Ex Parte Ferro

Patent Trial and Appeal Board

Mar 27, 2017

12761296 (P.T.A.B. Mar. 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.
12/761,296 04/15/2010 Jay Ferro F022-P10144US 1854
33356 7590 03/29/2017
SoCAL IP LAW GROUP LLP
310 N. WESTLAKE BLVD. STE 120
WESTLAKE VILLAGE, CA 91362
EXAMINER
THAKUR, VIREN A
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
USPTO@socalip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY FERRO
Appeal 2014-000975
Application 12/761,296
Technology Center 1700
Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s Final Rejection decision rejecting claims 1, 5, 8, 10-12, and 14.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
Appeal 2014-000975
Application 12/761,296
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
1. A packaged salad comprising:
an undressed salad comprising at least one piece of a
lettuce leaf and at least one piece of a topping;
a package containing the salad, the package defining a
first volume when in a distribution mode and a larger second
volume when expanded to a consumption mode, the package
comprising:
a container having a generally bowl-like shape and a
volume-modifying portion, wherein in the distribution mode,
the volume-modifying portion protrudes into an interior cavity
of the bowl-like shape and in the consumption mode, the
volume-modifying portion extends away from the interior
cavity;
a lid removably coupled to the container to provide a
substantially leak-proof seal with the container; and
at least one air vent sufficient to allow air to enter the
package to prevent negative air pressure from impeding a user
from expanding the package from distribution mode to
consumption mode.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Dirksing US 4,873,100
US 4,875,576
Oct. 10, 1989
Oct. 24, 1989
Nov. 22, 2001
July 13, 1993
Jan. 11,2000
Torgrimson
Tomlinson
Robbins, III
Ikeguchi
US 2001/0043972 A1
US 5,226,551
JP 2000-006972
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Application 12/761,296
THE REJECTION
Claims 1,5,8, 10-12, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tomlinson in view of Ikeguchi, Torgrimson,
Robbins III, and Dirksing. Appeal Br. 4; Ans. 3.
ANALYSIS
We select claim 1 as representative of all the claims on appeal, based
upon Appellant’s presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014).
We sustain the § 103(a) rejection advanced in this appeal essentially
based on the findings of fact, conclusions of law, and rebuttals to arguments
well expressed by the Examiner in the Final Action and in the Answer. We
add the following for emphasis.
Beginning on page 10 of the Appeal Brief, Appellant argues that four
of the five references applied in the rejection do not relate to salads as they
are soup and beverage containers (non-analogous art argument), and all are
comparatively old.
With regard to the non-analogous art argument, we note that two or
more references can be combined to form the basis for an obviousness
rejection only if they are analogous art to the claimed invention. The
Federal Circuit has explained that references are analogous art if they are
either (1) in the patent applicant’s field of endeavor or (2) are reasonably
pertinent to the particular problem with which the applicant was concerned.
In reBigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992). “Whether a reference in the prior art is
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Application 12/761,296
‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir.
1992).
In the instant case, we agree with the Examiner that the references are
analogous art to the claimed invention because they are in the same field of
endeavor. The same field of endeavor test “for analogous art requires the
PTO to determine the appropriate field of endeavor by reference to
explanations of the invention’s subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention.” In re Bigio, 381 F.3d at 1325 (reference describing a toothbrush
found to be in the same field of endeavor as a claim to a hairbrush based on
findings regarding function and structural similarity).
In the instant case, Appellant’s Specification describes a container that
packages consumable items, to which a dressing is added upon consumption
of the consumable item. The package functions so as to accommodate both
the edible item and the dressing when the dressing is added to the package,
to allow even tossing of both ingredients. Spec. 128. Appellant argues that
4 of the 5 references relate to soup or beverages rather than a salad.
However, Appellant’s own Specification does not limit the consumable item
to a salad. Paragraph 18 of Appellant’s Specification discloses:
[0018] The salad 110 is a combination of solid food items and its
paradigm is the green salad. The solid food items in the salad 110
must include one or more pieces of a vegetable leaf, a non-leaf
vegetable, a pasta, a noodle, a legume, a grain, a nut, a crouton, a
cheese, an egg, a meat, a poultry, a seafood, or a fruit. The salad 110
may contain various items which are cold, warm or hot. The solid
food items may be raw or cooked, dried or moist.
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Application 12/761,296
Tomlinson does not limit the consumable item to a salad either. As the
Examiner states, Tomlinson teaches food products such as noodles as well as
lettuce-based salads (Tomlinson || 4, 7), that can be packaged in the
container, and into which another fluid can be added. Ans. 10 (citing
Tomlinson 153). Paragraph 53 of Tomlinson discloses that the types of
solid food other than salad includes, and is not limited to, cereals, pastas,
noodles, vegetables, meat, and other foods that are substantially solid where
it is desired to uniformly apply a sauce, dressing, condiment, gravy, or other
fluid. The aforementioned facts make a compelling case for the Examiner’s
position in the record that the references are analogous to Appellant’s
claimed invention. With specific regard to fkeguchi, fkeguchi discloses
packaging noodles (12). Torgrimson discloses packaging a powder
concentrate to which a liquid is added (col. 2,11. 15). Robbins, 111 also
discloses packaging a powder concentrate to which a liquid is added (col. 6,
11. 25—30). Dirksing also pertains to packaging of a concentrate (such as a
frozen juice concentrate) that is reconstituted upon use by adding a liquid.
Dirksing, col. 1,11. 6—28. Each of these references pertain to a packaging
container having the function similar to the function described in
Appellant’s Specification (a container that packages consumable items, to
which a liquid is added upon consumption of the consumable item).
In view of the above, we thus agree with the Examiner’s stated
position and conclusion in the record that the references are analogous art
