Daley, Ralph

Patent Trials and Appeals Board

Sep 25, 2019

15019105 - (D) (P.T.A.B. Sep. 25, 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.
15/019,105 02/09/2016 Ralph Daley Daley 3928
142578 7590 09/25/2019
Shari Millar
6174 Agee St. #81
San Diego, CA 92122
EXAMINER
IMPINK, MOLLIE LLEWELLYN
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
09/25/2019 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 RALPH DALEY
____________

Appeal 2019-005330
Application 15/019,1051
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 1–3 and 5–11. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 The real part in interest is the inventor, Ralph Daley. Appeal Br. 2.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and reproduced below with some paragraphing added.
1. A serving tray comprising:
a planar member having a perimeter and for bearing
products:
a wall extending substantially upwards from the perimeter
of the planar member;
a handle extending outwards from a bottom surface of the
planar member; and
a plurality of base support members positioned on the
bottom surface of the planar member;
wherein the plurality of base support members are
disposed precisely adjacent the perimeter of the planar member,
with no radial space between the perimeter of the planar member
and the plurality of base support members, and with the plurality
of base support members not extending past the perimeter of the
planar member;
wherein the bottom surface of the planar member has only
the handle and the plurality of base support members thereon and
no other structure; and
wherein the handle, the planar member, and the wall are
molded together as one-piece.

Rejections
I. Claims 1–3, 5, 7, 8, and 11 are rejected under 35 U.S.C. § 103
as being unpatentable over Heyn (US 2006/0032780 A1, pub. Feb. 16, 2006)
in view of Sussman (US 5,497,885, iss. Mar. 12, 1996).
II. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable
over Heyn, Sussman, and Burns (US 8,985,657 B1, iss. Mar. 24, 2015).
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III. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable
over Heyn, Sussman, and Grieve (US 10,113,691 B2, iss. Oct. 30, 2018).
IV. Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Heyn, Sussman, and Gassick (US 7,975,623 B1, iss.
July 12, 2011).

ANALYSIS
Rejection I
The Examiner finds Heyn’s serving tray 20’s planar member and
peripheral edge portion 44 correspond to the planar member and wall, as
required by independent claim 1. Final Act. 2. The Examiner finds that
Heyn’s serving tray 20 includes handle 22 and a plurality of base support
members (i.e., feet) 50, 60, 62, 64.2 Id. (citing Heyn, Figs. 1, 2, 5, 7).
The Examiner also finds Heyn’s serving tray 20 fails to teach,
“wherein the plurality of base support members are disposed precisely
adjacent the perimeter of the planar member, with no radial space between
the perimeter of the planar member and the plurality of base support
members, and with the plurality of base support members not extending past
the perimeter of the planar member,” as recited in claim 1. Id. at 2–3. To

2 The Examiner identifies Heyn’s element numbers 50, 60, 52, and 64 as a
plurality of base support members. Final Act. 2. Element number 52 refers
to a loop portion of handle 22 and element numbers 50, 60, 62, and 64 are
collectively described as a plurality of tubular cylindrical feet. See Heyn
¶¶ 26, 30–31. In light of foregoing, we understand the Examiner’s citation
to Heyn’s loop portion 52 as a base support member, instead of foot 62, as a
typographical error.
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remedy this deficiency, the Examiner turns to the teachings of Sussman. Id.
at 3 (citing Sussman, Figs. 2, 4 (legs 12)). The Examiner determines:
It would have been obvious to one of ordinary skill in the art
. . . to reposition the legs (base support members) of Heyn to
move them outwardly in order to improve stability such that
they are positioned adjacent the perimeter of the planar member
with no radial space between the perimeter of the planar
member and the legs since it is well known that locating legs
near the outer perimeter of an object increases stability.
Id.
The Appellant argues that the Examiner’s statement, “since it is well
known that locating legs near the outer perimeter of an object increases
stability” (id.), takes facts beyond the record. Appeal Br. 8. The
Appellant’s argument is not persuasive of Examiner error.
The Examiner responds to the Appellant’s argument by explaining
that:
Providing legs at the location of an outer perimeter of a serving
tray is known as evidenced by Sussman. In the rejection of
Heyn in view of Sussman, Examiner has taken into account the
factual inquiries set forth in Graham v. John Deere Co., 383
U.S. 1 . . . (1966), that are applied for establishing a
background for determining obviousness under 35 U.S.C. [§]
103. The factual inquiries include “Resolving the level of
ordinary skill in the pertinent art.” [Manual of Patent
Examining Procedure (MPEP) § 2141(II) (9th ed., rev. 8, Jan.
2018)).] Examiner relies on the well-known fact that a
supported platform (here a tray) is more stable when the
supports are at the perimeter edges of the platform.
Ans. 4. We agree with the Examiner’s response and adopt it as our own.
See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (a “person of
ordinary skill is also a person of ordinary creativity, not an automaton.”); In
re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (one of ordinary skill in the art
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is presumed to have skills apart from what the prior art references expressly
disclose). Moreover, an artisan must be presumed to know something about
the art apart from what the references disclose. See In re Jacoby, 309 F.2d
513, 516 (CCPA 1962). Further, we note that the Appellant does not argue
“that locating legs near the outer perimeter of an object increases stability” is
not well known.
Turning back to the Examiner’s rejection, and with regard to claim 1’s
recitation, “wherein the handle, the planar member, and the wall are molded
together as one-piece” (Appeal Br. 27 (Claims App’x)), the Examiner finds
that Heyn’s planar member and wall 44 are molded as one piece. See Final
Act. 3 (citing Heyn ¶¶ 26, 31, Fig. 5). The Examiner also finds that Heyn’s
handle is not molded together with the serving tray’s planar member and
wall. See id. The Examiner determines:
it would have been obvious to one of ordinary skill in the art
. . . to modify Heyn to also have an integrally molded handle
[A] in order to provide a tray with no assembly required and
[B] further since it has been held that forming in one piece an
article which has formerly been formed in two pieces and put
together involves only routine skill in the art. Howard v.
Detroit Stove Works, 150 U.S. 164 (1893).
Id. at 3–4. The foregoing determination includes a specific reason (i.e., “A”)
for modifying Heyn’s handle to be molded with the serving tray’s planar
member and wall 44 together as one-piece, namely, “in order to provide a
tray with no assembly required.” See Ans. 5. The Examiner includes further
supporting rationale (i.e., “B”) for reason “A” by citing to the holding in
Howard.
The Appellant argues that Heyn and Sussman, individually or in
combination, fail to “teach ‘the handle, the planar member, and the wall . . .
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molded together as one-piece’ . . . as required by . . . claim 1.”3 Appeal
Br. 11. The Appellant supports this argument ostensibly by citing to Heyn at
paragraphs 7, 28, and 30, which teach the Heyn’s handle may be a flexible
strap that is secured to the planar member’s lower surface by use of
mounting pedestals, screws, and the like. See id. at 11–12. The Appellant’s
argument is not persuasive of Examiner error.
At the outset, we note that the Examiner’s determination does not rely
on Sussman to teach the disputed feature of claim 1. Rather, as discussed
above, the Examiner’s reasoning is based on Heyn’s teaching of molding
components together as one-piece; specifically, serving tray’s body 70 and
wall 44, as well as feet 50, 60, 62, and 64. See Final Act. 3 (citing Heyn
¶¶ 26, 31, Fig. 5). Moreover, we do not need to look any further than reason
“A,” supra, as providing adequate reasoning with rational underpinning for
the Examiner’s rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds . . . [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (cited with approval in KSR, 550 U.S. at 418).
The Appellant argues that Heyn teaches away from the result of
claim 1, “which is to mold the serving tray one-piece so that there are no
screws, attaching fasteners, straps, bulky handles to provide the result of
having no place for food to get stuck/trapped for sanitation purposes,”
because the parts of Heyn are separate and distinct from each other and

