Ex Parte Roth

Patent Trial and Appeal Board

Feb 24, 2014

12752630 (P.T.A.B. Feb. 24, 2014)

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.
12/752,630 04/01/2010 Kurt H. Roth 31348.00 2874
7590 02/25/2014
KURT ROTH
C/O M. SLAVIN
401 W 259 ST.
BRONX, NY 10471
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
02/25/2014 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 KURT H. ROTH
____________

Appeal 2014-001711
Application 12/752,630
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/752,630

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Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection of claims 1, 3-6, 8-10, 24, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Wiegel (US 2,555,720, issued Jun 5, 1951) in
combination with Gisslen (Professional Cooking (1995) ).1 We have
jurisdiction under 35 U.S.C. § 6.

We REVERSE.

Appellant claims a method of steam cooking a food item (e.g., a
vegetable) comprising the steps of: placing the food item in liquid (e.g.,
water); "preheating the food item in the liquid, by heating the liquid, until
the food attains a preheated condition, wherein the pre-heated condition is
defined as the commencement of the liquid boiling while the food is in the
liquid; . . . removing the food item from the liquid to ensure no cooking
occurs and moving it to a position above the liquid; [and] . . . cooking the
food item in steam from the boiling liquid" (independent claim 1; see also
the only other independent claim 6).

1 On page 5 of the Reply Brief (i.e., the Brief filed 12 November
2013), Appellant correctly points out that the Examiner lists the applied
reference combination as Gisslen in view of Wiegel in the Final Office
Action (FOA page 2) and as Wiegel in view of Gisslen in the Answer (Ans.
page 2). However, this differing order of the references is not meaningful
because in either case the Examiner's rationale for the rejection remains the
same.
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A copy of claims 1 and 6, taken from the Claims Appendix (i.e.,
Appendix A) of the Appeal Brief (i.e., the Brief filed 19 August 2013),
appears below (i.e., with underlining and bracketing removed).
Claim 1. A method of steam cooking a food item, comprising the
steps of:
a) placing a food item in liquid water;
b) preheating the food item in the liquid water, by heating the liquid
water, until the food item attains a preheated condition, wherein the
preheated condition is defined as the commencement of the liquid boiling
while the food item is in the liquid;
c) removing the food item from the liquid to ensure no cooking occurs
and moving it to a position above the liquid;
d boiling the liquid such that steam from the liquid contacts the food
item; and
e) cooking the food item in steam from the boiling liquid until the
food item attains a cooked condition.

Claim 6. A method of steam cooking a food item, comprising the
steps of:
a) placing liquid in a first container;
b) placing a food item in a second container configured to retain the
food item, the second container having perforated walls and being sized and
shaped to be moveable within the first container between a lower position
and an upper position;
c) placing the second container, and the food item therein, within the
first container in the lower position such that the liquid passes through the
perforated walls in the second container so as to contact the food item;
d) preheating the food item in the liquid, by heating the liquid, until
the food item attains a preheated condition, wherein the preheated condition
is defined as the commencement of the liquid boiling while the second
container is in the lower position such that the food item is in the liquid;
e) after the food item attains the preheated condition, moving the
second container to the upper position within the first container and above
the liquid;
f) boiling the liquid such that steam from the boiling liquid passes
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through the perforated walls in the second container so as to contact
the food item; and
g) cooking the food item in the steam until the food item attains a
cooked condition.

The rejection of the independent claims is based on the following
findings of fact by the Examiner. The Examiner finds that Wiegel teaches a
method wherein food is partially cooked and thereby preheated in boiling
water and then fully cooked by steam from the boiling water (FOA page 2
citing Wiegel column 3, lines 10-35). The Examiner also finds that "Wiegel
does not specifically recite removing the food immediately after boiling
resumes (claim[s] 1, 6)" (FOA page 2). In addition, the Examiner finds that
Gisslen teaches a method of cooking food by blanching the food with
boiling water and/or steam (FOA page 3). Based on these findings, the
Examiner concludes that "[i]t would have been obvious to one of ordinary
skill in the art to incorporate the claimed . . . immediate removal of the food
after resumption of boiling in the method of Wiegel, in view of Gisslen"
(FOA page 3).

