Ex Parte Kazich

Board of Patent Appeals and Interferences

Apr 28, 2011

10800225 (B.P.A.I. Apr. 28, 2011)

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.
10/800,225 03/12/2004 Valerie Kazich VAK-P-03-001 8558
29013 7590 04/29/2011
PATENTS+TMS, P.C.
2849 W. ARMITAGE AVE.
CHICAGO, IL 60647
EXAMINER
DYE, RENA
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
04/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte VALERIE KAZICH
________________

Appeal 2010-002406
Application 10/800,225
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002406
Application 10/800,225

2
A. Introduction1
Valerie Kazich (“Kazich”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection2 of claims 1-20, which are all of the pending claims.
We have jurisdiction. 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a drip guard for frozen treats,
such as an ice cream bar held on a stick.
Representative Claim 1 reads:
1. An apparatus for collecting drips from a frozen treat, the
apparatus comprising:
a base defined by a perimeter
wherein the base has a center point and the perimeter
is equidistant from the center point
wherein the base has a top layer covering a bottom
layer
wherein the base is planar
wherein the bottom layer is made from a material
that is rigid
wherein the top layer is made from an absorbent
material
wherein the top layer has an outer edge
wherein the bottom layer extends to a point
outside of the outer edge of the top layer without
overlapping the top layer;

1 Application 10/800,225, Apparatus, a System and a Method for Collecting
Drips from a Frozen Treat, filed 12 March 2004. The specification is
referred to as the “225 Specification,” and is cited as “Spec.” The real party
in interest is listed as Valerie Kazich, the named inventor (Appeal Brief,
filed 30 June 2008 (“Br.”), 1.)
2 Office action mailed 10 October 2007 (“Final Rejection”; cited as “FR”).
Appeal 2010-002406
Application 10/800,225

3
a lip integrally formed on the perimeter of the base
wherein the lip extends to a point above the top layer
wherein the lip is perpendicular to the base
wherein the outer edge of the top layer is adjacent to
the lip without overlapping the lip; and
a passage at the center point of the base
wherein the passage forms an opening through the
top layer of the base and the bottom layer of the base.
(Br., Claims App. 1 [unnumbered]; indentation, paragraphing, and emphasis
added.)
The Examiner has maintained the following grounds of rejection:3
A. Claims 1-20 stand rejected under 35 U.S.C. §112(1) for lack of
written description of a “rigid” bottom or base, and for lack of
written description of a base lip that extends “above” the top
layer of the drip collector.
B. Claims 1-3, 8, 13, 17, and 18 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Ackalusky,4 Taylor,5 Perkins,6 Pagnini,7 Blant,8 Rizzuto,9

3 Examiner’s Answer mailed 10 October 2007 (“Ans.”), as supplemented
on 15 December 2009.
4 James M. Ackalusky, Guard Device for Frozen Confection, U.S. Patent
2,803,550 (1957).
5 Don A. Taylor, Individually Packaged Frozen Confection, U.S. Patent
2,735,778 (1956).
6 Jana Gaye Perkins, U.S. Patent Application Publication
US 2003/0087011 A1 (8 May 2003).
7 Edillo Pagnini, U.S. Patent 3,306,512 (1967).
8 Roger John Blant, GB 2 293 751 A (1996).
9 Peppino Rizzuto, U.S. Patent 4,938,411 (1990).
Appeal 2010-002406
Application 10/800,225

4
Oshio,10 Suzuya Shokuhin,11 Smith12 Goodwin,13 Miller,14
Rhodes,15 and Hansen.16
C. Claims 4-7, 9-12, 14-16, 19, and 20 stand rejected under
35 U.S.C. § 103(a) in view of the teachings of the references
relied on in part B combined with the teachings of Huffer,17
Penick,18 Freedman,19 Lipper,20 Moravick,21 Shin,22 Knoerzer,23
Gottschalk,24 Goldstein,25 Witkowski,26 McClung,27 and
Bellet.28

