Ex Parte Foster et al

Patent Trials and Appeals Board

Mar 28, 2013

11693143 - (D) (P.T.A.B. Mar. 28, 2013)

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.
11/693,143 03/29/2007 Paul Lincoln Foster 52289.0500 8794
20322 7590 03/29/2013
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
03/29/2013 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 PAUL LINCOLN FOSTER and DEL MOFFAT THORNOCK
____________

Appeal 2011-001634
Application 11/693,143
Technology Center 3700
____________

Before WILLIAM V. SAINDON, WILLIAM A. CAPP and
SCOTT A. DANIELS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001634
Application 11/693,143
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-23 and 25. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ invention relates to a food fryer device. Spec. 1, para.
[0001]. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A frying device for frying a food in oil, comprising:
a heating element;
a housing;
a cover configured to remain closed during an oil
removal process, wherein said heating element, said housing,
and said cover are operable to achieve an elevated temperature
in said oil removal section, wherein said elevated temperature is
at least about 100 degrees Celsius; and
a cooling rate control mechanism operable to achieve a
cooling rate of the food (C) which improves the removal of
excess oil from the food, wherein said elevated temperature in
said oil removal section influences said cooling rate of the food
(C) such that said cooling rate of the food is less than 50
degrees Celsius per minute during said oil removal process.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Ronci
Chung
Chung
US 5,611,265
US RE37,706 E
US 2004/0060456 A1
Mar. 18, 1997
May 21, 2002
Apr. 1, 2004
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The following rejections are before us for review:
1. Claims 1-6, 10, 11 and 14-17 are rejected under 35 U.S.C. §
102(b), as being anticipated by Ronci.
2. Claims 7-9, 12, 18-23 and 25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ronci and Chung ‘456.
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ronci and Chung ‘706.
OPINION
Anticipation of Claims 1-6, 10, 11 and 14-17 by Ronci
Appellants argue claims 1-5, 10, 11 and 14 as a group and claims 15-
17 as a group. App. Br. 10-17. We select claims 1 and 15 as representative
of each respective group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 6
is argued separately.
Claims 1-5, 10, 11 and 14
The Examiner finds that Ronci discloses all of the limitations of
claim 1. Ans. 3-4. More particularly, the Examiner finds that Ronci teaches
a frying device for frying food in oil that has a heating element, a housing,
and a cover that is configured to remain closed during an oil removal
process. Ans. 3. The Examiner also finds that Ronci’s housing and cover
are operable to achieve a temperature at or above 100 degrees Celsius in its
oil removal section. Ans. 4. Finally, the Examiner finds that Ronci
discloses a cooling rate control mechanism operable to achieve a food
cooling rate of less than 50 degrees Celsius per minute during the oil
removal process. Id.
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Appellants traverse the Examiner’s rejection by asserting that Ronci
fails to disclose a cooling rate control mechanism as claimed. App. Br. 12,
14-16. In particular, Appellants contend that Ronci’s temperature controls,
while operative to control the temperature of the cooking oil during the
frying process, nevertheless, are not operative to control the cooling rate of
the food during the spinning mode after frying. Id.
With respect to the structural elements of claim 1, Appellants’
invention and Ronci are identical. Ronci defines an enclosure that holds a
certain volume of cooking oil. Ronci, Fig. 4, element 78 (cooking oil
container). Immediately above the cooking oil container is an enclosed air
space where the food undergoes centrifugal spinning to remove oil after the
food is fried. Ronci, Fig. 4, Col. 4, ll. 40-44 (“Fig. 4 shows the food cooking
apparatus 10 of the present invention in the spinning mode after frying ”).
Ronci discloses heating elements to heat the cooking oil. Fig. 4, element 44.
Ronci discloses controls for the heating elements. Col. 5, ll. 45-49
(“Heating elements 44, controlled by various knobs generally referenced at
16 to control the temperature and timing of the heating of cooking liquid
76”). Finally, Ronci discloses a sealed cover for enclosing the volume of
space where frying and centrifugal spinning take place. Fig. 4, element 14;
Col. 4, ll. 20-21.1
The Examiner interprets Ronci as satisfying the cooling control
mechanism limitation, because Ronci has the same structure as Appellants’
invention. Ans. 4, 12-13. Appellants have failed to demonstrate a
patentably distinguishable structural difference between their invention and

