11407714 (P.T.A.B. Mar. 28, 2013)

Ex Parte Beck et al

Patent Trial and Appeal BoardMar 28, 2013

11407714 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WOLFGANG BECK, REINER ARNOLD, and LUDWIG NACHTMANN ____________________ Appeal 2011-000112 Application 11/407,714 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, NEIL T. POWELL, and BART A. GERSTENBLITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000112 Application 11/407,714 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-10 and 12-15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a cooking oven chamber. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Cooking oven chamber with at least one cooking level, two mutually opposite side walls (14, 16) and at least one pull- out system (28, 30, 32) that is positioned on a first side wall (16) for guiding at least one retaining device (8), serving to hold at least one food carrier (10, 12), between a cooking position in which the said minimum of one food carrier (10, 12) is inside the oven chamber (2) and a servicing position in which the minimum of one food carrier (10, 12) is partly or completely outside the oven chamber (2), wherein the at least one retaining device (8) includes a pair of holders (34), positioned parallel to and at a distance from each other in the pull-out direction, and wherein the at least one food carrier is supported by the at least one retaining device in a cantilevered manner. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Christian Hurt US 1,063,183 US 1,954,384 Jun. 3, 1913 Apr. 10, 1934 REJECTION Claims 1-10 and 12-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Christian in view of Hurt. Ans. 3. Appeal 2011-000112 Application 11/407,714 3 OPINION Appellants argue claims 1-10 as a group. Supp. App. Br. 2-4. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner made the following findings of fact: Christian discloses the claimed invention including the cooking oven except for the at least one food carrier supported by the retaining device in a cantilevered manner. Ans. 4-6. Hurt teaches an oven range having adjacent trays 27 retaining a load in a cantilevered manner. Ans. 6-7. Appellants argue that the combination as applied by the Examiner does not provide for an oven “capable of securely supporting large, heavy items.” Supp. App. Br. 2-3. The claims, however, do not require that the oven be “capable of securely supporting large, heavy items,” as noted by the Examiner. Ans. 10. Therefore, Appellants’ argument is not commensurate with the scope of the claims, and thus, for that reason, does not demonstrate error in the Examiner’s rejection of the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Appellants argue, based on the assumption that the food carriers are required by the claims to support large heavy items, that the combination would require substantial “redesign and reconstruct[ion].” Supp. App. Br. 3. Appellants further argue that the Examiner’s rationale for combining the references, to reduce parts and costs, is flawed because the substantial redesign and reconstruction would be required. Id. As noted above, the claims do not require that the food carrier be capable of supporting any particular load. Further, one of ordinary skill in the art would not view Christian’s teachings as limited only to oven racks having a particular Appeal 2011-000112 Application 11/407,714 4 weight or size. It has long been understood that invention is not confined to the particular form or mode described. See, e.g., Cont’l Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908). The fact that judgment and mechanical skill may be required to arrive at a particular combination does not necessarily mean that particular combination constitutes a nonobvious invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 10-12 (1966) (discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)). Thus, Appellants’ argument, that substantial and costly redesign would be required, is flawed. Appellants argue that the Examiner was incorrect in finding that the references themselves provide the motivation to combine because Hurt discloses an otherwise conventional oven with storage compartments on either side which are not designed for us in the oven chamber or for supporting food items for cooking and Hurt does not make any mention of how the storage rack structure would be beneficial for us in an oven chamber. Supp. App. Br. 3. The Examiner reasoned that one of ordinary skill in the art would be motivated “to modify the shelf structure of Christian . . . for the purpose of providing easier access to food items supported thereon as taught by the shelf structure of Hurt.” Ans. 10. Appellants have not challenged the Examiner’s finding that the cantilevered shelf structure of Hurt provides easier access to items on the shelf (i.e., since one side omits support bars 23, 24, 25); rather, Appellants appear to challenge whether Hurt explicitly discloses use of a cantilever structure in an oven chamber. See Supp. App. Br. 3.Ans. 10. The question is not whether Hurt explicitly discloses use of a cantilever structure in an oven chamber, the question is whether Hurt (as found by the Examiner) would motivate one of ordinary Appeal 2011-000112 Application 11/407,714 5 skill in the art to use a cantilever structure in an oven chamber based on the benefits (e.g., ease of access) the Examiner found Hurt attributed to such structure. “[A] determination of obviousness does not require the claimed invention to be expressly suggested by any one or all of the references.” See e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). As such, Appellants have not persuaded us of error with respect to the Examiner’s finding of motivation.1 Appellants additionally argue that the combination is a result of impermissible hindsight. Supp. App. Br. 3-4. The Examiner’s rationale for combining the teachings of Christian and Hurt is based in Hurt itself, and Appellants have not apprised us of what knowledge in particular was gleaned only through Appellants’ Specification. DECISION The Examiner’s rejection of claims 1-10 and 12-15 is affirmed. 1 Appellants also assert that one of ordinary skill in the art would have combined the teachings of Christian and Hurt in a manner other than the combination proposed by the Examiner. Supp. App. Br. 3. The combination suggested by Appellants, however, is not the combination provided by the Examiner. See Ans. 3-7. A conclusion that the claimed subject matter would have been obvious in view of the teachings of the prior art is in no way undermined if some unclaimed subject matter would also have been obvious in view of those same teachings. Appeal 2011-000112 Application 11/407,714 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh