Ex Parte Krishnan

Patent Trial and Appeal Board

Aug 28, 2013

11560218 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ARVIND G. KRISHNAN
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Appeal 2011-009900
Application 11/560,218
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009900
Application 11/560,218

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3, 7-10, 12-19, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellant’s claimed invention relates to a cooking appliance for
producing flatbreads or other foodstuffs. Spec., para. [0004]. Claims 1, 10,
and 16 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A cooking appliance comprising:
a first heating assembly having a front, a back, two sides,
at least two handles extending from the two sides and a first
cooking surface; and
a second heating assembly having a second cooking
surface, said second heating assembly being operatively
connected to said first heating assembly, wherein said first
cooking surface is locatable in at least three operative positions
relative to said second cooking surface and said at least two
handles enable a user to translate said first cooking surface in a
substantially linear manner relative to said second cooking
surface and manually engage at least one hinge pin associated
with said first heating assembly with one of a plurality of
notches of a J -shaped track, wherein the at least one hinge pin
and the J -shaped track are configured such that if the user does
not manually engage the at least one hinge pin with one of the
plurality of notches, a weight of said first heating assembly
cannot be supported by the at least one hinge pin in relation to
the respective notch of the J-shaped track, said at least three
operative positions including:
(i) a first operative position wherein said first
cooking surface is secured in an abutting relationship
with said second cooking surface,
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Application 11/560,218

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(ii) a second operative position wherein said first
cooking surface is located at an angle relative to said
second cooking surface,
(iii) a third operative position wherein said first
cooking surface is secured in a spaced-apart relationship
relative to said second cooking surface, and said first
cooking surface is oriented along a plane substantially
parallel to said second cooking surface, and
(iv) a fourth operative position relative to said
second cooking surface wherein said first cooking
surface is secured in a spaced-apart relationship relative
to said second cooking surface at a different space from
said second cooking surface than in said third operative
position, and said first cooking surface being oriented
along a plane substantially parallel to said second
cooking surface, wherein when in said third operative
position and said fourth operative position, the weight of
said first heating assembly is supported in said respective
spaced apart relationship by the at least one hinge pin
associated with said first heating assembly abutted
against a respective notch of the J-shaped track, and
wherein said first cooking surface is maintainable in a
substantially parallel relationship with the second
cooking surface as said first cooking surface is
substantially linearly translated relative to the second
cooking surface between the first, third and fourth
operative positions by said user via the at least two
handles.

Evidence Relied Upon
Hurxthal
Lent
Roberts
Giguere
Potvin
Mullen
Glucksman
Barnes
Des. US 77,095
US 2,105,814
US 3,682,348
US 3,848,110
US 3,938,431
US 6,369,366 B1
US 6,555,795 B2
US 6,608,292 B1
Dec. 4, 1928
Jan. 18, 1938
Aug. 8, 1972
Nov. 12, 1974
Feb. 17, 1976
Apr. 9, 2002
Apr. 29, 2003
Aug. 19, 2003
Appeal 2011-009900
Application 11/560,218

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The Rejections
The following rejections are before us on appeal:
1. Claims 1-3, 7, 8, 10, 12, 13, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Giguere, either Barnes or Hurxthal, Potvin, and Roberts.
2. Claims 9, 14, and 16-19 under 35 U.S.C. § 103(a) as unpatentable
over Giguere, either Barnes or Hurxthal, Potvin, Roberts, and Glucksman.
3. Claims 23-25 under 35 U.S.C. § 103(a) as unpatentable over Giguere,
either Barnes or Hurxthal, Potvin, Roberts, Glucksman, and either Lent or
Mullen.

