Ex Parte Baird et al

Patent Trial and Appeal Board

Jun 14, 2018

12957328 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/957,328 11/30/2010
7590 06/14/2018
Thompson E. Fehr
Goldenwest Corporate Center
Suite 300
5025 Adams A venue
Ogden, UT 84403
FIRST NAMED INVENTOR
Ronald H. Baird
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PBAIRRSIS 1937
EXAMINER
DUNNER, DIALLO IGWE
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/14/2018 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 RONALD H. BAIRD and THOMAS R. MCKENZIE
Appeal2017-008855
Application 12/957,328 1
Technology Center 3700
Before: CHARLES N. GREENHUT, NATHAN A. ENGELS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants indicate the named inventors are the real party in interest. App.
Br. 4.
Appeal2017-008855
Application 12/957,328
CLAIMED SUBJECT MATTER
The claims are directed to a device for cooking with a combination of
steam and smoke. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
Claim 1:
A device for cooking with steam and smoke, which
compnses:
an openable cabinet having a bottom containing an
aperture and also having an inside;
an adjustable burner located below the aperture in the
bottom of the openable cabinet;
a container for a material to create smoke, such container
being inside the cabinet above the aperture in the bottom of the
cabinet;
a water pan having a bottom with an aperture, such water
pan being located above the container for a material to create
smoke and extending across the entire inside of the cabinet;
a tapered pipe having an inlet and an exit with the inlet
being larger than the exit and with the inlet being connected to
the water pan around the aperture in the water pan with the inlet
of the tapered pipe being below the exit of the tapered pipe;
one or more grates located horizontally in the cabinet, such
one or more grates being attached to the inside of the cabinet
above the water pan; and
a top vent.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sutphen
Bailey
Studer
Chang
Wardell
Ray
us 4,913,039
us 5,501,142
us 5,611,264
us 6,098,527
US 6,431,164 Bl
US 7,469,630 Bl
2
Apr. 3, 1990
Mar. 26, 1996
Mar. 18, 1997
Aug. 8, 2000
Aug. 13, 2002
Dec. 30, 2008
Appeal2017-008855
Application 12/957,328
REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bailey and Ray.
Claims 1--4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ray and Chang.
Claims 5-8 and 11-142 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wardell and Sutphen.
Claims 9, 10, and 15-16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wardell, Sutphen, and Studer.
Claims 17-20, 23-26, 29, and 30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wardell, Sutphen, and Chang.
Claims 21, 22, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wardell, Sutphen, Chang, and Studer.
OPINION
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398,418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
2 Starting at Page 15 of the final Office action, the Examiner repeatedly
phrases rejections as being "over ... Wardell (hereinafter Ray) in view
of .... " However, the rejections following such headings discuss Wardell
as the base reference, and not Ray. We understand this to be a typographical
error, which is consistent with Appellants' understanding of the rejections
(App. Br. 22-24).
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Application 12/957,328
"rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
Independent claims 1 and 5 recite, inter alia, the following
limitations:
a container [20] for a material to create smoke,
a water pan [35] having a bottom with an aperture [36], such
water pan being located above the container [20]
a tapered pipe [24] having an inlet [38] and an exit [25]
with the inlet being larger than the exit and with the inlet being
connected to the water pan around the aperture in the water pan
with the inlet of the tapered pipe being below the exit of the
tapered pipe.
Independent claims 29 and 30 recite similar limitations.
During use of Appellants' device, smoke emanating from the material
in the container 20 rises up through the aperture 36 in the water pan 35, at
which point the smoke passes through the tapered pipe 24, from the inlet 3 8
at the bottom to the exit 25 at the top, wherein when the smoke exits, it is
dispersed by fins 26 and/or flat plate 31. Spec., ,r,r 34--35.
Claim 1 : Bailey in view of Ray
As to the container, water pan, and tapered pipe, the Examiner finds
Bailey discloses: a container 12; a water pan 22 having a bottom 26 with an
aperture 30; and a tapered pipe 32 having an inlet and an exit, with the inlet
being larger than the exit, the inlet being connected to the water pan 22
around the aperture 30, and the inlet being above the exit. Final Act. 2-3.
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Application 12/957,328
However, the Examiner concedes that Bailey lacks certain features of claim
1, in particular that the inlet of the tapered pipe 32 must be below the exit,
i.e., that the larger part of the tapered pipe 32 must be on the bottom, against
the water pan. Final Act. 3. To cure this deficiency as to the orientation of
the tapered pipe 32, the Examiner relies on Ray, which teaches pipes 54
connected to a steam generating mechanism 50 (col. 4, 1. 67---col. 5, 1. 5), to
conclude that it would have been obvious "to modify the tapered pipe of
Bailey in view of Ray's tapered pipe because Ray provides a mechanism for
generating a selected quantity of steam upwardly into a cooking section of a
barbecue grill such that the foodstuff will become saturated with the steam
