A & J MANUFACTURING, LLC (PATENT OWNER) et al.

Patent Trials and Appeals Board

Jun 1, 2020

90013762 - (D) (P.T.A.B. Jun. 1, 2020)

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.
90/013,762 06/06/2016 8381712 AJ.RE0010US 6029
145335 7590 06/01/2020
HELSELL FETTERMAN LLP
1001 Fourth Avenue, Suite 4200
Seattle, WA 98154
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/01/2020 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 A & J MANUFACTURING, LLC (PATENT OWNER), and
KIRBY DRAKE (3RD PTY REQ.)
Appeal 2020-002609
Reexamination Control 90/013,762
Patent US 8,381,712 B11
Technology Center 3900
BEFORE BRETT C. MARTIN, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under

1 Issued on February 26, 2013 to John Lee Simms, II.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as A & J
Manufacturing, LLC d/b/a Char-Griller, and A & J Manufacturing, Inc.
Appeal Br. 3.
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35 U.S.C. § 6(b). An oral hearing was held on April 2, 2020. A transcript of
that hearing will be included in the record.
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed “to a simultaneous multiple cooking mode
barbecue grill.” Spec. col 1, ll. 23–24. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A barbecue grill having multiple cooking units,
comprising:
a support structure configured to support a plurality of
cooking units; a first cooking unit configured to cook food using
gas cooking fuel, the first cooking unit attached to the support
structure and including at least one first grill, the first cooking
unit further including an openable first cover attached to the first
cooking unit that selectively covers the first grill, wherein the
first cover includes at least one exhaust; and a second cooking
unit configured to cook food using solid cooking fuel, the second
cooking unit attached to the support structure and including at
least one second grill, the second cooking unit further including
an openable second cover attached to the second cooking unit
that selectively covers the second grill, wherein the second cover
includes at least one exhaust, wherein the first cooking unit and
the second cooking unit are simultaneously operable to cook
food and the first grill and second grill are selectively and
independently coverable.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wackerman US 4,593,676 June 10, 1986
Ducate US 4,886,045 Dec. 12, 1989
Koziol US 5,632,265 May 27, 1997
Lin US 5,782,166 July 21, 1998
Clark US 5,890,422 Apr. 6, 1999
Faraj US 6,012,442 Jan. 11, 2000
Oliver US 6,189,528 Feb. 20, 2001
Holland US 2002/0179081 A1 Dec. 5, 2002
“Big Green Egg Cooking Center Grill: 65” Model,” Big Green Egg®
Cooking Center 1–18 (2003) (“BGE Cooking Center Manual”).
“Big Green Egg® World’s Best Smoker!” Big Green Egg® 1–117 (1999)
(“BGE Manual”).

REJECTIONS
Claims 1–5 and 7–16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over BGE Cooking Center Manual, the BGE Manual
(collectively “the BGE Manuals”), and Holland the BGE Manual. Final Act.
5.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over BGE Cooking Center Manual, Holland, the BGE Manual,
and Ducate. Final Act. 7.
Claims 17–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over BGE Cooking Center Manual, Holland, the BGE Manual,
and Oliver. Id.