3 The Appellant also addresses Burns as failing to teach a handle, planar
member, and wall as being molded together as one-piece. See Appeal
Br. 11, 13. However, the Examiner does not rely on Burns’ teachings to
reject the subject matter of claim 1, so the Appellant’s discussion of Burns is
not persuasive of Examiner error.
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fastened together. Appeal Br. 14; see id. at 10, 13–15. For similar reasons,
the Appellant argues that the proposed modification would result in Heyn
being modified unsatisfactorily for its intended purpose and would change
Heyn’s principle of operation. Id. at 15–17 (citing Heyn ¶¶ 7, 16, 21, 28,
30); see also id. at 9–10. The Appellant’s arguments are not persuasive of
Examiner error.
At the outset, we note that the subject matter of claim 1 does not
require molding the serving tray as one-piece; rather, claim 1 requires
specific pieces of the serving tray as one piece. See Appeal Br. 27 (Claims
App’x). Specifically, claim 1 recites “wherein the handle, the planar
member, and the wall are molded together as one-piece,” which does not
include the “plurality of base support members positioned on the bottom
surface of the planar member” to be molded as one-piece with the handle,
the planar member, and the wall. See id.
Although Heyn’s teachings include embodiments where the handle is
secured to the planar member’s lower surface by use of mounting pedestals,
screws, and the like, Heyn does not criticize, discredit, or otherwise
discourage investigation into the use of the claimed invention. See 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)); see
also Ans. 5–6. Stated otherwise, Heyn discloses various configurations of
the handle and the planar member’s lower surface, but does not exclude any
particular configuration. See Heyn ¶ 21.
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Moreover, Heyn discloses that a skilled artisan would understand the
various design considerations particular to serving trays. Heyn describes
“[i]n serving tray designs, the use of various concepts have been adapted to
assure that serving trays are nestable and stackable, and that they are easily
cleaned and disinfected.” Id. ¶ 3 (emphasis added). So, even if modifying
the configuration of Heyn’s handle and planar member’s lower surface in the
manner proposed by the Examiner runs counter to some design aspects of an
embodiment of Heyn’s serving tray, the change in design would constitute a
typical tradeoff that would not have dissuaded one of ordinary skill in the art
from exploring the benefits of modifying Heyn’s handle, planar member,
and wall to be molded together as one-piece. Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citing Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)) (“[O]bviousness
must be determined in light of all the facts, and there is no rule that a single
reference that teaches away will mandate a finding of nonobviousness.
Likewise, a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine.”).
Further, the Appellant’s arguments that the proposed modification
would result in Heyn being modified such that it is unsatisfactory for its
intended purpose and would change Heyn’s principle of operation are not
persuasive. After the proposed modification, the intended purpose and
principle of operation of Heyn’s device are maintained because the device
retains its functionality as a serving tray.
We have considered the remaining arguments advanced by the
Appellant in the Appeal Brief at pages 9–11, 15–17, and 26, and the Reply
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Brief at pages 1–3, and have determined that they are not persuasive of
Examiner error.
Thus, we sustain the Examiner’s rejection of independent claim 1.
The Appellant provides a separate heading but not a separate argument for
the rejection of dependent claims 2, 3, 5, 7, 8, and 11. See Appeal Br. 18.
Therefore, claims 2, 3, 5, 7, 8, and 11 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection II
The Appellant provides a separate heading but not a separate
argument for the rejection of dependent claim 6 under 35 U.S.C. § 103 as
being unpatentable over Heyn, Sussman, and Burns. See Appeal Br. 19. For
the reasons discussed above, we sustain the Examiner’s rejection of claim 6.

Rejection III
The Appellant provides a separate heading but not a separate
argument for the rejection of dependent claim 9 under 35 U.S.C. § 103 as
being unpatentable over Heyn, Sussman, and Grieve. See id. at 20. For the
reasons discussed above, we sustain the Examiner’s rejection of claim 9.

Rejection IV
The Examiner’s rejection of claim 10, includes a finding that Heyn’s
serving tray has a planar upper side surface 32 with a non-skid stick-on liner
34 made of a vinyl material. Final Act. 4 (citing Heyn ¶ 32), 6. The
Examiner finds that Heyn does not teach that non-skid stick-on liner 34 is
made of rubber, as required by claim 10. See id. at 6.
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To remedy this deficiency, the Examiner relies on Gassick’s teaching
of a serving tray with “rubber anti-skid material 115.” Id. (citing Gassick,
col. 10, ll. 35–50, Fig. 4). Indeed, Gassick teaches the use of a neoprene
rubber polymer film as an anti-skid material, which is adhered to tray
platform 104. Gassick, col. 10, ll. 35–50, Fig. 4. The Examiner determines:
It would have been obvious to one of ordinary skill in the art
. . . to substitute vinyl nonslip material [of Heyn] with rubber
nonslip material as taught by Gassick [A] since the simple
substitution of one known serving tray nonslip material for
another is within the level of one of ordinary skill in the art and
would yield the expected result of providing a nonslip surface
on the serving tray and [B] further since it has been held to be
within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a
matter of obvious design choice. In re Leshin, 125 USPQ 416;
see also Ballas Liquidating Co. v. Allied Indus. of Kansas, Inc.
(DC Kans) 205 USPQ 331.
Final Act. 6. The foregoing determination includes a specific reason (i.e.,
“A”) for modifying Heyn’s non-skid stick-on liner 34 made of a vinyl
material in view of Gassick’s teaching of rubber anti-skid material 115,
namely, a simple substitution of one known element for another to obtain
predictable results. Id.; see Ans. 7. The Examiner includes further
supporting rationale (i.e., “B”) for reason “A” by citing to case law.
However, we do not need to look any further than reason “A,” supra, as
providing adequate reasoning with rational underpinning for the Examiner’s
rejection.
With regard to reason “A”, the Appellant argues that “the Examiner
has taken facts beyond the record.” Appeal Br. 22; see id. at 23–25. The
Appellant’s argument is not persuasive of Examiner error. The Examiner
has taken into account the factual inquiries set forth in Graham v. John
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Deere Co.; namely, resolving the level of ordinary skill in the pertinent art.
See MPEP § 2141(II); KSR, 550 U.S. at 421; Sovish, 769 F.2d at 743;
Jacoby, 309 F.2d at 516. We have considered the remaining arguments
advanced by the Appellant in the Appeal Brief at pages 23–25 and have
determined that they are not persuasive of Examiner error.
Thus, we sustain the Examiner’s rejection of claim 10.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–3 and 5–11.
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