Ex Parte OberhomburgDownload PDFPatent Trial and Appeal BoardAug 30, 201310573433 (P.T.A.B. Aug. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARTIN OBERHOMBURG ____________________ Appeal 2011-009793 Application 10/573,433 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, BENJAMIN D. M. WOOD, and ADAM V. FLOYD, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009793 Application 10/573,433 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 11-25. Claims 1-10 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part, and we enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). THE INVENTION The claims are directed to a “cooking area, particularly a gas cooking area.” Spec. 1, Title. Emphasis (by all upper case letters) omitted. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A cooking area comprising at least one heating element, a power controller for setting a heating output of the heating element which operates according to the set heating output in at least one of a first operating mode and a second operating mode, and an indicating device which indicates the set heating output in the first operating mode with symbols from a first set of symbols, wherein the indicating device indicates the set heating output in the second operating mode with symbols from a second set of symbols of a different type of symbolism compared to the first set of symbols. REFERENCES Ohouchi Barnes Sauter US 4,650,970 US 6,255,630 B1 US 6,967,314 B2 Mar. 17, 1987 Jul. 3, 2001 Nov. 22, 2005 Stockley US 2005/0000958 A1 Jan. 6, 2005 Appeal 2011-009793 Application 10/573,433 3 REJECTIONS Claims 11, 15, and 16 stand rejected under 35 U.S.C. § 102(e) as anticipated by Sauter. Ans. 4. Claims 11, 15, 16, 21, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sauter and either Barnes or Ohouchi. Ans. 4-5. Claims 12-14, 17-20, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sauter and Stockley. Ans. 5-6. Claims 12-14, 17-20, 22, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sauter, Barnes or Ohouchi, and Stockley. Ans. 6. ANALYSIS Claims 11, 15, and 16 – Anticipation – Sauter Appellant argues claims 11, 15, and 16 as a group. App. Br. 6-7. We select claim 11 as representative and claims 15 and 16 fall with claim 11. 37 C.F.R. 41.37(c)(1)(vii). The Examiner found that Sauter “teach[es] a cooking device 4 having a display 60, a low power heating element and a high output heating element, see abstract, with a controller 58 which controls the heat output and the display as claimed.” Ans. 4. Sauter’s controller 58 (with any of control elements 53-57) sets a desired heating output in one of two operating modes, including an optional mode in which the controller automatically lowers the power level after a specified time period elapses. Sauter, Abstract; col. 1, l. 61 – col. 2, l. 9; col. 3, ll. 12-18; col. 4, ll. 18-23. Each control element 53-57 controls a heating element 10-14, and displays a selected power level and, if the automatic mode is used, the time remaining Appeal 2011-009793 Application 10/573,433 4 for the selected power level for that element. Id. at col. 3, ll. 23-36; col. 4, ll. 21-26. Sauter does not teach “wherein the indicating device indicates the set heating output in the second operating mode with symbols from a second set of symbols of a different type of symbolism compared to the first set of symbols.” See App. Br. 12. However, the claimed two different sets of symbols are analogous to “printed matter,” as they, along with the different “types of symbolism,” are “useful and intelligible only to the human mind.” In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994). Our reviewing court has held that patent applicants cannot rely on printed matter to distinguish a claim unless “there exists [a] new and unobvious functional relationship between the printed matter and the substrate.” In re Gulack, 703 F.2d 1381, 1386 (Fed.Cir.1983). In the present case, there is no new and unobvious functional relationship between the claimed sets of symbols and the cooking area since the choice of symbol to represent a heating output has no effect on the heating output, and the heating output does not determine the type of symbols used to represent it. In other words, the heating element would cook food in the same manner regardless of the symbol or type of symbolism used to represent its heat output. See In re Ngai, 367 F.2d 1336, 1339 (Fed. Cir. 2004 (“the printed matter in no way depends on the [product], and the [product] does not depend on the printed matter”). Accordingly, we