Ex Parte Friel et al

Patent Trial and Appeal Board

Dec 15, 2015

11367074 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/367,074 0310312006
123223 7590 12/17/2015
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Daniel D. Friel SR.
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.
211848-0300-us 5725
EXAMINER
MATHEW, HEMANT MATHAI
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
12/17/2015 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL D. FRIEL SR., DANIEL D. FRIEL JR., H. WILLIAM
BUSCH JR., JAMES FITZGERALD, and TERRY HALL
Appeal2013---008979
Application 11/367,074 1
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel D. Friel, Sr. et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's Final Rejection2 under 35 U.S.C.
§ 103(a) of(l) claims 30, 37, 39, 41, and45 as unpatentable overMisceo
(US 6,321,639 Bl, iss. Nov. 27, 2001), Rae (US 4,948,950, iss. Aug. 14,
1990), and Wu (US 6,427,581 Bl, iss. Aug. 6, 2002); (2) claims 40 and 44
1 According to Appellants, the real party in interest is Edgecraft Corporation.
Appeal Br. 2.
2 The Final Action also rejected claim 30 under 35 U.S.C. § 112, first
paragraph, enablement and written description requirements, and rejected
claims 30, 37, and 39-45 under 35 U.S.C. § 112, second paragraph. Final
Act. 2--4. These rejections, however, were withdrawn. Ans. 2.
Appeal2013---008979
Application 11/367,074
as unpatentable over Misceo, Rae, Wu, and Tanguy (US 4,046,924, iss. Sept.
6, 1977); (3) claim 42 as unpatentable over Misceo, Rae, Wu, and Graff (US
2003/0116557 Al, pub. June 26, 2003); and (4) claim 43 as unpatentable
over Misceo, Rae, and Simon (US 4,829,390, iss. May 9, 1989). 3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claim 30, the only independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
30. A waffle maker comprising an upper baking plate and
a lower baking plate, at least one heating element for each of
said upper baking plate and said lower baking plate for baking
during a baking cycle a waffle from batter placed between said
upper baking plate and said lower baking plate, a timer to
control a preset duration of time of the baking cycle at full
power for that baking cycle, a temperature control for setting
the heating temperature of said baking plates, a thermal detector
attached to said lower baking plate for detecting a rapid
temperature drop of said lower baking plate which is indicative
of a rapid drop in temperature resulting from cold waffle batter
being placed on said lower baking plate, an electronic
processing unit and circuitry operatively connected to said
temperature control and to said heating elements and to said
timer and to said thermal detector, said electronic processing
unit monitoring the difference in temperature sensed by said
thermal detector and the set temperature of said temperature
control to maintain said lower baking plate at the set
3 Claims 1-29 and 38 have been canceled, and claims 31-36 are withdrawn
from consideration. Appeal Br. 2.
2
Appeal2013---008979
Application 11/367,074
Wu
temperature, said electronic processing unit monitoring said
thermal detector for a rapid drop in temperature and to detect
a rate of temperature change indicative of waffle batter being
placed on said lower baking plate, and for said electronic
processing unit upon said detection of said rate of temperature
change indicative of the rapid drop in temperature initiating
start of said timer and for said circuitry applying full power for
the baking cycle to said heating elements whereby the
placement of the cold waffle batter on said lower baking plate is
detected and timing of the baking cycle is initiated.
ANALYSIS
Obviousness of Claims 30, 37, 39, 41, and 45 over Misceo, Rae, and
As discussed below, we are persuaded by Appellants' arguments that
the Examiner failed to establish a prima facie showing of obviousness in
rejecting claims 30, 37, 39, 41, and 45 over Misceo, Rae, and Wu. Appeal
Br. 5-12; Reply Br. 1-3.
The Examiner finds that Misceo discloses, inter alia, a waffle maker
including a manual temperature control, a thermal detector attached to a
lower baking plate and an electronic processing unit that is "capable of
monitoring the difference in temperature (temperature drop) sensed by the
thermal detector and the temperature set by the temperature control," and
"capable of monitoring the thermal detector which is used for sensing
information of a rapid temperature drop of the lower baking plate which is
capable of being caused by placement of colder waffle batter on the heated
lower baking plate." Final Act. 4--5. (emphasis added). The Examiner also
finds that the thermal detector is "capable of transmitting the information of
3
Appeal2013---008979
Application 11/367,074
the temperature drop to the electronic processing unit for initiating start of
the timer." Id. at 5 (citing Misceo, col. 3, 11. 41--49 and col. 3, 1. 54---col. 4,
1. 5). (emphasis added).
According to the Examiner, the thermal detector disclosed by Misceo
"detects the change of temperature caused by placement of the waffle
batter," and senses "the completion of a baking cycle," but "Misceo does not
disclose [that] the thermal detector detects the rate of temperature change."
