Ex Parte Maniaci

Board of Patent Appeals and Interferences

Jul 25, 2008

10649691 (B.P.A.I. Jul. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID MANIACI
__________

Appeal 2008-0329
Application 10/649,691
Technology Center 3700
__________

Decided: July 25, 2008
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a
cupholding plate. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part, reverse-in-part,
and enter a new ground of rejection.
Appeal 2008-0329
Application 10/649,691

INTRODUCTION
Claims 1-6 are pending and on appeal (App. Br. 2). The Examiner
rejects claims 1-6 under 35 U.S.C. § 103(a) (Ans. 3-7).
Claims 1-3 and 5 read as follows:
1. A cupholding plate comprising:
a plate support surface having a peripheral edge;
a stiffened, circular outer flange rim circumscribing the entire
plate support surface at an elevation above the plate support surfaces [sic];
an upwardly curving peripheral rim connecting between said
plate support surface and said outer flange;
a pair of partition elements connect at a centerpoint of said plate
support surface and radiating out to said outer flange, each partition element
having a flat upper apex connecting to said circular outer flange at the
flanges [sic] elevation, and transitions smoothly to the elevation of the plate
support surface by a curving partition sidewall having a similar curvature
with the upwardly curving peripheral rim;
said partition elements forming an obtuse angle at said
centerpoint at a base of said partition sidewall such that a first large
compartment is formed between the partition elements and the outer flange;
a cup retaining orifice formed within said plate support surface
and positioned such as to intersect at the outer circumference of the outer
flange rim;
a stiffened cup support rim circumscribing said cup retaining
orifice;
a third partition element connecting said cup support rim with
said flat upper apex of said other partition elements, said third partition
element having a flat upper apex that transitions smoothly to the elevation of
the plate support surface by a curving partition sidewall having a similar
curvature with the upwardly curving peripheral rim; and
a stiffened cup support rim contained within the outer
circumference of the plate is a cup retaining orifice and wherein said cup
support rim intersects with said peripheral rim at said plate peripheral edge,
such that both said peripheral rim and said cup support rim are superimposed
about each other along a small arc along their respective circumferences.
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2. The cupholding plate of Claim 1, wherein said cupholding*
plate is formed of a single structural element that is formed of a material
selected from the group comprising foam, paper, pressed paper, and plastic.
3. A cupholding plate comprising:
a plate support surface having a peripheral edge;
a stiffened, circular outer flange rim circumscribing the entire
plate support surface at an elevation above the plate support surfaces [sic];
an upwardly curving peripheral rim connecting between said
plate support surface and said outer flange;
a single partition elements [sic] bisecting said plate support
surface through a centerpoint of said plate support surface between said
outer flange, said partition element having a flat upper apex connecting to
said circular outer flange at the flanges [sic] elevation, and transitions
smoothly to the elevation of the plate support surface by a curving partition
sidewall having a similar curvature with the upwardly curving peripheral
rim;
a cup retaining orifice formed within said plate support surface
and positioned such as to intersect at the outer circumference of the outer
flange rim;
a stiffened cup support rim circumscribing said cup retaining
orifice;
a stiffened cup support rim contained within the outer
circumference of the plate is a cup retaining orifice and wherein said cup
support rim intersects with said peripheral rim at said plate peripheral edge,
such that both said peripheral rim and said cup support rim are superimposed
about each other along a small arc along their respective circumferences.
5. A cupholding plate comprising:
a plate support surface having a peripheral edge;
a stiffened, circular outer flange rim circumscribing the entire
plate support surface at an elevation above the plate support surfaces [sic];
an upwardly curving peripheral rim connecting between said
plate support surface and said outer flange;

* The Claims Appendix included with the Appeal Brief incorrectly states
“cubholding” rather than “cupholding.”
