Ex Parte Schramm

Board of Patent Appeals and Interferences

Dec 16, 2009

10092878 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL R. SCHRAMM
____________

Appeal 2008-004346
Application 10/092,878
Technology Center 1700
____________

Decided: December 16, 2009
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
BRADLEY R. GARRIS and JEFFREY B. ROBERTSON, Administrative
Patent Judges.

ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21-45 and 47-54 (Appeal Brief filed October 13, 2007, hereinafter
“App. Br.,” at 2; Final Office Action mailed December 6, 2006). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2008-004346
Application 10/092,878

STATEMENT OF THE CASE
Appellant’s claimed invention relates to a spill-resistant container and
a kit including, inter alia, the spill-resistant container that can be used, for
example, for coloring eggs or for general painting (Specification, hereinafter
“Spec.,” 3). According to Appellant, the spill-resistant container has a low
manufacturing cost so as to be considered disposable and provides
convenience by avoiding the need to pour a liquid or paint powder
concentrate into the container to use in coloring (Spec. 4-5).
Claims 21, 22, 26, 34, and 47 are illustrative:
21. A kit comprising the combination of a container, at least
one work piece, at least one utensil, and a colorant, wherein
said container includes an inner cavity, an exterior, an opening
in a wall of said container and a funnel connected to said
opening to provide communication between said inner cavity
and the exterior of said container, and wherein said work piece,
said utensil, and said colorant are at least partially removably
contained within said container.
22. The kit of claim 21 wherein said work piece defines at
least one colorable work piece of the following group of
colorable work pieces consisting of a substantially egg shaped
work piece, an edible work piece, a substantially egg shaped
edible work piece, and an egg, and wherein said utensil defines
at least one non-edible utensil of the following group of non-
edible utensils consisting of a brush, a spoon, a device having a
handle portion and a non-handle potion, a wire egg dipper, a
pair of tongs, a straw, and a device for use in dipping eggs
having a handle portion and an open loop portion, and wherein
said colorant defines at least one colorant of the following
group of colorants consisting of a colorant tablet, a
predetermined quantity of powdered colorant, a discrete unit of
colorant concentrate, and a colorant pill defining a colorant
powder concentrate enclosed within a liquid soluble container.
26. The kit of claim 22 wherein said container includes at
least one liquid flow channel formed in a wall of said container.
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34. A kit comprising the combination of a container, non-
fluid edible matter removably contained within said container,
and at least one utensil at least partially removably contained
within said container wherein said container includes an inner
cavity, an exterior, an opening in a wall of said container and a
funnel connected to said opening to provide communication
between said inner cavity and the exterior of said container, and
wherein said utensil defines at least one non-edible utensil of
the following group of non-edible utensils consisting of, a
brush, a spoon, a device having a handle portion and a non-
handle potion, a pair of tongs, a straw, a wire egg dipper, a
device for use in dipping eggs having a handle portion and an
egg retention portion, and a device having a handle portion and
an open loop portion.
47. A kit comprising the combination of a container, edible
matter, and a utensil, wherein said container includes an inner
cavity, an exterior, an opening in a wall of said container, and a
non-annular funnel connected to said opening to provide
communication between said inner cavity and the exterior of
said container, and wherein said utensil and said edible matter
are at least partially removably contained within said container.
(App. Br. 18-21; Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed December 26, 2007, hereinafter
“Ans.,” 3):
McCombs 1,254,714 Jan. 29, 1918
Meth 3,464,599 Sept. 2, 1969
Price 3,840,678 Oct. 8, 1974
Ashton 4,438,564 Mar. 27, 1984
Fowler 4,921,713 May 1, 1990
McShane 4,967,687 Nov. 6, 1990
Law 5,074,239 Dec. 24, 1991
Lintvedt 5,143, 294 Sept. 1, 1992
Schramm 5,246,046 Sept. 21, 1993
Martindale 5,758,797 June 2, 1998
Hunter GB 1,428,356 Mar. 17, 1976
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Tomatsu1 JP 11-227,388 Aug. 24, 1999

The Examiner rejected the claims as follows:
I. Claims 22-27, 34-39, 40-45, and 47-512 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement (Ans. 4-6);
II. Claims 22-27, 34-39, 41, and 49 under 35 U.S.C. § 112, second
paragraph, as indefinite (Ans. 6-7);
III. Claims 21, 22, 24-28, 30-34, 36-45, and 47-51 under 35 U.S.C.
§ 103(a) as unpatentable over Law, Schramm, Hunter, Price,
Martindale, and JP ‘388 (Ans. 8-12);
IV. Claims 23, 29, and 35 under 35 U.S.C. § 103(a) as unpatentable
over Law, Schramm, Hunter, Price, Martindale, JP ‘388, and
Lintvedt (Ans. 12);
V. Claims 47 and 48 under 35 U.S.C. § 103(a) as unpatentable
over Law, Schramm, Hunter, Price, Martindale, and JP ‘388
and, if necessary, McShane (Ans. 12-13);
VI. Claims 34, 36, 38, 39, and 47-49 under 35 U.S.C. § 102(b) as
anticipated by Price (Ans. 13-14);
VII. Claim 35 under 35 U.S.C. § 103(a) as unpatentable over Price
and Lintvedt (Ans. 14);