Id. at 5---6. The Examiner then looks to Rae for disclosing, inter alia, that "a
rate of change of the temperature can be found and a curve made so that a
microprocessor (31) can compare the target rate of temperature change curve
with the actual rate of change curve to control the operation of heat
producing means." Id. at 6 (citing Rae, col. 4, 11. 16-23 and 58-68; col. 5, 11.
1-22). Based on the foregoing, the Examiner determines that "it would have
been obvious [] to modify the baking plates of Misceo by employing the
control means and temperature sensing means of Rae." Id. at 7.
However, Appellants correctly explain that what Misceo discloses is
that "[a ]fter waffle cone batter is poured on one or both of the upper and
lower cooking plates, the cooking plate close button is pressed 'causing the
motor to close the top cooking plate until one of the microswitches 84 causes
the motor to stop the [top] cooking plate in the proper closed position, and
causing the timer for that griddle to start,"' (citing Misceo, col. 3, 1. 54---col.
4, 1. 5) and that "[ n ]othing in this disclosure suggests detecting the rate of
temperature change for initiating [the] start of the timer, as defined by claim
30." Appeal Br. 9.
Appellants also point out that what is recited by the claims is "a
measuring and response to the rate of change, which is not the same as a
4
Appeal2013---008979
Application 11/367,074
response to the actual temperature itself to initiate the heater and timing
cycle," because "there is no waiting for the temperature to drop to a
designated temperature to indicate there is cooling of the waffle plate due to
the presence of batter." Id. at 9-10. Appellants further explain that "[t]o do
such would take much longer, many seconds more for the falling
temperature to drop to the normal preset low temperature that the Misceo
type electronics use to restart the heater and start the timer." Id. at 10.
Appellants also point out that "the problem addressed by Rae is to
prevent or minimize temperature overshoot in a deep fat fryer when the
temperature rises so as to prevent any dangerous massive temperature
overshoot," (citing Rae, col. 1, 11. 39-55) while "claim 30 relates to detecting
the rate of a decreasing temperature change to actuate a timing cycle for a
specific baking time in a waffle maker." Id. Appellants argue that "Rae is
controlling the increasing oil temperatures in a deep fat fryer," and for that
reason "Rae is not analogous and would not render claim 30 obvious." Id. at
10-11. Therefore, Appellants contend that "Rae does not overcome the
deficiencies of Misceo with regard to the detection of the rate of temperature
change for initiating the timer." Id. at 11. (Emphasis added).
While acknowledging that "Misceo does not show detection of a rate
of temperature change," the Examiner continues to rely on Rae "to show a
temperature sensing means as part of a control unit which was capable of
detecting a rate of temperature change to control a heating system," and
summarizes Misceo as disclosing that after "the attendant pours the waffle
cone batter onto one or both of the lower cooking plates (38, 40) and presses
the top cooking plate close button (24 and/or 26) associated with the bottom
cooking plate on which the batter has been poured," the top cooking plate is
5
Appeal2013---008979
Application 11/367,074
closed, [and] the timer for the griddle starts." Ans. 6. The Examiner
concludes from the foregoing, that Misceo teaches that "when the top
cooking plate is closed (which is capable o/happening immediately after
waffle batter is poured on the cooking plate), the timer begins. " Id. at 7.
(emphasis added).
Regarding whether Rae is analogous art, the Examiner responds that
"Rae is reasonably pertinent to the particular problem with which the
applicant was concerned," because "Misceo showed detection of a
temperature change (col. 3 lines 40-49) and starting of a timer (col. 3 lines
57---65)," while "Rae was merely used to show detection of a rate of
temperature change." Ans. 8 (again citing Rae, col. 4, 11. 16-23 and 58---68;
col. 5, 11. 1-22). From the foregoing, the Examiner concludes that
it would have been obvious to one of ordinary skill in the art to
be capable of modifying the sensor of Misceo by employing the
detection of the rate of temperature change as taught in the
sensor of Rae in order to allow for control of the heating
elements to be based on how fast the temperature changes.
Id. at 8.
While the Examiner may be correct that the timer in Misceo is
capable of beginning after the waffle batter is poured and the top cooking
plate closed, we agree with Appellants that the claims recite the "use [of] the
rate of temperature change for initiating the start of the timer for heating the
waffle batter," (Reply Br. 2), not closing the upper plate to initiate the start
of the time, as disclosed by Misceo. See Misceo, col. 3, 11. 57---65.
Furthermore, even assuming Rae is analogous art, we also agree with
Appellants that Rae does not teach this limitation because "Rae is simply
concerned with maintaining a preset temperature and has no concern
6
Appeal2013---008979
Application 11/367,074
with the initiating of a timer." Reply Br. 3.