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OPINION
Procedural Issues
Patent Owner argues that the Final Action was improperly made final
because it contains new grounds of rejection. Appeal Br. 17–18. Whether
the Examiner has issued new grounds of rejection is a petitionable matter,
not an appealable one. We note that Patent Owner did, in fact, petition this
matter and lost that petition in a decision on June 5, 2017. Accordingly,
such a determination is not properly before us.
Next, Appellant argues that the Requester committed inequitable
conduct by omitting key facts from its Request and thus, this proceeding
should be dismissed. The Examiner is correct, however, that “the PTO will
not make an evaluation as to compliance with 37 [C.F.R. §] 1.555.” Final
Action 15. As stated in the regulation, if questions of compliance with the
duty of candor are raised, “they will be noted as unresolved questions in
accordance with § 1.552(c).” 37 C.F.R. § 1.555(c). Accordingly, we will
not further address this issue herein.
Lastly, Patent Owner argues that this Appeal must be remanded to
address the issue of potential estoppel of the Requester due to a change in
the law. Reply Br. 2–3. Patent Owner asserts that the Federal Circuit
changed the law “and the Patentee can argue the §315(e)(1) estoppel issue
with the merits of the appeal.” Id. 35 U.S.C. § 315(e)(1), however, states
that estoppel attaches only after a final written decision. Here, the Inter
Partes Review ended before a final written decision was issued. As such, no
estoppel can attach, whether Academy was properly joined to the IPR or not.
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Accordingly, the change in case law has no effect on the disposition of this
appeal.
Obviousness
As to the grounds of rejection maintained by the Examiner, Patent
Owner essentially argues that the secondary considerations evidence should
prevail over all of the Examiner’s rejections for the same reasons the
Examiner withdrew certain grounds of rejection, that one of skill in the art
would not look to a Kamado grill to modify Holland and Oliver as proposed
by the Examiner, and that one of skill in the art would not look to the cited
references to rebut the teaching away found in Oliver. Appeal Br. 26.
We first note that the Examiner’s rejection of claim 1 over the BGE
Manual teaches all but one feature. As the Examiner states, “[t]he only
element missing from the BGE Manuals is an exhaust on the other of the
openable covers” (i.e., on the gas grill). Final Act. 10. The Examiner then
uses Holland in combination with the BGE manuals because Holland
teaches a gas grill having an exhaust on the lid of the grill. See, e.g.,
Holland Fig. 1. As stated by the Examiner, Holland also specifically
recognizes “that there is a problem with grills, including gas grills, with
smoke accumulation inside the grill.” Ans. 17. Accordingly, one of skill in
the art would have been motivated to modify the gas grill as taught in
Holland to alleviate the problem with smoke accumulation in the grill.
As to the modification of Holland, Appellant first argues that “one of
skill in the art would not look to a Kamado grill design to modify a gas grill
lid.” Appeal Br. 28. As stated by the Examiner, however, “the [E]xaminer
does not use the fact that the BGE smoker has an exhaust on the cover as
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motivation for modifying the gas grill . . . on the cover.” Final Act. 11. The
Examiner, in fact, uses Holland as the basis for motivation for making the
modification. Accordingly, this argument is not persuasive as the Examiner
is not utilizing the BGE exhaust as a basis for modifying the gas side of the
grill.
Patent Owner next asserts that there is no defect in the gas grill of the
BGE Manuals and that “[n]o one points to any fact of record that this is so.”
Appeal Br. 28. As noted above, however, Holland specifically teaches that
smoke accumulation in gas grills can be a problem and that an exhaust in the
grill lid is a proper solution to this problem. Accordingly, the prior art does
recognize a defect in a gas grill such as that shown in the BGE manual.
Patent Owner further asserts that the Examiner has not rebutted the
teaching away of Oliver and that the Examiner is essentially ignoring Oliver.
Appeal Br. 30. The Examiner, however, “is not ignoring the teaching but
weighing it against the teachings towards making the modification.” Ans.
18. As the Examiner states, “Oliver is concerned with heat loss due to open
lid designs and the opening of the lid” and that “Oliver solves the problem of
heat loss by providing reflective lids that can be opened independently,
thereby reducing heat loss.” Ans. 18–19. The Examiner additionally points
out that “Oliver never discusses exhausts and the extent of heat loss [that]
can be contributed to an exhaust in the lid.” Ans. 19.
Patent Owner relies heavily on the findings by the ITC in rebutting the
Examiner’s rejection. The decision of the Commission, however, does not
estop a fresh consideration by the Board. “[D]ecisions of the ITC involving
patent issues have no preclusive effect in other forums.” Texas Instruments
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Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996);
see also Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1019
(Fed. Cir. 1987) (explaining that “appellate treatment of decisions of the
Commission does not estop fresh consideration by other tribunals.”)3. Thus,
while the findings of the ALJ in the ITC proceeding may be entitled to some
deference, we are not bound by those findings. Furthermore, “[b]efore the
courts, a patent is presumed valid and the party asserting invalidity must
prove the facts to establish invalidity of each claim by clear and convincing
evidence.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(citations omitted). “In a reexamination proceeding, on the other hand, there
is no presumption of validity and the ‘focus’ of the reexamination ‘returns
essentially to that present in an initial examination,’ . . . at which a
preponderance of the evidence must show nonpatentability before the PTO
may reject the claims of a patent application.” Id. (citations omitted).
Patent Owner relies on the ITC’s finding that Oliver teaches away
from including exhausts. Appeal Br. 30. That finding, however, was made
without the additional teachings of Holland and other prior art references
explaining why an exhaust could have been beneficial. In essence, the ITC’s
finding is only a general finding that Oliver teaches away from heat loss.
Because an exhaust, which is not even addressed in Oliver, would result in
heat loss, one of skill in the art would not look to modify Oliver with an
exhaust. As the Examiner demonstrates, however, the art also recognizes

