14154444 - (D) (P.T.A.B. Aug. 8, 2019)

Loren Veltrop et al.

Patent Trials and Appeals BoardAug 8, 2019

14154444 - (D) (P.T.A.B. Aug. 8, 2019)

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. 14/154,444 01/14/2014 Loren Veltrop 29178/40066 4083 4743 7590 08/08/2019 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER COLLINS, RAVEN ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 08/08/2019 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LOREN VELTROP and MARY MORGAN1 ____________________ Appeal 2019-000581 Application 14/154,444 Technology Center 3700 ____________________ Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. Opinion for the Board filed by HILL, Administrative Patent Judge. Opinion dissenting filed by STEPINA, Administrative Patent Judge. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Loren Veltrop and Mary Morgan (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 7 and 10– 12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as PRINCE CASTLE, LLC. Appeal Br. 2. Appeal 2019-000581 Application 14/154,444 2 BACKGROUND Appellants’ invention relates to a food holding tray provided with a fitted, removable insert. Sole independent claim 7, reproduced below, represents the claimed invention, with a key limitation italicized: 7. A food holding system comprising: a food holding tray having an open top, an inside width between two opposing sides, an inside length between two opposing ends, and an inside depth between the open top and a bottom, the food holding tray being sized, shaped and arranged to hold a number of pre-cooked food items; a heated food holding cabinet; and an insert comprising: first and second opposing sides; first and second opposing ends configured to hold the opposing sides in a first fixed, spaced-apart relationship to each other; a surface extending between the first and second opposing sides; and a plurality of food product holding compartments formed into the surface, between the opposing sides and between the opposing ends, at least one holding compartment comprising a cylindrical depression with a substantially planar and solid bottom surface formed into the surface of the insert, the depression having a predetermined depth and shape, the predetermined depth corresponding a thickness of a food item to be held in the holding compartment, the predetermined shape corresponding to a shape of the food item to be held in the holding compartment, and the depression having an open top at or below the level of the top of the tray, wherein the insert is configured to fit within an opening in the food holding tray, and the food holding tray and the insert disposed in the opening of the food holding tray are disposed in the heated food holding cabinet, a shelf of the heated food holding cabinet forming a covering plane that is spaced above the depression and adapted to vent compositions released from the food product into the atmosphere. Appeal 2019-000581 Application 14/154,444 3 REJECTION Claims 7 and 10–12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Esparza (US 2014/0076177 A1, pub. Mar. 20, 2014), Castellani (US 6,431,059 B1, iss. Aug. 13, 2002), and Gattineri (US 2014/0017371 A1, pub. Jan. 16, 2014). ANALYSIS Sole independent claim 7 recites, inter alia, an insert having a surface and “a plurality of food product holding compartments formed into the surface, . . . at least one holding compartment comprising a cylindrical depression with a substantially planar and solid bottom surface formed into the surface of the insert.” Appeal Br. 8 (Claims App’x (emphasis added)). The Examiner finds that Esparza discloses many of the limitations of claim 7, including an insert having food product holding compartments formed into a surface, but relies on Castellani to teach a depression in the insert, and relies on Gattineri to teach a cylindrically-shaped cavity in an insert. Final Act. 3–4. The Examiner concludes that “it would have been an obvious matter of design choice to change the rounded shaped and flat bottom of Esparza and Castellani into a cylindrical shape, since such a modification would have involved a mere change in the shape of a component.” Id. (citing In re Dailey 357 F.2d 669 (CCPA 1966); MPEP 2144.04 IV. B.). Our review of the Examiner’s rejection of claim 1 indicates that the planar, solid bottom is found to be disclosed by Esparza. Appellants argue that the rejection is improper, because Castellani discloses spherical recesses with drain holes and Gattineri only discloses cylindrical walls, and “one having ordinary skill in the art would not be Appeal 2019-000581 Application 14/154,444 4 motivated to modify the recesses of Castellani to include the planar and solid bottom surface claimed.” Appeal Br. 6. The Examiner responds that, although the insert 30 of Esparza’s Figure 4 fails to include a depression, Castellani is relied on to disclose a depression that takes on the shape of an inserted food item. Ans. 4. According to the Examiner, modifying Esparza with the depression(s) of Castellani “would produce an insert having a solid and planar bottom surface as well as sidewalls for differentiating the food products and depressions for containing the product.” Id. According to the Examiner, combining the planar and solid bottom surface of