Ex Parte Edwards et al

Patent Trials and Appeals Board

Sep 27, 2017

13929050 - (D) (P.T.A.B. Sep. 27, 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.
13/929,050 06/27/2013 Jay Edwards 1410-130983-US 7949
48940 7590 09/28/2017
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
VAN, QUANG T
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
09/28/2017 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 JAY EDWARDS and NEIL DARIN
Appeal 2016-006728
Application 13/929,050
Technology Center 3700
Before JILL D. HILL, PAUL J. KORNICZKY, and BRENT M. DOUGAL,
Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006728
Application 13/929,050
STATEMENT OF THE CASE
Appellants Jay Edwards and Neil Darin1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision, as set forth in the Non-Final Office
Action dated June 8, 2015 (“Non-Final Act.”), rejecting claims 25—33, 35—
38, 41—44, 46—51.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The claims are directed to a meal kit and cooking tray. Spec. 1
(Title). Claims 25 and 42 are the independent claims on appeal. Claim 25,
reproduced below with disputed limitations italicized for emphasis, is
illustrative of the claimed subject matter:
25. A cooking tray for use in microwave cooking of a food
product, the cooking tray comprising:
a generally planar bottom wall having a fold line extending
substantially thereacross;
an upstanding sidewall extending around the periphery of
the bottom wall, the sidewall having a pair of apertures, one of
the apertures being aligned with one end of the fold line and the
other of the apertures being aligned with the other end of the fold
line, the pair of apertures being disposed in the upstanding
portion of the sidewall and spaced from an outwardly extending
peripheral rim.
1 Appellants identify Kraft Foods Group Brands LLC as the real party
in interest. Appeal Brief, dated December 14, 2015 (“Appeal Br.”), at 3.
2 Claim 45 is allowed. Non-Final Act. 7.
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Application 13/929,050
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
The Examiner made the following rejections:
1. Claim 46 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 25, 26, 28—30, 35—37, 41, 42, and 48—51 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Sase.
3. Claims 25, 26, 28—30, 35-37, 41, 42, 46, and 47 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Schroter.
4. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sase or Schroter, in view of Zeng.
5. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sase and Antosko.
6. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sase, Antosko, and Shoji.
7. Claims 38, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sase and Gelderman.
8. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroter and Antosko.
Schroter
Antosko
Gelderman
Zeng
Shoji
US 4,523,675 June 18, 1985
US 5,115,524 May 26, 1992
US 6,065,394 May 23, 2000
US 6,717,121 B2 Apr. 6, 2004
JP 08-324537A Dec. 10, 1996
JP 2005053511A Mar. 3, 2005Sase
REJECTIONS
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Application 13/929,050
9. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schroter, Antosko, and Shoji.
10. Claims 38, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schroter and Gelderman.
Appellants seek our review of Rejections 2, 3, and 5—7.
DISCUSSION
Rejection 1: The Rejection of Claim 46
as Failing to Comply with the Written Description Requirement
Because Appellants do not address the rejection of claim 46, the
rejection is summarily sustained.
Rejection 2: The Rejection of Claims 25, 26, 28—30,
35—37, 41, 42, and 48—51 as Anticipated By Sase
Appellants argue claims 25, 26, 28—30, 35—37, 41, 48 and 49 as a
group. Appeal Br. 8—10. We select independent claim 25 as the
representative claim, and claims 26, 28—30, 35—37, 41, 48, and 49 which
depend from claim 25, stand or fall with claim 25. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue claims 42, 50, and 51 as a group. Appeal Br. 8—10.
We select independent claim 42 as the representative claim, and claims 50
and 51 which depend from claim 42, stand or fall with claim 42. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Sase discloses all of the limitations of
independent claims 25 and 42, including a “sidewall (3) having a pair of
apertures (5),” wherein “one of the apertures (5) [is] aligned with one end of
the fold line (4) and the other of the apertures (5) [is] aligned with the other
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Application 13/929,050
end of the fold line (4).” Non-Final Act. 3. According to the Examiner,
Sase’s broken guide lines 5 (also called a fracture guide wire) correspond to
the recited “apertures.” Id.