10 Perry Oshio, U.S. Patent Application Publication 2002/0029697 A1
(2002).
11 Suzuya Shokuhin KK, JP11-137179 (1999) (Derwent Abstract).
12 Wanda K. Smith, U.S. Patent 5,770,250 (1998).
13 Jerry L. Goodwin, U.S. Patent 4,756,939 (1988).
14 Alan H. Miller, U.S. Patent 4,321,997 (1982).
15 John C. Rhodes et al., U.S. Patent 4,940,621 (1990).
16 Richard. E. Hansen, U.S. Patent 4,865,855 (1989).
17 Scott W. Huffer and Jeffrey M. Schuetz, Packaging with Incorporated
Temporary Tattoo, U.S. Patent 6,457,585 B1 (2002).
18 Ib Penick and John K. Volkert, Promotional Puzzle, U.S. Patent 4,336,664
(1982).
19 Benjamin H. Freedman and Emil J. Heggedal, U.S. Patent 2,585,924
(1952).
20 Christopher Lipper, U.S. Patent 6,814,234 B2 (2004).
21 Donald W. Moravick and Leon M. Levy, U.S. Patent 3,704,892 (1972).
22 Sang J. Shin, U.S. Patent 4,648,548 (1987).
23 Anthony Robert Knoerzer et al., Multi-layer Flexible Package with
Removable Section, U.S. Patent 6,746,743 B2 (2004).
24 Lawrence A. Gottschalk, U.S. Patent 3,835,564 (1974).
25 Daniel Goldstein, U.S. Patent 3,100,642 (1963).
Appeal 2010-002406
Application 10/800,225

5
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As the Appellant, Kazich bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (“Lower court cases make clear that courts
have correlated review of ordinary administrative proceedings to appellate
review of civil cases in this respect. . . . [T]he party seeking reversal
normally must explain why the erroneous ruling caused harm.”) (citations
omitted). See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010)
(discussing the role of harmless error in appeals from decisions of the Board
of Patent Appeals and Interferences).
We begin by construing the critical limitations of the claims. We
observe first that Kazich does not direct our attention to specific definitions
in the 225 Specification of terms used in the claims. Accordingly, we
construe the terms using their ordinary meaning, giving them the broadest
reasonable interpretation, from the point of view of a person having ordinary
skill in the relevant arts, that is consistent with the supporting disclosure.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We must not, of course,
read limitations from preferred embodiments in the specification into the

26 Daniel D. Witkowski and Marcia D. Griffith, U.S. Patent 5,676,401
(1997).
27 Karen Therese McClung et al., U.S. Patent 6,755,711 B2 (2004).
28 Ettie B. Bellett, U.S. Patent 2,711,541 (1955).
App
App

claim
Cir.

the i
mad
e.g.,
Cove
Base
cove
perp
base
but m
pass
cove
froze
cove

a bot
an ab
mean
claim
comp
abso
claim
eal 2010-0
lication 10
s. In re A
2004).
Figure 1
nvention.
e from a m
with a ma
r 24 is ma
12 extend
r 24. Lip
endicularly
12. Top l
ay not ov
age (34 or
r 24 and b
n confecti
r and the b
Indepen
tom layer
sorbent m
s coverin
13 recite
onents ar
rbent mate
s cover su
02406
/800,225
m. Acad.
, right, illu
Base 12 is
aterial tha
chine pres
de from an
s beyond
22 is form
to the pe
ayer 24 mu
erlap lip 2
36) at the
ase 12 allo
on 11 to p
ase.
dent claim
made from
aterial, wh
g the top s
s a method
e “provide
rial.” As
bstantially
of Sci. Tec
strates an
circular a
t is rigid a
s or die cu
absorben
the outer e
ed integral
rimeter 14
st be adja
2. Finally
aligned ce
ws stick 1
ass throug
1 describe
a materia
ereas inde
ide of the b
for collec
d,” includ
neither the
different
6
h Ctr., 367
apparatus
nd planar,
nd may be
tter. (Spec
t material
dge 30 of
ly on and
of
cent to
, a
nters of
3 of
h both the
{Fig
s the appa
l that is ri
pendent c
ase,” and
ting drips
ing a “base
Examiner
articles or
F.3d 135
10 of
and is
cut,
. 10.)
.