1 The Examiner and Appellant refer to Tomatsu as Japan 11-227388 and
Japan ‘388. Thus, for consistency, we also refer to Tomatsu as JP ‘388.
2 The Examiner rejected claims 22-24, 34-39, 40-45, and 47-51 (Ans. 4-6).
While not explicitly stated, it is understood that dependent claims 25-27 are
rejected as they depend from and therefore include the limitations of parent
claim 22 (Ans. 4-6). Thus, the Examiner’s error in listing claim numbers is
harmless.
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VIII. Claim 373 under 35 U.S.C. § 103(a) as unpatentable over Price
and Schramm (Ans. 14-15);
IX. Claims 40-42, 44, and 45 under 35 U.S.C. § 102(b) as
anticipated by McCombs (Ans. 15);
X. Claim 43 under 35 U.S.C. § 103(a) as unpatentable over
McCombs and Schramm (Ans. 15-16);
XI. Claims 40 and 43-45 under 35 U.S.C. § 102(e) as anticipated by
Martindale (Ans. 16-17);
XII. Claim 42 under 35 U.S.C. § 103(a) as unpatentable over
Martindale (Ans. 17);
XIII. Claim 41 under 35 U.S.C. § 103(a) as unpatentable over
Martindale and Lintvedt (Ans. 17); and
XIV. Claims 52-54 under 35 U.S.C. § 103(a) as unpatentable over
Price and Meth (Ans. 17-18).
We reverse Rejection II. However, we affirm Rejections I and III-
XIV with respect to all claims except for claims 40 and 42-45 of Rejection I;
claims 26, 32, 38, and 44 of Rejection III; claims 38, 47, and 48 of Rejection
VI; and claim 44 of Rejections IX and XI.

A. 112, ¶¶ 1 and 2
I. Claims 22-27, 34-39, 40-45, and 47-51: Lack of Written Description
The Examiner found, inter alia, that the claimed subject matter
directed to: (i) a “non-annular funnel” (claim 47); (ii) “non-edible utensil”

3 In the Examiner’s Answer, the Examiner states claim 35 is rejected, but
the Examiner's rejection plainly addresses the subject matter of claim 37
(Ans. 14-15; claim 37). Accordingly, the Examiner’s typographical error is
harmless.
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(claims 22, 34, 48, and 49); and (iii) a utensil or device “having a handle
portion and an open loop portion” (claims 22, 34, 41, 48, and 50) violate the
written description requirement of 35 U.S.C. § 112, ¶1 (Ans. 4-6).
Appellant, on the other hand, argues that the originally filed
Specification describes a funnel having an elliptical (i.e., “non-annular”)
cross-sectional shape (App. Br. 6-7), and therefore, “non-annular funnel”
does not contravene the written description requirement, regardless if it
encompasses more configurations than the elliptical shape described in the
Specification as filed (App. Br. 8). The Appeal Brief contains no arguments
regarding the claimed subject matter identified at (ii) and (iii) above.
ISSUE
Thus, the issue arising from Appellant’s contentions is:
Has Appellant shown reversible error in the Examiner’s finding that
the disclosure, as originally filed, does not reasonably convey to one skilled
in the relevant art that Appellant had possession of the now claimed
invention directed to: (i) a “non-annular funnel” (claim 47); (ii) a “non-
edible utensil” (claims 22, 34, 48, and 49); and (iii) a utensil or device
“having a handle portion and an open loop portion (claims 22, 34, 41, 48,
and 50)”?

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FINDINGS OF FACT (“FF”)
1. Appellant’s Figure 2 is reproduced below:

Figure 2 depicts a container that comprises a cup 20 having a
plurality of flow channels 26 formed into the wall of the
container (Spec. 4 and 6).
2. Appellant’s Specification, as originally filed, does not describe
any other shapes of a funnel that is “non-annular,” other than an
ellipse. (See generally, Appellant’s Specification, FF 1).

