Case: 21-2166 Document: 41 Page: 1 Filed: 03/06/2024
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`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: JUSTIN SAMUELS, SAMUEL ROCKWELL,
`Appellants
`______________________
`
`2021-2166
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 15/168,768.
`______________________
`
`Decided: March 6, 2024
`______________________
`
`
`TODD STEVEN SHARINN, Gilbride, Tusa, Last &
`Spellane LLC, Greenwich, CT, for appellants.
`
` PETER J. AYERS, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for appellee
`Katherine K. Vidal. Also represented by OMAR FAROOQ
`AMIN, AMY J. NELSON, FARHEENA YASMEEN RASHEED.
` ______________________
`
`Before TARANTO, CHEN, and STOLL, Circuit Judges.
`PER CURIAM.
`Appellants Justin Samuels and Samuel Rockwell filed
`U.S. Patent Application No. 15/168,768, titled “Asymmet-
`rically Patterned Baked Bread Food” on May 31, 2016. The
`assigned examiner in the U.S. Patent and Trademark Of-
`fice rejected claim 1, the only currently pending claim, for
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`IN RE: SAMUELS
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`obviousness under 35 U.S.C. § 103, in light of two prior-art
`references: Krepshaw (an article in the internet publica-
`tion CNET) and Freeman (U.S. Patent No. 3,799,047). J.A.
`336, 325, 211 (Krepshaw), 439 (Freeman). The Patent
`Trial and Appeal Board affirmed the examiner’s rejection.
`Ex Parte Justin Samuels & Samuel Rockwell, No. 2021-
`000092, 2021 WL 2103345, at *3 (P.T.A.B. May 20, 2021)
`(PTAB Decision). The applicants timely appealed. We
`have jurisdiction. 28 U.S.C. § 1295(a)(4); 35 U.S.C.
`§ 141(a). We affirm.
`
`I
`The ʼ768 application describes an asymmetrical planar
`waffle, which has a first-pattern baked surface on one side
`and a different-pattern baked surface on the other side,
`and which can be formed by using a waffle iron having two
`differently patterned baking plates. J.A. 11, 13–14. Claim
`1 recites:
`1. An asymmetrical planar waffle product, com-
`prising:
`a first patterned baked surface that is a negative
`image of a first positive relief pattern in an associ-
`ated first baking plate, and a second patterned
`baked surface that is a negative image of a second
`positive relief pattern in an associated second bak-
`ing plate,
`wherein said first and second patterned baked sur-
`faces have been formed by exposing a waffle-form-
`ing material directly against said respective first
`and second positive relief patterns,
`wherein said waffle-forming material is selected
`from the group consisting of batter and dough,
`wherein said first positive relief pattern is a waffle
`pattern,
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`IN RE: SAMUELS
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`wherein said second positive relief pattern is a
`smooth surface, and
`wherein at least one of said first and second baking
`plates further comprises a stop extending above
`said first and second positive relief pattern to limit
`proximity of said baking plates to each other,
`thereby defining a chamber therebetween for re-
`ceiving said waffle-forming material.
`J.A. 325. The key prior-art reference, Krepshaw, is a pub-
`lished review of a grill press, called the Emson Big Boss
`Grill, that has a variety of interchangeable grill plates.
`Krepshaw, titled “Mix-and-match grill begs for mixing, not
`matching,” states, in relevant part:
`Since any waffle known to man can only actually
`hold butter and syrup on one side at a time in its
`convenient pockets, perhaps it’s time to consider
`the one-sided waffle.
`OK, the Emson Big Boss Grill probably wasn’t de-
`signed with one-sided waffles in mind, but with 12
`interchangeable grill plates, the possibility now ex-
`ists . . . . Now I don’t know if trying to make one-
`sided waffles would just end up being a messy bat-
`ter explosion, but I do know it’s the first thing I’d
`try[.]
`J.A. 211. The second prior-art reference, Freeman, dis-
`closes using batter to make waffles in a conventional waffle
`maker. J.A. 439, 443.
