Ex Parte DeLisle

Patent Trial and Appeal Board

Feb 28, 2017

13537888 (P.T.A.B. Feb. 28, 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.
13/537,888 06/29/2012 Steven DeLisle 12-066-SD 5128
7590
LAMBERT & ASSOCIATES
92 STATE STREET
BOSTON, MA 02109-2004
EXAMINER
LONG, LUANA ZHANG
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
lambert @ lambertpatentlaw. com
shortell@lambertpatentlaw.com
connaughton @ lambertpatentlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN DELISLE
Appeal 2016-000475
Application 13/537,888
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—20. We have jurisdiction pursuant to
35 U.S.C. §6.
Appellant’s claimed invention is directed to a food product
comprising pizza and a method of preparing same. The pizza includes an
aperture and a non-food container is positioned within the aperture. A
secondary food item is located in the non-food container. Appellant defines
the term “pizza” broadly so as to include “any flat dough-based food item
with a topping or toppings and may be sweet or savory” and further
including “cooked, uncooked, and/or frozen items having a dough layer and
topping layer” (Spec. 113).
Appeal 2016-000475
Application 13/537,888
Claims 1 and 10 are illustrative and reproduced below:
1. A food composition comprising:
a pizza, the pizza comprising a dough layer and a cheese layer, the
pizza formed as a large portion of pizza which defines an aperture in the
large portion of pizza, the large portion being continuous about the aperture;
a container formed of a material other than food positioned within the
aperture of the large portion of pizza;
a secondary food item positioned within the container; and
wherein a cross section of a bottom of the container is approximately
equal to or slightly smaller than a cross section of the aperture, such that the
container fits within the aperture.
10. A method of forming a food product comprising the steps of:
forming a pizza having a dough layer and a cheese layer;
cutting an aperture into the pizza, forming a large portion of pizza
defining the aperture, and a small portion removed from the large portion,
defining the aperture, wherein the large portion remains continuous about
the aperture during the cutting the aperture step;
placing a container within the aperture of the large portion of pizza,
wherein the container is made of a material other than food, and wherein the
aperture is selected and formed to have a cross section approximately equal
to or slightly larger than a cross section of a bottom of the container,
allowing the container to fit within the aperture;
placing a secondary food item within the container.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Klinger US 3,892,868 July 1, 1975
Spencer US 4,572,423 Feb. 25, 1986
Mattei Des. 304,658 Nov. 21, 1989
Wall US 5,077,050 Dec. 31, 1991
Montague US 2005/0181098 A1 Aug. 18, 2005
Garrett US 2006/0121161 A1 June 8, 2006
John Lindner, Lunch for $10 or Less: Egyptian Pizza, Baltimore Sun, Sept.
17,2011, http://www.egyptianpizza.com/review.html
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Markette et al., Deal or No Deal? 2 Pound Pretzel, $20, DC on Heels, May
8, 2010. http://dconheels.blogspot.com/2010/05/deal-or-no-deal-2-pound-
pretzel-20.html
The Examiner maintains the following grounds of rejection:
1. Claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klingler in view of Lindner, and Markette.
2. Claims 10 and 17—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Montague in view of Klingler, Lindner,
and Markette.
3. Claims 2, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klingler in view of Lindner, Markette, and Wall.
4. Claims 11, 12, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Montague in view of Klingler, Lindner,
Markette, and Wall.
5. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klingler in view of Lindner, Markette, Wall, and
Spencer.
6. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montague in view of Klingler, Lindner,
Markette, Wall, and Spencer.
7. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Klingler in view of Lindner, Markette, Wall,
Garrett, and Mattei.
8. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montague in view of Klingler, Lindner,
Markette, Wall, Garrett, and Mattei.
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Application 13/537,888
Appellant’s arguments expose no reversible error in the Examiner’s
obviousness rejections. Accordingly, we affirm the stated rejections for
substantially the reasons set forth by the Examiner in the Final Rejection and
the Answer. We offer the following for emphasis.
We address the Rejections in the following order (Rejections 1,3,5,
and 7 followed by Rejections 2, 4, 6, and 8).
Rejection 1
Regarding the Examiner’s obviousness rejection over Klingler in view
of Lindner, and Markette, Appellant argues claims 1,3, and 4 together
presenting no further argument with respect to dependent claims 3 and/or 4
(Br. 7—11). We select claim 1 as the representative claim on which we focus
in deciding this appeal as to above-noted group of rejected claims.