Esparza with Castellani’s depression “is sufficient to maintain the position of the product being placed into the insert.” Id. The Examiner further argues that “Gattineri gives specific form to the cavities of the aforementioned combination,” and “[b]ecause Espar[]za fails to teach a cavity and Castellani teaches a spherical cavity, modifying Espar[]za with the cylindrical cavity and substantially planar bottom of Gattineri would have been obvious to one having ordinary skill in the art. Id. Appellants reply that the rejection is improper, and argue that none of the references disclose or suggest an insert with a substantially planar and solid bottom surface. Reply Br. 2. Appellants assert that the Examiner identifies this feature as being absent in Esparza; that Castellani’s “recesses have a partial sphere bottom surface that includes a plurality of drainage orifices;” and that the cylindrical pockets of Gattineri “are through-holes . . . there is no bottom surface.” Id. at 2–3. Indeed, Gattineri discloses an insert having a plurality of pockets 16a “defined by substantially cylindrical walls having top and bottom openings.” Gattineri ¶ 27, Fig. 2. Appellants Appeal 2019-000581 Application 14/154,444 5 contend that modifying the shape of the bottom surface is not an obvious matter of design choice because “the recesses of Castellani are spherically shaped with orifices in the bottom to solve a particular problem.” Id. at 4. We are not persuaded that the Examiner’s findings and conclusions contain error requiring reversal of the pending rejection. While the embodiment of Espaza’s Figure 4 includes an insert 30 with a planar and solid bottom on which hamburgers H2 are supported, the planar and solid surface is not at the bottom of a depression in which the illustrated hamburgers H2 can be held. See Esparza, Fig. 4. Castellani, however, discloses supporting a food item in a depression (see Castellani Fig. 3), but a bottom of Castellani’s depression is neither substantially planar nor solid. We note, however, that the Examiner only relies on Castellani for disclosing a depression that takes on the shape of an inserted food item. Ans. 4. The Examiner reasons that modifying Esparza to include Castellani’s depression(s) taking the shape of a food item to be stored “would produce an insert having a solid and planar bottom surface as well as sidewalls for differentiating the food products and depressions for containing the product.” Id. The Examiner’s proposed combination does not suggest utilizing the curving bottom surface of Castellani, which is shaped to support meatballs, and orifices to allow grease to drain. Rather, it is Castellani’s idea of a food-shaped cavity that the Examiner imports to the teachings of Esparza. Id. Esparza teaches a food holding system for storing food products “such as, for example, hamburger patties, fish fillets, Canadian bacon, pork sausage, eggs, and chicken patties, chicken fillets as well as other types of food, including chicken nuggets, biscuits, muffins, and hotcakes.” Esparza Appeal 2019-000581 Application 14/154,444 6 ¶ 7. Esparza’s system comprises an insert 30, and the illustrated food product is a hamburger patty H2 that sits on top of supporting surface 34 of insert 30. Id. at ¶ 46, Figs. 4 and 10. As noted by the Examiner, Esparza’s insert does not include a food product holding compartment formed as a cylindrical depression. See Final Act. 4. Castellani, however, teaches a similar system having an insert that includes a food product holding compartment formed as a depression. Castellani, Fig. 3. Although we appreciate Appellants’ position that the depression of Castellani is spherical and includes drainage holes, Castellani’s depressions are for cooking meatballs, and are “structured to hold spherical food products, semi-spherical food products and similarly shaped food items.” Castellani, 1:12–14. That is, the shape of Castellani’s depression matches the food that is intended to be cooked therein. Castellani teaches that it is known that cookware comes in various shapes for “pies, cupcakes, ring cakes, etc.,” but Castellani’s disclosed embodiment is specifically for cooking spherical food products that benefit from grease drainage orifices. Castellani, 1:29–31. Given that Castellani recognizes that the shape of cookware is known to match the food product it supports, it would have been obvious to use a cylindrical depression with a planar bottom surface to support a hamburger patty, and involves no more that applying a known technique (Castellani’s depression shaped to match a food product) to a known device (Esparza’s insert) to yield predictable results “to store individual portions of food [hamburger patty] over extended storage periods” (Esparza ¶ 8). As to whether any modification of Esparza based on Castellani requires that drainage orifices be included, the modification of Esparza does Appeal 2019-000581 Application 14/154,444 7 not entail a bodily incorporation of the features of Castellani into Esparza. Moreover, as Appellants note, Castellani’s reason for having “drainage orifices 17, 19, 21, 23, and [] the central orifice 15, is to provide grease drainage during cooking.” Appeal Br. 5 (citing Castellani, 1:14–15). Because the purpose of Esparza is to keep cooked