. 1 shows
ratus in te
gid, and a
laim 8 rec
remaining
, in which
” and a “c
nor Kazic
processes
9, 1369 (F
a base and
rms of a b
top layer m
ites an “ab
independ
the variou
over” that
h has argu
, either in
ed.
top layer
ase having
ade from
sorbing
ent
s
“is an
ed that th
the
}

e
Appeal 2010-002406
Application 10/800,225

7
abstract or with respect to the applied prior art, we shall assume, without
deciding, that the claims cover substantially similar subject matter.
The Examiner finds that the originally filed Specification does not
describe a “rigid” bottom or base, in the sense of “not flexible or not
bending,” and that there is no description of the thickness of the materials.
(Ans. 4.) Accordingly, the Examiner argues, “there is therefore no evidence
that appellant has support for a rigid base, in the specification as originally
filed.” (Id.) Kazich responds that the materials described as being suitable
for the base, such as cellulose fiber, plywood, plastic, etc., suffice to support
the term “rigid” in the claims. (Br., para. bridging 16-17.)
Whether the written description is satisfied by the original disclosure
is a question of fact. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010)(en banc). As the court explained, the test for an
adequate written description “requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” (Id.) We resolve questions of fact
by the preponderance of the evidence of record.
The claim 1 phrase, “the bottom layer is made from a material that is
rigid,” does not necessarily require that the bottom itself be rigid—only that
a rigid material be used as a constituent of the base. However, the bottom
layer must support the top absorbent layer and an integrally formed lip, as
well as drip from the frozen confection, and therefore must have at least that
much structural strength. The broadest meaning of the term “rigid” in the
Appeal 2010-002406
Application 10/800,225

8
context of the disclosure is thus that the bottom layer be self-supporting, that
is, that it retains its shape under ordinary conditions of use. The parallel
construction of the claim 1 phrase “the top layer is made from an absorbent
material,” and the purpose of the top layer to absorb liquids, further suggests
that it is reasonable to interpret the term “rigid” in claim 1 as requiring that
the bottom layer itself must be rigid. The Examiner has not come forward
with evidence or argument beyond the absence of the word “rigid” in the
originally filed Specification. Accordingly, we conclude that the weight of
the evidence favors Kazich on this point.
Similarly, Kazich argues that the disclosed function of the lip, to
prevent the drips which have pooled on the top side of the base from flowing
beyond the perimeter of the base (Br. 16, citing Spec. 10 and 13) supports
the description of the lip extending to a point above the top layer. The
Examiner’s argument that an outwardly tapered lip not higher than the top
layer would accomplish the same function does not make sense, insofar as
the Examiner has explained it. It is not apparent how a lip that is not higher
than the absorbent material could contain drips that have pooled on top of
the absorbent layer. We therefore conclude that the weight of the evidence
favors Kazich on this point as well, and we find the Examiner erred in
finding that the claims lack an adequate written description.
We now turn to the rejections over prior art.
Ackalusky describes a guard device for a frozen confection depicted
on the following page. The device comprises a guard 10 with a flat bottom
wall 18 integrally connected with upstanding side walls 12 and end walls 14.
(Ackalusky col. 1, ll. 52-58.) The bottom and end walls are preferably made
App
App

of a
of m
be di
prov
rubb
the o
of a
the s
(Id. a
prev
the s
resil
prev
throu
(Id. a
that
other
best
conf

Acka
to th
and
the s
must
eal 2010-0
lication 10
vinyl resin
aterials su
scarded. (
ided in the
er block 2
pening. (I
frozen con
ponge rub
t ll. 13-16
ent the dri
ides of the
ient sealin
ents drippi
gh the stic
t ll. 16-24
the guard c
desired s
accommod
ection.” (I
lusky des
e walls of
3 (not repr
ponge and
have “a r
02406
/800,225
such as p
ch as cardb
Id. at col.
center of
4 having a
d. at ll. 7-
fection . .
ber and thr
.) The wa
ppings fro
guard, wh
g action of
ngs from r
k opening
.) Ackalu
an be rou
hape and s
ate shape
d. at ll. 25
cribes the
the contain
oduced he
the walls.
igid flat bo
olyethylen
oard, hea
1, l. 60, to
bottom wa
slit 26 alig
12.) In Ac
. 30 is inse
ough the o
lls are said
m running
ile the
the spong
unning
.
sky teache
nd, “or any
ize which
and size o
-29.)
{Fig
walls of th
er 10 (id.
re)) show
As claim
ttom and u
9
e, and can
vy paper, a
col. 2, l. 2
ll 18 (id. a
ned with
kalusky’s
rted down
pening 20
to
off
e
s

will
f the
. 2 shows
e sponge r
at ll. 8-10
substantial
ed by Ack
pstanding
be reused
nd molde
.) A recta
t col. 2, ll
opening 2
words, “[i
wardly th
and sleev
a side vie
ubber bloc
), and the i
space bet
alusky, th
preshape
; or they c
d wood pu
ngular op
. 3-6), and
0 is positio
]n use, the
rough the
e 22 in the
w of a gua
k as being
llustration
ween the e
e guard co
d rigid sid
an be mad
lp, and can
ening 20 is
a sponge
ned over
stick 28
slit 26 in
guard.”
rd device}
parallel
s (Figs. 2
dges of
ntainer
e walls,”
e

Appeal 2010-002406
Application 10/800,225

10
with the “resilient sponge rubber sealing block secured on said bottom wall
about said opening.” (Id. at ll. 40-45.)
Taylor describes a foldable shield 6 disposed against the base of
body 1 and extending “laterally a considerable distance beyond . . . the base
of the body to provide a relatively wide margin 7. (Taylor, col. 2, ll. 44-48.)
The base is, for example, the base of a chocolate ice cream bar with “the
usual stick handle 2” protruding out of the base of the body. (Id.
at ll. 33-37.) In a preferred embodiment, the shield is made of an upper
layer 8, of absorbent paper, and a lower layer 9, of stiffer, nonabsorbent
paper. (Id. at ll. 60-68.) Taylor teaches that, “[i]f desired, the shield can be
made so that only the upper face of the margin 7 is covered with the
absorbent layer 8.” (Id. at ll. 68-70.)
Because the Examiner relies on the remaining references cited in
Rejection B in an essentially cumulative manner, and because Kazich treats
them similarly, we need not describe them here.
The Examiner finds that Ackalusky discloses or suggests all
limitations of the apparatus and process covered by the independent claims.
In particular, the Examiner argues that because Ackalusky employs an
absorbent top layer for the art-recognized absorbent function of collecting
drips from frozen treats, it would have been obvious to extend the absorbent
layer to cover the bottom wall 18. (Ans. 7.) To the extent Ackalusky differs
in not describing an upper layer “adjacent” to the lip, the Examiner also
relies on Taylor for evidence that it was known to extend an absorbent
layer 8 substantially over the lower support layer 6 of a drip guard for a
frozen treat. (Id.) The Examiner concludes that claims 1, 8, and 13 would
Appeal 2010-002406
Application 10/800,225

11
have been obvious in view of the applied references. Regarding dependent
claim 2, the Examiner finds that Ackalusky describes plastic as being useful
for the bottom layer. (Ans. 8.) Regarding dependent claim 3, the Examiner
finds that Taylor describes paper as a suitable absorbent material. (Id.)
As for the requirement of claim 17 that the cover be laminated, the Examiner
finds that although Ackalusky does not describe such a feature, Taylor
describes laminating the absorbent layer to the underlying layer. (Id.)
The Examiner finds that the step recited in claim 18, of inserting the stick of
a frozen treat into the opening of the cover and base is described by
Ackalusky. (Id. at 8-9.) The Examiner makes parallel findings that it would
have been obvious to modify the shield guard disclosed by Taylor by using
more rigid base materials and to provide more conspicuous lips or rims
given the teachings of Ackalusky and the other references relied on. (Id.
at 9.)
Kazich presents arguments for the patentability of the independent
claims as a group. (Br. 20-26.) The arguments, however, amount to little
more than a recitation of various limitations in the claim followed by a flat
denial that any of the applied references disclose or suggest the claimed
subject matter. In particular, Kazich (id. at para. bridging 23-24) does not
explain why the Examiner’s reasoning that it would have been obvious to
vary the size of the sponge is faulty. Nor does Kazich explain why Taylor’s
teachings that the absorbent layer can cover substantially all of the base
layer would not have suggested covering the bottom wall 18 of Ackalusky’s
device with an absorbent layer. Indeed, Taylor’s additional teaching that the
extent of the absorbent layer can be varied stands as further evidence that
Appeal 2010-002406
Application 10/800,225