Concerning representative claim 1, Appellant argues that the rejection
based on the applied prior art combination falls short of establishing the
prima facie obviousness of the claim 1 subject matter because “the
references are non-analogous art, and because the combination of prior art
does not teach, among other things, aperture and container formed and sized
as required by the claims, a food container made of a material other than
food, or a secondary food item” (Br. 7). These arguments have no
persuasive merit.
Klingler discloses or suggests a pizza 18 having a central opening or
hole 17 (aperture) that can be of a large size/diameter sufficient to house
another pizza pie 10 therein (the hole 17 and pizza pie 10 are sized such that
the diameter of hole 17 and the outer diameter of pizza pie 10 are similar
such that the pie 10 can fit within hole 17 of pizza 18 (Klingler, col. 3,11. 1—
17; Figs 1, 6—9; see Ans. 2—3).
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As the Examiner finds, Lindner teaches or suggests that a non-edible
container can be placed in a central area in the midst of surrounding pizza,
wherein the non-edible container can serve as a holding place for food
item(s), such as dipping sauce that can be used with pizza (Ans. 3). In
addition, the Examiner relies on Markette to evince that it is well known to
an ordinarily skilled artisan in the food preparation and food
delivery/serving arts to place a container for holding other food items within
the openings (apertures) of a baked dough-based food product (pretzels) for
the purposes of improved display and effective use of the space furnished by
the aperture-containing food product to allow for the ready delivery and
enjoyment of an accompanying food item (Ans. 3; see generally Markette).
Of course, one of ordinary skill in the art would have readily recognized that
the non-edible container would be sized to fit within the opening/aperture of
the food item (pizza) and would have been led to select a workable container
size slightly smaller than or the same as the food item aperture in order to
efficiently use the space provided by the pizza opening (Final Act. 3—5; Ans.
24).
Appellant’s contentions concerning Lindner and Markette
representing non-analogous art and/or lacking any suggestive effect as to
utilizing a pizza aperture as taught by Klingler for the placement of a
container including a secondary food item therein for
enjoyment/consumption with the pizza fail to show error in the Examiner’s
obviousness rejection of claim 1 for reasons advanced by the Examiner,
which we adopt as our own (Ans. 18—25). As determined by the Examiner,
Lindner is drawn to the pizza art, which is the same field of endeavor as
Klingler and Markette employs a pizza box for serving a baked pretzel with
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dipping sauces (secondary food items) housed in inedible containers that can
be located within openings in the pretzel, which disclosure highlights the
pertinence of Markette to the pizza art of Klingler (Ans. 18—19). Indeed, the
field of endeavor involved in the subject matter at issue in this appeal can
more reasonably be defined to encompass the food arts, including the dough-
containing food (including side order(s)) preparation, serving, and packaging
arts (Spec. 1—7).
Moreover, as determined by the Examiner, the suggestive effect of the
applied prior art references is readily evident from their respective and
combined disclosures and the predictable functionalities associated with the
disclosed and applied features (Ans. 24—25). After all, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
In an obviousness analysis, it is appropriate to consider:
interrelated teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed. Id. at 417—18.
Here, there is ample suggestion from the combined teachings of the
applied references that would have led one of ordinary skill in the art to
employ a non-food container for holding secondary food items centered in
the aperture of the pizza of Klingler for purposes of preparation and serving
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of the combination of foods, delivery of the foods as separate items to be
consumed together or separately, and/or for storage. See KSR, 550 U.S. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Therefore, Appellant’s arguments identify no harmful error in the
Examiner’s obviousness rejection of representative claim 1. Accordingly,
we affirm Rejection 1.
Rejection 3
Concerning dependent claims 5 and 7, Appellant does not present
separate substantive argument against the Examiner’s separate rejection of
these dependent claims (Br. 17—18).1 Consequently, we affirm the
Examiner’s obviousness rejection as to claims 5 and 7 for the reasons
discussed above and for reasons set forth by the Examiner in the Final Office
Action and in the Answer.
