Ex Parte Sharma

Patent Trial and Appeal Board

Aug 21, 2018

13428738 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/428,738 03/23/2012
110933 7590 08/21/2018
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Neeraj Sharma
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CQKER.3658 1063
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
08/21/2018 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 NEERAJ SHARMA
Appeal2017-010912
Application 13/428,738
Technology Center 1700
Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-9, 11, and 13-18. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM
1 In our Decision we refer to the Specification filed March 23, 2012
("Spec."), the Non-Final Office Action appealed from, dated November 23,
2016 ("Non-Final"), the Appeal Brief filed April 24, 2017 ("Appeal Br."),
the Examiner's Answer dated June 22, 2017 ("Ans.") and the Reply Brief
filed August 21, 2017 ("Reply Br.").
2 Appellant identifies the real party in interest as the Quaker Oats Company.
Appeal Br. 2.
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Application 13/428,738
STATEMENT OF THE CASE
The subject matter on appeal relates to an "enhanced multi-
compartment cup for separately containing consumables therein and for
allowing the contents of one of the compartments to be accessed, mixed, and
eaten with the contents of another compartment." Spec. ,r 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A multicompartment cup comprising:
a molded upper compartment and lower compartment,
wherein the lower compartment is separated from the upper
compartment by a divider, wherein the upper compartment and
lower compartment are molded to produce the divider separating
the upper compartment from the lower compartment without
voids or crevices between the upper compartment and lower
compartment;
wherein the upper compartment is conical in shape;
wherein the lower compartment is configured with a
rectangular cross-section;
wherein a diameter of the multi compartment cup
increases from a bottom of the multi compartment cup to a top
of the multi compartment cup; and
an eating utensil removably affixed to at least one of the
upper and the lower compartments, wherein contents of the lower
compartment are configured to be removed from the multi
compartment cup by at least one of breaking a secure tape
attaching the contents of the lower compartment to the cup,
tearing open a side of the lower compartment, or applying
pressure to a perforated edge along a side of the lower
compartment, and added to the upper compartment.
Appeal Br. Section VIII ("Claims App'x).
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Application 13/428,738
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 14, 16, and 18 stand rejected under 35 U.S.C. §
I03(a) as being unpatentable over Beall3 in view of
Botzler4 and Richmond. 5 Non-Final 3.
B. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beall, in view of Botzler and Richmond,
and further in view of Roth. 6 Id. at 4.
C. Claims 1-3, 7-9, 11, 13, and 15 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Beall, in view
of Botzler and Richmond, and further in view of Roth and
Huang. 7 Id. at 6.
D. Claim 4 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Beall, in view of Roth, Richmond,
Botzler, and Huang, and further in view of Zoss 8 and Van
Erden. 9 Id. at 7.
E. Claims 5 and 6 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Beall, in view of Roth, Richmond,
Botzler, Zoss, Van Erden, and Huang, and further in view
of Lee. 10 Id. at 8.
Appellant seeks our review of Rejections A-E. Appeal Br. 5.
Appellant argues claims 14, 16, and 18 together as Group I, claim 17 as
3 Robert Beall, US 4,324,338, issued April 13, 1982 ("Beall").
4 Paul C. Botzler, US 4,387,809, issued June 14, 1983 ("Botzler").
5 Lolita Richmond, US 6,022,570, issued February 8, 2000 ("Richmond").
6 Roth et al., US 2006/0086756 Al, published April 27, 2006 ("Roth").
7 Shou-Li Huang, US 2001/0002673 Al, published June 7, 2001 ("Huang").
8 Zoss et al., US 2010/0003379 Al, published January 7, 2010 ("Zoss").
9 Van Erden et al., US 4,759,642, issued July 26, 1988 ("Van Erden").
10 Lee et al., US 6,068,865, issued May 30, 2000 ("Lee").
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Application 13/428,738
Group II, and claims 1-9, 11, 13, and 15 together as Group III. See id. 6-9.
Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv)
(2013), we limit our discussion to claims 1, 14, and 17, and all other claims
stand or fall together with claim from which they depend.
OPINION
Group I - Claim 14
The Examiner rejects claim 14, among others, as obvious over Beall
in view of Botzler and Richmond. Non-Final 3. Independent claim 14 is
similar to independent claim 1 above except that claim 14 additionally
recites "a seal covering a top of the upper compartment" and does not
require "an eating utensil removably affixed" to one of the compartments.
Compare Appeal Br. 13 (Claims App'x, claim 1) with 15 (claim 14). The
Examiner finds that Beall teaches a multi-compartment food container
having separate upper and lower portions. Non-Final 3. The container of
Beall is depicted as having a tapered or conical shape such that the upper
diameter is larger than the lower diameter of the container and the lower
compartment contains perforations to allow for the removal of the contents
contained therein. Id. The Examiner acknowledges that "Beall does not
specifically recite tearing open or perforations on the side of the lower
compartment," but finds that Richmond and Botzler each describe food
containers having a tear-away portion or perforations at the side of the food
container. Id. at 3--4 ( emphasis added). The Examiner reasons that the
skilled artisan would have been motivated to include the perforated/tear-
away elements on the side of the lower compartment "since many users
might accidentally tip over the container of Beall while attempting to access
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Application 13/428,738
a bottom opening, since accessing a side opening would be easier and less
prone to spillage." Id. at 4.
Appellant argues that the skilled artisan would not have combined the
teachings of Beall with Botzler and Richmond because "both Botzler and
Richmond contain teachings that would lead a skilled artisan away from
combining them with Beall to arrive at claim 14." Appeal Br. 6. In
particular, Appellant asserts that Botzler, embodying a "tubular" design,
requires that the "package has a constant cross section throughout the
length." Id. at 7. Therefore, Appellant contends, the constant cross section
is critical to the invention and the person skilled in the art would not apply
the teachings of Botzler, requiring a constant cross section, to a design
where the diameter increases from the base of the container to the top of the
container. Id. Similarly, Appellant argues that Richmond describes a side-
by-side placement of the compartments of the multi-compartment container
and that this arrangement is "critical to the invention of Richmond." Id.
Thus, Appellant asserts that "[p ]roviding a package with upper and lower
compartments in the Richmond device, such as that disclosed in Beall,
would not allow for the foregoing content-related packaging to be provided,"
and would teach away from applying the teachings of Richmond to a
package with upper and lower compartments. Id. at 8.
Appellant's arguments do not persuade us of reversible error. To
teach away, a reference must discourage one of ordinary skill in the art from
following the path set out in the reference, or lead that person in a direction
divergent from the path taken by the applicant. In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). "A reference does not teach away ... if it merely
expresses a general preference for an alternative invention but does not
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'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)).
Here, the Examiner begins with the multi-compartment food container
of Beall as the primary reference which is being modified by the secondary
references Botzler and Richmond. Non-Final 3. Beall teaches upper and
lower compartments that may be opened by a lid or perforated film at the top
or bottom of the multi-compartment container. Id.; Beall, Figures 4 and 5,
col. 2, 11. 26-43. For example, Beall states that "a removable or rupturable
closure member such as gummed stickers 42 and 44, or other similar
closures can be affixed to the top and bottom end portions of the device to
close one or both compartments." Beall, col. 5, 11. 1-5. The closures "may
include a tab 46 extending from the side of the device to facilitate gripping it
and peeling the member off ... [and] may also have perforations such as
perforations 48 to facilitate puncturing thereof." Id. at 5:5-10. Missing
from Beall is a teaching that these closures may be located on the side of the
container as opposed to the top or bottom of the container. Non-Final 3.
The Examiner finds that both Botzler and Richmond describe multi-
compartment food containers having tear-away closures positioned on the
side of the lower portion of the container. Id. at 4.
Appellant's argument that Botzler includes a constant diameter across
the length of the container and therefore teaches away from the instant
claims requiring a tapered design having a smaller diameter at the bottom
and an increasing diameter at the top, fails to explain why the skilled artisan
would have been led away from including an opening on the side of the
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container. Likewise, Appellant's argument that Richmond is directed to a
side-by-side arrangement of compartments-in contrast to the present claims
requiring a top to bottom arrangement-and therefore teaches away does not
adequately explain why the ordinarily skilled artisan would not have
included a side tab or perforation in the container of Beall. Furthermore, we
find nothing in Botzler and Richmond, and Appellant does not identify any
specific teaching, that would discourage the skilled artisan from substituting
a tear-away portion or perforations located at the side of a bottom portion of
a container for one located on the bottom of the lower container as presented
by the Examiner. Gurley, 27 F.3d at 553. That the multi-compartment
containers of Botzler and Richmond may prefer a different structure than
that claimed, without more, does not amount to a teaching away. DePuy
Spine, 567 F .3d at 1327. Therefore, without more, we sustain the
Examiner's rejection of claim 14.
