Ex Parte Forrest et al

Patent Trial and Appeal Board

Jul 17, 2017

11675455 (P.T.A.B. Jul. 17, 2017)

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.
11/675,455 02/15/2007 Paul G. Forrest 33097.5003 6340
30734 7590 07/19/2017
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
ROSS, DANA
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
07/19/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficemonitor@bakerlaw.com
edervis @bakerlaw.com
patents @ bakerlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL G. FORREST and RONALD F. JACOBS
Appeal 2016-002350
Application 11/675,4551
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul G. Forrest and Ronald F. Jacobs (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting under 35
U.S.C. § 103(a) claims 1—4, 7, 8, 10-14, 16, 17, 19-21, and 25—28 as being
unpatentable over Mullaney, Jr. (US 6,572,764 B2, iss. June 3, 2003,
hereafter “Mullaney”) and Takahashi (US 6,470,794 B2, iss. Oct. 29,
2002).2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, Illinois Tool Works, Inc. is the real party in
interest. Appeal Br. 3 (filed May 4, 2015).
2 Claims 5, 6, 9, 15, 18, and 22—24 are canceled. Id. at 16, 18, 19, 21.
Appeal 2016-002350
Application 11/675,455
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants’ invention relates to “deep fryers that are used in
conjunction with a cooking oil reclamation system and process.” Spec. 1,
para. 1.
Claims 1,11, and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A fryer comprising:
at least one fryer vat configured to fry food in oil;
a filter system configured to filter the oil from the at least
one fryer vat;
a first conduit that directs the oil from the at least one
fryer vat to the filter system;
a second conduit that directs the oil from the filter system
to the at least one fryer vat;
an oil reclamation system comprising:
an oil reclamation tank configured to store the oil
discarded from the fryer;
a third conduit having a first end connected to the
second conduit and a second end connected to the oil
reclamation tank to direct the oil from the filter system to
the oil reclamation tank;
an outlet comprising a fitting connected to the
third conduit between the first end and the second end of
the third conduit and configured to discharge oil away
from the oil reclamation tank while the third conduit is
connected to the oil reclamation tank;
a valve configured to control oil flow along the
third conduit to the oil reclamation tank, the valve being
arranged between the outlet and the second end of the
third conduit; and
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Application 11/675,455
a flow control device configured to direct the oil
from the filter system to one of
(a) the at least one fryer vat via the second
conduit, (b) the oil reclamation tank via the second
conduit and the third conduit, and (c) the outlet via
the second conduit and the third conduit.
ANALYSIS
Independent claim 1 requires, inter alia, a “fitting connected to the
third conduit between the first end and the second end of the third conduit.”
Appeal Br. 15 (Claims App.). Similarly, independent claim 20 recites
“connecting an outlet that comprises a fitting to the third conduit between
the first end and a second end of the third conduit.” Id. at 20.
The Examiner finds that Mullaney discloses most of the limitations of
claims 1 and 20, but fails to disclose
an outlet comprising a fitting connected to the third conduit
between the first end and the second end of the third conduit and
configured to discharge oil away from the oil reclamation tank
while the third conduit is connected to the oil reclamation tank;
and the valve being arranged between the outlet and the second
end of the third conduit.
Final Act. 3^4 (transmitted Sept. 3, 2014). Nonetheless, the Examiner finds
that Takahashi discloses a fryer including vat 11, filter system 32, first
conduit 13, second conduit 34 a, 34 c, oil reclamation tank T2, third conduit
34b, 523, outlet 51 having fitting valve 42 connected to the third conduit
between the first end of the third conduit at valve 42 and the second end of
the third conduit at T2 and configured to discharge oil away from the oil
3 The Examiner states that the third conduit is “52, and duct between valves
(42 and 45).” Final Act. 4.
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Application 11/675,455
reclamation tank T2 while the third conduit 34b, 52 is connected to the oil
reclamation tank T2. Final Act. 4; see also Takahashi, col. 4,11. 56—61, Fig.
2. According to the Examiner, Takahashi further discloses valve 45, located
between outlet 51 and the second end of third conduit 34b, 52 at T2, which
is capable of controlling oil flow along the third conduit to oil reclamation
tank T2. Final Act. 4 (citing Takahashi, Fig. 2). The Examiner concludes
