. 3, ll. 50–62). The Appellant
submits that “insertion of the tray of Graham into the wrapper enclosing it
would not appear to deform the side walls of the tray at all, let alone do so in
a manner that does not rupture the sides of the wrapper.” Appeal Br. 9. The
Appellant’s argument is persuasive.
The Examiner’s determination that the outer and inner side walls of
elongated compartment Y, as modified to be resiliently flexible, corresponds
to the claimed “opposed first and second perimeter side walls” and that
wrap W corresponds to the claimed “open snack bag” (see Ans. 4) appears
to be based on speculation. First, we note that the Examiner fails to
adequately explain on the record how wrap W applies a force to tray T and
more specifically, to the outer and inner side walls of compartment Y, such
that the walls would deform. In this regard, Graham does not describe
lightweight intermediate flexible wrap W as being able to apply a force to
tray T or the side walls of compartment Y. Moreover, Graham’s improved
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cookie package is described as having a somewhat loose wrapping. See
Graham col. 3, ll. 42–44 (“The interposed somewhat loose layers of very
thin flexible wrap 14 do not interfere with such nesting nor with the action
of the base and ribs 44.”); Reply Br. 4. Second, the Examiner fails to
adequately explain on the record how the inner side wall of compartment Y,
which is not shown as being in contact with wrap W, would be affected by
wrap W upon inserting tray T into wrap W.
In view of the foregoing, we determine that the Examiner fails to
adequately explain how the outer and inner side walls of elongated
compartment Y are “configured to be resiliently deformable toward each
other automatically in response to insertion of said food serving apparatus
into an open snack bag so as to maintain the opening of the snack bag in an
expanded configuration, and without rupturing the sides of said snack bag,”
as claimed.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and claims 2, 4, 6–9, and 23, which depend therefrom. Further, the
Examiner fails to rely on Schelling in any manner that would remedy the
deficiency in the Examiner’s rejection of claim 1 as discussed above.
Therefore, we do not sustain the Examiner’s rejection of claim 3.

Independent Claim 10 and Dependent Claims 11–14, 16, 17, and 24
Independent claim 10 recites, among other things, “two resiliently
deformable triangular-shaped side walls, . . . wherein each side wall is
capable of bending toward the other side wall in response to lateral pressure
from a snack bag upon insertion into the snack bag.” Appeal Br., Claims
App.
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The Examiner finds that Schelling teaches substantially all of the
subject matter of claim 10, including two triangular-shaped side walls, but
fails to teach if the side walls are resiliently deformable. See Final Act. 6.
To remedy this deficiency the Examiner turns to the teachings of Graham.
Id. at 7 (citing Graham col. 3, ll. 50–62). The Examiner reasons that “one
skilled in the art would have readily recognized that constructing the
triangular-shaped side walls to be resiliently deformable in Schelling would
provide durability of the serving apparatus to withstand accidental side
impacts.” Id.
The Appellant submits that “Schelling is simply a design patent for a
crumb tray, which is a tray intended to catch the crumbs from ovens or
toaster ovens.” Appeal Br. 10. Moreover, “[b]ecause of the heat to which
the cited crumb tray is to be exposed, the crumb tray of Schelling naturally
cannot be fabricated from the type of resilient material that might be
deformable under the pressure of the wrapper of a snack bag, as claimed.”
Id. at 10–11.
The Examiner responds that “Schelling doesn’t designate or disclose
that his crumb tray has to be used for ovens or toaster ovens.” Ans. 8. The
Examiner finds that crumb trays, in general, may be used without ovens or
toaster ovens. Id. The Examiner supports this general finding by citing to
an example of an automotive tray that includes a crumb tray. Id. (citing
Heneghan (US 2009/0020450 A1, pub. Jan. 22, 2009)).4 The Examiner

4 Heneghan teaches a crumb tray for receiving crumbs and other small food
remains when auto tray 100 is used for eating. Heneghan ¶ 29.
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determines that “a crumb tray is not automatically for ovens or toaster ovens
and can be constructed of different materials.” Id.
The Appellant argues that the Examiner’s rejection fails to be
adequately supported because “[t]he Examiner . . . does not even know that
the crumb tray of Schelling is a serving apparatus, let alone one that is
typically subjected to ‘accidental side impacts.’” Reply Br. 8; see Appeal
Br. 11. The Appellant’s argument is persuasive.
At the outset, we note that the Examiner fails to establish the specific
uses of Schelling’s crumb tray. Although the Examiner explains that a
crumb tray may be of a type that is not designed to be subject to the internal
temperatures of an oven or a toaster over, the Examiner does not explain on
the record –– or even clearly suggest –– that Schelling’s crumb tray is of that
type. Similarly, the Examiner’s reasoning relies on the notion it would have
been obvious to one of ordinary skill in the art to modify the side walls of
Schelling’s crumb tray to be resiliently deformable in order to provide
durability to withstand accidental side impacts. Final Act. 7. The Examiner,
however, fails to establish on the record a scenario in which the side walls of
Schelling’s crumb tray would be subject to accidental side impacts. More
importantly, how the pressure involved in these asserted accidental side
impacts compare to the “lateral pressure from a snack bag upon insertion
into the snack bag,” as recited in claim 10. Accordingly, the Examiner’s
rejection appears to be the result of impermissible hindsight, rather than
being based on some articulated reasoning with some rational underpinning.
See in re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds . . . [require] some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”)
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(cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
Thus, we do not sustain the Examiner’s rejection of independent
claim 10 and claims 11–14, 16, 17, and 24, which depend therefrom.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6–9,
23
103 Prior Art, Graham 1, 2, 4, 6–
9, 23
3 103 Prior Art, Graham,
Schelling
3
10–14, 16,
17, 24
103 Schelling, Graham 10–14, 16,
17, 24
Overall
Outcome
1–4, 6–14,
16, 17, 23,
24

REVERSED