sustain the rejection of claim 11, and claims 15 and 16 which fall therewith, under 35 U.S.C. § 102(e) as anticipated by Sauter. However, because our analysis relies in part on findings and conclusions of law not present in the Examiner’s Answer, we designate our affirmance as a Appeal 2011-009793 Application 10/573,433 5 new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Claims 11, 15, 16, 21, 23, and 25 – Obviousness – Sauter and Barnes or Ohouchi. With respect to claims 11 and 21, Appellant argues that neither Barnes nor Ohouchi teaches “the use of two different types of symbols for displaying the same parameter, i.e., heating output.” App. Br. 8, 9. However, whether Barnes or Ohouchi teaches this limitation is irrelevant, given that, for reasons discussed above, the limitation is analogous to printed matter that does not have a new and nonobvious functional relationship with the heating element, and therefore has no patentable weight. This argument is therefore unpersuasive. Appellant raises no additional arguments with respect to claims 15, 16, 23, and 25. Accordingly, we sustain the Examiner’s rejection of claims 11, 15, 16, 21, 23, and 25 as obvious over Sauter and Barnes or Ohouchi. However, because our analysis relies in part on findings and conclusions of law not present in the Examiner’s Answer, we again designate our affirmance as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Claims 12-14, 17-20, 22, and 24 – Obviousness – Sauter and Stockley, and Sauter, Barnes or Ohouchi, and Stockley Claims 12 and 22 Claims 12 and 22 depend from claims 11 and 21, respectively, and further require that the indicating device “consist[] of a seven-segment display.” Appellant argues that none of the applied references teaches a “single” seven-segment display. App. Br. 9. According to Appellant, Stockley “teaches multiple seven-segment displays” rather than the claimed Appeal 2011-009793 Application 10/573,433 6 single seven-segment display. Id. We agree with Appellant. Our reviewing court “has interpreted the word ‘a’ in its singular sense when, as in this case, it has been used in conjunction with the closed transitional phrase ‘consisting of.’” Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1359 (Fed.Cir.2005). Claims 12 and 22 are therefore properly limited to a single seven-segment display. Because none of the cited references discloses an indicating device with only one seven-segment display, we do not sustain the rejection of claims 12 and 22, and claims 14 and 24 which depend therefrom, as obvious over Sauter and Stockley, and as obvious over Sauter, Barnes or Ohouchi, and Stockley. Claims 13 Claim 13 depends from claim 11 and requires that the first set of symbols comprises a series of numbers and that the second set of symbols not include numbers. App. Br. 12.1 The claimed symbols are still regarded as analogous to printed matter having no new and nonobvious functional relationship with the claimed cooking area. Accordingly, we sustain the Examiner’s rejections of claim 13 as obvious over Sauter and Stockley and as obvious over Sauter, either Barnes or Ohouchi, and Stockley. However, because our analysis relies in part on findings and conclusions of law not present in the Examiner’s Answer, we designate our affirmance as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Although Appellant argues claims 13 and 23 together, we note that claim 23 is not rejected by the Examiner based on the combination of Sauter and Stockley, or the combination of Sauter, Barnes or Ohouchi, and Stockley Appeal 2011-009793 Application 10/573,433 7 Claims 17-20 Appellant raises no additional arguments in support of the patentability of claims 17-20. We accordingly sustain the rejection of these claims as well. However, because these claims depend either directly or indirectly from claim 11 and our analysis with respect to claim 11 relies in part on findings and conclusions of law not present in the Examiner’s Answer, we designate our affirmance of these claims as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). DECISION For the above reasons, the Examiner’s rejections of claims 11, 13, 15- 21, 23, and 25 are affirmed and we designate our affirmances of these claims as new grounds of rejection. We reverse the Examiner’s decision to reject claims 12, 14, 22, and 24. FINALITY OF DECISION This decision contains new grounds of rejection under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . Appeal 2011-009793 Application 10/573,433 8 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation