Ex Parte Tranfaglia et al

Patent Trial and Appeal Board

Dec 4, 2013

10411633 (P.T.A.B. Dec. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte CHRISTINA M. TRANFAGLIA,
JEFFREY L. ROBERTS, MITCHELL A. LOPATA,
DAVID E. BARNARD, RICHARD A. NELIPOVICH,
CORY R. BOUDREAU, and AMI M. VERHALEN
____________________

Appeal 2011-013678
Application 10/411,633
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 21, 24, 36-40, and 43-58. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

The Invention
Appellants’ claimed invention “relates to eating utensils and more
particularly relates to the arrangement and manufacture of eating utensils
having themes.” Spec. 2:4-5. Claims 36, 43, and 44 are the independent
claims on appeal. Claim 36, reproduced below, is illustrative of the claimed
subject matter:
36. A dining utensil incorporating depictions of animal features
in an animal theme, said utensil comprising:
a first utensil element shaped to define a first feature of
an animal corresponding to said animal theme, said first utensil
element being a handle portion;
a second utensil element contoured to define a second
feature of said animal corresponding to said animal theme, said
second utensil element being a contoured grip; and
a third utensil element formed to define a third feature of
said animal corresponding to said animal theme, said third
utensil element having a food contacting surface,
wherein the first utensil element, the second utensil
element and the third utensil element define a unitary, non-
articulating body generally depicting said animal in its entirety
and the food contacting surface is shaped to define at least a
portion of said third feature of said animal.

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The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 21, 24, 36, 37, 40, 43-47, 50-53, 56, and 57 under 35 U.S.C.
§ 103(a) as unpatentable over Harrison and Crane.1
II. Claims 38, 39, 48, 49, 54, and 55 under 35 U.S.C. § 103(a) as
unpatentable over Harrison and Crane.
III. Claim 58 under 35 U.S.C. § 103(a) as unpatentable over Harrison,
Crane, and Bardeen.2

OPINION
Before addressing the rejections, we address a matter of claim
construction applicable to each of the rejections before us on appeal.
Independent claim 36 is directed to a dining utensil that includes a
first, second, and third utensil element defining a unitary, non-articulating
body. App. Br. 23-24, Claims App’x.
The Examiner determined that “unit” is commonly understood to
mean a group that is a constituent of a whole. Ans. 5 (citing Merriam-
Webster’s Dictionary). Appellants contend that the independent claims
recite “unitary,” which is commonly understood to mean “having the
character of a unit: not divided or discontinuous.” Reply Br. 6 (citing
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY: UNABRIDGED).
Appellants urge that in light of their proffered definition and the figures of
the Specification, “unitary” should be interpreted as “single-piece.” Id.; see
also App. Br. 16-17.

1 Harrison (US 6,363,568 B1; iss. Apr. 2, 2002); Crane (US 6,105,254; iss.
Aug. 22, 2000).
2 Bardeen (US 5,092,050; iss. Mar. 3, 1992).
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We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Claim 36 does not recite that the utensil body is “single-piece.”
Rather claim 36 calls for the utensil body to be unitary and non-articulating.
Appellants’ Specification does not provide a lexicographical definition of
“unitary.” Nor does Appellants’ proffered definition explicitly state that
“unitary” means “single-piece.” If Appellants sought to claim a dining
utensil having a body defined by a single-piece, Appellants could have done
so. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (it is Appellants’
burden to define the invention precisely).
Appellants’ proffered definition of “unitary” relates to the Examiner’s
definition of “unit.” Further, “discontinuous,” as used in Appellants’
proffered definition of “unitary,” means “not connected.”3 In light of this,
“unitary,” means having the character of a unit, that is, a group that is
connected and constituted of a whole.
We discern nothing in Appellants’ disclosure that is inconsistent with
this interpretation.4 Although we recognize that each of Appellants’ figures

3 WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed.
1983) (“discontinuous:” “not continuous,” a.; “continuous:” “connected,” a.,
def. 1).
4 Specifically, Appellants point to the Specification at page 6, lines 3-12 and
Figures 2a-2b as providing support for the unitary aspect of the utensil body.
See App. Br. 7. However, nothing in these disclosures is inconsistent with
our interpretation of “unitary” as claimed.
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depict a utensil that appears to be defined by a single-piece in that no
division lines are visible in the utensil body, we decline to import this
example as a limitation of the more broadly worded claims. See Superguide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”)
Consequently, independent claim 36 calls for a dining utensil
comprising a first, second, and third utensil element that defines a body that
is unitary in that it is a group that is connected and constituted of a whole.
See Ans. 5 (similarly construing claim 36).

