Ex Parte Roberts

Patent Trial and Appeal Board

Jun 4, 2013

12253393 (P.T.A.B. Jun. 4, 2013)

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.
12/253,393 10/17/2008 STEVEN M. ROBERTS ROB-1 9237
54630 7590 06/04/2013
ROBERTS & ROBERTS, LLP
ATTORNEYS AT LAW
P.O. BOX 484
PRINCETON, NJ 08542-0484
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
06/04/2013 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)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________________

Ex parte STEVEN M. ROBERTS
____________________

Appeal 2011-001747
Application 12/253,393
Technology Center 3700
____________________

Before LINDA E. HORNER, CHARLES N. GREENHUT, and
BARRY L. GROSSMAN, Administrative Patent Judges.1

GREENHUT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF CASE
This is a response to a Request for Rehearing of the Board’s Decision
of March 26, 2013. Requests for Rehearing are limited to matters
overlooked or misapprehended by the Panel in rendering the original
decision. See 37 C.F.R. § 41.52.

1 Judge Horner has been substituted for Judge O’Hearn who is no longer a
member of the Board.
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Application 12/253,393

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OPINION
Appellant argues that “the Board has misapprehended or overlooked
the structural features required by the present claims, and leaps to the
conclusion that the features of the cited references would have obviously
been combined to formulate the presently claimed structure.”
In particular, Appellant argues “Clark fails to teach or even
contemplate any securing or attachment of a human hand to their take-out
container.” Request 2-3 (emphasis in the original). This argument is
misfounded. The Examiner found that as the Clark container is carried by a
person the “hinged lid food tray with compartments could be at least used as
gripping arrangement of the first and second opposing panels and is suitable
and capable of receiving at least part of a human hand.” Ans. 9-10. In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
& Inter. 1990). Here, the Examiner is correct in finding that the
compartments on both the top and bottom of Clark’s container are inherently
“gripping arrangements.” Further, Appellant’s own Specification recognizes
“finger grooves” and “raised topography” as “suitable gripping
arrangements.” Spec. 9, ll. 7-8. Therefore, the Examiner was correct in
finding that Clark is capable of receiving at least part of a human hand and
that the top and bottom portion could be used as a gripping arrangement.
Appellant argues that the Board overlooked Appellant’s argument,
raised in the Appeal Brief, that the combination of Torkelson with Clark
would result in a container that would no longer be sealable. Request 3.
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The Board did not overlook this argument, but found it unpersuasive in that
it is based on the assumption that a hole, as taught by Torkelson, would
necessarily be located within a compartment of Clark. Id. This argument is
not persuasive as the combination does not necessarily result in a container
that cannot be sealed. Torkelson teaches locating the hole 48 in a location
which is between two compartments, 26 and 38. See Torkelson figure 1.
The hole 48 of Torkelson could similarly be placed between the two
compartments, e.g., 20 and 18, of Clark in the resulting combination. There
is no teaching in Torkelson for locating the hole anywhere else. As such the
sealing feature of Clark is not destroyed when combined with Torkelson.
The compartments remain sealed and the resulting container has the added
benefit of the hole taught by Clark to aid in securing the container when held
in the hand. When carrying the resulting container, the thumb may secure
the container via the hole while the remaining four fingers are securing the
top of the container. Therefore, Appellant’s argument as to Torkelson is
unpersuasive.
Appellant next argues that the Board overlooked Appellant’s
argument raised in the Appeal Brief that the combination of Clark and
Donche, Wagner, or Torkelson is improper because each is directed towards
a “planar one-handed party plate” And one would not have been led to use
the gripping arrangement of Torkleson, Wagner, and Donche on the
container of Clark because Clark is designed to be sealed for transport or
storage of food rather than immediate consumption while standing. Request
3. We find this argument unpersuasive because the combination allows for a
person to secure Clark’s container during transport where the thumb is
placed on the top of the container, and the remaining four fingers are on the
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bottom of the container. Appellant argues that one would not use the
gripping arrangement of the combinations when the container is open at an
angle of 180°. However, we cannot agree with Appellants that the open
configuration is the only one in which the additional gripping features would
be useful; they would be useful for transporting the closed container.
Appellant finally argues that the combination should be found
nonobvious because it allegedly is the result of “an impermissible obvious to
try” standard of patentability. Request 4-5 (“Whether or not a strap or sleeve
of Donche or Wagner can be added to Clarke’s structure still begs the
question of whether such a modification would have been obvious to do
so.”). As was noted in the Decision, the Examiner advanced two rationales
for why it would have been obvious to a person having ordinary skill in the
art to combine Clark with any one of Torkelson, Donche or Wagner.
Decision 5. The Examiner’s stated motivations for combining the references
are: 1) “in order to grip the plate securely in one hand,” citing to the
Abstract of any one of the secondary references; and 2) it is a matter of
combining known prior art elements according to known methods to yield
predictable results, citing KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727 at
1739 (2007). Ans. 5. Here, the Examiner looked to the references
themselves as the basis for the combination. The Appellant has not apprised
us of why this rejection should be reversed in light of the findings made by
the Examiner and affirmed in the Decision of March 26, 2013.
For the forgoing reasons, Appellant failed to apprise us that any
matter has been misapprehended or overlooked in the rendering of our
original Decision. Reconsideration has been granted to the extent that we
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reconsidered our previous decision. It is denied with respect to making any
changes thereto.
DECISION
The Examiner’s rejections of claims 1-3, 5, 6 and 8-13 remain
affirmed.
DENIED

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