Group II - Claim 17
Claim 1 7 depends from claim 14 and additionally requires that "the
lower compartment has a rectangular cross-section." Appeal Br. 15 ( Claims
App 'x, claim 17). The Examiner finds that Roth describes a similar food
container having multiple compartments and that Roth teaches "cross-
sectional shapes such as a square, triangular, polygonal, conical, or circular."
Non-Final 4--5. (internal citation omitted) ( citing Roth Figure 4 and ,r,r 31
and 42). The Examiner reasons that adjusting the cross-sectional shape of
the container would have been obvious because it would be a simple
substitution of one known element, i.e., the shape of the container, for
another known element, that is a square cross-sectionally shaped container.
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Id. at 5. Furthermore, the Examiner explains that a mere change of shape,
absent evidence that the particular shape is patentably significant, is not
sufficient to distinguish a claim over the prior art. Id. (relying on MPEP
2144.04).
Appellant argues that the ordinarily skilled artisan would not have
been motivated to modify Beall, among others, based on Roth because it
would render Beall unsatisfactory for its intended purpose. Appeal Br. 8.
According to Appellant, the lower compartment generally corresponds to the
shape of the food product, in this instance, a communion wafer, and because
"there is no evidence that communion wafers are square-shaped," creating a
square cross-section in Beall would render it unsatisfactory for its intended
purpose. Id. at 9. Appellant also urges that the claimed square-shaped
cross-section does provide structural advantages to patentably distinguish it
over the prior art. For example, Appellant explains that "the claimed shape
will allow a user to easily grip the cup at the bottom, allow more food to fit
into the upper compartment, minimize spillage, and allow the cup to
fit ... more easily into a cup holder." Id. (citing Spec. 22).
We find no persuasive merit in Appellant's argument. If a proposed
modification would render the prior art being modified unsatisfactory for its
intended purpose, then there is no suggestion or motivation to make the
proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
Further, a reference is not limited to the teaching in its preferred
embodiment, but also for what one of ordinary skill might reasonably infer
from the teachings. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
("all disclosure of the prior art, including unpreferred embodiments, must be
considered").
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Here, as the Examiner aptly explains (Ans. 10), a rectangular-shaped
cross-section would be capable of holding a conventional circular
communion wafer. Appellant, other than asserting that a rectangular lower
compartment would not generally correspond to a round communion wafer,
neglects to explain how a rectangular cross section would render Beall
unsatisfactory for its intended purpose, that is, the convenient administration
of a liquid and a non-liquid consumable in a cup-like multi-compartment
container. Beall, col. 2, 11. 59---64. Furthermore, the teachings of Beall are
not limited to compartments for containing communion wafers, but are
broad enough to include additional sacramental elements, like bread (Beall,
col. 1 :43), as well as other "non-liquid substances ... [like] a pill, a tablet,
or like substance." Id. at col. 2, 11. 30-33 ( emphasis added); see id. at 3: 17-
20 ("another object is to provide a compartmented container ... for
dispensing medication including a pill or tablet"); see also id. col. 6, 11. 25-
30 (explaining that a "variety of sizes and configurations" are contemplated
without departing from the teachings of the invention). Furthermore, we
agree with the Examiner (Ans. 10-11) that the advantages Appellant
attributes to the shape of the multi-compartment container have little to do
with the rectangular cross-section of the lower compartment, but rather
relate to the overall shape of the container that is, the graduated or conical
cross-section of the cup. In particular, the Specification explains that
the diameter of cup 100 may increase from bottom to top to allow
a user of cup 100 to easily grip the cup 100 at the bottom.
Moreover, the larger diameter size of the upper compartment
101 may allow more food product to fit into the upper
compartment 101 and may aid in minimizing spilling when the
contents of the two compartments that are mixed together in the
upper compartment 101. Also, the smaller diameter of the cup
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100 at the bottom may allow the cup 100 to more easily fit into a
cup holder.
Spec. ,r 22 ( emphasis added). Each of the advantages identified by
Appellant relates to the relative diameter of the cross-section for each of the
lower and upper compartments as opposed to the rectangular shape of the
lower compartment. Therefore, on this record, the preponderance of the
evidence favors the Examiner and we sustain the Examiner's rejection of
claim 17.