I. Claims 21, 24, 36, 37, 40, 43-47, 50-53, 56, and 57 over Harrison and
Crane5
Appellants present three arguments against the rejection of claim 36.
Rationale
Appellants argue that the Examiner has not given a cogent reason for
the proposed combination. App. Br. 14-15. Specifically, Appellants

5 Appellants present a single argument for the claims subject to this ground
of rejection, and we select independent claim 36 as representative. App. Br.
11-19; Reply Br. 5-8; 37 C.F.R. § 41.37(c)(1)(vii)(2011). In particular, we
note that with regard to the dependent claims, Appellants merely recite the
claim elements and make a naked assertion the corresponding element is not
found in the prior art. See App. Br. 18-19. Such contentions do not rise to
the level of separate argument. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011).
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contend that the conventional working element6 of each of Harrison’s
embodiments is not configured to depict or correspond to a portion of an
animal as claimed, and contend that Crane’s spoon is formed from at least
four separate pieces and articulates. App. Br. 14. Therefore, according to
Appellants, neither reference discloses or suggests a utensil having three
elements that form a single-piece or unitary non-articulating body depicting
an animal in its entirety as claimed. Id. Appellants elaborate that Crane
merely discloses an articulating cover 45 to disguise a conventional spoon,
and there is no disclosure, suggestion, or reason provided by Crane to
modify Harrison to reach the claimed subject matter. App. Br. 15.
Appellants’ argument is unconvincing for two primary reasons. First,
Appellants mischaracterize the rejection. The Examiner did not find that
Harrison discloses a third utensil element as claimed. To the contrary, the
Examiner found that Harrison does not disclose a third utensil element as
claimed. Ans. 3. Regarding Crane, the Examiner relied upon Crane’s
disclosure of depicting an animal in its entirety to modify Harrison’s third
utensil element (conventional working element) to define a third feature of
an animal so that the body of the utensil depicts an animal in its entirety as
claimed. Ans. 3-4. As the Examiner emphasizes, Crane’s articulating
feature was not incorporated into the proposed combination. Ans. 5.
Second, Appellants’ contention that there is no disclosure or
suggestion in Crane is incorrect. The Examiner found that Crane discloses
that depicting an animal in its entirety provides a more pleasurable eating
experience to the user. Ans. 3-4. Indeed, Crane discloses an eating utensil