3 The Tandon decision specifically notes that “any disposition of a
Commission action by a Federal Court should not have a res judicata or
collateral estoppel effect in cases before such courts.” Tandon Corp., 831
F.2d at 1019 (citations omitted).
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other situations where an exhaust is beneficial and that Oliver does not
specifically teach away from the inclusion of an exhaust. We agree with the
Examiner regarding the teaching away that “the abundance of evidence to
the contrary and all of the evidence of record, outweighs the one teaching of
Oliver.” Ans. 19. Contrary to Patent Owner’s assertion, the Examiner is not
ignoring Oliver, but is merely weighing the teaching away against other
teachings in the grill art; teachings that were not addressed by the ITC.
Regarding secondary considerations evidence, we first note that
findings by the ITC standing alone do not amount to evidence of non-
obviousness. Without having the corresponding evidence supporting those
findings before us, we have little way of evaluating that evidence, let alone
assessing its weight. Further, the burden of proving commercial success
(and other types of secondary considerations) during prosecution is on the
applicant or patent owner. See In re Huang, 100 F.3d 135, 139–140 (Fed.
Cir. 1996) (“In the ex parte process of examining a patent application . . . the
PTO lacks the means or resources to gather evidence which supports or
refutes the applicant's assertion that the sales constitute commercial
success.”); see also In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008). The
burden of proving a nexus between the secondary considerations and the
merits of the claimed invention during prosecution is also on the applicant or
patent owner. Huang, 100 F.3d at 140 (“In sum, Huang simply has not
carried his burden to prove that a nexus existed between any commercial
success and the novel features claimed in the application.”). “For objective
evidence of secondary considerations to be accorded substantial weight, its
proponent must establish a nexus between the evidence and the merits of the
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claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(internal citations omitted) (emphasis in original). “Where the offered
secondary consideration actually results from something other than what is
both claimed and novel in the claim, there is no nexus to the merits of the
claimed invention.” Id. (emphasis in original). That is, the evidence of
secondary considerations cannot be due to what is already known in the art.
Here, the BGE Manuals show every feature of claim 1 except for the
claimed exhaust on the gas grill lid. Thus, the exhaust is the only novel
feature of the claimed invention. None of the evidence before us links any
of the secondary considerations evidence to this lone novel feature. The ITC
did not have the BGE Manuals before them and, thus, their finding of
commercial success is based upon a different combination of features that
could be considered novel. This alone is a valid basis to deviate from the
ultimate conclusion at the ITC.
Patent Owner characterizes the ITC’s analysis as fact findings to
which the Office must give deference. Reply Br. 6–7. The Examiner,
however, is correct that “the Office is not bound by the ITC’s determination
because the Office uses different standards of proof in determining invalidity
and could come to a different conclusion than the ITC with the same
evidence.” Ans. 5. Even accepting the findings by the ITC, Appellant has
not established that those findings overcome the Examiner’s case of
obviousness.
For example, the evidence before us regarding commercial success
amounts to a statement from the inventor himself, John Lee Simms. In this
statement Mr. Simms does not refer to market share, which is an important
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aspect of commercial success as the overall grill market may have increased
