Ex Parte Smith et al

Patent Trial and Appeal Board

Aug 31, 2017

14108937 (P.T.A.B. Aug. 31, 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.
14/108,937 12/17/2013 David Smith 72125-0095 1700
20915 7590 09/05/2017
MfTCARRY RATR PC
EXAMINER
45 Ottawa Ave. SW SMITH, PRESTON
Suite 700
GRAND RAPIDS, MI 49503 ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
patents @ mcgarrybair. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SMITH, DAVID RIEMERSMA, MARK PETERS, and
KEVIN KEOUGH
Appeal 2016-004939
Application 14/108,937
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of a decision
of the Primary Examiner to reject claims 1—18 under 35 U.S.C. § 103(a)
based on Lion2 and Sollich3. The Examiner also rejected claims 1 and 14 on
the ground of nonstatutory double patenting (Office Action 5,6; Ans. 5,6).
We have jurisdiction under 35 U.S.C. § 6. We affirm.
1 Appellant is the Applicant, Lion Rock Licensing Corp., which
according to the Brief, is the real party in interest. Br. 2.
2 US 2005/0151049 Al; Jul. 14, 2005.
3 Sollich US 2003/0075830 Al; Apr. 24, 2003.
Appeal 2016-004939
Application 14/108,937
Claim 1 is representative of the subject matter on appeal (emphasis
added to highlight key contested limitation):
1. A method of in-molding a food item in a package defining
at least one cavity for holding the food item and having an opening for
accessing the food item, the method comprising:
introducing a liquid food product into a mold provided in the at least
one cavity;
applying a closure element to the package to close the opening;
allowing the liquid food product to solidity to form a solid food
product within the mold; and
unseating the solid food product from the mold by automatically
pressing a punch fixture against the mold while the closure element closes
the opening.
Independent claim 14 is similar to claim 1, and recites “deflecting a
portion of the package forming the cavity into an over-center position
relative to the mold to unseat the solid food product from the mold by
automatically pressing a punch fixture against the package” (Claims
Appendix, Br. 26; emphasis added).
As an initial matter, we note Appellant has not addressed or responded
to the Examiner’s nonstatutory obviousness-type double patenting rejection
(Br. generally, e.g., Ans. 5,6). Accordingly, we summarily affirm this
rejection.
ANALYSIS
Upon consideration of the appeal record, including the Appellant’s
position in this appeal as set forth on pages 11—23 of the Appeal Brief, we
affirm the Examiner’s rejection for essentially the reasons stated by the
Examiner (Non-Final Act. 2-4; Ans. 2—8).
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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Appeal 2016-004939
Application 14/108,937
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is well settled that a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in this art would have reasonably been expected to draw
therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed. Cir. 1992).
Appellant’s main argument in the appeal brief for each independent
claim 1 and 14 is that there is no reason absent impermissible hindsight to
modify the manual unseating of the food product in Lion to use an automatic
press punch as exemplified in Sollich as the Examiner has suggested because
it changes the principle of operation of Lion (Br. 13—16). This argument is
not convincing of error in the Examiner’s rejection. Notably, Appellant does
not specifically dispute the Examiner’s determination that it is prima facie
obvious to automate a previously known manual activity (e.g., Ans. 6; Br.
generally). We agree with the Examiner and find it is well settled that it is
within the ordinary skill to broadly provide a mechanical or automatic means
to replace manual activity which has accomplished the same result. In re
Venner, 262 F.2d 91, 95 (CCPA 1958) (citing In re Rundell, 48 F.2d 958,
959 (CCPA 1931)). Indeed, Sollich exemplifies automatic unseating or
unmolding of a food product (e.g., Sollich | 56).
Appellant has thus not shown error in the Examiner’s determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have predictably automated the release step of Lion using a press
punch as exemplified in Sollich’s use of an ejector element/punch fixture 22
(generally, Ans.; Br.). As the Supreme Court has noted, “[t]he combination
of familiar elements [or steps] according to known methods is likely to be
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Appeal 2016-004939
Application 14/108,937
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. Appellant has not come forward with any credible evidence that the
Examiner erred in characterizing the references or in concluding that the
claimed combination of familiar elements/steps for known purposes would
have been obvious.
Appellant’s arguments regarding features of Sollich that may be
incompatible with that of Lion are not persuasive for reasons set out by the
Examiner (e.g., Br. 15; Ans. 6). The rejection is not based upon a bodily
incorporation of Sollich’s conveyor belt apparatus into the Greer filter
device. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
To the extent Appellant separately addresses the “over-centering”
limitation of claims 11, 13, and 14 (e.g., Br. 20, 21), a preponderance of the
evidence supports the Examiner’s position that the claim language
encompasses the over-centering depicted in Lion’s Fig. 5 (Ans. 7).
Accordingly, we affirm the Examiner’s § 103 rejections on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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