6 The conventional working element may be, for example, a knife 78, and
corresponds to the third utensil element as claimed. Ans. 3; see also
Harrison, col. 5, l. 53; fig. 7.
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(a spoon) that includes an ornamental design or figure as part of that utensil
that: encourages eating certain foods, provides a more pleasurable eating
experience, and amuses children. Crane, col. 1, ll. 6-11.
Similarly, Appellants argue that there is no suggestion or motivation
to make the proposed combination because Crane does not disclose a utensil
having a bowl of a spoon configured to depict a portion of an animal; rather,
Crane’s spoon does not contain a depiction of an animal and is covered by
forward portion 45 that depicts a portion of an animal. Reply Br. 6-8.
The Examiner identifies bowl 36 of Crane as depicting an animal;
however, Crane’s pusher head 44 is configured in the shape of an animal
head, not bowl 36. See Ans. 5-6; Crane, col. 3, ll. 48-52; 4, ll. 11-12; figs. 1-
6. While Crane’s bowl 36 does not depict a portion of an animal, Crane’s
utensil depicts an animal in its entirety. See Crane, figs. 1-6. Therefore,
despite the misstatement regarding Crane’s bowl 36, the Examiner’s reliance
upon Crane as depicting an animal in its entirety is supported by the
reference. See Ans. 3-4. Consequently, the Examiner’s erroneous finding
regarding the bowl 36 does not undermine the finding that Crane discloses
an animal in its entirety.
Reasonable Expectation of Success
Appellants argue that there is no reasonable expectation of success in
the proposed combination. App Br. 15-16. Specifically, Appellants argue
that “there is no disclosure or suggestion that the articulating spoon of Crane
could be modified to be any other type of utensil except a spoon,” and absent
such a suggestion, “there could be no expectation of success.” Id. at 16.
The Examiner does not propose to modify the articulating spoon of
Crane. Rather, as noted earlier, the Examiner proposed to modify Harrison’s
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utensil to depict an entire animal as disclosed by Crane. Ans. 3-4.
Consequently, Appellants’ argument does not address the rejection as
articulated by the Examiner.
Similarly, Appellants contend that there can be no reasonable
expectation of success where the modification would render the prior art
unsatisfactory for its intended purpose. App. Br. 15. Appellants do not go
on to tie this legal principle to the facts of the case at hand. In other words,
Appellants do not identify the intended purpose in the prior art that is
allegedly rendered unsatisfactory. See App. Br. 15-16. As such, this line of
argument is unpersuasive.
All Claimed Features
Appellants argue that the Examiner has not provided a teaching or
suggestion of all the claimed features. App. Br. 16-18. Specifically,
Appellants contend that Harrison’s utensil is formed of two pieces, and
Crane’s utensil is formed of four pieces and articulates. App. Br. 16; see
also Reply Br. 5-6 (construing claim 36). As explained in the claim
construction above, claim 36 does not call for the utensil to be formed of a
single-piece body, and therefore this argument is unpersuasive because it is
not commensurate in scope with claim 36.
Further, according to Appellants, neither reference discloses a utensil
having a food contacting surface shaped to define a feature of an animal.
App. Br. 17. The Examiner did not find that either reference makes such
disclosure. Rather, the Examiner concludes it would have been obvious to
modify Harrison to include such feature in view of Crane. Therefore,
Appellants’ argument is again inapposite.
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Appellants fail to apprise us of error in the rejection of claim 36.
Consequently, we sustain the rejection of claims 21, 24, 36, 37, 40, 43-47,
50-53, 56, and 57.

II. Claims 38, 39, 48, 49, 54, and 55 over Harrison and Crane
Appellants repeat the arguments made against the rejection of
independent claim 36. App Br. 19. These arguments are unpersuasive for
the reasons detailed in the analysis of Rejection I above.
Appellants argue that claims 38, 39, 48, 49, 54, and 55 recite specific
dimensions of the oblong end portion of the handle of the dining utensil,
while in contrast, Harrison and Crane do not disclose an oblong end having
the recited dimensions. App. Br. 19-20.
The Examiner found that Harrison discloses a handle having an
oblong end portion but does not disclose the claimed dimensions, and the
Examiner concluded that modification to the claimed dimensions would
have been obvious. Ans. 4, 6. Therefore, Appellants’ argument that neither
reference discloses the claimed dimensions is unconvincing because it fails
to address the rejection as articulated by the Examiner.
As such, we sustain the rejection of claims 38, 39, 48, 49, 54, and 55.

III. Claim 58 over Harrison, Crane, and Bardeen
Claim 58 depends from claim 44 and recites, “wherein said utensil is a
spreader and said third utensil element comprises the spatula of said
spatula.” App. Br. 25-26, Claims App’x.
Appellants argue that, as discussed above, Harrison and Crane do not
disclose or suggest a utensil having first, second, and third elements that
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define a unitary, non-articulating body as claimed, and “Bardeen likewise
does not disclose a unitary, non-articulating body generally depicting said
animal in its entirety, let alone a spatula having such a configuration as
claimed.” App. Br. 20-21.
To the extent that Appellants’ argument can be seen as a contention
that Bardeen does not cure the deficiencies of Harrison and Crane that were
previously argued, our analysis of these arguments in the analysis of
Rejection I revealed there were no deficiencies to cure.
To the extent that Appellants’ argument can be seen as a contention
that Bardeen does not disclose a spatula, Bardeen discloses a scraping device
adapted to cut and remove soft materials. Bardeen, col. 1, ll. 6-8.
Appellants’ conclusory assertion does not cogently explain why the interior
scoop surface 34 of Bardeen’s scraper device 10 is not a spatula as claimed.
See Ans. 4-5; Spec. 9:23-25 (equating a spatula to a spreader, a device used
to spread ingredients such as butter); Bardeen col. 3, ll. 23, 37-41; fig. 2.
Accordingly, we sustain the rejection of claim 58.
DECISION
We affirm the Examiner’s decision to reject claims 21, 24, 36-40, and
43-58.
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

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