Group III - Claim 1
The Examiner rejects claim 1, among others, as obvious over Beall, in
view of Richmond, Botzler, Roth and further in view of Huang. Non-Final
6. In addition to the teachings described above for claim 14, the Examiner
finds that Huang and Roth, both teaching a multi-compartment food
container, describe a foldable spoon attached to the container. Id. The
Examiner reasons that the skilled artisan would have been motivated to
include a foldable utensil in the container of Beall, and others, "since many
consumers desire[] a simple and effective means of for packaging both milk
and cereal in a single package ... [and] since affixing a folded spoon to the
exterior of the package would have provided more space on the interior of
the container of Beall for the food products." Id. at 7.
In addition to the arguments advanced for claim 1, Appellant asserts
that the person ordinarily skilled in the art would not have had reason to
modify the Beall combination to include the foldable utensils of Roth and
Huang because it would change the principle of operation of Beall. Appeal
Br. 10. Appellant explains that "incorporating an eating utensil into the
compartmented container of Beall would frustrate the purpose of the
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invention: that is 'the present device is compact and does not require
intricate and cumbersome means for storing, accessing and dispensing
elements therefrom."' Id. (quoting Beall, col. 5, 11. 16-18 and 32-39).
We do not find Appellant's arguments persuasive of reversible error;
but rather, we agree with the reasoning and findings of the Examiner.
Combinations of prior art that change the "basic principles under which the
[prior art] was designed to operate" may not support a conclusion of
obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959); see also In re
Gordon, 733 F.2d 900,902 (Fed. Cir. 1984) (same).
Here, the Examiner modifies Beall to include foldable utensils affixed
to the container as described in Roth and Huang. Non-Final 6-7. Roth
describes a container for holding liquid and solid foodstuffs, e.g., a cereal
and milk combination, where the foldable utensils is included within the
solid/dry foodstuff compartment. Roth, ,r,r 40, 46, and 47. Huang describes
a food container with and integrated, foldable utensil. Huang, Figures 1 and
7. Figure 1 of Huang, reproduced below, is illustrative of Huang's
teachings.
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FIG. t
Figure 1 shows a food container 1 with an integrated, foldable spoon 2. Id.
,r,r 9 and 20. Appellant does not explain how either affixing the foldable
utensil within the dry foodstuff container or integrating it into the external
container design is not compact or requires a more intricate and cumbersome
means for storing, accessing and dispensing elements from the multi-
compartment container. Thus, in the absence of a more substantial
objection, the Examiner provides adequate reasoning to combine the
elements of Beall, among others, with Roth and Huang in a manner to arrive
at an embodiment within the scope of claim 1.
Appellant also contends that the references teach away from the
combination because Botzler "discloses that the container itself is a utensil
(a stirrer), thus obviating the need for a further eating utensil." Appeal Br. at
11.
Appellant's secondary argument that Botzler obviates that need for a
further eating utensil reveals no reversible error by the Examiner. The
"utensil" of Botzler does not suggest an eating utensil, much less a foldable
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eating utensil as claimed. Rather, Botzler describes a multi-compartment
package for dispensing sugar, creamer, or other additives into a beverage
such as coffee or tea and where the packaging itself is also useful as a stirrer,
i.e., a utensil. Botzler, 1:7-10. But because the stirrer of Botzler is not an
"eating utensil" as contemplated by the claims, the use of Botzler in the
combination does not obviate the need for the teachings of Roth or Huang.
CONCLUSION
Appellant failed to identify a reversible error in the Examiner's
rejection of Claims 14, 16, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Beall in view of Botzler and Richmond.
Appellant failed to identify a reversible error in the Examiner's
rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Beall, in view of Botzler and Richmond, and further in view of Roth.
Appellant failed to identify a reversible error in the Examiner's
rejection of claims 1-3, 7-9, 11, 13, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Beall, in view of Botzler and Richmond, and further
in view of Roth and Huang.
Appellant failed to identify a reversible error in the Examiner's
rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over
Beall, in view of Roth, Richmond, Botzler, and Huang, and further in view
of Zoss and Van Erden.
Appellant failed to identify a reversible error in the Examiner's
rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Beall, in view of Roth, Richmond, Botzler, Zoss, Van Erden, and
Huang, and further in view of Lee.
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DECISION
For the above reasons, the Examiner's rejection of claims 1-9, 11, and
13-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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