Dependent claim 2 requires a “cover constructed and arranged to seal
an opening of the container” and the Examiner additionally relies on Wall to
teach the provision of a cover (foil 123) for sealing a container opening,
which container (102) can hold condiments and is constructed for placement
in a pizza box (105) (Final Act. 10; Wall, col. 3,11. 19-66; col. 5,11. 32—43;
Figs. 4, 7). The Examiner reasonably determines that based on the
combined teachings of Klingler in view of Lindner, Markette, and Wall, an
ordinarily skilled artisan would have been led to furnish a cover for a
container placed in the pizza opening of Klingler incentivized by the desire
1 Appellant does not contest the Examiner’s finding that Wall provides for a
container that can hold condiments and is constructed for placement in a
pizza box and can be provided with a sealing cover (Final Act. 10).
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to preserve and maintain the freshness of the secondary food items (sauces)
carried within the container and avoiding spillage (Final Act. 10; Ans. 10).
In addition to arguments presented against the Examiner’s rejection of
claim 1 (Rejection 1), Appellant argues that there would be a lack of
motivation to employ a cover in combination with the container of Klingler,
as proposed to be modified by Lindner, Markette and Wall by the Examiner,
because the purpose of the cover of Wall is to support a box lid (Br. 16).
Appellant’s argument lacks persuasive merit for reasons set forth by the
Examiner, which we adopt as our own (Final Act. 10; Ans. 10, 25). In
particular, the existence of the additional utility for the cover of supporting a
box lid as taught by Wall does not detract from the other readily known and
recognizable purposes for supplying a container cover relied upon by the
Examiner as motivation (preserving and maintaining freshness of the food
items/sauces contained within the container) for one of ordinary skill in the
art to have used a container cover for the modified container of Klingler
based on the combined references’ teachings (Ans. 25).
Accordingly, we affirm Rejection 3.
Rejection 5
As for the Examiner’s separate rejection of dependent claim 6 over
Klingler in view of Lindner, Markette, Wall, and Spencer, Appellant does
not dispute the Examiner’s additional findings with respect to the teachings
of Spencer (Br. 20-21; Final Act. 13). Nor does Appellant present any
additional substantive argument based on the further limitations added by
dependent claim 6; rather, Appellant relies on arguments made with respect
to the base Rejection 1, which we find unpersuasive for reasons discussed
above and by the Examiner in the Final Office Action and in the Answer.
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It follows that we shall affirm Rejection 5.
Rejection 7
Claim 8, which depends on claim 1 through claim 5, further requires
that the box of claim 5 includes a bottom that comprises a protrusion aligned
with the aperture of a large portion of pizza when the pizza is positioned
within the box. Appellant does not present any additional substantive
argument based on the further limitations contained in claim 8 ; rather,
Appellant relies on arguments made with respect to the base Rejection 1 (no
additional argument was made by Appellant based on the limitation(s) added
by dependent claim 5 subject to Rejection 3), which arguments we find
unpersuasive for reasons discussed above and by the Examiner in the Final
Office Action and in the Answer with respect to Rejections 1 and 3 (Br. 21—
23; see also Ans. 15, 26).
Claim 9, which depends from claim 1 through claims 8 and 5, further
requires a protrusion on the bottom of the box that is formed by urging the
protrusion upward by pressing on the box bottom.
Appellant argues that (1) the additionally applied Garrett and Mattei
references do not teach a box bottom protrusion that is formed by
pressing/pushing on the box bottom and that (2) there is no suggestion of
motivation for one of ordinary skill in the art to provide for forming a box
bottom protrusion in such a manner and for the purpose of furnishing a
receptacle based on an aperture in a food item placed in the box (Br. 22—23).
However and as argued by the Examiner, the manner in which the box
bottom protrusion is formed is a product-by-process limitation and Appellant
has not established that the claim 9 limitation requires a box protrusion that
is distinguishable from the pizza box protrusion suggested by the combined
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teachings of the applied prior art, including Wall, Garrett, and Mattei (Ans.
10, 15-16, 26-27).
Thus, Appellant’s arguments with respect to claim 9 are not
persuasive of substantive error in the Examiner’s obviousness rejection.
Accordingly, we affirm Rejection 7.