during the period in question and we have no evidence showing that Patent
Owner’s share increased above that of its competitors. The Examiner
acknowledges that the evidence “establishes that there is commercial success
in sales and from 2006 to 2011 the sales numbers increased” and that “the
multimode grills are a certain percentage of their (A&J Manufacturing, Inc.)
grill sales.” Ans. 7. Thus, the Examiner does give deference to the ITC’s
findings to an extent.
The Examiner also points out in a footnote, however, that “[t]he
specific sales numbers and percentages have been redacted from Mr. Simms
Statement.” Id. Given the lack of market share information and the redacted
sales numbers, we simply do not have enough information before us to
properly weigh these factors against the Examiner’s rejection. Even
accepting the ITC’s findings that commercial success exists, given the
stronger rejection and the lack of detail in the evidence before us, Appellant
has not established that the commercial success outweighs the Examiner’s
strong prima facie case of obviousness.
As to the other secondary considerations evidence, Patent Owner’s
argument relies solely on the ITC’s conclusions, stating that the ITC’s
determinations are “of record here and that is all that is needed.” Reply Br.
6. Patent Owner does not provide any explanation as to why the secondary
considerations evidence overcomes the Examiner’s obviousness rejection.
The Examiner, on the other hand, explains in great detail why the secondary
considerations evidence is insufficient when weighed against the rejection at
issue. See Ans. 5–16. Having reviewed the Examiner’s analysis of
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commercial success, copying, long felt but unmet need, industry praise, and
acquiescence, we agree with the Examiner’s analysis and adopt it as our
own.
Even accepting the ITC’s findings, because of the strength of the
rejection before us, we do not agree that the preponderance of the evidence
before us weighs in favor of patentability. Finally, with regard to claim 1,
Patent Owner asserts that the BGE Manuals are cumulative of Koziol.
Appeal Br. 31. We disagree. As the Examiner points out, “[t]he ITC Final
Determination found that Koziol did not teach covers where lids are
openable, use of an exhaust in a grill particularly on an openable cover
rather than below the cooking area, the use of a cooking grate or grill, and
cooking simultaneously with two different fuels.” Final Act. 10. As noted
above, the BGE Manuals teach all of the claim elements except for the
exhaust on the lid of the gas grill. As such, the BGE Manuals teach much
more than Koziol and are not merely cumulative.
Patent Owner relies on the arguments addressed above with regard to
the rejection of claim 6, which we have already found unpersuasive. As to
the rejection of claims 17–20, Appellant admits that “all of these references
do have generally cylindrical shapes, but all of them lack a motivation to
combine their shapes into a dual-grill structure.” Appeal Br. 34–35. As the
Examiner states, however, Oliver teaches that “[s]quare shapes are less
efficient than parabolic or semi circular shapes.” Ans. 25 (citing Oliver col.
1, ll. 31–32). Furthermore, the Examiner is correct that Oliver only “teaches
away from one aspect of the claimed invention, it does not teach away from
forming the grills of a certain shape.” Ans. 25. Given this, we agree that
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“one would be motivated to form the cooking units with a substantially
cylindrical shape because it would enhance cooking efficiency.” Ans. 26.
For the reasons stated above, we sustain all of the Examiner’s
rejections.

CONCLUSION
The Examiner’s rejections are AFFIRMED.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–16 103 BGE Manuals, Holland 1–5, 7–16
6 103 BGE Manuals,
Holland, Ducate
6
17–20 103 BGE Manuals,
Holland, Oliver
17–20
Overall
Outcome:
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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