Ex Parte Steinmann

Patent Trial and Appeal Board

Mar 27, 2018

13986643 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/986,643 05/21/2013 Erica E. Steinmann
7590 03/27/2018
Richard P. Fennelly
2320 Depeyster Dr.
Cortlandt Manor, NY 10567
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.
4138
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
03/27/2018 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 ERICA E. STEINMANN
Appeal2017-005292
Application 13/986,643 1
Technology Center 3700
Before LINDA E. HORNER, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, and 4-6, which are all of the
pending claims. Final Office Action (April 29, 2016) (hereinafter "Final
Act."). We have jurisdiction under 35 U.S.C. § 6(b ).
The claimed subject matter relates to a device capable of being used to
section food pieces. The device includes a tubular member sized to be
1 Erica E. Steinmann is identified as the real party in interest. Amended
Appeal Brief 1 (October 6, 2016) (hereinafter "Appeal Br.").
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Application 13/986,643
capable of being held in a user's hand and to hold a plurality of food pieces.
The tubular member is open at both opposed ends and has a cutting element
fixedly disposed in one end and a pusher member configured to fit into the
other opposed end.
The Examiner rejected all of the claims as unpatentable over the
combined teachings to two prior art references. As part of this ground of
rejection, the Examiner determined that it would have been obvious to omit
elements of the primary reference so that the prior art device consists only of
the claimed elements. Appellant argues that the Examiner's proposed
modification to omit certain elements of the prior art device is based on
impermissible hindsight. Appellant contends that the prior art reference
does not teach or suggest use of the device without all of its elements and the
reference would have led one away from the Examiner's proposed
modification. We find that the Examiner provided adequate reasoning based
on rational underpinnings to explain the proposed modification and
obviousness of the claimed subject matter.
In addition to a rejection based on obviousness, claim 2 also is
rejected as being indefinite. As discussed below, Appellant does not
challenge this rejection, and Appellant's belated attempt to amend claim 2 to
overcome the indefiniteness rejection was not entered.
Accordingly, we AFFIRM.
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Application 13/986,643
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim and is reproduced below.
1. A device for the sectioning of a plurality of food
pieces consisting of:
(a) a tubular member, which is small enough to be hand-
holdable during the sectioning of the food pieces, which is open
at both opposed ends, and which can bold a plurality of food
pieces;
(b) a cutting element, in a cap member, fixedly disposed
inside the tubular member, for the sectioning of the food pieces,
and being adjacent to or at a first open end of the tubular element
at one end thereof, the cutting element being dimensioned to
section such food pieces into an intended sectioned
configuration; and
( c) a separate pusher member, which is also hand-holdable
and configured to fit into the second open end of the tubular
element after individual nonsectioned food pieces have been
loaded into the tubular element, that can be pushed against the
nonsectioned food pieces to force them against the cutting
element thereby driving them through the cutting element
adjacent the other open end of the tubular element to produce the
desired sectioned food.
Appeal Br. 6 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claim 2 stands rejected under 35 U.S.C. § 112(b) as indefinite. 2' 3
2 The Examiner also rejected claims 1, 2, and 4-6 under 35 U.S.C. § 112(a).
Final Act. 2-3. The Examiner subsequently withdrew this ground of
rejection. Examiner's Answer 3 (December 14, 2016) (hereinafter "Ans.").
3 The Examiner also rejected claim 5 under 35 U.S.C. § 112(b ). Final
Act. 4. Appellant amended claim 5 in an after-final amendment on August
1, 2016. The Examiner entered the amendment. See Advisory Action
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Application 13/986,643
2. Claims 1, 2, and 4-6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Berry (US 2,852,053, issued September 16,
1958) and Taylor (US 1,744,422, issued January 21, 1930).
ANALYSIS
First Ground of Rejection: Indefiniteness of claim 2
Appellant avers in the Appeal Brief that "the indefiniteness rejection
of claims 2 and 5 has been resolved in the Second Amendment After Final
Rejection." Appeal Br. 2. Appellant is mistaken as to claim 2 because
Appellant did not seek to amend the antecedent basis problem that the
Examiner identified in the rejection as rendering the claim indefinite.
Second Amendment After Final (August 1, 2016) (Appellant commenting
only that claims 5 and 6 were amended to overcome the indefiniteness
rejection); see also Ans. 7 (Examiner noting the appropriate changes were
not made to claim 2).