that it would have been obvious for a person of ordinary skill in the art “to
modify the fryer of Mullaney by employing the outlet of Takahashi in order
to supply oil to the fryer.” Id.
Appellants argue that Takahashi’s valve 42, which the Examiner relies
on for the claimed “fitting,” is not located between the first end and the
second end of the third conduit, as called for by each of claims 1 and 20.
Appeal Br. 12; see also id. at 13.
In response, the Examiner takes the position that “Takahashi teaches
an outlet (51) comprising a fitting (42) connected to the third conduit ((52)
and duct between valves (42 and 45)) between the first end (at valve (42))
and the second end (end of pipe in T2) of the third conduit.” Ans. 2
(transmitted Oct. 19, 2015).
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990) (alteration in original) (citing In re Sneed, 710 F.2d
1544, 1548 (Fed. Cir. 1983). In this case, an ordinary and customary
meaning of the term “between” is “in the time, space, or interval that
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Application 11/675,455
separates.” Merriam Webster’s Collegiate Dictionary (10th ed. 2005).
Hence, an ordinary and customary meaning of the phrase “between the first
end and the second end of the third conduit” is the space or interval that
separates the first end and the second end of the third conduit. Such an
interpretation is consistent with Appellants’ Specification which describes
male fitting 51 as being located in the space or interval that separates the
first end of the third conduit where it connects to the second conduit and the
second end of the third conduit where it connects to oil reclamation tank 56.
See Spec., Fig. 2. In contrast, in the Examiner’s interpretation of
Takahashi’s system, because valve 42 constitutes the first end of the third
conduit 34b, 52, valve 42 is not connected to the third conduit in the space or
interval that separates the first end, at valve 42, and the second end of the
third conduit, at oil reclamation tank T2.
Accordingly, for the foregoing reasons, we agree with Appellants that
as “oil supply valve 42 is relied on for the first end of the third conduit,” oil
supply valve 42 does not constitute the claimed “fitting” because it is not
connected between the first and second ends of the third conduit. Reply
Br. 2. Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 1—4, 7, 8, 10, 16, 17, 20, 21, 26, and 28 as unpatentable over
Mullaney and Takahashi.
Claims 11—14, 16, 17, 19, 25, and 27
Appellants have not presented arguments for the patentability of
claims 12—14, 16, 17, 19, 25, and 27 apart from claim 11. See Appeal
Br. 13. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
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Application 11/675,455
claim 11 as the representative claim to decide the appeal of the rejection of
these claims, with claims 12—14, 16, 17, 19, 25, and 27 standing or falling
with claim 11.
The Examiner finds that although Mullaney fails to disclose a fitting,
nonetheless, Takahashi discloses “an outlet (51) comprising a fitting (42).”
Final Act. 5.
Appellants argue that independent claim 11 recites similar elements as
independent claim 1 and submits that claim 11 is also allowable for the same
reasons. Appeal Br. 13.
We do not agree with Appellants that claim 11 recites similar
elements as claim 1 because claim 11 does not set forth any structure for
performing the recited functions. Rather, the limitations of claim 11 use
means-plus-fimction language as provided for in 35 U.S.C. § 112, sixth
paragraph. York Prods., Inc. v. Central Tractor, 99 F.3d 1568, 1574 (Fed.
Cir. 1996) (“the use of the word ‘means’ triggers a presumption that the
inventor used this term advisedly to invoke the statutory mandates for
means-plus-fimction clauses”). Furthermore, we note that in contrast to
independent claims 1 and 20, which we discussed supra, independent claim
11 does not require a “fitting” that is connected between the first and
second ends of the third conduit. Rather independent claim 11 merely
requires that “the outputting means comprises a fitting.” See Appeal Br. 13
(Claims App.).
As Takahashi discloses an outlet pipe 51 including a fitting, i.e.,
valve 42, and Appellants have not adequately explained any error in the
Examiner’s findings and reasoning, we sustain the rejection under 35 U.S.C.
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Application 11/675,455
§ 103(a) of claim 11 as unpatentable over Mullaney and Takahashi.
Claims 12—14, 16, 17, 19, 25, and 27 fall with claim 11.
SUMMARY
The Examiner’s decision to reject claims 1—4, 7, 8, 10—14, 16, 17, 19-
21, and 25—28 under 35 U.S.C. § 103(a) is affirmed as to claims 11—14, 16,
17, 19, 25 and 27 and reversed as to claims 1—4, 7, 8, 10, 16, 17, 20, 21, 26,
and 28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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