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a cup retaining orifice formed within said plate support surface
and positioned such as to intersect at the outer circumference of the outer
flange rim;
a stiffened cup support rim circumscribing said cup retaining
orifice;
a stiffened cup support rim contained within the outer
circumference of the plate is a cup retaining orifice and wherein said cup
support rim intersects with said peripheral rim at said plate peripheral edge,
such that both said peripheral rim and said cup support rim are superimposed
about each other along a small arc along their respective circumferences.
Claims 1, 3, and 5 are each directed to a plate containing a cup
retaining orifice formed within a plate support surface and a stiffened cup
support rim circumscribing the cup retaining orifice. Claim 1 additionally
requires that the plate includes a pair of partition elements forming an obtuse
angle at a centerpoint of the plate support surface. Claim 3 additionally
requires that the plate includes a single partition element bisecting the plate
support surface.
Claim 2 depends from claim 1 and requires that the plate is formed of
a material selected from a group comprising plastic. Claims 4 and 6
correspond to claim 2 except that they depend from claims 3 and 5,
respectively.
OBVIOUSNESS – MANN, CANER, AND PERLIS
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mann (US Des. 351,316, Oct. 11, 1994) in view of Caner (US
Des. 242,106, Nov. 2, 1976) and Perlis (US 5,803,305, Sep. 8, 1998).
The Examiner relies on Mann for disclosing a plate having most of the
features of claim 1 (Ans. 3-4 & 8). In particular, the Examiner relies on
Mann for disclosing a “cup retaining orifice formed within [a] plate support
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surface” (id. at 3). The Examiner argues that “the opening in the top of the
cupholding section of Mann that allows entry of the cup would constitute a
cup-retaining orifice” (id. at 11).
The Examiner relies on Caner for teaching “a compartmented plate
having partition elements transitioning smoothly to the elevation of the plate
support surface by a curving partition sidewall having a similar curvature
with the upwardly curving peripheral rim” (id. at 4). The Examiner finds
that “[h]aving smooth transitions to the elevation of the plate support surface
provides radii, thereby significantly reducing stress concentrations” (id.).
The Examiner concludes that it would have been obvious “to add smooth
transitions from the partition elements to the plate support surface of Mann
as taught by Caner . . . so as to significantly reduce stress concentrations”
(id.).
The Examiner relies on Perlis for teaching “a cup holding plate having
a stiffened cup support rim, . . . wherein the substantially flat, outwardly
extending cup holder rim provides flexural strength” (id.). The Examiner
concludes that it would have been obvious to add to Mann’s plate “a
stiffened cup support rim as taught by Per[li]s . . . to provide additional
flexural strength” (id.).
Appellant contends that “[n]one of the cited reference[s] teach a cup
holding area where the bottom area is open” (App. Br. 11).
Findings of Fact
1. Claim 1 requires a cupholding plate comprising a plate support
surface, a rim circumscribing the plate support surface at an elevation above
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the plate support surface, and a cup retaining orifice formed within the plate
support surface.
2. Mann describes a cocktail plate having a circular compartment
(Mann, Figs. 1, 3, & 4).
3. The Examiner identifies this circular compartment as a “cup
retaining orifice” (Ans. 8).
4. The Examiner identifies the food-bearing surface of Mann’s
plate as a “plate support surface” (id.).
5. Mann’s circular compartment does not have an opening within
this “plate support surface” (Mann, Fig. 1, 3, & 4). In particular, the
opening in the top of Mann’s circular compartment is at the elevation of the
rim circumscribing the plate support surface and is therefore not within the
plate support surface (id. at Figs. 1 & 2).
6. The Examiner does not rely on either Caner or Perlis for
teaching a cup retaining orifice formed within a plate support surface
(Ans. 4).
Analysis
We agree with Appellant that the Examiner has not set forth a prima
facie case that claim 1 would have been obvious. The Examiner argues that
“the opening in the top of the cupholding section of Mann that allows entry
of the cup would constitute a cup-retaining orifice” (Ans. 11). However, the
opening at the top of Mann’s circular compartment is not an “orifice formed
within the plate support surface” (Finding of Fact (FF) 5). Thus, we agree
that the Examiner has not set forth a prima facie case that Mann describes a
cup retaining orifice formed within the plate support surface. In addition,
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the Examiner does not rely on Caner or Perlis to overcome this deficiency
(FF 6). We therefore reverse the rejection under 35 U.S.C. § 103(a) of
claim 1 and of claim 2, which depends from claim 1.
OBVIOUSNESS – BRUNDAGE, CANER, AND PERLIS
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as obvious
over Brundage (US 3,955,672, May 11, 1976) in view of Caner and Perlis.
The Examiner relies on Brundage for disclosing a plate having most of the
features of claim 3 (Ans. 5). The Examiner relies on Caner and Perlis for the
reasons discussed above with regard to claim 1 (id. at 6). The Examiner also
relies on Perlis for teaching “constructing the container of plastic” (id.).
Appellant contends that the Examiner erred in concluding that
claims 3 and 4 would have been obvious over Brundage, Caner, and Perlis.
Findings of Fact
7. Brundage describes “a plate assembly comprising generally a
body 10 and an integrally formed cup support member 12. The body is
provided with a food-bearing surface 14 . . . and a rim 17. A transverse
upstanding ridge 18 is formed in body 10 and serves to divide the food-
bearing surface of the plate assembly into a plurality of separate
compartments 19.” (Brundage, col. 2, ll. 17-25.)
8. Brundage’s cup support member forms an orifice that
“functions to receive and support a glass or can of liquid” (id. at Figs. 1-3
and col. 1, ll. 57-59).
9. Brundage’s “cup support member 12 is comprised of column 22
and lip 24. Lip 24 is integrally formed with rim 17 and ridge 18.” (Id. at
col. 2, ll. 34-36.)
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10. Brundage’s food-bearing surface 14 has a peripheral edge (id. at
Fig. 1).
11. Brundage depicts an upwardly curving peripheral rim
connecting between the food-bearing surface 14 and the rim 17 (id. at
Fig. 2).
12. Brundage describes using plastic to make the plate (id. at col. 3,
ll. 7-8).
13. Caner depicts a compartmented plate having an upwardly
curving peripheral rim connecting between a food-bearing surface and an
outer rim (Caner, Figs. 2, 3, & 5).
14. Caner also depicts a partition element having a flat upper apex
that transitions smoothly to the elevation of the food-bearing surface by a
curving partition sidewall having a similar curvature with the upwardly
curving peripheral rim (id. at Figs. 1-5).
15. Perlis describes a combined plate and cup holder (Perlis,
Abstract).
16. Perlis describes forming the plate from “inexpensive rigid or
semi-rigid material, such as . . . a plastic material . . . , making the plate
disposable.” Perlis also states that “a reusable plate may be constructed of a
higher grade plastic material . . . or other rigid material.” (Id. at col. 5, 10-
17.)
17. In addition, Perlis describes including a stiffened cup support
rim circumscribing the cup holding compartment (id. at Fig. 4 & col. 5,
ll. 10-17).
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Analysis
Brundage describes a plate having most of the features of claim 3
(FF 7-11). In particular, Brundage describes a plate having a plate support
surface (14), a partition element (18) bisecting the plate support surface, and
a cup retaining orifice formed within the plate support surface (FF 7-8).
Caner describes a partition element having a flat upper apex that
transitions smoothly to the elevation of the plate support surface by a
curving partition sidewall having a similar curvature with the upwardly
curving peripheral rim (FF 14). We agree with the Examiner that it would
have been obvious to provide Brundage’s plate with smooth transitions from
the apex of the partition element to the plate support surface, as described in
Caner.
Perlis describes a stiffened cup support rim circumscribing the cup
holding compartment (FF 17) and forming the plate from plastic (FF 16).
We agree with the Examiner that it would have been obvious to include
Perlis’s stiffened cup support rim in Brundage’s plate and to form the plate
from plastic.
Appellant argues, however, that “the examiner states that Brundage
does not teach smooth transition between partition and plate support. This
seems to go against the assertion that Brundage teaches ‘[a]n upwardly
curving peripheral rim connection between said plate support surface and
said outer flange.’” (App. Br. 11-12.)
We are not persuaded by this argument. The Examiner states that
“Brundage fails to teach the partition element transitioning smoothly to the
elevation of the plate support surface by a curving partition sidewall having
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a similar curvature with the upwardly curving peripheral rim” and therefore
relies on Caner to teach this feature (Ans. 6 (emphasis added)). However,
we do not agree that this statement goes against the Examiner’s assertion
that Brundage teaches an “upwardly curving peripheral rim connecting
between said plate support surface and said outer flange” (id. at 5 (emphasis
added)). The Examiner is referring to two different claim features.
Appellant also argues that “the examiner does not cite a figure for ‘[a]
plate support surface having a peripheral edge’” (App. Br. 12). We are not
persuaded by this argument. The Examiner clearly identifies Brundage’s
food-bearing surface 14 as the plate support surface (Ans. 10). Food-bearing
surface 14 has a peripheral edge (FF 10).
With respect to claim 4, Appellant additionally argues that “[t]wo
references are made in [Perlis] of plastic. The first specifically states the
plastic must be able to be thrown away. The second states that it is made of
a higher grade plastic not to be thrown away. This may not encompass all
plastics, allowing for claiming of a specific type of plastic.” (App. Br. 11.)
In addition, Appellant argues that “it seems unobvious to combine two
inventions that are made of two different plastics with clearly different
purposes” (Reply Br. 3).
We are not persuaded by these arguments. First, claim 4 does not
claim a specific type of plastic. Second, the Examiner does not argue that it
would have been obvious to combine the two types of plastic described in
Perlis to form a plate. Instead, the Examiner relies on Perlis to teach the use
of plastic generally, as recited in claim 4 (Ans. 6 & 13).
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In addition, Appellant argues that “[t]here is no suggestion as to the
desirability of any modification of the references to describe the present
invention” (App. Br. 13). In particular, Appellant argues that “there must be
a reason or suggestion in the art for selecting the design” (id.).
We are not persuaded by this argument. “[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). The
Examiner finds that it would have been obvious “to add smooth transitions
from the partition elements to the plate support surface of Brundage as
taught by Caner . . . so as to significantly reduce stress concentrations”
(Ans. 6). The Examiner also finds that it would have been obvious to
include “a stiffened cup support rim as taught by Perlis . . . to provide
additional flexural strength” (id.). Appellant has not shown that these
findings are incorrect.
We conclude that the Examiner has set forth a prima facie case that
claims 3 and 4 would have been obvious over Brundage in view of Caner
and Perlis, which Appellant has not rebutted. We therefore affirm the
rejection of claims 3 and 4 under 35 U.S.C. § 103(a).
OBVIOUSNESS – BRUNDAGE AND PERLIS
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as obvious
over Brundage in view of Perlis. The Examiner relies on Brundage for
disclosing a plate having most of the features of claim 5 (Ans. 7). The
Examiner relies on Perlis for the reasons discussed above with regard to
claims 1 and 3 (id.).
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Appellant contends that the Examiner erred in concluding that
claims 5 and 6 would have been obvious over Brundage and Perlis.
Analysis
Brundage describes a plate having most of the features of claim 5
(FF 7-11). In particular, Brundage describes a plate having a plate support
surface (14) and a cup retaining orifice formed within the plate support
surface (FF 7-8).
Perlis describes a stiffened cup support rim circumscribing the cup
holding compartment (FF 17) and forming the plate from plastic (FF 16).
We agree with the Examiner that it would have been obvious to include
Perlis’s stiffened cup support rim in Brundage’s plate and to form the plate
from plastic.
Appellant traverses the rejection of these claims for substantially the
same reasons as the rejection of claims 3 and 4 (App. Br. 12). We are
unpersuaded by these arguments for the reasons discussed above.
We conclude that the Examiner has set forth a prima facie case that
claims 5 and 6 would have been obvious over Brundage in view of Perlis,
which Appellant has not rebutted. We therefore affirm the rejection of
claims 5 and 6 under 35 U.S.C. § 103(a).
NEW REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: claims 1 and 2 are rejected under 35 U.S.C.
§ 103(a) as obvious over Mann in view of Caner, Brundage, and Perlis.
Mann describes a plate comprising:
a plate support surface having a peripheral edge;
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a stiffened, circular outer flange rim circumscribing the entire plate
support surface at an elevation above the plate support surface;
an upwardly curving peripheral rim connecting between the plate
support surface and the outer flange;
a pair of partition elements connecting at a centerpoint of the plate
support surface and radiating out to the outer flange, each partition element
having a flat upper apex connecting to the circular outer flange at the flange
elevation, the partition elements forming an obtuse angle at the centerpoint
at a base of the partition sidewall such that a first large compartment is
formed between the partition elements and the outer flange;
a circular compartment formed within the plate support surface and
positioned such as to intersect at the outer circumference of the outer flange
rim;
a circular compartment rim circumscribing the circular compartment;
and
a third partition element connecting the circular compartment rim with
the flat upper apex of the other partition elements, the third partition element
having a flat upper apex;
wherein the circular compartment rim intersects with the peripheral
rim at the plate peripheral edge, such that both the peripheral rim and the
circular compartment rim are superimposed about each other along a small
arc along their respective circumferences (Mann, Figs. 1-4; see Ans. 8).
Caner describes a partition element having a flat upper apex that
transitions smoothly to the elevation of the plate support surface by a
curving partition sidewall having a similar curvature with the upwardly
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curving peripheral rim (FF 14). We find that it would have been obvious to
provide Mann’s plate with smooth transitions from the apex of the partition
elements to the plate support surface, as described in Caner, for the reasons
indicated by the Examiner in rejecting claim 1.
Brundage describes “a plate assembly comprising generally a body 10
and an integrally formed cup support member 12” (FF 7). Brundage’s cup
support member forms an orifice that “functions to receive and support a
glass or can of liquid” (FF 8). Brundage also teaches that the plate is made
of plastic (FF 12). We find that it would have been obvious to include a cup
support member forming an orifice, as described in Brundage, in place of
Mann’s circular compartment “to receive and support a glass or can of
liquid.” We also find that it would have been obvious to form the plate of
plastic, as described in Brundage.
Perlis describes a stiffened cup support rim circumscribing the cup
holding compartment (FF 16-17). Assuming that Brundage’s cup support
member is not inherently stiffened, we find that it would have been obvious
to form the cup support member from a stiffened material, as described in
Perlis, to provide additional support for the glass or can of liquid.
In traversing the rejection of claims 1 and 2 over Mann, Caner, and
Perlis, Appellant argues that “Mann does not seem to disclose the specific
connection at the center point as disclosed in this claim. The curvature of
the pieces seem[s] different [than] what is disclosed in this invention. There
is specific curvature in the cited reference that does not seem to teach the
angular requirements of this claim.” (App. Br. 11.) In addition, Appellant
argues that Mann’s “Fig. 4 shows that the lower left portion does not form
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an angle at the centerpoint. It terminates past the centerpoint, to the right.
Additionally, [i]t does not terminate at the center, but toward the upper-
right.” (Reply Br. 2.)
We are not persuaded by these arguments. As noted by the Examiner,
“Mann teaches the pair of partition elements forming an obtuse angle at a
center point, as shown in both Fig. 3 and Fig. 4 in the upper portion of the
figures. This meets the limitations of the claims.” (Ans. 11.) In addition,
we are not relying on Mann for teaching the curvature of the partition
sidewalls. Instead, we are relying on Caner for this limitation.
CONCLUSION
We affirm the rejections of claims 3-6 under 35 U.S.C. § 103(a). We
reverse the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) over Mann
in view of Caner and Perlis, but set forth a new ground of rejection of these
claims under 35 U.S.C. § 103(a) over Mann in view of Caner, Brundage, and
Perlis.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
that “Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides: “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
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-IN-PART, 37 C.F.R. § 41.50(b)

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