12
such variations were known to persons having ordinary skill in the art. We
find Kazich’s flat denials that there are any teachings in the references on
which the Examiner relies of a rigid base (id. at 24), or of a lip higher than
the top layer (id.), or that the bottom layer or base extends beyond the outer
edge of the top layer without overlapping the absorbing top layer (id. at para.
bridging 24-25) escape being frivolous solely if considered to be arguments
that those additional features are not taught or suggested in combination with
an absorbent top layer that extends to be adjacent to the vertical side walls
described by Ackalusky. But Kazich has failed to demonstrate harmful error
in this aspect of the Examiner’s rejections.
Kazich’s arguments that there is no motivation to combine the
references (Br. 25) amount to mere pleading. Kazich has not come forward
with any credible evidence that the references cited by the Examiner are not
in similar areas of art (e.g., drip collection, food packaging or packaging
more generally) or that the references are not concerned with similar
problems, such that persons having ordinary skill in the art would not have
considered the teachings to be relevant to problems related to drip guards.
Certainly no such case has been made against the combination of teachings
from Ackalusky and Taylor, which are both concerned with frozen
confection drip guards having an absorbent upper layer and a more rigid
lower layer.
In short, Kazich has failed to demonstrate harmful error in the
Examiner’s evidence and arguments that the subject matter covered by
independent claims 1, 8, and 13 would have been obvious.
Appeal 2010-002406
Application 10/800,225

13
As for the remaining separately argued claims subject to Rejection B,
Kazich does not deny that Ackalusky describes a plastic base layer (claim 2),
or that Taylor describes a paper absorbent layer (claim 3). Nor does Kazich
explain why Taylor does not describe laminating the paper absorbing layer
to the relatively rigid, stiffer, nonabsorbent paper lower layer.29 Nor does
Kazich explain why Ackalusky or Taylor do not teach sticking the stick
handle of the frozen treats through the cover and base layers of the guard
devices. Again, these objections escape being frivolous solely if based on
the erroneous conclusion that the subject matter of the independent claims is
not rendered obvious.
Rejection C deals with claims that require the presence of indicia such
as temporary tattoos, removable partitions, stickers, and labels on the base
(claims 4-7, which depend from claim 1, and claims 15, 16, and 20, which
depend from claim 13) or on the absorbent cover (claims 9-12, which
depend from claim 8, and claims 14 and 19, which depend from claim 13).
Kazich denies that the independent claims would have been obvious, a
position that we have rejected, and argues further that there is no motivation
to combine the references. (Br. 36-37.) Kazich, however, does not explain
why the Examiner’s findings that prior art separable washable tattoos (e.g.,
Huffer), or cut-outs (e.g., Penick, interfitting puzzle pieces), or stickers and
labels (e.g., Knoerzer) on containers said to be especially suitable for food
items would not have suggested that such features be added to the visible

29 In this regard, we note that Ackalusky describes “securing” the absorbent
sponge to the base, fully meeting the Examiner’s presumption (Ans. 8,
ll. 16-17) that the term “laminated” in the claims “means to the base”.
Appeal 2010-002406
Application 10/800,225

14
surfaces of frozen confection-holders such as the drip guard devices taught
by Ackalusky or Turner. Kazich has not cited any credible evidence that the
level of creativity of persons having ordinary skill in the art is so low. The
various references cited by the Examiner point strongly to a significantly
higher level of creativity.
Finally, we note that Kazich has not argued for patentability based on
secondary considerations such as unexpected results or commercial success.
C. Order
We REVERSE the rejection of claims 1-20 under 35 U.S.C. §112( 1)
for lack of written description of a “rigid” bottom or base, and for lack of
written description of a base lip that extends “above” the top layer of the
drip collector.
We AFFIRM the rejection of claims 1-3, 8, 13, 17, and 18 under
35 U.S.C. § 103(a) in view of the combined teachings of Ackalusky, Taylor,
Perkins, Pagnini, Blant, Rizzuto, Oshio, Suzuya Shokuhin, Smith Goodwin,
Miller, Rhodes, and Hansen.
We AFFIRM the rejection of claims 4-7, 9-12, 14-16, 19, and 20
under 35 U.S.C. § 103(a) in view of the teachings of the references relied on
supra, combined with the teachings of Huffer, Penick, Freedman, Lipper,
Moravick, Shin, Knoerzer, Gottschalk, Goldstein, Witkowski, McClung, and
Bellet.
Appeal 2010-002406
Application 10/800,225

15
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

ssl