Ex Parte Witthoft

Board of Patent Appeals and Interferences

Mar 16, 2007

10290606 (B.P.A.I. Mar. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL WITTHOFT
__________

Appeal 2007-0737
Application 10/290,606
Technology Center 1700
__________

ON BRIEF
__________

Before GRIMES, LINCK, and LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Claims 1-5, 7, 9, and 10 are on appeal. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
This appeal involves claims to an ice cream scoop having a
deformable exterior portion for manually ejecting ice cream from the ice
cream-filled scoop. Claims 1-5, 7, 9, and 10-12 are pending (Answer 2).
Claims 11 and 12 are withdrawn from consideration (id.)

Appeal No. 2007-0737
Application No. 10/290,606

The following prior art references are relied upon by the Examiner as
evidence of unpatentability:
Ellis U.S. Pat. 2,191,524 Feb. 27, 1940
Donovan U.S. Pat. 3,483,908 Dec. 16, 1969
DeWitt1 GB 2,048,756 Dec. 17, 1980
Burnham U.S. Pat. 4,244,470 Jan. 13, 1981
Claims 1-5, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
obvious over Ellis alone, or in view of Burnham, Donovan, or DeWitt. (Br.
2-3). The claims stand or fall together because Appellant has not separately
argued the patentability of any individual claims. We select claim 1 as
representative for the purpose of deciding this appeal. 37 C.F.R.
§ 41.37(c)(1)(vii). It reads as follows:
1. An ice cream scoop comprising a scoop portion and a handle
portion, said scoop portion having an interior and an exterior and
comprising a rim portion and a deformable portion, said rim portion
being formed of a rigid material and said deformable portion being
formed of an elastomer and forming at least a portion of the exterior
of the scoop portion.

ISSUE ON APPEAL
The Examiner contends that it would have been obvious to the skilled
worker to have eliminated the fluid or air pressure system utilized in Ellis’s
ice cream scoop to mechanically discharge ice cream from the scoop
portion. This modification, the Examiner argues, would result in an ice
cream scoop having a manually deformable exterior which performs the

1 Also referred to as “GB ‘756.”
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same function as Ellis’s mechanical system and which meets the limitations
of the claimed invention.
Appellant contends that there is no motivation to have eliminated the
mechanical system from Ellis’s scoop.
The question in this appeal is whether the prior art provides the
requisite motivation under 35 U.S.C. § 103(a) to have modified Ellis’s scoop
by substituting manual operation for Ellis’s mechanical pressure system to
dislodge ice cream from an ice cream scoop.

DISCUSSION
A claimed invention is obvious “if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
35 U.S.C. § 103(a). To make this determination, we consider whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124, 56 USPQ2d
1456, 1459 (Fed. Cir. 2000). “Underpinning this legal inquiry are four
groups of factual findings . . . (1) the scope and content of the prior art; (2)
the differences between the claimed invention and the prior art; (3) the level
of ordinary skill in the art; and (4) any relevant secondary considerations,
including commercial success, long felt but unsolved needs, and failure of
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others. Graham v. John Deere Co., 383 U.S. 1, 17. . . (1966).” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).
On the record before us, we find sufficient evidence to establish prima
facie obviousness of the claimed subject matter. After identifying the
difference between the claimed invention and the prior art, the Examiner
clearly articulates a reason that would have motivated the skilled worker to
have modified the prior art (Answer 4). The Examiner also provides
evidence from the scope and contents of the prior art that the modification
was conventional and commensurate with the level of ordinary skill in the
art (id. at 5). Because these findings are at issue, we explain the Examiner’s
case in more detail below.
Ellis is the primary reference relied upon by the Examiner to establish
the differences between the claimed invention and the prior art. Ellis
describes an ice cream “dipper” which utilizes “a pneumatic or hydraulic
method of operation.” (Ellis at p. 1, col. 1, ll. 25-27.) The dipper comprises
a rigid exterior dipper shell (10) and a flexible interior diaphragm (12)
within the rigid shell (Ellis at p. 1, col. 1, ll. 1-5; col. 2, ll. 8-11). The dipper
also “includes an ejector bulb (15) that acts as a pump to compress air
between the exterior rigid shell and the interior flexible diaphragm. When
the user pumps air into the area between [the ] rigid exterior shell and the
flexible interior diaphragm of the scoop, the diaphragm deforms and
displaces the ice cream from the scoop (see page 2, left column, lines 40-
50).” (Br. 3.)
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The Examiner asserts that “Ellis teaches the basic claimed ice cream
scoop,” but does not describe that the claimed “deformable portion” forms
“at least a portion of the exterior of the scoop” as required by claim 1
(Answer 3-4). The Examiner argues that the “reason” this structure is
missing is because Ellis “uses a complicated air pressure” system in which
air is forced between the rigid exterior shell and the deformable interior
diaphragm, inverting the diaphragm to release the ice cream from the scoop
(id. at 4). The Examiner asserts that it would have been obvious to have
eliminated the structures “taught in Ellis to apply the air pressure and
[instead, to have] simply used the operator’s hand to depress the deformable
portion, such being fairly conventional in the art.” (id.)
Scope and content of the prior art/level of ordinary skill
Secondary references are relied upon by the Examiner to establish that
it was conventional at the time the application was filed to utilize
deformable containers to manually eject hardened foods from food molds.
We review these disclosures briefly:
1) DeWitt describes a mold for making confectionary products in
which the mold “has at least one base wall portion which is of greater
flexibility than the other wall portions.” (Abstract; p. 1, ll. 97-102; Fig. 1).
Ejection is accomplished by applying pressure to the outer surface of the
more flexible base wall (p. 1, ll. 123-129).
2) Donovan describes “containers having bottom portions flexibly
designed to aid in the discharge of a substantially solid substance
substantially in one piece.” (Col. 1, ll. 46-49.) The sidewalls of the
container are “provided with a series of substantially parallel ribs 20 which
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provide increased resistance to deformation in the lateral direction.” (Col. 2,
ll. 19-24.) The container can also be constructed to have “a bottom 32 of
relatively thin thickness in comparison to the thickness of the sidewall 30.”
(Col. 2, ll. 37-39.)
3) Burnham discloses a receptacle for holding refrigerated units of ice
cream for individual servings. The receptacle comprises two hinged parts
which, “when disposed face-to-face define an enclosure of predetermined
shape for holding a molding of hardenable substance.” (Col. 1, ll. 17-21.)
“The enclosure is comprised of a thin wall yieldably flexible plastic such as
to enable displacing a portion of the wall inwardly of the part containing the
frozen substance when the parts have been separated from each other to
enable ejecting the hardenable substance therefrom.” (Col. 1, ll. 23-28.)
In addition to showing what was conventional at the time the
application was filed, these disclosures also establish that the ordinary
skilled worker was familiar with making deformable containers to discharge
hardened foods, and was capable of making several different designs,
including designs in which 1) the sides were made more rigid than the
deformable bottom by varying the material thickness (e.g., Donovan), 2) the
sides and deformable bottom were of the same deformability (Burnham),
and 3) the sides were made more rigid by adding structure to increase their
resistance (Donovan). Thus, making a deformable container using different
design strategies was commensurate with the level of ordinary skill in the art
at the time the claimed invention was made.

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Teaching, suggestion, motivation
Burnham, Dewitt, and Donovan provide sufficient evidence to
establish that the concept of manually deforming a container bottom to eject
food from it was well known to the person of ordinary skill in the art (see
supra, p. 5-6). Ellis’s ice cream dipper operates on the same principle, but
uses a more sophisticated system that relies on air pressure, rather than a
person’s fingers, to deform the scoop and discharge the ice cream from it.
Because manual deformation had been used repeatedly in the prior art to
perform the same function that air or fluid pressure accomplishes in Ellis’s
dipper, we find the Examiner’s prima facie case of obviousness supported by
a preponderance of the evidence that the skilled worker would have
recognized that it could have been applied to an ice scoop, eliminating the
need for Ellis’s more complicated system. There is no express suggestion to
make the modification, but the suggestion, teaching, or motivation to
combine the relevant prior art teachings does not have to be found explicitly
in the prior art. “[T]he teaching, motivation, or suggestion may be implicit
from the prior art as a whole, rather than expressly stated in the references.
The test for an implicit showing is what the combined teachings, knowledge
of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art.” In re
Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Appellant contends that the “the rigid exterior shell of Ellis cannot be
eliminated” because it “would render Ellis inoperative.” (Br. 4.) Appellant
asserts that the rigid shell “is absolutely necessary to fulfill the function of
deforming the flexible diaphragm . . . when using pneumatics or hydraulics.
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Without the rigid shell, the air pumped from the ejector bulb 15 would not
dislodge the ice cream.” (id.) We do not find this argument persuasive. As
pointed out by the Examiner, without its rigid shell, “the operator would
simply press down on the flexible portion using his or her hand to release the
ice cream.” (Answer 6-7.)
Appellant also argues that if the rigid shell were removed, the
vulcanizing cutter and ring to scoop the ice cream would have no structural
support (Reply Br. 4). “Therefore, if one were to try to use the Ellis
invention without the outer shell to scoop ice cream from a container, the
whole dipper portion of the scoop would collapse, accordion-like, when
pressed against ice cream.” (id.)
We do not find this argument persuasive. Ellis teaches the annular
cutter for scooping the ice cream as rigid and a separate element from the
rigid exterior shell (Ellis at p. 1, ll. 42-50). Consequently, eliminating the
shell would leave a rigid “rim portion” as required by instant claim 1.
Moreover, the Examiner has provided three references which describe how
to make containers which do not collapse when inverted to discharge a solid
food. Appellant’s argument fails to take in consideration that the skilled
worker, motivated to have removed the rigid shell from Ellis’s dipper, would
have known how to modify it to prevent it from collapsing “accordion-like.”
Appellant asserts that “each of the references cited describes an
exterior formed of a single material. No suggestion exists to form the
exterior of the containers of the secondary references from two different
types of materials, one rigid and the other elastomeric.” (Br. 5). We do not
find this argument persuasive. Dewitt and Donovan describe containers in
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which the deformable portion is flexible, while the rim portion is rigid, albeit
comprised of the same material. However, the prior art teaches that the
deformable and rim portions may be formed of different materials. In Ellis,
the “rigid” cutter or ring (11) is sealed to the “flexible” deformable
diaphragm (p. 1, ll. 25-55). These parts perform the same function of the
rigid and flexible portions of the DeWitt and Donovan containers. Thus, the
skilled worker would have considered a construct made of two different
materials, each having different rigidity, interchangeable with a construct
made of the same material, but having portions of different rigidities.
Finally, Appellant argues that “[t]he Ellis patent expired many years
ago, therefore anyone could still have marketed a product for many years.
The fact there is no product on the market that solves the problem which
Applicant’s invention solves is evidence of” the non-obviousness of the
claimed invention (Reply Br. 7). As we understand it, Appellant is asserting
a long-felt need, i.e., a recognized problem existed in the art for a long time
without solution.
We do not find this argument persuasive because no objective
evidence has been submitted to support it. “[P]recedent requires that the
applicant submit actual evidence of long-felt need, as opposed to argument.
This is because ‘[a]bsent a showing of long-felt need or the failure of others,
the mere passage of time without the claimed invention is not evidence of
nonobviousness.’ Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1325 (Fed. Cir. 2004); accord In re Wright, 569 F.2d 1124, 1127 (C.C.P.A.
1977).” Kahn, 441 F.3d at 990-91, 78 USPQ2d at 1338-39.
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For the foregoing reasons, we find sufficient evidence of record to
establish a prima facie case of obviousness of claim 1. Appellant has not
provided adequate evidence to rebut it. Accordingly, the rejection of claim 1
is affirmed. Claims 2-5, 7, 9, and 10 fall with claim 1.

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

AFFIRMED

Eric Grimes )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Nancy J. Linck )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard M. Lebovitz )
Administrative Patent Judge )
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Appeal No. 2007-0737
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