Federal Circuit disposition — 21-2166

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: JUSTIN SAMUELS, SAMUEL ROCKWELL,
Appellants
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2021-2166
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/168,768.
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Decided: March 6, 2024
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T ODD STEVEN SHARINN, Gilbride, Tusa, Last &
Spellane LLC, Greenwich, CT, for appellants.
P ETER J. AYERS , Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Katherine K. Vidal. Also represented by O MAR F AROOQ
AMIN, AMY J. N ELSON, F ARHEENA Y ASMEEN RASHEED.
______________________
Before T ARANTO, CHEN, and STOLL , Circuit Judges.
P ER 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 2
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 3
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 4
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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IN RE: SAMUELS 5
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 6
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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IN RE: SAMUELS 7
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
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