food warm (see Esparza ¶ 2), one of ordinary skill in the art would understand that Castellani’s drainage orifices, which provide grease drainage during cooking, would not be needed in the cooked-food storage system of Esparza. Because Esparza is not cooking its hamburger H2, one skilled in the art would also understand that Esparza’s solid bottom would be employed to support the hamburger H2, rather than Castellani’s bottom surface having orifices. The Examiner relies on Gattineri to disclose a cylindrical-shaped cavity, which is not explicitly shown or called out in Esparza or Castellani. Final Act. 4. Because Castellani recognizes that the shape of its cookware is known to match the food product it supports, and Esparza discloses supporting a hamburger, the combination of Esparza and Castellani itself suggests using a cylindrically-shaped depression to hold Esparza’s hamburger H2 in its insert 30. Gattineri is, thus, not needed to disclose the cylindrical shape. This superfluous disclosure of Gattineri’s cylindrical pockets 16a does not evidence error in the Examiner’s rejection. Regarding claim 10, Esparza discloses a height of the insert is less than the inside depth of the food holding tray. See Esparza ¶ 48, Fig. 11; see also Castellani, Fig. 3. Regarding claim 11, Esparza discloses that a bottom of the insert is spaced apart from the bottom of the food holding tray when the insert is Appeal 2019-000581 Application 14/154,444 8 disposed in the food holding tray. See Esparza ¶ 48, Fig. 11; see also Castellani, Fig. 3. Regarding claim 12, Esparza discloses that the covering plane is spaced above the open top of the depression by less than one-quarter of an inch. See Esparza ¶ 19, Fig. 11. For the reasons set forth above, we sustain the pending obviousness rejection. DECISION We AFFIRM the Examiner’s decision rejecting claims 7 and 10–12 under 35 U.S.C. § 103 as unpatentable over Esparza, Castellani, and Gattineri. 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 Appeal 2019-000581 Application 14/154,444 9 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LOREN VELTROP and MARY MORGAN ____________________ Appeal 2019-000581 Application 14/154,444 Technology Center 3700 ____________________ OPINION DISSENTING STEPINA, Administrative Patent Judge. I write separately because it is my view that independent claim 7 and the claims depending therefrom are indefinite. Because claims 7 and 10–12 are indefinite, I would reverse, pro forma, the rejection based on prior art. Claim 7 recites, in part, a plurality of food product holding compartments formed into the surface, between the opposing sides and between the opposing ends, at least one holding compartment comprising a cylindrical depression with a substantially planar and solid bottom surface formed into the surface of the insert, the depression having a predetermined depth and shape, the predetermined depth corresponding [to] a thickness of a food item to be held in the holding compartment, the predetermined shape corresponding to a shape of the food item to be held in the holding compartment, and the depression having an open top at or below the level of the top of the tray. Appeal 2019-000581 Application 14/154,444 10 Appeal Br. 8 (Claims App.) (emphasis added). Thus, claim 7 defines the recited predetermined depth in terms of the thickness an unclaimed, undefined, and undetermined food item. In other words, claim 7 recites that X = Y, but nothing in the claim, Specification, or the remainder of the record would inform a person of ordinary skill in the art as to what Y is. Therefore, it is also unclear what X is.2 Claim 7 repeats this error by defining the recited predetermined shape in terms of the food item. Claim 7 also recites that the predetermined shape is “cylindrical.” It is unclear, what, if anything, is added by the further recitation that the predetermined shape corresponds to a shape of the food item to be held in the holding compartment. Thus, claim 7 and the claims depending therefrom are indefinite. As these claims are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. §103 because to do so would require speculation as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862- 63 (CCPA 1962) (holding that the Board erred in affirming a rejection of 2 The Specification discusses the handling of hamburgers. Spec. ¶¶ 3, 4, 8, 11. Even within this tiny subset of “food items,” the thickness and shape of hamburgers presumably varies from restaurant to restaurant (assuming the food item is a commercial food item and not a randomly sized homemade hamburger), and, possibly, from menu item to menu item within a restaurant. Thus, even under the most forgiving reading of claim 7, a person of ordinary skill in the art would not be given notice of how to avoid infringement when designing a food holding system inasmuch as designing the system so as to avoid infringement when used with hamburgers of a certain size would not provide any indication of whether the device avoided infringement when used with other hamburgers. Appeal 2019-000581 Application 14/154,444 11 indefinite claims under 35 U.S.C. § 103(a) because the rejection was based on speculative assumptions as to the meaning of the claims). Because the claims are indefinite, I respectfully dissent.