In further support of the rejection, the Examiner states that "the [claim
1] limitation 'removing the food [item] from the liquid to ensure no cooking
occurs' . . . is disclosed by Wiegel, in view of Gisslen, since applicant
defined the term 'cook' in [Specification] paragraph 0034 as being the same
as 'steam cook'" (FOA page 4). In making this statement, the Examiner
implicitly interprets the claim phrase "no cooking occurs" as meaning "no
steam cooking occurs" and therefore implicitly interprets the claim
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limitation as encompassing the step of cooking food in boiling water
disclosed by Wiegel (see, e.g., column 3, lines 17-19 and 31-32) or Gisslen
(see, e.g., page 55, item 5 under the heading "Poach, Simmer, and Boil").

Appellant disputes the Examiner's statement by explaining "Inventor
does not define 'cook' as being synonymous with 'steam cook'" (Reply Brief
24).

We agree with Appellant. Contrary to the Examiner's apparent belief,
nothing in paragraph 34 of the Specification defines the term "cook" as
limited to "steam cook" only. It follows that the Examiner improperly
interprets the above claim 1 limitation as encompassing the Wiegel or
Gisslen step of cooking in boiling water. In fact, such an interpretation is
unreasonable and inconsistent with the Specification disclosure of a method
comprising "two separate and functionally different stages" (Specification
paragraph 34), namely, a first preheating (i.e., via boiling water) stage and a
second cooking (i.e., via steam) stage (see, e.g., Specification paragraphs 44-
47). See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (during examination, claims are to be given their broadest reasonable
interpretation consistent with the specification).

It is also improper to interpret the preheating steps of independent
claims 1 and 6 as encompassing a step of cooking with boiling water. In
particular, claim 6, similar to claim 1, recites the steps of preheating in liquid
"until the food item attains a preheated condition . . . defined as the
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commencement of the liquid boiling [and] . . . after the food item attains the
preheated condition, moving the [food] . . . above the liquid" (claim 6). The
Examiner has not established that it would be reasonable and consistent with
the Specification disclosure to interpret the claimed preheating step as
including the Wiegel or Gisslen step of cooking with boiling water.

As explained previously, the Specification teaches that Appellant's
preheating and cooking stages are two separate and functionally different
stages. The Examiner has not explained how this teaching is compatible
with interpreting the claimed preheating step as performing the functions of
both preheating and cooking. The Examiner also has not explained how
such an interpretation is reasonable and consistent with the Specification
definition of the term "cook" as meaning "the food temperature must rise to
a cooking temperature which is generally at or near . . . 100°C"
(Specification paragraph 34). For example, the Examiner does not identify
any Specification teaching that Appellant's preheating step causes the food
temperature to rise to a cooking temperature at or near 100°C.

We previously quoted the Examiner's conclusion that it would have
been obvious "to incorporate the claimed . . . immediate removal of the food
after resumption of boiling in the method of Wiegel, in view of Gisslen"
(FOA 3). In this obviousness conclusion, the Examiner may be taking the
position that it would have been obvious to immediately remove food from
the boiling water of Wiegel as soon as the water begins to boil and before
the food begins to cook. However, the Examiner has not cited any
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disclosure in Wiegel or Gisslen which teaches or would have suggested this
immediate removal of food from Wiegel's boiling water.

For the above stated reasons, we find convincing merit in Appellant's
argument that the Wiegel and Gisslen references would not have suggested
the methods defined by independent claims 1 and 6 (see, e.g., Appeal Brief
pages 22 and 23 as well as Reply Brief pages 13 and 23). It follows that we
will not sustain the Examiner's § 103 rejection of claims 1, 3-6, 8-10, 24, and
25 as unpatentable over Wiegel in combination with Gisslen.

The decision of the Examiner is reversed.

REVERSED

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