Ex Parte Kandel

Patent Trial and Appeal Board

Dec 27, 2016

13307165 (P.T.A.B. Dec. 27, 2016)

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.
13/307,165 11/30/2011 Natalie L. Kandel 071788.000003 9404
114262 7590 12/29/2016
Black, McCuskey, Souers & Arbaugh, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
RODDEN, JOSHUA E
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
ip@bmsa.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATALIE L. KANDEL
Appeal 2014-009102
Application 13/307,165
Technology Center 3600
Before LYNNE H. BROWNE, JEFFREY A. STEPHENS, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35U.S.C. § 134 from a rejection of claims 1,
2, 4—12, 14—18, and 20—22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2014-009102
Application 13/307,165
CLAIMED SUBJECT MATTER
The claims are directed to a multi-tiered cake stand. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A multi-tiered cake display system comprising:
an elongated rigid main support with a bottom end and a
top end, wherein the main support is formed of a single piece of
material;
a first bushing for allowing a first tier of a multi-tiered
cake to be assembled around the first bushing with the first
bushing passing completely through the first tier of the multi­
tiered cake, wherein the first bushing has a top end and a bottom
end;
a first cake board with an upper surface and a lower
surface and a hole, wherein the first cake board is configured to
support the first tier of cake on the upper surface of the first cake
board;
a second bushing for allowing a second tier of the multi­
tiered cake to be assembled around the second bushing with the
second bushing passing completely through the second tier of the
multi-tiered cake, wherein the second bushing has a top end and
a bottom end;
a second cake board with an upper surface and a lower
surface and a hole, wherein the second cake board is configured
to support the second tier of cake on the upper surface of the
second cake board, wherein the second cake board has a smaller
width and a smaller surface area than the first cake board;
a third bushing for allowing a third tier of the multi-tiered
cake to be assembled around the third bushing with the third
bushing passing completely through the third tier of the multi­
tiered cake, wherein the third bushing has a top end and a bottom
end;
a third cake board with an upper surface and a lower
surface and a hole, wherein the third cake board is configured to
support the third tier of cake on the upper surface of the third
cake board, wherein the third cake board has a smaller width and
a smaller surface area than the second cake board;
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Application 13/307,165
wherein the multi-tiered cake display system is assembled
by sliding the main support into the first bushing, wherein when
the multi-tiered cake display system is assembled, the bottom end
of the main support is adjacent the first cake board, wherein when
the multi-tiered cake display system is assembled with the multi­
tiered cake displayed on the multi-tiered cake display system the
first bushing passes completely through the first tier of the multi­
tiered cake and the second bushing passes completely through
the second tier of the multi-tiered cake, wherein when the multi­
tiered cake display system is assembled the bottom end of the
first bushing is adjacent the first cake board and the top end of
the first bushing is adjacent the second cake board, wherein when
the multi-tiered cake display system is assembled the bottom end
of the second bushing is adjacent the second cake board and the
top end of the second bushing is adjacent the third cake board,
wherein when the multi-tiered cake display system is assembled
the main support is inserted completely through the second cake
board and the second bushing, wherein when the multi-tiered
cake display system is assembled, the bottom end of the third
bushing is adjacent the third cake board, wherein when the multi­
tiered cake display system is assembled the second cake board is
free to rotate about the main support in a first direction, and
wherein when the multi-tiered cake display system is assembled
the third cake board is free to rotate about the main support in a
second direction that is different than the first direction, wherein
the second cake board moves independent of the first bushing
and the second bushing, and wherein the third cake board moves
independent of the second bushing and the third bushing.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Topping
Mullins
Muggli
US 1,570,651
US 1,900,610
US 3,169,496
US 3,951,079
US 4,334,623
Jan. 26, 1926
Mar. 7, 1933
Feb. 16, 1965
Apr. 20, 1976
June 15, 1982
Tolleson
Geary
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Application 13/307,165
Hardy US 8,172,099 B1 May 8,2012
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 4, 7—11, 14, 15, 17, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Topping, Geary, and Tolleson. Final
Act. 3.
Claims 5, 6, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Topping, Geary, Tolleson, and Mullins. Id. at 10.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Topping, Geary, Tolleson, and Hardy. Id. at 12.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Topping, Geary, Tolleson, and Muggli. Id. at 13.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Topping, Geary, Tolleson, Muggli, and Mullins. Id. at 16.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Topping, Geary, Tolleson, Muggli, and Hardy. Id. at 17.
OPINION
Appellant argues claim 1 “as well as the other claims” together.
Appeal Br. 18—22. We select claim 1 as representative, and claims 2, 4, 7—
11, 14, 15, 17, and 21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant makes an additional argument in connection with claim 18.
The Examiner finds that Topping discloses all of the limitations of
claim 1 except
(A) [t]he main support being formed of a single piece of
material and wherein the second board moves independent of
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Application 13/307,165
the first bushing and the second bushing, and wherein the third
board moves independent of the second bushing and the third
bushing, [and]
(B) [t]he bottom end of the main support being adjacent
the first board.
Final Action 3—6. As for (A), the Examiner finds that Geary teaches “a main
support (11) being formed of a single piece of material and wherein multiple
boards (4, 6, 8 and 10) move independent of multiple bushings (5, 7 and 9),
