NOTE: This disposition is nonprecedential.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 “Asymmetrically Patterned Baked Bread Food” on May 31, 2016. The 

assigned examiner in the U.S. Patent and Trademark Office rejected claim 1, the only currently pending claim, for 

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2 IN RE: SAMUELS

obviousness under 35 U.S.C. § 103, in light of two prior-art 

references: Krepshaw (an article in the internet publication 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, comprising:

a first patterned baked surface that is a negative 

image of a first positive relief pattern in an associated first baking plate, and a second patterned 

baked surface that is a negative image of a second 

positive relief pattern in an associated second baking plate,

wherein said first and second patterned baked surfaces have been formed by exposing a waffle-forming 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 receiving said waffle-forming material.

J.A. 325. The key prior-art reference, Krepshaw, is a published 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 designed with one-sided waffles in mind, but with 12 

interchangeable grill plates, the possibility now exists . . . . Now I don’t know if trying to make onesided waffles would just end up being a messy batter explosion, but I do know it’s the first thing I’d 

try[.]

J.A. 211. The second prior-art reference, Freeman, discloses 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 obviousness over Krepshaw and Freeman, explaining that Krepshaw 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 examiner and determined claim 1 to be unpatentable for obviousness over Krepshaw and Freeman. In particular, the 

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Board determined that Krepshaw suggested making a onesided 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 “question of law based on underlying findings of fact,” id., and 

how to understand the prior art, whether a relevant artisan 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 determination that Krepshaw discloses to a relevant artisan each limitation of claim 1 of the ʼ768 application other than the 

batter limitation, which is disclosed by Freeman. Krepshaw’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 affirmatively 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 consider 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 “mixing, 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 experimentation 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 suggests this result was expected: Krepshaw points to a griddle 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 reversible error. 

First, appellants argue that the examiner failed to provide 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. Samuels Opening Br. at 11. We reject this challenge. 

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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 nonfinal rejection. J.A. 221. Appellants substantively responded, 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 advisory 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 limitation 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 combination 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 appellants request a rehearing of the Board’s decision as improperly 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 refused to consider evidence when it did not consider an instruction 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 appellants, 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 erroneous, 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, requiring 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 reasonably 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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