The Examiner reiterated the indefiniteness rejection of claim 2 in the
Examiner's Answer. Ans. 4. Appellant belatedly filed an amendment of
claim 2 at the time of filing the Reply Brief. See Amendment After Final
Rejection (December 15, 2016). Although the Examiner entered and
considered Appellant's Reply Brief, we can find no evidence in the Record
that the Examiner entered the separate amendment to claim 2 filed
concurrently with the Reply Brief. See Examiner's Communication
(January 4, 2017). In fact, the Office's rules do not permit entry of such an
(August 17, 2016). We understand that Appellant overcame the
indefiniteness rejection of claim 5 by the amendment. See Ans. 4 (listing
only claim 2 as rejected under 35 U.S.C. § 112(b )).
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amendment filed contemporaneously with the Reply Brief. See 37 C.F.R.
§ 41.33(b) (allowing amendments filed on or after the date of filing of a brief
under 37 C.F.R. § 41.37 to be admitted only to cancel claims or to rewrite
dependent claims into independent form).
We understand claim 2 to be in the state in which it was presented in
the Claims Appendix to the Appeal Brief, and we understand the rejection of
claim 2 under 35 U.S.C. § 112(b) to be outstanding. Appellant has not
presented any arguments contesting this rejection. Accordingly, we
summarily sustain the rejection of claim 2 under 35 U.S.C. § 112(b ).
Second Ground of Rejection: Claims 1, 2, and 4-6 as unpatentable over
Berry and Taylor
The Examiner found that Berry discloses a device for sectioning food
including a tubular member capable of being held in a user's hand during
sectioning and capable of holding a plurality of food pieces, a cutting
element fixedly disposed inside the tubular member at one end, and a
separate pusher member configured to fit into the second opposed end of the
tubular member. Final Act. 4-5. The Examiner acknowledged that Berry
discloses use of a ring with legs to hold the cylinder-shaped member
containing the cutting element above the table, and thus Berry's device does
not "consist" only of the claimed elements. Id. at 6. The Examiner found,
however, Berry teaches that the cylinder is freely removable from the
ring/leg combination. Id. The Examiner concluded that "it would be easy to
utilize the device of Berry without the ring and legs without altering the
design and function of the fruit slicer" and that it would have been obvious
to use the device without the ring/leg combination when using a container
"that did not accommodate/permit the larger base of the ring/legs to be
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positioned about the container, or for cleaning or storage purposes." Id. The
Examiner further stated that omission of an element and its function in a
combination where the remaining elements perform the same functions as
before involves only routine skill in the art. Id. (citing In re Karlson, 311
F.2d 581(CCPA1963)). 4
Appellant argues that Berry does not suggest using the portions of the
slicer, after removing the ring and legs, to subdivide a food item. Appeal
Br. 4. Appellant asserts that Berry teaches initial removal of the plunger and
subsequent removal of the cylinder from the ring/leg combination, for
cleaning the slicer. Id.; see also Reply Brief 1 (December 15, 2016)
(hereinafter "Reply Br."). Appellant contends the Examiner used
Appellant's own teaching to suggest the proposed modification to Berry's
slicer to use it for subdividing a food item without the ring and legs. Id.
Appellant argues that Berry does not suggest this possibility and "only
intends use of its slicer when the rings and legs are present." Id. at 5.
Appellant argues that the proposed modification would render Berry's slicer
unsatisfactory for its intended purpose because it would not allow for a
slicing mechanism, which is supported by a ring/leg combination, holding
the apparatus above a container to accept the sliced pieces. Id.; see also
Reply Br. 2.
4 The Examiner also proposed to modify Berry's slicer with Taylor's various
blade configurations. Final Act. 5-6. Appellant does not contest the
Examiner's findings as to the scope and content of Taylor or the
determination that it would have been obvious to one having ordinary skill
in the art to modify Berry's slicer with the teachings of Taylor. Appeal
Br. 5. As such, we do not address Taylor in this decision.
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The issue before us is whether the Examiner provided adequate
reasoning based on rational underpinnings to explain why one having
ordinary skill in the art would have found it obvious to use the tubular
cylinder 10, knives 20, and plunger 6 of Berry's fruit slicer without a stand
comprised of ring 15 and legs 1 7.