Rejection 2
Regarding the Examiner’s obviousness rejection of claims 10 and 17—
20 under 35 U.S.C. § 103(a) as being unpatentable over Montague in view
of Klingler, Lindner, and Markette, Appellant argues the rejected claims
together on the basis of certain features found in claim 10 presenting no
further argument with respect to dependent claims 17—20 (Br. 11—15). We
select claim 10 as the representative claim on which we focus in deciding
this appeal as to the above-noted group of rejected claims.
Appellant argues that the rejection based on the applied prior art
combination (Montague taken together with Klingler, Lindner, and
Markette) falls short of establishing the prima facie obviousness of the claim
10 subject matter in a manner substantially similar to the arguments
Appellant made against the Examiner’s obviousness rejection of claim 1
over Klingler, Lindner, and Markette.
Appellant contends that Lindner and Markette represent non-
analogous art and urges that the applied prior art, including Montague as
used in the rejection of claim 10, does not teach or suggest, among other
things, pizza having an aperture including placing a non-edible container for
secondary food items within the aperture cut into the pizza and the container
formed and sized as required by claim 10, the food container made of a
material other than food and placing a secondary food item in the container
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(Br. 11—15). These arguments have no persuasive merit for reasons
discussed above with respect to the Examiner’s rejection of claim 1 over
Klingler, Lindner, and Markette and for the further reasons advanced by the
Examiner with respect to the separate rejection of representative claim 10
over Montague taken together with Klingler, Lindner, and Markette (Ans. 6—
10, 25; Final Act. 6—10).
In this regard, we observe that Appellant does not specifically dispute
the Examiner’s determination that Montague teaches or suggests (Final Act.
6; Ans. 6):
a method of forming a food product (pizza) comprising the
steps of: forming a pizza having a dough layer and a
cheese layer ([0009], [0033]); cutting an aperture into the pizza
([0033]), inherently forming a large portion of pizza (outer ring)
defining the aperture (Fig. 3), and a small portion (one small
circular piece 41). Montague is considered to teach the
limitation "wherein the large portion remains continuous about
the aperture during the cutting the aperture step,” since
Montague discloses cutting the small circular piece 41 before
cutting the outer ring into eight or more pieces ([0033]).
Given the additional teachings of Klingler, Lindner, and Marquette, as
discussed above and by the Examiner (Final Act. 7—8; Ans. 7—8), the
Examiner reasonably maintains that an ordinarily skilled artisan would have
led to modify Montague by removing the small circular pizza portion in the
central area of the pizza thereby proving a central open area (aperture) in an
annular remaining pizza portion and place a container including secondary
food items within the aperture based on the additional teachings of Klingler,
Lindner, and Markette taken with Montague in order to provide a pizza
having additional food item(s) conventionally located with the pizza for
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packaging, transportation, and/or consumption thereof with the pizza while
making efficient use of space.
Appellant’s arguments fail to present a countervailing argument
adequate to identify harmful error in the Examiner’s obviousness
determination as to representative claim 10 for reasons discussed above and
for reasons expressed by the Examiner (Ans. 25; see also Ans. 20—24).
After all, under the flexible inquiry set forth by the Supreme Court, the
Examiner must take account of the “inferences and creative steps,” or even
routine steps, that an ordinary artisan would be led to employ in assessing
the obviousness of the claimed subject matter in light of the applied prior art
teachings and suggestions. Ball Aerosol and Specialty Container, Inc. v
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
Accordingly, we affirm Rejection 2.
Rejections 4, 6
Appellant’s argument for dependent claim 11 substantially parallels
the arguments Appellant made for dependent claim 2, which arguments for
claim 2 we found unpersuasive as discussed above (Br 18—19; see Br. lb-
17). Consequently for the reasons set forth above and by the Examiner, we
are not persuaded of reversible error in the Examiner’s separate rejection of
claim 11 (Ans. 25—26). Appellant does not separately argue the other
dependent claims subject to Rejection 4 and/or separately argue the
dependent claims subject to Rejection 6.
It follows that we shall affirm Rejection 4 and Rejection 6.
Rejection 8
Appellant’s argument for dependent claim 16 are not persuasive of
reversible error for reasons set forth by the Examiner (Ans. 27—28).
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Consequently, we adopt the Examiner’s reasoning and affirm the Examiner
separate rejection of claim 16 (Ans. 16—17, 27—28).
As a final point, Appellant has not established unexpected results for
the claimed subject matter as noted above.
Thus, we affirm Rejection 8.
CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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