PRINCIPLES OF LAW
The proper test for determining whether claims comply with the
written description requirement of 35 U.S.C. § 112, ¶ 1 is whether the
originally filed disclosure of an application would have reasonably conveyed
to one skilled in the art that the inventor had possession of the later claimed
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subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991). Additionally, a claim cannot be broadened when it is amended to
include embodiments that are inconsistent with the original disclosure.
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998)
(“[C]laims may be no broader than the supporting disclosure.”).

ANALYSIS
With regard to the phrase “non-annular funnel” (claim 47), Appellant
contends that the originally filed disclosure supports the now claimed
invention because it describes a funnel having an elliptical (i.e., non-annular)
cross-section (App. Br. 8).
We are unpersuaded by Appellant’s contention. As asserted by the
Examiner and acknowledged by Appellant, the now claimed invention
encompasses more than an elliptically shaped funnel (Ans. 4-5; App. Br. 8-
9). Indeed, Appellant states that the now claimed invention reads on a
funnel having a rectangular cross-section (App. Br. 8). However, Appellant
does not direct us to any evidence in the original disclosure that shows that a
person skilled in the relevant art would have understood that the inventor
had possession of a funnel having a rectangular cross-section (FF 1-2; Br. 4-
15). Accordingly, Appellant has not demonstrated error on the part of the
Examiner.
In the Appeal Brief, Appellant does not contest the Examiner’s
determination that the subject matter of a “non-edible utensil” (claims 22,
34, 48, and 49) and a utensil or device “having a handle portion and an open
loop portion” (claims 22, 34, 41, 48, and 50) fail to comply with the written
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description requirement (Ans. 5-6).4 Therefore, Appellant has failed to
demonstrate that the Examiner reversibly erred in rejecting these claims.
For these reasons, we uphold the Examiner’s rejection of claims 22-
27, 34-39, 41, and 47-51.
Regarding claim 40, it is apparent from the record that Appellant
amended independent claim 40 (Amendment received June 26, 2006) to
delete the phrase “unit of liquid dye concentrate” which the Examiner
identified as failing to comply with the written description requirement of 35
U.S.C. § 112, ¶ 1 (Office action mailed April 19, 2006 at 4). Thus, we
reverse the Examiner’s rejection of claim 40 and dependent claims 42-45.

II. Claims 22-27, 34-39, 41, and 49: Indefiniteness
The Examiner asserted that the claim terms “discreet” (claim 49) and
“potion” (claims 22, 34, and 41) cause the claimed invention to be indefinite
because it is unclear how “discreet” further limits the claimed invention and
it is unclear what a “potion” encompasses (Ans. 6-7).
ISSUE
Thus, an issue on appeal is:
When reading the claimed invention in light of the specification,
would one of ordinary skill in the relevant art have understood the scope of
the claimed invention, though the claims recite the claim terms “discreet”
and “potion”?

4 To the extent that arguments not found in the Appeal Brief are present for
the first time in Appellant’s Reply Brief filed on February 1, 2008 (Reply
Br. 3-4), they are not timely and were waived upon filing of the Appeal
Brief. See 37 C.F.R. § 41.37 (c)(1)(vii).
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ADDITIONAL FINDINGS OF FACT (“FF”)
3. Appellant’s Figure 3 is reproduced below:

Figure 3 depicts a container assembly 10 including an egg 50
and a brush 60 (Spec. 6).

PRINCIPLE OF LAW
“[T]he definiteness of the language employed must be analyzed-not in
a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).

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ANALYSIS
We do not agree with the Examiner that the recitation of “discreet”
(claim 49) and “non-handle potion” (claims 22, 34, and 41) are indefinite.
Though the Examiner alleges that (i) “it is unclear how [“discreet”] further
limits the claimed objects”; and (ii) it is “unclear what a ‘potion’
encompasses” (Ans. 6-7), the Examiner has not provided sufficient rationale
that the claim terms, in view of the Specification, would have been
confusing to one skilled in the relevant art. Moore, 439 F.2d at 1235. The
skilled artisan would have understood that the terms “discreet” and “potion”
were merely typographical errors in view of Figure 3 of the Specification,
which shows an edible article and non-edible article as two discrete
unconnected objects and a brush having handle and non-handle portions (FF
3).

B. 35 U.S.C. §§ 102 and 103
III. Claims 21, 22, 24-28, 30-34, 36-45, and 47-51: Obviousness over Law,
Schramm, Hunter, Martindale, Price, and JP ‘388
Appellant argues claims 21, 22, 24, 25, 27, 28, 30, 31, 33, 34, 36, 37,
39-43, 45, and 47-51 together and claims 26, 32, 38, and 44 together (App.
Br. 9-12).5 Accordingly, we select claims 21 and 26 as representative of the
appealed claims and confine our discussion to these selected claims. 37
C.F.R. § 41.37(c)(1)(vii).