during cooking operations." Final Act. 4-5.
Appellants argue that the Bailey-Ray combination is insufficient to
meet claim 1 because the pipes 54 in Ray cannot be considered "tapered."
App. Br. 15-16.
Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the interpretation
that those skilled in the art would reach. In re Cortright, 165 F. 3d 1353,
1358 (Fed. Cir. 1999). A "tapered" pipe would be one that "become[s]
progressively smaller toward one end." Taper Definition, Merriam-
Webster.com, https://www.merriam-webster.com/ dictionary/taper (last
visited May 30, 2018). We agree with Appellants that the pipes 54 in Ray
cannot be considered "tapered" within the broadest reasonable meaning of
that term, because the pipes 54 do not become progressively smaller toward
one end; rather, they appear to be of a constant diameter along their entire
length (see Figs. 7-9) and they are not described as having any change in
size toward one end. Accordingly, the Examiner's conclusion of
obviousness cannot be sustained because it is based upon a mistake of fact
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(i.e., incorrectly finding that Ray's pipes 54 are "tapered") and/or a mistake
of law (i.e., construing "tapered" overly broadly so as to include pipes 54).
Furthermore, if the Bailey funnel 32 were inverted, according to the
Examiner's proposed modification, this would render the funnel
unsatisfactory for its intended purpose, because funnels do not work as
intended when used upside-down. See MPEP 2143.0l(v) ("If the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification."). Accordingly, the rejection
of claim 1 over Bailey in view of Ray cannot be sustained.
Claim 1: Ray in view of Chang
As to the container, water pan, and tapered pipe, the Examiner finds
Ray discloses: a container 39; a water pan 50; and a tapered pipe 54. Final
Act. 5-6. Appellants again argue that because the rigid exhausts 54 of Ray
are not "tapered" within the ordinary meaning of the term, and because
Chang is not relied upon to cure this deficiency, the rejection is improper.
App. Br. 16, 20. We agree with Appellants that the rejection of claim 1 over
Ray in view of Chang cannot be sustained because, as discussed above, the
Ray pipes 54 cannot reasonably be considered to be "tapered."
Claim 5: Wardell in view of Sutphen
As to the container, water pan, and tapered pipe, the Examiner finds
Wardell discloses a container 90; a water pan 26; and a non-tapered pipe
156 having an inlet and an exit with the inlet being connected to the water
pan 26. Final Act. 10. To cure the lack of taper on the pipe 156, the
Examiner relies on Sutphen as teaching a "tapered pipe" in the form of
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elements 18, 33, and 48, apparently considered collectively, with the "taper"
being due to the fact that "tapered pipe 18, 33, 48 is wider at the base of the
water pan 16 than the smaller diameter pipe 18 at the exit of the water pan
16." See Ans. 43-44. The Examiner then concludes that "[s]ince Wardell
teaches of a pipe with a smaller diameter on one end and a larger diameter
on the other end, it would have been obvious to one of ordinary skill in the
art at the time of applicant's invention to modify the pipe connected to the
water pan of Wardell in view of tapered pipe that supplies water of Sutphen
because Sutphen provides control of the flow of water." Final Act. 42; Ans.
44.
In addressing the Examiner's rejection, Appellants appear to confuse
the Examiner's citations to Sutphen as being citations to Wardell. See App.
Br. 21-22, final paragraph ( quoting the Examiner's assertions regarding
Sutphen's "Tapered pipe 18, 33, 48" and then arguing that none of elements
18, 33, and 48 in Wardell are tapered pipes). Nonetheless, we agree that the
Examiner's position is untenable. First, it is unclear from the Examiner's
explanation what, exactly, the Examiner considers to be the "tapered pipe"
in Sutphen. This is due, at least in part, to the Examiner's argument that
element 18 is somehow wider than itself: "Tapered pipe 18 ... is wider
[than] ... the smaller diameter pipe 18." See Ans. 43--44. Second, to the
extent Sutphen could be considered to teach a "tapered pipe" by combining
elements 18, 33, 48, the Examiner's rationale for changing Wardell's non-
tapered pipe 156 into a tapered pipe (i.e., "because Sutphen provides control
of the flow of water" (Final Act. 42, Ans. 44)), does not appear to be
supported by a rational underpinning because the Examiner identifies no link
between the size(s) of elements 18, 33, and 48 and the supposed result of
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providing flow control. Accordingly, the rejection of claim 5 over Wardell
in view of Sutphen cannot be sustained.
Claims 29 and 30: Wardell in view of Sutphen and Chang
Although claims 29 and 30 rely on both Sutphen and Chang as
teaching references to support the rejection under 35 U.S.C. § 103(a), only
Wardell and Sutphen are combined to meet the claim limitations as to the
container, water pan, and pipe. Final Act. 32-34. Accordingly, because
Sutphen does not cure the deficiencies of Wardell as to the tapered pipe
limitation, as discussed above, the rejection of claims 29 and 30 over
Wardell in view of Sutphen and Chang also cannot be sustained.
Dependent claims
The Examiner's findings and analysis regarding dependent claims 2--4
and 6-28 do not cure the deficiencies of the rejections of independent claims
1, 5, 29, and 30.
DECISION
The Examiner's rejections of claims 1-30 are REVERSED.
REVERSED
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