1 The cover seals the cooking oil chamber from the ambient air
environment. Col. 5, ll. 19-23 (“ . . . seal the top open end of cooking oil
container 78 upon closure of cover 14 via hinge 74”).
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Ronci. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not”). We sustain the Examiner’s rejection of claims 1-5, 10, 11 and 14.
Claim 6
Claim 6 depends from claim 1 and adds the limitation: “wherein said
heating element is disposed within said oil section and within said spinning
section.” App. Br., Clms. App’x. The Examiner finds that Ronci discloses a
first heating element in the oil section and a second heating element in the
spinning section. Ans. 6, citing Ronci Fig. 4, element 44; Col. 4, ll. 47-49;
Fig. 13, Element 118; Col. 6, ll. 21-24; Col. 7, ll. 33-42.
Appellants argue that Ronci does not anticipate claim 6 because Ronci
discloses two separate heating elements. App. Br. 16. Appellants insist that
claim 6 can only be satisfied by a single heating element that resides both in
the cooking section and the spinning section. Reply 13.
Claims 1 and 6 are both open-end claims, each having a ‘comprising’
transition. App. Br., Clms. App’x. Claim 1 recites a heating element using
the indefinite article ‘a.’ Id. Our reviewing court has repeatedly
emphasized that the indefinite article ‘a’ carries the meaning of ‘one or
more’ in open-ended claims containing the transitional phrase ‘comprising.’
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir.
2008). The subsequent use of definite articles “the” or “said” to refer back
to the same claim term simply reinvokes that non-singular meaning. Id.
Appellants’ interpretation of claim 6 as being limited to a single
heating element is contrary to established law. We sustain the Examiner’s
rejection of claim 6.
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Claims 15-17
Claim 15 depends from claim 1 and adds the limitation: “wherein
said cooling rate of the food (C) is less than 30 degrees Celsius per minute.”
App. Br., Clms. App’x. Appellants traverse the Examiner’s rejection by
arguing that Ronci is silent as to a specific cooling rate. App. Br. 16-17.
The enclosed air space where Ronci centrifugally removes oil is
situated immediately above a reservoir of hot cooking oil in an identical
fashion to that of Appellants. As the heating element heats the oil in the
cooking oil container, heat transfers to the enclosed airspace immediately
above the hot oil in a similar fashion in both devices. Both devices spin the
food to remove oil in this volume of enclosed, heated air immediately above
the hot cooking oil. Given the identity of structure between the two devices,
Appellants have failed to carry their burden of establishing that Ronci does
not also satisfy the functional limitation directed to a cooling rate.
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). We sustain the
Examiner’s rejection of claims 15-17.
Unpatentability of Claims 7-9, 12, 18-23 and 25 over Ronci and Chung ‘456
Prior to addressing the individual limitations of claims 7-9, 12, 18-23
and 25, Appellants argue generally that Ronci and Chung ‘456 are not
combinable references. App. Br. 17-22. Appellants argue that modifying
Ronci with Chung ‘456 would render the claimed invention and/or Ronci
unsatisfactory for its intended purpose. App. Br. 19. Appellants argue that
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if Chung’s motor is incorporated into Ronci, Ronci can no longer maintain
the claimed cooling rate(s). Id.
Appellants’ argument that Chung’s motor cannot be physically
incorporated into Ronci is not persuasive. It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements. In re Mouttet,
686 F.3d 1322, 1332-33, (Fed. Cir. 2012) citing In re Etter, 756 F.2d 852,
859 (Fed. Cir. 1985) (en banc). “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference ....” In re Keller, 642 F.2d 413, 425
(CCPA 1981). The test for obviousness is what the combined teachings of
the references would have suggested to those having ordinary skill in the art.
Mouttet, supra at 1332-33. The criterion is not whether the references could
be physically combined but whether the claimed invention is rendered
obvious by the teachings of the prior art as a whole. Id. Appellants’
argument does not apprise us of error in the Examiner’s determination that
that Ronci and Chung ‘456 are combinable references.
Claim 7
Claim 7 depends from claim 1 and adds the limitation: “wherein said
cover is moveable by a servo.” Clms. App’x. Appellants traverse the
Examiner’s rejection by arguing that Chung ‘456 fails to disclose a servo
that moves Chung’s cover. App. Br. 22. The Examiner responds by
directing our attention to elements 155 and 157a respectively in Figure 7 and
described in paragraph [0031] of Chung ‘456. Ans. 15. Paragraph [0031]
explains that the outer shell is connected to arms 154a and b and to the
motor 155. However, the disclosure stops short of a clear and unequivocal
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teaching that the door is actually opened and closed by the motor. It is more
likely than not that motor 155 is used to spin baskets 152, not open the door.
Thus, the Examiner’s finding that Chung ‘456 discloses a servo that moves
the cover is not supported by a preponderance of the evidence. We do not
sustain the Examiner’s rejection of claim 7.
Claim 8
Claim 8 depends from claim 2 and adds the limitation: “further
comprising an agitation motor for moving said food spinner within said oil
section.” App. Br., Clms. App’x. Appellants offer no new arguments for
the patentability of claim 8 and rely, instead, on their arguments asserted in
support of claim 1. App. Br. 22.
Inasmuch as we sustain the Examiner’s rejection of claim 1 and
Appellant has failed to identify any facts or articulate any technical
reasoning that would patentably distinguish claim 8 from the cited prior art
references, we sustain the Examiner’s rejection of claim 8 for the same
reasons as stated herein with respect to claim 1.2
Claim 9
Claim 9 depends from claim 2 that we have previously found to be
anticipated by Ronci. Claim 9 adds the limitation: “further comprising an
agitation motor for moving said food spinner within said spinning section.”
App. Br., Clms. App’x. The Examiner finds that Chung ‘456 discloses an
agitation motor for moving the food spinner within the spinning section.

2 Alternatively, such paragraph does not constitute a separate
argument for patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii)
(Statements that merely point out what a claim recites are not considered to
present an argument for separate patentability of the claim).
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Ans. 8. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine
Ronci and Chung ‘456 for the benefit of draining the hot oil from the
baskets. Id.
Appellants traverse the Examiner’s rejection by arguing that the cited
references do not disclose an agitation motor as claimed. App. Br. 22.
Appellants argue that Chung’s agitation, if any, takes place in the bath of hot
oil, not the spinning section. App. Br. 22-23.
The Examiner responds by stating that Chung’s motor is used for
agitating the food. Ans. 15-16. The Examiner further states that Chung
drains the oil by spinning and that such spinning agitates the food. Id. The
Examiner states that such draining and spinning takes place in the spinning
section of Chung. Id.
Appellants’ Specification does not provide an operational definition of
“agitate.” In certain places in the Specification, the word “spin” is used to
describe a manner of agitating the food. Spec. 13, para. [0039].3 Inasmuch
as Appellants’ Specification fails to clearly distinguish between spinning and
agitating the food, we are not persuaded by Appellants that the Examiner
erred in finding that Chung ‘456 satisfies the limitation directed to an
agitation motor. We sustain the Examiner’s rejection of claim 9.
Claim 12
Claim 12 depends from claim 10 which, in turn, depends from
claim 1. Claim 10 adds the limitation: “further comprising an oil filter.”

3 “Causing basket 40 to spin while in oil section 20 agitates and/or
mixes the food within basket 40 and thereby discourages the food from
sticking together.” Id. (Emphasis added).
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App. Br., Clms. App’x. Claim 12 adds the limitation: “further comprising a
pump in fluid communication with said filter.” Id. Appellants offer no new
arguments for the patentability of claim 12 and rely, instead, on their
arguments asserted in support of claim 1. App. Br. 23.
Inasmuch as we sustain the Examiner’s rejection of claim 1 and
Appellants have failed to identify any facts or articulate any technical
reasoning that would patentably distinguish claim 12 from the cited prior art
references, we sustain the Examiner’s rejection of claim 8 for the same
reasons as stated herein with respect to claim 1.4
Claim 18-20, 22 and 23
Appellants argue claims 18-20, 22 and 23 as a group. App. Br. 23-24.
We select independent claim 18 as representative of the group. See 37
C.F.R. § 41.37(c)(1)(vii) (2011). Claims 19, 20, 22 and 23 stand or fall with
claim 18.
The Examiner finds, and Appellants do not dispute, that Ronci and
Chung ‘456 disclose all of the limitations of claim 18 except for a cooling
rate control mechanism as claimed. Ans. 8-9, 16; App. Br. 23-24. The
Examiner finds Ronci satisfies the cooling rate control mechanism. Ans. 8-
9, 16. For the same reasons discussed above with respect to claim 1, we
agree with the Examiner that Ronci satisfies the cooling rate control
mechanism limitation.
Notwithstanding, Appellants challenge the Examiner’s rejection,
arguing that Ronci and Chung ‘456 cannot be combined because Chung

4 Alternatively, such paragraph does not constitute a separate
argument for patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii)
(Statements that merely point out what a claim recites are not considered to
present an argument for separate patentability of the claim).
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teaches away from the invention. App. Br. 23-24. Appellants argue that,
because Chung spins the food at room temperature after frying, Chung
teaches against the invention.
However, a reference does not teach away if it merely discloses an
alternative invention but does not “criticize, discredit, or otherwise
discourage” investigation into the invention claimed. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants have not directed us to any
language in Chung ‘456 that criticizes, discredits, or otherwise discourages
investigation into centrifugal spinning fried food at elevated air
temperatures. Thus, we reject Appellants’ teaching away argument.
Next, Appellants argue that combining Chung with Ronci would
render claim 18 inoperable for its intended purpose. App. Br. 24.
Appellants offer no support for this conclusory statement, which we interpret
as a reprise of Appellants’ bodily incorporation argument that we considered
and rejected earlier in this opinion. We sustain the Examiner’s rejection of
claims 18-20, 22 and 23.
Claim 21
Claim 21 depends from claim 18 and adds the limitation: “wherein
said motor is a direct drive motor configured to move said target food
receptacle between said spinning section and said oil section.” App. Br.,
Clms. App’x. The Examiner relies on Chung ‘456 as disclosing a direct
drive motor as claimed. Ans. 10. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to combine the teachings of Ronci with the motor of Chung '456
for the benefit of moving the baskets in and out of the bath of hot oil. Id.
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Appellants argue that the cited references do not disclose a direct
drive motor. App. Br. 24. Appellants contend that Chung ‘456 only
discloses a rack and pinion device, but is otherwise silent with respect to a
direct drive motor. Id.
Chung ‘456 discloses that one type of drive mechanism that can be
used to move the baskets in and out of the bath of hot oil is a rack and
pinion, where the pinion may be driven by a programmable step motor.
Chung ‘456, para. [0022].
A person of ordinary skill in the art would understand a step motor to
be a direct drive motor. Appellants use of the open-ended claim form with
the ‘comprising’ transition does not exclude the possible use of a direct
drive, step motor to move the target food receptacle between the oil and
spinning sections via a rack and pinion apparatus interposed between the
direct drive, step motor and the target food receptacle. Accordingly,
Appellants have not persuaded us that the Examiner erred in rejecting claim
21. We sustain the Examiner’s rejection of claim 21.
Claim 25
Claim 25 depends from claim 1 and adds the limitation: “wherein
said cooling rate control mechanism is automatically operable to achieve
said cooling rate of the food (C).” App. Br., Clms. App’x. The Examiner
interprets Ronci as teaching a frying device with a cooling rate control
mechanism that is automatically operable to achieve a cooling rate as
claimed. Ans. 11.
Appellants argue that Ronci and Chung do not disclose a cooling rate
control mechanism, an argument we have previously rejected. App. Br. 25.
Appellants further argue that the cited references do not disclose a cooling
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rate control mechanism that operates automatically. Id. The Examiner
responds by stating that merely providing an automatic means to replace a
manual activity which accomplishes the same result is not sufficient to
distinguish over the prior art. Ans. 17, citing In re Venner, 262 F.2d 91, 95
(CCPA 1958).
Appellants admit that the spinning process happens over a short
period of time, literally seconds. App. Br. 14. In view of our analysis with
respect to claim 1 above, we are not persuaded that Appellants have shown
error with respect to the Examiner’s rejection of claim 25. We sustain the
Examiner’s rejection of claim 25.
Claim 13
Claim 13 depends from claim 1 and adds the limitation: “comprising
a fire suppression system.” App. Br., Clms. App’x. The Examiner relies on
Chung ‘706 as disclosing a fire suppression system. Id. Appellants argue
that Chung ‘706 merely discloses a fire prevention system, not a fire
suppression system. App. Br. 25. We agree and, therefore, do not sustain
the Examiner’s rejection of claim 13.

DECISION
The decision of the Examiner to reject claims 1-6, 10, 11 and 14-17
under 35 U.S.C. § 102(b), as being anticipated by Ronci, is affirmed.
The decision of the Examiner to reject claim 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Ronci and Chung ‘456 is reversed.
The decision of the Examiner to reject claims 8, 9, 12, 18-23 and 25
under 35 U.S.C. § 103(a) as being unpatentable over Ronci and Chung ‘456
is affirmed.
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The decision of the Examiner to reject claim 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Ronci and Chung ‘706 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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