5 With regard to claims 25, 31, 37 and 43 and claims 24, 30, 36, and 42,
Appellant discusses the recited limitations, but does not argue for separate
patentability of the claims (App. Br. 10-11).
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The Examiner found, as to claim 21, that Law teaches every
limitation, except “a funnel connected to said opening to provide
communication between said inner cavity and the exterior of said container”
(Ans. 10). To account for the difference, the Examiner relied on Schramm,
Hunter, Martindale, Price, and JP ‘388, which are each said to teach a
container with a funnel connected to the opening of the container to provide
communication between the exterior and interior of the container while
preventing spilling of flowable non-gaseous (solid or liquid) materials (Ans.
8-10.). The Examiner then concluded that it would have been obvious to
one of ordinary skill in the art to substitute Lee’s container with a container
having a funnel as taught by any of Schramm, Hunter, Martindale, Price, and
JP ‘388 to prevent spills of flowable non-gaseous material from the
containers (Ans. 10 and 11).
With regard to claim 26, the Examiner recognized that Law does not
disclose the claimed flow channel (Ans. 10). However, the Examiner
asserted that the limitation “at least one liquid flow channel formed in a wall
of said container” does not establish how the flow channel relates to other
structural elements of the container (id.). The Examiner then relied on a
definition of “channel,” as “a passage for water (or other fluids) to flow
through,” and asserted that “the wall of the container below the funnel and
including the funnel of the Schramm, Hunter, Japan ‘388 . . . Martindale,
[and] Price . . . container can serve as a flow channel” (Ans. 22).
Appellant, on the other hand, contends that there is no motivation to
combine the cited references because although Law discloses spilling as a
problem, Law attempts to solve the spilling problem by providing an egg
crate structure (App. Br. 10). Further, Appellant asserts that a container that
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provides ready access to a removable egg yet provides spill resistance of
liquid contents is nonobvious, and that a container “having a funnel member
of a size and shape that will allow for the passage of an egg is
counterintuitive” (id.). Appellant contends that the Examiner erred because
a container having a non-cylindrical/non-conical funnel has been patented
(id.).
With regard to the rejection of claim 26, Appellant contends that the
Examiner erred in finding that the cited references disclose the flow channel
as claimed because the flow channel is limited to a channel “formed within a
wall” and that “[i]f the entire wall (and even funnel) is to be considered the
flow channel, then the so-called flow channel of the cited art cannot be
formed within a wall” (id. at 11-12 emphasis added).

ISSUES
Thus, the issues arising from Appellant’s contentions are:
Has Appellant shown reversible error in the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art to
substitute Law’s egg coloring containers with spill resistant containers
having funnels, as taught by Schramm, Hunter, Martindale, Price, and JP
‘388, to arrive at the invention of claim 21?
Has Appellant shown reversible error in the Examiner’s finding that
each of Schramm, Hunter, Martindale, Price, and JP ‘388 discloses the
claimed subject matter of a container having a “liquid flow channel formed
in a wall of said container,” as required in claim 26?

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ADDITIONAL FINDINGS OF FACT (“FF”)
4. Law’s Figure 1 is reproduced below:

Figure 1 depicts a kit 10 including a dye chamber 14, an egg 20
(i.e., a work piece), brush (not labeled) and egg ladle 44 (i.e.,
utensils), and dye tablets 52 (i.e., colorant) (col. 3, ll. 8-10, 29-
38, and 40-43).
5. Law discloses that it is known in the art of egg dyeing that
spilling frequently occurs with traditional containers containing
dye (col. 1, ll. 19-27).
6. Hunter’s Figures 1-4 are reproduced below:

Figures 1-4 depict a non-spill container having a collar 15 (i.e.,
funnel) so that fluent material (e.g., water and paint) within the
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container will not spill when the container is tilted or inverted
(Hunter at 1, ll. 9-10, 19-25; 3, ll. 15-25).

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Adopted claim construction must be “reasonable in light of the totality
of the written description.” In re Baker Hughes Inc., 215 F.3d 1297, 1303
(Fed. Cir. 2000).