`Throughout prosecution, the examiner rejected the
`claims of the ʼ768 application as unpatentable for obvious-
`ness over Krepshaw and Freeman, explaining that Krep-
`shaw teaches making a one-sided waffle (patterned on one
`side, flat on the other) and Freeman teaches using batter.
`See J.A. 221, 260–61, 336. The Board affirmed the exam-
`iner and determined claim 1 to be unpatentable for obvi-
`ousness over Krepshaw and Freeman. In particular, the
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`IN RE: SAMUELS
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`Board determined that Krepshaw suggested making a one-
`sided waffle and a relevant artisan could have adjusted
`Freeman’s batter to make such a one-sided waffle using
`Krepshaw’s grill. PTAB Decision, at *2–3.
`II
`We review the Board’s legal determinations without
`deference, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir.
`2004), but we uphold the Board’s factual findings if they
`are supported by substantial evidence, In re Gartside, 203
`F.3d 1305, 1316 (Fed. Cir. 2000). Obviousness is a “ques-
`tion of law based on underlying findings of fact,” id., and
`how to understand the prior art, whether a relevant arti-
`san would have had a reason to combine the prior art to
`achieve the claimed invention, and whether there would
`have been a reasonable expectation of success in doing so
`are fact issues, TQ Delta, LLC v. CISCO Systems, Inc., 942
`F.3d 1352, 1357 (Fed. Cir. 2019).
`Substantial evidence supports the Board’s determina-
`tion that Krepshaw discloses to a relevant artisan each lim-
`itation of claim 1 of the ʼ768 application other than the
`batter limitation, which is disclosed by Freeman. Krep-
`shaw’s title, “Mix-and-match grill begs for mixing, not
`matching,” itself suggests mixing Krepshaw’s “six different
`interchangeable grill plates,” one of which is a waffle plate
`and several others of which are substantially flat plates.
`J.A. 211 (emphases added). Krepshaw also itself affirma-
`tively suggests doing so, saying “[s]ince any waffle known
`to man can only actually hold butter and syrup on one side
`at a time in its convenient pockets, perhaps it’s time to con-
`sider the one-sided waffle.” J.A. 211. Krepshaw adds that
`the one-sided waffle is “the first thing I’d try.” J.A. 211.
`Appellants argue that a skilled artisan would have had
`no reasonable expectation of success using the Big Boss
`Grill to produce a one-sided waffle with batter. Samuels
`Opening Br. at 16. Krepshaw itself notes “the . . . Big Boss
`Grill probably wasn’t designed with one-sided waffles in
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`mind” and acknowledges the possibility of a “messy batter
`explosion.” J.A. 211. But such a mere possibility of failure,
`in this context, does not mean that there is no reasonable
`expectation of success. Krepshaw expressly discloses “mix-
`ing, not matching,” shows “six different interchangeable
`grill plates” for doing so, and concludes the “possibility” of
`the one-side waffle “now exists.” J.A. 211. And the exper-
`imentation involved is trivial. To deny that the Board
`could reasonably find a reasonable expectation of success
`here would require giving that standard a meaning not
`compelled by precedent and indeed inconsistent with the
`KSR International Co. v. Teleflex Inc. approval of “obvious
`to try” in related circumstances. 550 U.S. 398, 421 (2007);
`see Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed.
`Cir. 2007) (“[O]nly a reasonable expectation of success, not
`a guarantee, is needed.”).
`Appellants also argue that their invention produces
`unexpected results because it creates a one-sided waffle
`that is cooked on both sides. Samuels Opening Br. at 22.
`Again, there is evidence the Board could credit that sug-
`gests this result was expected: Krepshaw points to a grid-
`dle with “six different interchangeable grill plates,” which
`would cook the one-sided waffle on both sides. J.A. 211.
`III
`Appellants argue that the examiner and the Board
`committed consequential procedural errors. We see no re-
`versible error.
`First, appellants argue that the examiner failed to pro-
`vide adequate notice of her reliance on Freeman before her
`rejection of claim 1 as unpatentable for obviousness over
`Krepshaw in view of Freeman in her advisory action, which
`issued after appellants filed their appeal brief before the
`Board. Appellants also argue that the Board compounded
`this error by maintaining the examiner’s rejection. Samu-
`els Opening Br. at 11. We reject this challenge.