Appellants argue that the Examiner’s finding is erroneous because
Sase discloses “fracture guide wires 5” which are “thin grooves,” not
“apertures” (i.e., holes), as recited in claims 25 and 42. Appeal Br. 8—9.
According to Appellants, Sase’s fracture guide wires are of “thin recessed
groove form.” Id. at 9 (citing Sase 113, Figs. 2A and 2B). Appellants argue
that “the ‘fracture guide wires’ do not extend through the tray and are thus
not ‘apertures’ as recited in the claims because, as shown in FIGS. 3(A) and
3(B) [], the recess does not extend through the material of the tray,” and
“[ijnstead, ‘thin recessed groove form’ refers to structure that decreases, but
does not extend entirely through, the thickness of the wall.” Id. Appellants
also argue that Sase does not disclose “a tray with an upstanding sidewall
that has ‘a pair apertures.’” Id.
In response to Appellants’ argument, the Examiner correctly explains
that paragraphs 18—19 of Sase disclose that fracture guide wires 5 are
formed of “holes.” Ans. 2; see Non-Final Act. 3. We also note that Sase’s
Abstract describes that holes form guide line 5:
The side walls 3 have a broken guide line 5 formed along the
extension line of the folding line 4 in the bottom wall 2. The
folding line 4 in the bottom is a fine recessed groove-like, slender
elliptical holes in parallel lines. The broken guide line in the
side walls is slender elliptical holes in parallel lines, circle holes
in parallel lines or a series of slender elliptical hole-like lines.
Furthermore, contrary to Appellants’ arguments, we note that Sase’s Fig. 2A
discloses hole 4(5), and Figs. 3A and 3B disclose a groove-like structure.
Finally, contrary to Appellants’ argument that Sase does not disclose a wall
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Application 13/929,050
with apertures, Sase’s Abstract clearly states that “side walls 3 have a broken
guide line 5 [i.e., apertures].”3 Appellants’ arguments do not identify error
by the Examiner.
For the reasons above, the rejection of independent claims 25 and 42
is sustained, and dependent claims 26, 28—30, 35—37, 41, and 48—51 fall with
claims 25 and 42.
Rejections 3, 4 and 8—10: The Rejections of Claims 25—33,
35—38, 41—44, 46, and 47 Based on Schroter and Other Prior Art
In Rejection 3, the Examiner finds that Schroter discloses all of the
limitations of claims 25, 26, 28—30, 35—37, 41, 42, 46, and 47, including a
“bottom wall having a fold line” recited in independent claims 25 and 42.
Non-Final Act. 3—4. According to the Examiner, Schroter’s transverse
dashed line along the tray bottom 16 in Fig. 1 corresponds to the recited
“fold line.” Id.
Appellants argue that the Examiner’s finding is erroneous because
Schroter does not disclose that tray 16 is foldable, and the dashed line does
not indicate folding features. We agree. Schroter does not disclose that the
tray is foldable or that the dashed line in tray bottom 16 is a “fold line,” as
recited in claims 25 and 42. Thus, the rejection of claims 25, 26, 28—30, 35—
37, 41, 42, 46, and 47 in Rejection 3 is not sustained.
3 We further note that Sase teaches that, because of the holes, the tray
does not have good sealing properties, and so it is not used with moist foods
or soup. Sase 119 (Because of the “series of thin long hole[s], the tray
concerning the present invention does not have perfect sealing performance .
. . . Therefore, it is widely used as the food grade and other trays out of
which neither moisture nor [soup] comes.”).
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Appellants do not appeal the rejections of claims 27, 31—33, 38, 43,
and 44 in Rejections 4 and 8—10. Nevertheless, because claims 27, 31—33,
38, 43, and 44 depend from claims 25 and 42, the rejections of these claims
are not sustained.
Rejection 4: The Rejection of Claims 2 7
as Unpatentable Over Sase and Zeng
Though the rejection of claim 27 over Schroter and Zeng is reversed
above, claim 27 is alternatively rejected over Sase and Zeng. Because
Appellants do not address this rejection of claim 27, the rejection is
summarily sustained.
Rejection 5: The Rejection of Claims 31
as Unpatentable Over Sase and Antosko
Because Appellants do not address this rejection of claim 31, the
rejection is summarily sustained.
Rejection 6: The Rejection of Claims 32 and 33
as Unpatentable Over Sase, Antosko, and Shoji
Claim 32 recites that a second fold line located in the bottom wall “is
arcuate.” The Examiner finds that Antosko discloses a second fold line in
the bottom wall that is straight, and Shoji discloses a second fold line 3 that
is arcuate. Non-Final Act. 6 (citing Shoji Fig. 1). The Examiner determines
that it would have been obvious to modify the combination of Sase/Antosko
to use “a second fold line [that] is arcuate as taught by [Shoji].” Id. at 6—7.
Appellants argue that the rejection is erroneous for several reasons.
First, Appellants argue that Shoji’s “grooves of the package are in the
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sidewalls, not a bottom wall as recited in claim 32.” Appeal Br. 12.
However, Appellants are attacking the teachings of Shoji individually.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner finds that Antosko, not Shoji, discloses a second fold
line located in the bottom wall. Non-Final Act. 3. The Examiner’s rejection
proposes to modify Antosko’s second fold line so that it is arcuate, as
disclosed in Shoji. Appellants do not address the rejection as articulated by
the Examiner, and, thus, does not identify error by the Examiner.
Second, Appellants argue that Sase “teaches away from a combination
with [Shoji] because the proposed modifications would render Sase
inoperable for its intended purpose or would change the principle of
operation of Sase.” Appeal Br. 13. According to Appellants, Shoji’s
grooves “are configured for curved sidewalls,” and “Sase is configured to
fracture along the sidewalls thereof, not fold inwardly as taught by Shoji.”
Id. Similarly, Appellants argue that Antosko teaches away from a
combination: (1) “with Sase because Sase teaches fracturing sidewalls
during use while Antosko is directed to a reusable crib,” and (2) “with
[Shoji] because the curved grooves of [Shoji] would not be compatible with
the specifically configured collapsible configuration of Antosko.” Id.
Appellants’ argument is not persuasive because Appellants are again
attacking the teachings of Sase, Shoji, and Antosko individually. In re
Merck, 800 F.2d at 1097 (Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures.). Here, the Examiner finds that
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Antosko, not Shoji, discloses a second fold line located in the bottom wall.
Non-Final Act. 3. The Examiner’s rejection proposes to modify Sase so that
it has a second fold line located in the bottom wall, as taught by Antosko,
and then modify the second fold line so that it is arcuate, as disclosed in
Shoji. See Non-Fmal Act. 6—7, 13—14. Appellants do not address the
rejection as articulated by the Examiner, and, thus, does not identify error by
the Examiner.
Appellants’ argument also is not persuasive because neither Sase nor
Antosko criticize, discredit, or otherwise discourage the Examiner’s
proposed combination of Sase, Antosko, and Shoji. DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (A
“reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.”) (quoting In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
For the reasons above, the rejection of claim 32 is sustained.
With respect to claim 33, Appellants argue that the rejection of claim
33 is erroneous for the same reasons presented above for claim 32.
Appellants’ argument is unpersuasive, and the rejection of claim 33 is
sustained.
Rejection 7: The Rejection of Claims 38, 43, and 44
as Unpatentable Over Sase and Gelderman
Claim 3 8 recites that “the bottom wall is circular and the fold line
extends along a diameter thereof.” The Examiner finds that Sase discloses
all of the limitations of claim 38 except for the bottom wall being circular
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and the fold line extending along the circular wall’s diameter. Non-Final 5.
The Examiner further finds that “Gelderman discloses a bottom wall (18)
being circular and the fold line (20) extends along a diameter thereof.” Id.
(citing Gelderman Fig. 3). The Examiner also determines that it would have
been obvious “to utilize in Sase a bottom wall being circular and the fold
line extends along a diameter thereof as taught by Gelderman in order to
have a desired shape which is suitable for user specific application.” Id.
Appellants argue that the rejection is erroneous for several reasons.
First, Appellants argue that “Gelderman does not disclose or suggest a fold
line extending across a circular bottom wall as recited in claim 38.
Gelderman discloses side-by-side pans that are hinged together.” Appeal Br.
12. However, Appellants are attacking the teachings of Gelderman
individually. In re Merck, 800 F.2d at 1097. Here, the Examiner finds that
Sase, not Gelderman, discloses a fold line located in the bottom wall. Non-
Final Act. 5. The Examiner’s rejection proposes to modify Sase’s
rectangular wall so that it is circular and has a fold line located across the
wall’s diameter, as disclosed in Gelderman. Id. Appellant does not address
the rejection as articulated by the Examiner, and, thus, does not identify
error by the Examiner.
Second, Appellants argue that Sase and Gelderman “teach[] away
from the proposed combination” because “Sase is directed to a product made
from a molded pulp product that is specifically configured so that the
sidewalls can fracture and the tray can be folded in half,” and Gelderman
“discloses hinged pans that are ‘constructed of aluminum, cast iron, stainless
steel, copper, tin, or any other suitable metal or synthetic resinous material,”’
and “is directed to reusable pans, while Sase is a single use product.”
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Appeal Br. 14. Appellants’ argument is not persuasive because neither Sase
nor Gelderman criticize, discredit, or otherwise discourage the Examiner’s
proposed combination of Sase and Gelderman. DePuy Spine, 567 F.3d at
1327 (A “reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention
claimed.”).
For the reasons above, the rejection of claim 38 is sustained.
With respect to claim 43, Appellants argue that the rejection of claim
43 is erroneous for same reasons presented above for claim 38. Appellants’
argument is unpersuasive, and the rejection of claim 43 is sustained.
Because Appellants do not address the rejection of claim 44, the
rejection is summarily sustained.
DECISION
For the above reasons, the Examiner’s rejection of claim 46 under 35
U.S.C. § 112, first paragraph, is AFFIRMED.
The Examiner’s rejection of claims 25, 26, 28—30, 35—37, 41, 42, and
48—51 under 35 U.S.C. § 102(b) as being anticipated by Sase is
AFFIRMED.
The Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a) as
being unpatentable over Sase and Zeng is AFFIRMED.
The Examiner’s rejection of claim 31 under 35 U.S.C. § 103(a) as
being unpatentable over Sase and Antosko is AFFIRMED.
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The Examiner’s rejection of claims 32 and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Sase, Antosko, and Shoji is
AFFIRMED.
The Examiner’s rejection of claims 38, 43, and 44 under 35 U.S.C.
§ 103(a) as being unpatentable over Sase and Gelderman is AFFIRMED.
The Examiner’s rejection of claims 25, 26, 28-30, 35-37, 41, 42, 46,
and 47 under 35 U.S.C. § 102(b) as being anticipated by Schroter is
REVERSED.
The Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a) as
being unpatentable over Schroter and Zeng is REVERSED.
The Examiner’s rejection of claim 31 under 35 U.S.C. § 103(a) as
being unpatentable over Schroter and Antosko is REVERSED
The Examiner’s rejection of claims 32 and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Schroter, Antosko, and Shoji is
REVERSED.
The Examiner’s rejection of claims 38, 43, and 44 under 35 U.S.C.
§ 103(a) as being unpatentable over Schroter and Gelderman is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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