Ex Parte Roberts

Patent Trial and Appeal Board

Mar 26, 2013

12253393 (P.T.A.B. Mar. 26, 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 03/26/2013
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
03/26/2013 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)
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 CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

O’HEARN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-3, 5, 6, and 8-13, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Appeal 2011-001747
Application 12/253,393

2
THE INVENTION
Appellant’s claimed invention relates to “a combination food or
beverage tray and catching mitt.” Spec.1, ll 8-9. Claims 1 and 13 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A combination food or beverage tray and catching mitt,
comprising:
(a) first and second opposing panels, said panels being
hingedly joined to each other along a fold line, wherein
each of the first and second opposing panels has a floor
having a top side and a bottom side;
(b) side walls extending outwardly from and around the
top side of the floor, and forming at least one depression
in at least one of the first and second opposing panels,
which at least one depression is shaped to support a food
or beverage item therein; and
(c) a gripping arrangement at the bottom side of the floor
of each of the first and second opposing panels, wherein
each gripping arrangement is suitable for receiving at
least part of a human hand and securing the human hand
to a panel, and wherein each gripping arrangement
comprises a pocket, a sleeve, tubes, a band, a loop, or a
cut-out shape;
wherein the combination is in the form of a food or beverage
tray when in an unfolded position wherein the floor of the first
panel and the floor of the second panel are positioned at
substantially a 180° angle with respect to each other, and
wherein the combination is in the form of a catching mitt when
in a folded position wherein the floor of the first panel and the
floor of the second panel are positioned at an angle of less than
180° with respect to each other.

Appeal 2011-001747
Application 12/253,393

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THE REJECTIONS
Appellant seeks review of the following rejections:
Claims 1-3, 5, 6, and 81-13 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 1-3, 5, 6, 8, 9, 11 and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clark (US 5,094,355, iss. Mar. 10,
1992) in view of Torkelson (US 5,607,077, iss. Mar. 4, 1997), Donche (US
5,353,952, iss. Oct. 11, 1994), or Wagner (US 4,746,057, iss. May 24,
1988).
Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clark in view of Torkelson, Donche, or Wagner, further in
view of Schiltz (US 2006/0283754 A1, pub. Dec. 21, 2006).
ANALYSIS
Rejection under 35 U.S.C. § 112
The Examiner found that independent claims 1 and 13 are indefinite
on two grounds. First, the Examiner found that the term "wherein" renders
the claims indefinite as to what structure is embraced by the metes and
bounds of the claim language. Ans. 3. Second, the Examiner found that the
phrase "wherein each gripping arrangement comprises a pocket, a sleeve,
tubes, a band, or a cutout shape" is "indefinite because it is not clear which

1 The Examiner omits claim 8. However, we understand the Examiner’s
rejection under 35 U.S.C. § 112 to apply to claim 8 as well by virtue of
dependency.
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Application 12/253,393

4
combination is claimed, i.e., a pocket, a pocket or a sleeve, a pocket and a
sleeve, or a band; etc." Ans. 3-4.
The Appeal Brief in section VI does not identify this grounds of
rejection as being appealed and the arguments section lacks any headings or
discussion regarding this ground of rejection. The Reply Brief, however,
includes a section addressing this ground. Appellant points out that the entire
phrase beginning with the word "wherein" contains a list of alternative
structures joined by the disjunctive "or." Reply Br. 1-3. Appellant also
represents that a search of the term "wherein" in issued US patents has
yielded over three million hits from 1976 to the present. Reply Br. 2.
The plain meaning of the claim language supports Appellant's
position. The use of the term "or" at the end of a list of structures normally
would be understood to indicate that they are alternatives. This claim
construction also is supported by the Specification which includes an even
more expansive listing of structures and refers to them as "[e]xamples of
suitable gripping arrangements." Spec. 9, ll. 6-10. Accordingly, we find
that the claims are not unpatentable due to indefiniteness and reverse that
rejection.
Rejection of claims 1-3, 5, 6, 8, 9, 11 and 13 under 35 U.S.C. § 103(a)
Appellant offers arguments pertaining to all the claims subject to this
rejection as a group. App. Br. 6. We select claim 1 as representative. The
remaining claims in this group rise or fall with claim 1. See 37 C.F.R. §
41.37(c)(1)(vii) (2011).
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Application 12/253,393

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The Examiner found that Clark, which discloses a food tray, contains
every feature of the proposed claims other than the gripping arrangements.
Ans. 4-7. The Examiner found examples of Appellant's gripping
arrangements in Torkelson, Donche and Wagner. Ans. 5. The Examiner
concluded that it would have been obvious to provide Clark's tray with a
gripping arrangement as taught by these prior art references in order to grip
the plate securely in one hand. Ans. 5.
Appellant argues that there is no motivation in the cited art that would
lead one to combine the references as the Examiner has done. App. Br. 9-
12. No requirement exists that an "express, written motivation to modify
must appear in prior art references before a finding of obviousness." See
Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004). Appellant
has not explained why the Examiner's stated motivation for combining
references is incorrect. Appellant's argument is unpersuasive of error by the
Examiner.
Appellant also argues that the Examiner relied on non-analogous art.
App. Br. 10. Prior art references must either be in the field of the applicant’s
endeavor or be reasonably pertinent to the particular problem with which the
applicant was concerned in order to be relied upon as a basis for rejection of
the claimed invention. See In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). In
this case, all the references, Clark, Torkelson, Wagner, Donche and Schiltz,
disclose plates or trays for carrying food and thus are in the field of
applicant’s endeavor.
Appeal 2011-001747
Application 12/253,393

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Rejection of claims 10 and 12 under 35 U.S.C. § 103(a)
Claim 10 adds the limitation of being "marked with a message, image,
symbol, logo, or color." App. Br. 17. Claim 12 adds a limitation of a
"nested stack." Id. The Examiner relied on Schiltz for these features. A
review of Schiltz shows these features clearly disclosed in Figures 2g and 3,
respectively. Appellant simply repeats the arguments that were addressed
above. Again, Appellant's arguments are unpersuasive of error by the
Examiner.

DECISION
The decision of the Examiner to reject claims 1-3, 5, 6, and 8-13
under 35 U.S.C. § 112, second paragraph, is reversed.
The decision of the Examiner to reject claims 1-3, 5, 6, and 8-13
under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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