Berry states that tubular cylinder 10 "rests on the shoulder of a ring
[15] supported by legs [17] at a level such that a dish [18] can readily be
positioned beneath the ring [ 15] and between the legs [ 1 7] to receive the
severed fruit and the juice therefrom." Berry, col. 1, 11. 26-29; see also id. at
col. 1, 11. 58-68 (describing that the lower end of tubular cylinder 10 rests on
the shoulder 14 of supporting ring 15 and the legs 17 are sufficiently far
apart and of sufficient length so that dish 18 can be received beneath the
cylinder 10). As found by the Examiner, Berry further describes that during
cleaning of the device, "[t]he cylinder is freely removable from the ring."
Id. at col. 2, 11. 37-38.
The Examiner explained that a person having ordinary skill in the art
wishing to use a dish that is larger than the size of the dish for which legs 17
were designed, would readily lift Berry's fruit slicer (i.e., cylinder 10 with
plunger 6 and blades 20 intact) upwardly from its resting place on shoulder
14 of ring 15, and use the fruit slicer device independently of the stand
(ring/leg combination), to deposit the fruit and juice into the larger dish.
Final Act. 6. The Examiner has provided a valid reason based on rational
underpinnings to explain why a person having ordinary skill in the art,
employing the creative steps that such a person would employ, would have
been led to use the fruit slicer without the stand. KSR Int 'l Co. v. Teleflex
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Inc., 550 U.S. 398, 418 (2007) (acknowledging that the obviousness inquiry
can "take account of the inferences and creative steps that a person of
ordinary skill in the art would employ"). Berry's disclosure of the simple
nature by which the cylinder rests on the shoulder of the ring, combined with
Berry's disclosure of the ease with which the cylinder is removed from the
ring, supports a finding that one having ordinary skill in the art would have
found it obvious to use the fruit slicer without the stand.
We also agree with the Examiner that removing the fruit slicer device
from the ring/leg combination does not create a "unique tool" in that the
remaining Berry fruit slicer elements (i.e., the cylinder 10, blades 20, and
plunger 6) still function in the same manner as when used with the stand.
The functional approach employed by the Examiner in this case is in
keeping with the Court's approach in KSR. The Court in KSR described "a
need for caution" in granting a patent to a combination which only unites old
elements with no change in their respective functions. 550 U.S. at 416-17.
The Court noted that such a combination is likely to be obvious when it does
not more than yield predictable results. Id. at 417. The corollary is true
here. Granting a patent to a sub-combination of Berry's fruit slicer which
divides old elements (e.g., slicer body and stand) with no change in their
respective functions and which yields predictable results is equally likely to
be obvious.
Appellant contends that using Berry's fruit slicer without its stand
does effect a change in the function of Berry's device because it would not
allow for a slicing mechanism, which is supported by a ring/leg
combination, holding the apparatus above a container to accept the sliced
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pieces. Reply Br. 2. Appellant has defined the intended use of the device
too narrowly. The intended use of Berry's device is to slice fruit. Even with
the Examiner's proposed modification to use the fruit slicer without the
stand, Berry's device is able to perform its intended function of slicing fruit.
Appellant also argues that Berry lacks an explicit teaching or
suggestion of such a modification because Berry teaches disassembly only
for cleaning. Finding an explicit teaching or suggestion of such a use in
Berry itself is not required to support a determination of obviousness. KSR,
550 U.S. at 416 (rejecting a rigid application of a teaching-suggestion-
motivation test and stating that the Court's cases have set forth an expansive
and flexible functional approach).
We further agree with the Examiner that such a modification to omit
Berry's stand from the fruit slicer would involve only routine skill in the art.
Karlson, 311 F.2d at 584. As the Supreme Court acknowledged in KSR, "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton." 550 U.S. at 420; see also id. at 419 ("[g]ranting patent
protection to advances that would occur in the ordinary course without real
innovation retards progress").
For these reasons, we find that the Examiner has articulated adequate
reasoning based on rational underpinnings for the proposed modification of
Berry's fruit slicer to omit the ring and stand. Accordingly, we affirm the
rejection of claims 1, 2, and 4-6 under 35 U.S.C. § 103 as unpatentable over
Berry and Taylor.
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DECISION
The decision of the Examiner rejecting claims 1, 2, and 4-6 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)(l )(iv).
AFFIRMED
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