Ex Parte Topolinski

Patent Trial and Appeal Board

Jul 15, 2013

12359600 (P.T.A.B. Jul. 15, 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.
12/359,600 01/26/2009 Dora J. Topolinski TOP004 P300 4732
277 7590 07/16/2013
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
07/16/2013 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 DORA J. TOPOLINSKI
____________________

Appeal 2011-007869
Application 12/359,600
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
BEVERLY M. BUNTING, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/359,600

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 2, 4-11, and 14-16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 7 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A utensil for collecting and extracting non-
liquid material from a beverage held in a beverage
container, comprising:
a bowl portion having a spheroidal cap shell
structure, the bowl portion including at least one
opening to allow liquid to drain from the bowl
portion as it is removed from the beverage, while
retaining non-liquid material on the bowl portion;
and
an elongate handle portion extending
upwardly away from a section of a rim of the bowl
portion at an angle less than 10 degrees from
vertical when the bowl portion is arranged with the
rim in a horizontal plane.

REJECTIONS
1. Claims 1, 2, 6-11, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McKee (US 3,249,250; iss. May 3, 1966) and
Lovelace (US 6,036,038; iss. May 14, 2000);
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over McKee, Lovelace, and Mattson (US 6,751,873 B2; iss. Jun. 22, 2004);
and
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3. Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McKee, Lovelace, and Teng (US 6,722,043 B2; iss. Apr.
20, 2004).

OPINION
Claim 1
The Examiner finds that McKee discloses each of the features recited
in claim 1 except a bowl portion having a spheroidal cap shell structure.
Ans. 3, 6-7. The Examiner finds that Lovelace discloses the claimed bowl
portion with a rim defining a circle and explains that it would have been
obvious to incorporate the bowl portion with a rim defining a circle from
Lovelace in McKee as a substitution of one known element for another with
no change in function that yields predictable results. Ans. 4, 7. The
Examiner further explains that adding a lip (bowl portion from Lovelace) to
McKee would prevent the bottom items from falling off and would allow the
user to better hold the items when the apparatus is not surrounded by a
container. Ans. 9.
Appellant contends that Lovelace does not teach a bowl portion
having a spheroidal cap shell structure as claimed and alleges that the
Examiner is somehow misconstruing the phrase “spheroidal cap shell
structure.” App. Br. 6, 11. Appellant’s Specification defines “spheroidal”
as “a shape or structure that is not necessarily perfectly spherical, but may be
ellipsoidal or some other shape that deviates slightly from the shape of a
sphere” and defines “spheroidal cap” as “a region or portion of a sphere or
spheroid which lies above a plane cutting through the sphere” as well as
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“spheroidal sections defined by a region between two planes (typically
parallel planes) passing through a sphere or spheroid.” Spec. [0016].
The Examiner explains that the shape of the bowl in Lovelace is
similar to a spheroidal cap defined in Appellant’s Specification and
illustrates a sphere including the bowl from Lovelace (labeled Y) with upper
and lower portions (labeled X and Z) completing the sphere. Ans. 9. The
Examiner explains that the bowl from Lovelace deviates from the shape of a
sphere by removing the upper and lower portions X and Z. Id. Indeed, the
illustration provided by the Examiner shows the bowl of Lovelace being
defined as a spheroidal cap (i.e., a spheroidal section defined by a region
between two planes passing through a sphere or spheroid – see planes
defined between X/Y and between Y/Z). See id. This is consistent with
Appellant’s definition of “spheroidal cap.” Appellant has not persuasively
explained why the bowl of Lovelace cannot properly be considered a
spheroidal cap.
The Examiner further explains that even if the bowl in Lovelace could
not be considered a spheroidal cap, it would have been an obvious matter of
design choice to choose a spheroidal cap shape. Ans. 10. Appellant has
failed to explain why the spheroidal cap shape has some functional
significance that is not accomplished by the bowl shape in Lovelace.
Appellant simply contends that “the claimed invention is designed to
facilitate the enjoyment of froth or other non-liquid materials from a
beverage, and therefore has a spoon-like quality that is not suggested or
taught by the prior art.” App. Br. 7. Appellant explains that the prior art
does not lead one skilled in the art to Appellant’s invention because the
references are not directed to same function as Appellant’s invention. Id.
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Claim 1 simply recites the intended use as collecting and extracting an
unspecified non-liquid material from a beverage container. Appellant does
not explain why either McKee or Lovelace is not capable of both collecting
and extracting non-liquid materials from a beverage container.
Appellant additionally argues that neither McKee nor Lovelace
teaches or suggests the handle extending upwardly away from the rim of the
bowl. App. Br. 8. Appellant’s argument is not persuasive because
Appellant is arguing the references individually when the rejection is based
on the combination. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). As the Examiner explains, the combination of McKee and Lovelace
includes the claimed handle arrangement. See Ans. 11. Appellant
additionally contends that because the lip 23 from Lovelace is flexible and
McKee is made of a rigid plastic, the proposed modification is contrary to
the teachings of McKee. App. Br. 8. However, Appellant has not explained
why the use of different materials does anything to discourage the
modification proposed by the Examiner.
Appellant further argues that the rejection is improper because the
prior art references themselves do not provide a reason for the modifications
proposed by the Examiner. App. Br. 7-10; Reply Br. 1. This argument is
also unpersuasive because no such requirement exists. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents.”). Appellant’s allegations of
improper hindsight are also not persuasive because the allegations rely on
the unpersuasive arguments discussed above regarding the function of the
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claimed arrangement and the incorrect position that the prior art must
provide the reason for the modifications proposed by the Examiner. App.
Br. 7; Reply Br. 2.
For the reasons set forth above, we are not apprised of Examiner error
and we sustain the rejection of claim 1. Claims 5 and 6 depend from claim 1
and are grouped with claim 1 in Appellant’s arguments. See App. Br. 10.
Claims 5 and 6 fall with claim 1.

Claim 4
Claim 4 depends from claim 1 and further recites that the handle
portion includes a plurality of scores that allow the handle portion to be
folded. The Examiner finds that Mattson teaches that it is well known to
include scores on a utensil to facilitate bending. Appellant alleges that the
Examiner has failed to provide an explanation for the proposed
modifications including scored lines along the handle in McKee. App. Br.
10. However, the Examiner explains it would have been obvious to include
multiple score lines along the handle in the proposed modifications to
McKee in order to accommodate multiple rest positions relative to the
container. Ans. 5, 12. Appellant again argues that the rejection is improper
because the prior art references themselves do not provide a reason for the
modifications proposed by the Examiner. This argument is not persuasive as
explained above. App. Br. 10. Thus, we are not apprised of Examiner error
and we sustain the rejection of claim 4.

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Claim 7
The Examiner’s findings and Appellant’s arguments regarding claim 7
are similar to those discussed above regarding claim 1. We are not apprised
of Examiner error for similar reasons. We sustain the rejection of claim 7.
Claims 8-11 and 14-16 depend from claim 7 and are grouped with claim 7 in
Appellant’s arguments. See App. Br. 11, 12. Claims 8-11 and 14-16 fall
with claim 7.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 2, 4-11, and
14-16.
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

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