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`IN RE: SAMUELS
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`Appellants had adequate notice and “‘fair opportunity
`to react to the thrust of the rejection’” being reviewed, and
`then adopted, by the Board. In re Jung, 637 F.3d 1356,
`1365 (Fed. Cir. 2011) (quoting In re Kronig, 539 F.2d 1300,
`1302 (CCPA 1976)). The examiner first relied on Freeman
`to teach the batter limitation (of claims 8 and 9) in her non-
`final rejection. J.A. 221. Appellants substantively re-
`sponded, and the examiner maintained her rejection in
`view of Freeman (for claim 8) in her final rejection. J.A.
`239–40, 261. Then appellants voluntarily amended claim
`1 to include the claim 8 batter limitation (while dropping
`claim 8), J.A. 300–02; and the examiner, in the ensuing ad-
`visory action, accepted the amendments and specified that
`“claim 1 is now rejected over Krepshaw in view of Freeman
`since Freeman was relied upon to teach the batter limita-
`tion of claim 8.” J.A. 336. By that time, appellants had
`filed their opening brief to the Board. See J.A. 275. When
`the examiner, in her answer to the Board, relied on the
`Krepshaw-Freeman combination to reject claim 1, the com-
`bination was hardly new. See J.A. 342–43. And appellants
`had two months in which to file a reply brief and address
`the Krepshaw-Freeman combination. See 37 C.F.R.
`§ 41.41. It never did. See J.A. 10. Nor, after the Board
`relied on this Krepshaw-Freeman combination, did appel-
`lants request a rehearing of the Board’s decision as improp-
`erly relying on a new ground of rejection. See 37 C.F.R.
`§§ 41.52(a)(4), 41.50(c); see also J.A. 10.
`Next, appellants argue that the Board improperly re-
`fused to consider evidence when it did not consider an in-
`struction manual and recipe book associated with the Big
`Boss Grill (the subject of Krepshaw). Appellants also argue
`that we must take judicial notice of those items. Samuels
`Opening Br. at 13. We also reject this challenge.
`The Board did not commit the asserted error, because
`the Big Boss Grill instruction manual and recipe book were
`not timely introduced into the record. See 37 C.F.R.
`§ 41.37(c)(2). To be sure, the examiner, in her final
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`rejection, referred to the Big Boss Grill website; and appel-
`lants, in their responses after final office action, referred to
`some “disclosure” and “literature” involving the Big Boss
`Grill and, in their appeal brief to the Board, referred again
`to “literature” for the Big Boss Grill and to the Big Boss
`Grill website. See J.A. 262–63, 287, 289, 303–08, 314–15.
`But the Big Boss Grill instruction manual and recipe book
`were not themselves referred to until oral argument in
`front of the Board. And at the oral argument, counsel for
`appellants admitted that the Big Boss Grill manual “was
`never submitted,” and “[a]s far as [he] recall[ed],” was not
`part of the record. J.A. 394, 399–400.
`In any event, even if the Board’s refusal to consider the
`Big Boss Grill instruction manual and recipe book was er-
`roneous, that error was harmless. The only argument
`made by appellants in this court about those items is that
`they teach away from using two plates having different
`patterns. But teaching away is a demanding standard, re-
`quiring distinctly negative teachings that go beyond even
`expressing a preference for an alternative. See Adapt
`Pharma Operations Ltd. v. Teva Pharmaceuticals USA,
`Inc., 25 F.4th 1354, 1370 (Fed. Cir. 2022). Appellants quote
`nothing from the instruction manual or the recipe book
`that could reasonably be found to meet that standard. See
`J.A. 449, 451, 455. Even if we were to take judicial notice
`of the Big Boss Grill instruction manual and recipe book,
`we see nothing in them, as supplied to us, that could rea-
`sonably constitute a teaching away from use of two plates
`having different patterns.
`
`IV
`The decision of the Board is affirmed.
`AFFIRMED
`
`