OPINION
Independent claim 1, in relevant part to the issues raised by Appellant,
is directed to a cooking appliance having operatively connected first and
second cooking surfaces, at least one hinge pin, a J-shaped track having a
plurality of notches, and at least two handles. The appliance is configured so
that via the at least two handles a user may substantially linearly translate the
first cooking surface relative to the second cooking surface while
maintaining a parallel relationship between those cooking surfaces as the
device moves between a first, third, and fourth operative position.
Independent claim 10 contains a similar limitation.1
The Examiner found that Giguere does not show a J-shaped track
having a plurality of notches.2 Ans. 4. The Examiner found that Potvin

1 Claim 16, which is subject to Rejection II, and is addressed infra, contains
a similar limitation.
2 The Examiner also found that Giguere does not disclose the at least two
handles; however, this finding is not relevant to our resolution of the case.
Ans. 4.
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discloses a cooking appliance having first and second cooking surfaces and a
J-shaped track for engaging with a pivoting pin. Id. The Examiner found
that Roberts discloses a cooking appliance with first and second cooking
surfaces connected with a hinge, and a hinge track having a plurality of
notches to allow a weight of the first cooking surface to be in spaced-apart
supporting positions in a parallel relationship to the second cooking surface.
Id. The Examiner concluded that it would have been obvious in view of
Potvin and Roberts to “adapt Giguere with a J-shaped track having a
plurality of notched therein to allow the weigh of the first heating assembly
is supported in a spaced apart relationship in the respective notches to
provide more secured first cooking surface positions respect to the second
cooking surface.” Id.
Appellant correctly points out that the Examiner did not address the
capability of the appliance to substantially linearly translate the first and
second cooking surfaces while maintaining a substantially parallel
relationship between those surfaces as claimed. App. Br. 11-12.
In response, the Examiner states that because Roberts and Potvin
disclose the recited structure (a J-shaped track having a plurality of notches
and a hinge pin), the claimed function of substantially linearly translating the
first and second cooking surfaces while maintaining a substantially parallel
relationship between those surfaces is presumed inherent. Ans. 6. The
Examiner also stated that Appellant’s argument based upon the linear
translation of the cooking surfaces is a manner of operating the appliance
and cannot be relied upon to distinguish over the prior art because the
claimed device must be distinguished in terms of structure. Ans. 7.
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Regarding the Examiner’s presumption of inherency, where an
examiner 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, the examiner possesses the
authority to require an applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic relied on. See, e.g., In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971). However, before an applicant
can be put to this burdensome task, the examiner must provide a sound basis
to establish the reasonableness of the examiner's belief that the functional
limitation is an inherent characteristic of the prior art. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). Here, the Examiner did not present adequate
evidence or technical reasoning; rather, such capability was presumed.
Beyond the lack of adequate technical reasoning, the references do not
support the Examiner’s position. As Appellant correctly points out, the first
cooking surface of Roberts (waffle iron 13 of lid member 12) must be
upright (vertical) when translated relative to the horizontal second cooking
surface (waffle iron 13 of base member 11). Reply Br. 3; Roberts, col. 2, ll.
29-33, 57-59; col. 4, ll. 5-10; fig. 3. In such position, the first and second
cooking surfaces of Roberts are perpendicular rather than substantially
parallel. Similarly, Potvin discloses that hinge means 51 permits the top
body portion 50 to be held outwardly from the main body portion 11.
Potvin, col. 3, ll. 48-50; col. 4, ll. 24-27. Potvin does not disclose that the
upper and lower portions may be substantially linearly translated while
maintaining a substantially parallel relationship. Therefore, neither Roberts
nor Potvin discloses a structure capable of the claimed function.
Appeal 2011-009900
Application 11/560,218

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Further, contrary to the Examiner’s interpretation, Appellant’s
argument regarding translation of the cooking surfaces as claimed is not
merely a manner of using the device. See Ans. 7. Rather, independent
claims 1 and 10 call for an appliance having a structure capable of the
claimed function. Because the Examiner has not demonstrated by a
preponderance of the evidence how the proposed combination is capable of
such function, we do not sustain the rejection of independent claims 1 and
10 and their respective dependent claims 2, 3, 7, 8, 12, 13, and 15.
Regarding Rejections II and III, the Examiner does not utilize the
additional reference or references to correct the deficiency of Rejection I.
See Ans. 5-6. Accordingly, we do not sustain the rejection of claims 9, 14,
16-19, and 23-25.

DECISION
We reverse the Examiner’s decision to reject 1-3, 7-10, 12-19, and 23-
25.

REVERSED

mls