ANALYSIS
Claim 21
We are unpersuaded by Appellant’s contention that there is no
motivation to combine the teachings of the prior art because Law is directed
to a conventional egg coloring container and Schramm, Hunter, Martindale,
Price, and JP ‘388 are directed to spill resistant containers.6 (See App. Br.
10). Law describes the problem of spilling associated with egg coloring
containers (FF 5). Hunter teaches a container for fluid material (e.g., water
and paint) having a funnel connected to the opening of the container so that
the container is spill resistant when tilted or inverted (FF 6). Appellant has
failed to demonstrate that when combining Hunter’s container with Law’s
egg coloring kit (FF 4), one of ordinary skill in the art would not have

6 We confine our discussion to Law and Hunter, as the teachings of
Schramm, Martindale, Price, and JP ‘388 are cumulative to Hunter’s
teachings.
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expected Hunter’s container to maintain its function as a spill resistant
container in a predictable manner. See KSR, 550 U.S. at 416. For these
reasons, Appellant has not shown that the Examiner erred in concluding that
claim 21 would have been obvious over Law, Schramm, Hunter, Martindale,
Price, and JP ‘388.
We also find no persuasive merit in Appellant’s contention that the
Examiner erred because a container having a non-cylindrical/non-conical
funnel has been patented (App. Br. 10). Claims must be adjudged as to
patentability on the record in their own case. See In re Wertheim, 541 F.2d
257, 264 (CCPA 1976) (“it is immaterial in ex parte prosecution whether the
same or similar claims have been allowed to others.”); see also In re Giolito,
530 F.2d 397, 400 (CCPA 1976) (“We reject appellants’ argument that the
instant claims are allowable because similar claims have been allowed in a
patent.”).
Accordingly, we affirm the Examiner’s rejection of claims 21, 22, 24,
25, 27, 28, 30, 31, 33, 34, 36, 37, 39-43, 45, and 47-51.
Appellant relies on the same arguments as set forth for claim 21 for
the Examiner’s rejection of claims 23, 29, and 35 over Law, Schramm,
Hunter, Price, Martindale, JP ‘388, and Lintvedt (App. Br. 12) in Rejection
IV. Accordingly, we affirm Rejection IV for the same reasons.

Claim 26
We do not agree with the Examiner that the claimed subject matter
reads on a flow channel produced by the container wall and funnel disclosed
in each of Schramm, Hunter, Martindale, Price, and JP ‘388 (Ans. 12 and
22). Claim 26 requires “at least one liquid flow channel formed in a wall of
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said container.” As illustrated in Appellant’s Figure 2, the flow channels are
formed in the container wall (FF 1). Therefore, one of ordinary skill in the
art would have understood the claimed subject matter “liquid flow channel
formed in a wall” requires a channel in the wall. Thus, the Examiner erred
by interpreting the claims in a manner directly contrary to Appellant’s
Specification. See Baker Hughes Inc., 215 F.3d at 1303. Accordingly, we
do not uphold the Examiner’s rejection of claims 26, 32, 38, and 44.
The Examiner relied on similar rationale in rejecting claims 38 and 44
under 35 U.S.C. § 102(b) as being anticipated by Price or McCombs in
Rejections VI and IX respectively, and claim 44 under 35 U.S.C. § 102(e) as
being anticipated by Martindale in Rejection XI. Accordingly, for these
claims, we reverse the Examiner’s rejections for the same reasons.

V. Claims 47 and 48: Obviousness over Law, Schramm, Hunter, Price,
Martindale, JP ‘388, and McShane
Appellant argues the appealed claims together (App. Br. 12).
Accordingly, we select claim 47 as representative and confine our discussion
to this selected claim. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found, as to claim 47, that the combined teachings of
Law, Schramm, Hunter, Price, Martindale, and JP ‘388 fail to disclose that
the funnel is non-annular (Ans. 12). To account for this difference, the
Examiner relied on McShane, which is said to teach providing a non-annular
opening of a container for dyeing eggs (Ans. 13). The Examiner concluded
that it would have been obvious to one of ordinary skill in the art to modify
the opening of the container with a connected funnel of any of Schramm,
Hunter, Price, Martindale, and JP ‘388 as used in Law’s kit to be a non-
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annular opening, as taught by McShane, to facilitate inserting an egg into the
container (Ans. 12-13).
Appellant, on the other hand, asserts that McShane’s teachings are
directed to the overall shape of the container, not to a “non-annular funnel,”
as required by the claimed invention (App. Br. 12). In addition, Appellant
contends that “a container having a ‘non-cylindrical/non-conical funnel’
(i.e., a non-annular funnel) has been held to be allowable by virtue of several
patents . . . .” (App. Br. 12).
ISSUE
Thus, the issue arising from Appellant’s contentions is:
Has Appellant shown reversible error in the Examiner’s conclusion
that one of ordinary skill in the art would have been led to modify the
opening of a container having a connected funnel, as taught by the combined
teachings of Law, Schramm, Hunter, Price, Martindale, and JP ‘388, to have
a non-annular opening, in view of the teachings of McShane, thus arriving at
the claimed invention of claim 47?