Thus we find that the Examiner has not articulated adequately an
apparent reason why a person of ordinary skill in the art would have
modified Misceo' s apparatus, which is configured to heat waffle batter after
closing the upper plate, to instead be capable of responding to detection of a
rate of temperature change indicative of cold waffle batter being placed on a
lower baking plate. Furthermore, we agree with Appellants that "controlling
the increasing oil temperatures in a deep fat fryer" as taught by Rae (Appeal
Br. 11 ), is not an adequate reason that would have prompted one of ordinary
skill in the art to undertake to modify Misceo 's apparatus as the Examiner
concludes. As explained by our reviewing court, "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, 441F.3d977, 988
(Fed. Cir. 2006) (citation omitted) (quoted with approval in KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
For the foregoing reasons, we do not sustain the Examiner's decision
rejecting claims 30, 37, 39, 41, and 45 over Misceo, Rae, and Wu.
Obviousness of Claims 40 and 44 over Misceo, Rae, Wu, and Tanguy;
of Claim 42 over Misceo, Rae, Wu, and Graff; and of Claim 43 over Misceo,
Rae, and Simon
The Examiner's application of the additional references for the
rejections of these dependent claims does not cure the deficiencies of Misceo
with respect to the rejection of claim 30, as discussed supra. See Final Act.
8-11. Thus, for the same reasons as those stated above for claim 30, we
7
Appeal2013---008979
Application 11/367,074
likewise do not sustain the rejections of claims 40 and 42--44 over the cited
prior art.
NEW GROUND OF REJECTION
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a NEW
GROUND OF REJECTION against independent claim 30 and dependent
claims 37 and 39-45 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failure to particularly point out and distinctly claim the subject
matter which the Appellants regard as the invention.
In the instant case, claim 3 0 recites a waffle maker where the timing
of the baking cycle is initiated upon detecting "a rapid drop in temperature"
that causes a "rate of temperature change indicative of waffle batter being
placed on [the] lower baking plate." See Appeal Br. 15, Claims App.
Claim 30 also refers to the "rapid drop in temperature" as "resulting from
cold waffle batter being placed on [a] lower baking plate." Id. (emphasis
added). Similarly, the "detection of said rate of temperature change
indicative of the rapid drop in temperature" detects "the placement of the
cold waffle batter on said lower baking plate." Id. (emphasis added).
The claim terms "rapid" and "cold" are terms of degree. The terms
appear to be interrelated, in that a "cold" waffle batter seemingly has the
potential to cause a "rapid" drop in temperature of the lower baking plate.
However, beyond the qualifier that a rapid temperature drop would be
indicative of cold waffle batter being placed on the lower baking plate,
Appellants' Specification provides no quantification as to how high a rate of
temperature change must be in order to be considered "rapid." The term
"rapid" appears on pages 18 and 19 of the Specification, yet there is no
8
Appeal2013---008979
Application 11/367,074
standard provided there for determining what would and would not
constitute a "rapid" drop. See Seattle Box Co., Inc. v. Indus. Crating &
Packing, Inc., 731F.2d818, 826 (Fed. Cir. 1984). Furthermore Appellants
do not apprise us that "rapid" is a term of art.
This lack of a standard by which the scope of "rapid" can be
determined is further exacerbated by the lack of any guidance as to what is
regarded as being "cold" waffle batter, as claimed. A refrigerated batter
would likely be considered to be "cold," and would likely produce a fast rate
of temperature drop of the lower baking plate once introduced thereon,
which rate perhaps might be regarded as "rapid." However, a room
temperature batter would seemingly produce a slower rate of temperature
drop. The Specification sheds no light on whether the room temperature
batter would be regarded as "cold" (it is presumably colder than the lower
baking plate, yet about 30° warmer than refrigerated batter), nor whether the
slower rate of temperature drop would be regarded as a "rapid" drop.
By the same token, the lack of guidance regarding the scope of the
terms "rapid" and "cold" further calls into question what "rate" (or range of
rates) of temperature change are "indicative of waffle batter being placed on
said lower baking plate." The term seems to imply that there would be some
minimum threshold rate of cooling (drop in temperature), yet the person of
ordinary skill in the art is left to speculate as to the meaning of this claim
term as well. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1347 (Fed. Cir. 2005). ("Because the claims perform the fundamental
function of delineating the scope of the invention, the purpose of the
definiteness requirement is to ensure that the claims delineate the scope of
9
Appeal2013---008979
Application 11/367,074
the invention using language that adequately notifies the public of the
patentee's right to exclude").
Thus, we find that claims 30, 37, and 39-45 fail to comply with 35
U.S.C. § 112, second paragraph, in failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention.
DECISION
The decisions of the Examiner to reject claims 30, 37, and 39-45
under 35 U.S.C. § 103(a) are REVERSED.
We enter a NEW GROUND OF REJECTION of claims 30, 37, and
39-45 under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to
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 the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground 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 ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
10
Appeal2013---008979
Application 11/367,074
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) (l)(iv).
REVERSED; 37 C.F.R. § 41.50(b)
PC
11