(Figures 1—5).” Final Act. 6. As for (B), the Examiner finds that Tolleson
teaches “a display system having the bottom end of a main support (87)
being adjacent the first board (97), (Figures 1—6). Id. The Examiner
concludes that it would have been obvious to use the single piece main
support of Geary in place of Topping’s multi-piece support and to have the
second and third boards move independently of the bushings as taught by
Geary. Id. Further, the Examiner found that it would have been obvious to
modify the display system of Topping to have the bottom end of the main
support being adjacent the first board. Id. The Examiner found that one of
ordinary skill in the art would have been motivated to make these changes so
that there are fewer components, making the system easier to assemble and
dismantle, and to provide a more stable base on which the first board may
rotate. Id.
Appellant first argues that there is no reason to combine Topping with
Geary. Appeal Br. 18—21. This argument is premised on the device of
Topping not being easy to disassemble, on the device of Geary being
assembled once and not frequently disassembled {Id. at 18—19), on the
Topping and Geary references being not analogous art because not in the
field endeavor of cake stands (Id. at 19—20), and on the Topping and Geary
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references solving different problems from that confronting the inventor (Id.
at 20-21).
The Examiner finds that it is a well-known engineering principle that
improvement can be achieved by making a device of fewer parts, and that
therefore using a continuous spindle as taught by Geary in place of the
segmented spindle of Topping would have been obvious. Ans. 3. In
addition, Geary teaches the advantages of easy disassembly for cleaning.
See id. at 3—4, citing Geary, 2:53—55 (“[RJacks are preferably readily taken
to pieces for cleaning”). Accordingly, we find the Examiner has articulated
reasoning with rational underpinnings supporting his finding that it would
have been obvious to combine Topping and Geary as proposed.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992). “The current invention relates generally to
apparatus, systems and methods for displaying cakes and other baked
goods.” Spec. 1. Appellant points to the difficulty of using the devices
shown in Topping and Geary as cake stands. Appeal Br. 20. However, as
noted supra, the Specification indicates that the scope of the instant
invention includes displays for other baked goods, such as, for example,
cupcakes or muffins, both of which could be displayed on Topping or
Geary’s stands. Thus, Appellant’s argument that the field of endeavor is
limited to cake stands (Appeal Br. 19-20) is unconvincing. Rather, we agree
with the Examiner’s determination that the field of endeavor is better
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characterized as that of rotary display stands. Ans. 6. Therefore, we agree
with the Examiner that the cited art and the claimed invention are in the
same field of endeavor.
Even were we to accept the Appellant’s assertion that the cited art and
claimed invention are from different fields of endeavor, Appellant has not
persuaded us that the cited references are not reasonably pertinent to the
problem confronted by the inventor. Appeal Br. 20. The Examiner noted
that both Topping and Geary teach rotatable display stands with individual
tiers that can be easily adjusted independently of one another, and that
Appellant was particularly concerned with this problem. Ans. 7, citing Spec.
2,11. 9—16. Appellant argues that the references solve different problems
from the problem Appellant faced. Appeal Br. 20—21. This argument does
not address whether the disclosures of the references ares pertinent to the
problem the Appellant faced, and we are not persuaded that the Examiner
erred in finding “that both the devices of Topping et al. and Geary are
reasonably pertinent to the particular problem with which the applicant was
concerned.” Answer 7.
Appellant’s discussion of the time and effort required to develop her
invention does not address any particular claimed structure and so cannot
support patentability. 37 C.F.R. § 1.111 (b) (“A general allegation that the
claims define a patentable invention without specifically pointing out how
the language of the claims patentability distinguishes them from the
references does not comply with the requirements of this section.”).
Appellant also argues that the rejection of claim 1 was the result of
hindsight reconstruction. Our supervising court informs us that
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Application 13/307,165
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1313-1314 (CCPA 1971). We find no
impermissible hindsight reconstruction here because all the features and
advantages of the claimed invention are found in the art, including reasons to
combine them. In view of the foregoing, we find no error in the Examiner’s
rejection of claim 1.
Appellant argues claim 18 separately, incorporating first the
arguments made in connection with claim 1. We find these arguments
unpersuasive for the reasons stated above. Appellant also argues that the
references fail to teach preparing a cake on cake boards and so cannot render
claim 18 obvious. Appeal Br. 23—24. The Examiner finds that the devices
disclosed in the references are capable of performing the claimed method
and relies on In re King, 801 F.2d 1324 (Fed. Cir. 1986). That case held “if
a previously patented device, in its normal and usual operation, will perform
the function which an appellant claims in a subsequent application for
process patent, then such application for process patent will be considered to
have been anticipated by the former patented device.” Id. at 1326. We
agree with the Examiner that the references are capable of performing the
claimed method, and particularly note that Muggli discloses a cake stand
intended “to . . . provide a tiered cake when the respective platforms are in
the assembled relation.” Muggli, 1:13—15. Accordingly, we are not
persuaded the Examiner erred in finding that the prior art relied on was
capable of being used in the method of claim 18.
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As Appellant did not separately argue claims 5, 6, 12, 16, 20, and 22,
our resolution of the issues raised regarding claim 1 is also dispositive for
these claims.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 4—12,
14—18, and 20—22 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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