ADDITIONAL FINDINGS OF FACT (“FF”)
7. McShane’s Figure 1 is reproduced below:

Figure 1 depicts a hemioval-shaped container for dyeing eggs
(col. 3, 18-22; col. 6, ll. 60-64).
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ANALYSIS
We find no merit in Appellant’s contention that the Examiner erred
because McShane discloses a non-annular overall container shape (FF 7)
while the claim requires a non-annular funnel (App. Br. 12). Appellant has
not submitted any persuasive evidence that it would have been beyond the
skill of an artisan to modify the opening of the container and connected
funnel of Schramm, Hunter, Price, Martindale, and JP ‘388, as used in Law’s
kit, to be non-annular. See KSR, 550 U.S. at 417 (“[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”).
Appellant’s contention that the Examiner erred because “a container
having a ‘non-cylindrical/non-conical funnel’ (i.e., a non-annular funnel) has
been held to be allowable by several patents including US RE39,443” is
unpersuasive. As discussed above, “it is immaterial in ex parte prosecution
whether the same or similar claims have been allowed to others.” See
Wertheim, 541 F.2d at 264. See also Giolito, 530 F.2d at 400. Accordingly,
Appellant failed to show that the Examiner erred in rejecting claims 47 and
48 as obvious over Law, Schramm, Hunter, Price, Martindale, JP ‘388 and
McShane.

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VI. Claims 34, 36, 387, 39, and 47-49: Anticipation by Price
The Examiner found that Price discloses every limitation of the
claimed invention (Ans. 12-14). With regard to claims 47 and 48, the
Examiner found that “absent the new matter [i.e., the claimed subject matter
lacking written description support under 35 U.S.C. § 112, ¶ 1] Price teaches
every element of the claimed kit” (Ans. 13).
Appellant, on the other hand, contends, with regard to claim 34, that
the limitation “non-fluid edible matter removably contained within said
container” was not addressed by the Examiner (App. Br. 13). Appellant also
asserts that the Examiner erred because Price does not disclose an edible
article and a non-edible (or edible) utensil (App. Br. 13). Specifically,
Appellant contends that Price teaches a single utensil comprising a spoon
and an edible handle and that “absent the utensil itself, Price does not teach
an edible article” (id.).
With regard to the rejection of claims 47 and 48, Appellant contends
that Price teaches a conical funnel, not a “non-annular funnel,” as required
by the claimed invention (App. Br. 13).
With regard to the rejection of claim 49, Appellant asserts that the
claimed subject matter of “a non-edible utensil that is separate from and
used in combination with an edible article” (i.e., “said edible article and said
non-edible utensil define two discreet [sic] unconnected objects . . .”)
distinguishes over Price, which merely discloses a singular utensil that is
inserted and withdrawn from a container (id. at 13-14).

7 The Examiner’s rejection of claim 38 was reversed above. (See page 17).
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ISSUES
Thus, the issues arising from Appellant’s contentions are:
Has Appellant shown reversible error in the Examiner’s finding that
Price discloses a non-fluid edible matter removably contained in the
container, as required by claim 34?
Has Appellant shown reversible error in the Examiner’s finding that
Price anticipates the claimed invention of claims 47 and 48, which includes
“a non-annular funnel”?
Has Appellant shown reversible error in the Examiner’s finding that
Price discloses an edible article and a non-edible utensil that are
unconnected, as required by claim 49?

ADDITIONAL FINDINGS OF FACT (“FF”)
8. Price’s Figures 2 and 7 are reproduced below:

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Figures 2 and 7, respectively, depict a cup 10 having a cone 14
connected to the opening of the cup and a bread stick 26 having
a spoon 32 extending from one end, wherein fluid food 20 (i.e.,
an edible article) that is contained in the cup may be removed
from the cup by the bread stick or spoon and eaten (col. 1, ll.
34-40; col. 2, ll. 15-17).
9. Price discloses that the spoon is made of a non-edible material
(col. 2, ll. 35-39).

PRINCIPLE OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS
Claims 34, 36, 39, and 49
Appellant submits separate specific arguments to claims 34 and 49.
We address these arguments accordingly.
We agree with the Examiner that (i) Price’s figures plainly show a kit
including a breadstick (i.e., a non-fluid edible matter) that is disclosed as
removably contained within the container (Ans. 21; FF 8); and (ii) Price
discloses a container with an amount of fluid food 20 (i.e., an edible article)
therein that is unconnected to a non-edible spoon 32 (i.e., non-edible utensil)
extending from the breadstick (Ans. 13; FF 8 and 9). Accordingly, we find
no merit in Appellant’s contentions that (i) the Examiner has not addressed
the limitation “non-fluid edible matter removably contained within said
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container,” as required by claim 34; and (ii) Price does not disclose “an
edible article and a non-edible utensil” that are unconnected, as required by
claim 49.
We affirm the Examiner’s rejection of claims 34, 36, 39, and 49.
Appellant relies on the same arguments as set forth for claim 34 for
the Examiner’s rejection of claim 35 over Price and Lintvedt in Rejection
VII and claim 37 over Price and Schramm in Rejection VIII (App. Br. 14).
Accordingly, we affirm Rejections VII and VIII for the same reasons.

Claims 47 and 48
We find merit in Appellant’s contentions that the Examiner erred in
disregarding the limitation “a non-annular funnel,” as required in claims 47
and 48.
With regard to claims 47 and 48, the Examiner erred by disregarding
the subject matter (i.e., “a non-annular funnel”) that the Examiner found
lacked written description support in the originally filed Specification, but is
recited in the claim. All claim limitations must be considered even if they
were found not to be supported by the originally filed Specification. See Ex
parte Grasselli, 231 USPQ 393, 394 (BPAI 1983). The Examiner did not
direct us to any evidence that Price discloses a non-annular funnel.
Accordingly, we find that the Examiner did not establish a prima facie case
that Price anticipates claim 47 and its dependent claim 48.

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IX. Claims 40-42, 448, and 45: Anticipation by McCombs
Appellant groups claims 40-42, and 45 together and submits specific
arguments directed to claim 40. (App. Br. 14-15). Accordingly, we select
claim 40 as representative. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found, as to claim 40, that McCombs discloses every
limitation of the claimed kit (Ans. 15). In particular, the Examiner found
that McCombs describes a container that contains paint, which is a discrete
article of colorant (id.).
Appellant, on the other hand, contends that McCombs does not
disclose “a colorant tablet, a discrete article of colorant or a colorant pill . . .”
as required in claim 40 (App. Br. 14-15).

ISSUE
Thus, the issue arising from Appellant’s contentions is:
Has Appellant shown reversible error in the Examiner’s finding that
McCombs discloses a “colorant contained within said container . . . wherein
said colorant defines at least one colorant of the following group of colorants
consisting of a colorant tablet, a discrete article of colorant, and a colorant
pill . . . ,” as required in claim 40?

8 The Examiner’s rejection of claim 44 was reversed above. (See page 17).
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ADDITIONAL FINDINGS OF FACT (“FF”)
10. McCombs’s Figure 2 is reproduced below:

Figure 2 depicts a marking pot comprising a cup 1 having a
cover 4 that includes a depending neck portion 7 (i.e., funnel)
and that is connected to an opening of the cup (McCombs at 1,
ll. 46-48, 64-67).
11. McCombs discloses that the marking pot is constructed to
prevent spilling the liquid (i.e., paint or ink) contained in the
cup should the cup be tilted or overturned (McCombs at 1, ll.
10-22 and 101-110).
12. The Examiner found that “colorant [is] defined by The
American Heritage Dictionary of English Language, Second
Ed. 1982, [as] ‘something, especially dye, pigment, ink or paint
that modifies the color of something else’” (Ans. 15).

ANALYSIS
Claims 40-42 and 45
We find no merit in Appellant’s contention that McCombs fails to
disclose a container containing “a discrete article of colorant . . . ,” as
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required in claim 40 (App. Br. 14-15). Appellant does not direct us to any
persuasive evidence that the Specification restricts the scope of the
limitation “a discrete article of colorant.” Accordingly, we apply the
broadest reasonable interpretation in accordance with the plain meaning of
the limitation. See In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007). When the phrase “a discrete article of colorant” is
given its broadest reasonable interpretation based on its plain meaning, one
skilled in the art would have understood that the phrase encompasses a given
amount of paint contained in a container. Therefore, “a discrete article of
colorant” reads on McCombs’ spill resistant marking pot containing paint
(FF 10 and 11) and is consistent with the Examiner’s cited dictionary
definition that paint is a “colorant” (Ans. 15; FF 12). For these reasons,
Appellant has not shown that the Examiner erred in rejecting claim 40 over
McCombs.
Accordingly, we affirm the Examiner’s rejection of claims 40-42 and
45.
Appellant relies on the same arguments as set forth for claim 40 for
the Examiner’s rejection of claim 43 over McCombs and Schramm in
Rejection X (App. Br. 15). Accordingly, we affirm Rejection X for the same
reasons.

XI. Claims 40 and 43-459: Anticipation by Martindale
Appellant argues claims 40, 43, and 45 together, focusing on claim 40
(App. Br. 15-16). Accordingly, we select claim 40 as representative and
confine our discussion to this selected claim. 37 C.F.R. § 41.37(c)(1)(vii).