because they are directed to Appellant’s field of endeavor.
Appellant also argues that the some of the references are old. Appeal
Br. 10. Appellant elaborates on this argument on pages 2—3 of the Reply
Brief, ft appears that Appellant’s point being made is that the passage of
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Application 12/761,296
time supports the position of a long felt need. However, we are unpersuaded
by such argument. 'The mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem;'1 1 In the instant case, Appellant has not provided such evidence
(for the reasons discussed, infra, regarding Appellant’s rebuttal evidence).
See also Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016) (the
decision in Leo Pharma. Prods., Ltd. v. Rea 726 F3d. 1346 (2013) “hinged
on the fact that nothing in the cited prior art appreciated the problem the
invention recognized and then solved”, not merely the passage of time). We
are thus unpersuaded by Appellant’s argument pertaining to the age of the
patents.
In view of the above, we thus further agree with the Examiner that it
would have been obvious to have modified Tomlinson by incorporating a
collapsible bowl (as taught by the secondary references) for the benefit of
providing a compact container during shipping or storage as specifically
taught by Ikeguchi. Ans. 10. The Examiner has provided adequate
motivation for making the proposed modification to Tomlinson. Ans. 10—
11.
Once a prima facie case of obviousness is established, as in the
present case, the burden shifts to the applicant to come forward with
arguments and/or evidence to rebut the prima facie case. See, e.g., In re
1 In re Wright, 569 F,2d 1124, 1127 ((TPA 1977) (100-year-old patent wTas
properly relied upon in a rejection based on a combination of references.);
Ex parte Meyer, 6 USPQ2d 1966 (BPAI 1988) (length of time between the
issuance of prior art patents relied upon (1920 and 1976) was not persuasi ve
of unobviousness).
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Application 12/761,296
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Rebuttal evidence may include
evidence of “secondary considerations,” such as “commercial success, long
felt but unsolved needs, [and] failure of others.” Graham v. John Deere Co.,
383 U.S. 1 (1966).
In the instant case, Appellant refers to the Declaration by Jay Ferro
(inventor of the present application) opining that there has been a long felt,
unsolved need for the present invention. Appeal Br. 11—13. Appellant
reproduces excerpts from the Declaration of the inventor (Jay Ferro) in an
effort to show that the expandable salad bowl is the solution that was not
found in the prior art. Id. at 11—12. Mr. Ferro states that the disadvantages
of previous salad containers are resolved by the present application that
allows a provider to efficiently prepare, package, and distribute salads in a
container while permitting customers to receive the item and evenly toss the
salad and salad dressing in the same container. Declaration | 5.
The long felt need according to Appellant’s Specification is disclosed
in paragraphs 8 and 9. Therein, four problems are identified in the prior art.
Those are: (1) it is difficult and time consuming to achieve a uniform
dispersion of salad dressing on the entire salad within the same container,
when a customer pours on the salad dressing, they have no choice but to put
it on only the top of the salad, thereby getting too much on some parts
and not enough on others; (2) often times customers use more salad dressing
than they need because of this problem; (3) when the customer does attempt
to toss the salad, they must either empty the contents into a larger bowl and
use utensils to toss, or attempt tossing it in the existing container, thereby
losing product and creating a mess; (4) when the salad is not tossed,
customers often time eat the salad toppings because that is what is most
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accessible and leave the lettuce at the bottom of the bowl. These same
problems are also identified in paragraphs 3 and 4 of the Jay Ferro
Declaration.
The relevance of long-felt need and the failure of others to the issue of
obviousness depends on several factors. First, the need must have been a
persistent one that was recognized by those of ordinary skill in the art.2
Second, the long-felt need must not have been satisfied by another before the
invention by applicant.3 Third, the invention must in fact satisfy the long-
felt need.4
In the instant case, the Examiner makes an important point that
Tomlinson already teaches preparing and distributing salads in a container,
while permitting customers to receive the container, add dressing, and
evenly toss the salad and salad dressing in the same container. Ans. 11—12.
This fact is important as it addresses the aforementioned factor that the long-
2 In re Gershon, 372 F,2d 535, 539 (('CPA 1967) (“Since the alleged
problem in this case was first recognized by appellants, and others
apparently have not yet become aware of its existence, it goes without
saying that there could not possibly be any evidence of either a long felt
need in the . . . art for a solution to a problem of dubious existence or failure
of others skilled in the art who unsuccessfully attempted to solve a problem
of which they were not aware.”); Orthopedic Equipment Go., Inc. v. All
Orthopedic Appliances, Inc., 707 F,2d 1376 (Fed. Cir. 1983) (Although the
claimed invention achieved the desirable result of reducing inventories, there
was no evidence of any prior unsuccessful attempts to do so.).
3 Newell Companies v. Kenney MJg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988)
(Although at one time there was a long-felt need for a “do-it-yourself”
window shade material which was adjustable without the use of tools, a prior
art product fulfilled the need by using a scored plastic material which could
be tom. “[0]nce another supplied the key element, there was no long-felt
need or, indeed, a problem to be solved”.)
4 In re Cavanagh, 436 F,2d 491 (CCPA 1971).
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felt need must not have been satisfied by another before the invention by
applicant. Because Tomlinson satisfies the need of providing a container
that has added space for facilitating mixing salad components with dressing
in the same container, we agree with the Examiner that the long felt need
criteria has not been adequately met by Appellant. Id. We thus are
unpersuaded by Appellant’s rebuttal evidence.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
TIME PERIOD
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).
ORDER
AFFIRMED
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