9 The Examiner’s rejection of claim 44 was reversed above. (See page 17).
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In support of this rejection, the Examiner found that Martindale
teaches “at least one colorant of . . . a discrete article of colorant,” as recited
in claim 40, because Martindale’s powder is a plurality of discrete articles of
colorant (Ans. 16 and 21).
Appellant, on the other hand, contends that Martindale’s powder is not
a “discrete article of colorant,” as required in claim 40 (App. Br. 15-16).
ISSUE
Thus, the issue arising from Appellant’s contentions is:
Has Appellant shown reversible error in the Examiner’s finding that
Martindale discloses “at least one colorant of . . . a discrete article of
colorant,” as required in claim 40?

ADDITIONAL FINDINGS OF FACT (“FF”)
13. Martindale’s Figure 1 is reproduced below:

Figure 1 depicts a spill resistant container 10 having a retaining
member 16 (i.e., funnel) and containing finely divided particles
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of fingerprint powder (col. 1, ll. 12-13, 44-47; col. 2, l. 62 – col.
3, l. 1).

ANALYSIS
Claims 40, 43, and 45
Appellant contends, as to claim 40, that Martindale does not disclose a
single discrete article of colorant (App. Br. 16). This contention fails from
the outset because the claimed subject matter is not limited to a single
discrete article. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many
of appellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”). The claimed invention requires,
inter alia, a container containing “at least one colorant of the following
group of colorants consisting of . . . a discrete article of colorant . . .” (claim
40). Thus, by reciting “at least one,” the claimed invention encompasses a
plurality of discrete articles of colorant. Indeed, Appellant acknowledges
that Martindale comprises “a plurality of colorant powder members” (App.
Br. 16; FF 13). Accordingly, we are not persuaded by Appellant’s
arguments.
We affirm the Examiner’s rejection of claims 40, 43, and 45.
Appellant relies on the same arguments as set forth for claim 40 for
the Examiner’s rejection of claim 42 over Martindale in Rejection XII and
claim 41 over Martindale and Lintvedt in Rejection XIII (App. Br. 16).
Accordingly, we affirm Rejections XII and XIII for the same reasons.

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XIV. Claims 52-54: Obviousness over Price and Meth
The Examiner found, as to claims 52-54, that Price discloses every
limitation of the claims except for a well formed in the inner cavity of the
container (Ans. 17-18). To account for this difference, the Examiner relied
on Meth, which is said to teach a well formed in an inner cavity of a spill
resistant container to receive a portion of an article (Ans. 18). The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to replace Price’s non-spill container with Meth’s non-spill container having
a well to “provid[e] a quick food service item in a non-spill liquid container”
(id.).
Appellant, on the other hand, contends that each of claims 52-54
distinguishes over Price and Meth because they include “at least one unique
and nonobvious limitation that defines appellant’s utensil and appellant’s
colorable work piece [claim 52] or appellant’s article [claims 53 and 54] to
define discrete unconnected items” (App. Br. 17).
ISSUE
Thus, the issue arising from Appellant’s contentions is:
Has Appellant shown reversible error in the Examiner’s findings that
Price and Meth disclose every limitation of the claimed inventions, as
required in claims 52-54?

ANALYSIS
Appellant contends that each of claims 52-54 distinguishes over the
combined teachings of Price and Meth because the claims “include at least
one unique and nonobvious limitation that defines appellant’s utensil and . . .
colorable work piece [claim 52] or . . . article [claims 53 and 54] to define
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discrete unconnected items” (App. Br. 17). This contention has no merit
because the claims do not require the utensil and either the work piece or the
article to be “discrete unconnected items” (App. Br. 17). See Self, at 1349.

DECISION
We affirm the Examiner’s decision to reject:
claims 22-27, 34-39, 41, 47-51 under 35 U.S.C. § 112, first paragraph;
claims 21-25, 27-31, 33-37, 39-43, 45, and 47-54 under 35 U.S.C. §
103(a);
claims 34, 36, 39, 40-42, 45, and 49 under 35 U.S.C. § 102(b); and
claims 40, 43, and 45 under 35 U.S.C. § 102(e).
We reverse, however, the Examiner’s decision to reject:
claims 40 and 42-45 under 35 U.S.C. § 112, first paragraph;
claims 22-27, 34-39, 41, and 49 under 35 U.S.C. § 112, second
paragraph;
claims 26, 32, 38, and 44 under 35 U.S.C. § 103(a);
claims 38, 44, 47, and 48 under 35 U.S.C. § 102(b); and
claim 44 under 35 U.S.C. § 102(e).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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tc

Michael R. Schramm
350 West 2000 South
Perry, UT 84302
31