Ex Parte HUGGINS

Patent Trial and Appeal Board

Jul 30, 2018

12553053 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/553,053 09/02/2009
129565 7590 08/01/2018
Ferguson Braswell Fraser Kubasta PC
2500 Dallas Parkway, Suite 600
Plano, TX 75093
FIRST NAMED INVENTOR
Timothy Gregg HUGGINS
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.
8820-005 5819
EXAMINER
HEY AM OTO, AARON H
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
patent@fbfk.law
docketing@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY GREGG HUGGINS
Appeal2017-010736
Application 12/553,053
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy Gregg Huggins (Appellant) appeals under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1--4, 7-19, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-010736
Application 12/553,053
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A lightweight, portable cooking stove compnsmg [a]
combination of:
a one-piece combustion chamber having a first end, a
second end, and at least one row of substantially equally spaced
ports, the combustion chamber forming a defined interior shape
when the first and second ends are removably fastened together
in an assembled state and forming a coil when the first and
second ends are not fastened together in an unassembled state;
a fuel vaporizer substantially axially aligned within the
defined interior shape of the assembled combustion chamber;
and
a pot support for supporting a cooking pot wherein a lower
portion of the cooking pot is located within the combustion
chamber, the cooking pot having a defined exterior shape smaller
than the defined interior shape of the assembled combustion
chamber, the cooking pot having an upper lip resting on a top
edge of the combustion chamber to form an annular gap between
the cooking pot and the combustion chamber, and wherein the
upper lip rests on the top edge of the combustion chamber to
allow at least a portion of the cooking pot to be disposed in the
combustion chamber;
whereby air entering the at least one row of ports
extending through the combustion chamber mixes with
vaporized fuel discharged from the fuel vaporizer to form a
combustible mixture of fuel and air thereby producing products
of combustion engaging the lower portion of the cooking pot
located within the combustion chamber.
2
Appeal2017-010736
Application 12/553,053
REJECTIONS 1
I. Claims 15 and 16 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. 2
II. Claims 1--4, 7-19, and 21 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
III. Claims 1--4, 7-15, 17, 20, and 21 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Hering (US 5,915,371,
iss. June 29, 1999), Klarich (US 2003/0230298 Al, pub. Dec.
18, 2003), Long (US 5,868,126, iss. Feb. 9, 1999), and Lindsly
(US 2007/0039603 Al, pub. Feb. 22, 2007). 3
IV. Claims 9-11 and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hering, Klarich, Long, and Lindsly, and Kent
(US 5,404,864, iss. Apr. 11, 1995).
V. Claims 15 and 16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hering, Klarich, Long, Lindsly, and Varney
(US 4,915,091, iss. Apr. 10, 1990).
1 We note that the Final Office Action (dated July 28, 2016) includes a
rejection of claims 1--4, 7-19, and 21 on the ground of obviousness-type
double patenting over claims 1-19 of U.S. Patent No. 7,600,510 in view of
Lindsly. Final Act 13. However, Appellant subsequently filed a terminal
disclaimer, which was approved on December 29, 2016, rendering the
rejection moot. Thus, the obviousness-type double patenting rejection is not
before us for review.
2 The Examiner withdrew the rejection of claims 1--4, 7-14, 17-19, and 21
under 35 U.S.C. § 112, first paragraph. Ans. 2.
3 Although the Examiner omits claims 7 and 9----13 from the staternent of the
rejection (Final Act 4), the Examiner addresses these claims in the detailed
explanation of the rejection (id. at 8-9).
3
Appeal2017-010736
Application 12/553,053
VI. Claim 18 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hering, Klarich, Long, Lindsly, and Ingalls
(US 1,508,334, iss. Sept. 9, 1924).
VII. Claim 19 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hering, Klarich, Long, Lindsly, and Boetcker
(US 6,314,955 Bl, iss. Nov. 13, 2001).
DISCUSSION
Rejection I
The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). "This inquiry ... is a question of fact," and "the level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology." Id. "[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id.
The Examiner finds that the disclosure of the present application fails
to provide adequate written description support for a stove embodiment
having a pot support that is separate from the top edge of the combustion
chamber upon which the upper lip of the cooking pot rests. See Final Act. 3.
The Examiner explains that, in "the species of figures 32 and 34, the top
edge of the combustion chamber acts as the pot support," and, "[t]herefore,
4
Appeal2017-010736
Application 12/553,053
within the claimed species, there is no separate pot support." Id. ( citing
Spec. ,r,r 132-134). Appellant asserts that the Examiner's rejection is in
error. See Appeal Br 20-22; Reply Br. 1-2. We are unpersuaded by
Appellant's assertion.
Independent claim 1, from which claims 15 and 16 indirectly depend,
recites, in relevant part, "a pot support for supporting a cooking pot ... , the
cooking pot having an upper lip resting on a top edge of the combustion
chamber." Appeal Br. 26 (Claims App.). Dependent claim 15 recites that
"the first and second ends of the combustion chamber are removably
fastened together using at least one spring clip." Id. at 29. Claim 16
depends from claim 15 and recites that "the at least one spring clip supports
the cooking pot." Id.
Appellant's Specification describes, with reference to Figures 31 and
32, that "combustion chamber assembly 185 comprises a combustion
chamber wall 902 which is configured to engage the lip of the cooking pot 7,
thereby supporting the cooking pot within the combustion chamber assembly
185." Spec. ,r 132. The Specification also describes, with reference to an
alternative embodiment shown in Figures 33 and 34, a "combustion chamber
wall 906 which is configured to engage the lip of the cooking pot 7, thereby
supporting the cooking pot within the combustion chamber 195." Id. ,r 133.
In other words, the Specification describes embodiments in which the pot is
supported by the top edge of the combustion chamber engaging a lip of the
pot. The Specification also describes another alternative embodiment, with
reference to Figures 44--46, in which a spring clip is used to secure
overlapping ends of the combustion chamber wall and "also serves to
support the cooking pot." Id. ,r 139. In other words, the Specification
5
Appeal2017-010736
Application 12/553,053
describes separate embodiments having different pot support elements:
namely, the top edge of the combustion chamber wall or the spring clips
(which are also used to secure the ends of the cooking chamber wall).
However, the Specification does not describe an embodiment having the
cooking pot supported by the top edge of the combustion chamber wall
engaging a lip of the cooking pot, and also having spring clips that support
the cooking pot and secure the ends of the combustion chamber wall, as
recited in claims 15 and 16.
Thus, the Examiner correctly finds that the disclosure of the present
application fails to reasonably convey to those skilled in the art that
Appellant had possession of the subject matter of claims 15 and 16.
Accordingly, we sustain the rejection of claims 15 and 16 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Rejection II
Independent claim 1 recites, in relevant part, "a pot support for
supporting a cooking pot ... , the cooking pot having an upper lip resting on
a top edge of the combustion chamber." Appeal Br. 26 (Claims App.). The
Examiner's stated basis for Rejection II is that "'a pot support' does not have
support within the [S]pecification," and, "[t]herefore, the [E]xaminer will
interpret the top edge of the combustion chamber and a pot support to be one
in the same." Final Act. 4. The Examiner explains that the limitation
renders claim 1 indefinite because it "creates undue confusion and lacks
clarity to call the same element by two different names." Ans. 6.
6
Appeal2017-010736
Application 12/553,053
Appellant argues that "there is nothing in the claims nor the
Specification that requires the pot supporting member to be different than
the top edge of the combustion chamber and this feature does have support
within the [S]pecification at least at paragraphs 0132---0134 and Figures 32-
34." Appeal Br. 22. This argument does not persuade us of error in the
Examiner's rejection.
Claim 1 recites the pot support as a distinct element of the apparatus,
and separately recites that the top edge of the combustion chamber supports
the lip of the cooking pot. See id. at 26 (Claims App.). Although using
different terms to refer to the same element is not per se indefinite, it is
unclear here whether the "pot support for supporting a cooking pot" recited
in claim 1 refers to the "top edge of the combustion chamber" or some other
separate element for supporting the cooking pot. In this regard, Appellant's
Specification does not provide a clarifying disclosure. For example, as
discussed above with respect to Rejection I, Appellant's Specification
describes that the top of edge of the combustion chamber supports the
cooking pot, suggesting that the pot support is indeed the top edge of the
combustion chamber. See Spec. ,r,r 132-133. However, the Specification
also describes that a spring clip (i.e., a separate element) may support the
cooking pot. See id. ,r 139. Thus, because it is unclear whether the "pot
support for supporting a cooking pot" refers to the top edge of the
combustion chamber or a separate element, such as a spring clip, one of
ordinary skill in the art would be unable to ascertain the metes and bounds of
the claim.
Accordingly, we sustain the rejection of claims 1--4, 7-19, and 21
under 35 U.S.C. § 112, second paragraph, as indefinite.
7
Appeal2017-010736
Application 12/553,053
Normally, when substantial confusion exists as to the interpretation of
a claim, and no reasonably definite meaning can be ascribed to the terms in a
claim, a determination as to compliance with 35 U.S.C. § 103 is not made.
See In re Steele, 305 F .2d 859, 862---63 (CCP A 1962) (holding that the Board
erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a),
because the rejection was based on speculative assumptions as to the
meaning of the claims). However, in this instance, we consider it to be
desirable to address the rejections under 35 U.S.C. § 103(a) to avoid the
inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222
USPQ 537, 540 (Bd. App. 1984) (expressing the view that, where a claim is
subject to more than one interpretation, one of which would render the
claims unpatentable over the prior art, the USPTO should enter simultaneous
rejections under 35 U.S.C. § 112, second paragraph, and under 35 U.S.C.
§ 102 or 103, to avoid piecemeal appellate review). As discussed in more
detail below, Appellant's arguments are directed to other aspects of the
claims regarding the rejections under 35 U.S.C. § 103(a), and thus, we need
not speculate about the meaning of the indefinite language to consider the
merits of the disputed aspects of the rejection. Therefore, we make a
determination below as to patentability under 35 U.S.C. § 103(a) of the
appealed claims in the interest of administrative economy.
Rejection III
In rejecting independent claim 1 under 35 U.S.C. § 103(a), the
Examiner finds that Hering discloses a portable cooking stove, substantially
as claimed (see Final Act. 4---6), but "does not teach the combustion chamber
forming a defined interior shape when the first and second ends are
8
Appeal2017-010736
Application 12/553,053
removably fastened together in an assembled state and forming a coil when
the first and second ends are not fastened together in an unassembled state"
(id. at 6). However, the Examiner finds that Klarich discloses a "combustion
chamber forming a defined interior shape when the first and second ends are
removably fastened together (312) in an assembled state and forming a coil
(Fig. 4) when the first and second ends are not fastened together in an
unassembled state." Id. The Examiner determines that it would have been
obvious "to modify the combustion chamber of Hering with the design of
Klarich in order to increase portability." Id.
The Examiner also finds that Hering does not disclose an upper lip on
the cooking pot. Id. However, the Examiner finds that "Lindsly teaches
wherein a pot (14) has an upper lip (18) that hangs from the top of the
combustion chamber (Fig. 6)," and determines that it would have been
obvious "to modify Hering with the pot hanging design of Lindsly in order
to increase heat transfer efficiency [0007]." Id. The Examiner further
acknowledges that Hering lacks a fuel vaporizer, but finds that Long teaches
this feature. Id. The Examiner determines that it would have been obvious
"to modify Hering with the fuel vaporizer of Long in order to have instant
flame control and good simmer characteristics (Col. 1, lines 43--48)." Id. at
6-7.
Appellant argues that the Examiner's proposed combination of Hering
and Klarich is improper because the rejection does not provide a motivation
for combining these references, and the Examiner relies on impermissible
hindsight. See Appeal Br. 6. We are not persuaded by this argument
because it does not specifically address the Examiner's articulated reasoning
presented in the rejection-i.e., "to increase portability" (Final Act. 6; Ans.
9
Appeal2017-010736
Application 12/553,053
4}-or persuasively explain why the reasoning lacks rational underpinnings.
Moreover, Appellant does not identify, nor do we discern, any knowledge
relied upon by the Examiner that was gleaned only from Appellant's
disclosure and that was not otherwise within the level of ordinary skill at the
time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971) ("Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from [Appellant's] disclosure, such a reconstruction is
proper."). As such, we disagree with Appellant's contention that the
Examiner relied on impermissible hindsight in reaching the determination of
obviousness of the clairned subject matter.
Appellant argues that Hering and Klarich cannot be combined because
Klarich is non-analogous art. See Appeal Br. 6-7; Reply Br. 6-8. In
particular, Appellant asserts that Hering relates to a backpacking stove and
Klarich relates to a windscreen. See Appeal Br. 6. Appellant asserts that the
rejection "does not identify how windscreens and combustion chambers are
analogous devices or why a person of ordinary skill in the art would find it
appropriate to modify a combustion chamber using windscreen features."
Id. at 7. According to Appellant, "screens and barriers are not in the same
field of endeavor as the claimed inventions[,] nor would a person of ordinary
skill in the art look to screens and barriers to solve problems in combustion
chambers." Reply Br. 7 (citing Spec. ,r 20). We are not persuaded by this
argument.
10
Appeal2017-010736
Application 12/553,053
Regarding the issue of analogous art, the established precedent of our
reviewing court sets up a two-fold test for determining whether art is
analogous: "(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved." In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Klarich is analogous art at least
because the reference is reasonably pertinent to a problem faced by
Appellant. Appellant's Specification describes that an "objective of this
invention [is] to be small, lightweight and conveniently portable," and "[t]he
entire invention is rendered conveniently portable in a sturdy and compact
package." Spec. ,r 12. Klarich discloses that "the containment wall 102 can
assume a flat configuration, or can be collapsed by rolling up the
containment wall 102 for storage and transport as shown best in FIG. 4."
Klarich ,r 43 (boldface omitted). According to Klarich, when "deployed as
shown in FIG. 4, the containment wall 102 is particularly suited for storage
and transport." Id. (boldface omitted, emphasis added). Thus, Klarich's
teaching is reasonably pertinent to a problem with which Appellant was
concen1ed, namely, portability and compactness of camping tools (see, e.g.,
Spec. ir,112, 34, 36), and, consequently, Appellant's assertion does not
apprise us of error in the Examiner's conclusion that Klarich is analogous
art.
Appellant argues that, "if the Klarich barrier, which does not include
any ports, was used in place of the two-piece combustion chamber of
Hering, and a pot was disposed on top of this Hering/Klarich design, the air
11
Appeal2017-010736
Application 12/553,053
necessary to maintain combustion of ... sticks or even fuel would not be
allowed into the chamber." Appeal Br. 12. According to Appellant, "[t]his
design would not even be capable of use as a stove; and thus, the
modification is inappropriate." Id. This argument is unpersuasive because it
is not responsive to the rejection presented. As discussed above, the
Examiner relies on Klarich only for teaching a combustion chamber
structure which forms a coil when the ends are unfastened in an
unassembled state. See Final Act. 6. As the Examiner explains, the
rejection relies on Klarich for "simply the flexible nature of the apparatus to
allow a coil to be formed by it." Ans. 4. In other words, the Examiner does
not propose using Klarich as a stove, but rather, determines that, given the
teachings of Klarich, it would have been obvious to modify Hering's stove
to have a flexible wall that can form a coil. See Final Act. 6; see also Ans. 4
( explaining that a stove based on the combined teachings of Hering and
Klarich would still "hav[ e] the same air ports as Hering[,] as only the
flexibility of the outer wall was modified").
Appellant asserts that Hering teaches away from the Examiner's
proposed modification because "Hering stresses that th[ e] design 'occupies
minimal space, being easily wrapped around a sleeping bag."' Appeal Br.
12 (quoting Hering, Abstract). According to Appellant, "there would be no
motivation to modify the Hering design to a design, such as a coil, that could
not be wrapped around a sleeping bag." Id. This argument is not
convmcmg.
A reference teaches away from a claimed invention or a proposed
modification if "a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
12
Appeal2017-010736
Application 12/553,053
would be led in a direction divergent from the path that was taken by the
applicant." In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any
disclosure in Hering criticizing, discrediting, or otherwise discouraging the
use of a flexible material for the wall of the stove. The fact that Hering
discloses a different way of disassembling the stove for storage and transport
does not constitute a teaching away.
l\.1oreover, Appellant does not proffer any evidence or persuasive
technical reasoning to explain how or why modifying the stove of Hering to
have a flexible wall that can be coiled, as proposed by the Examiner, would
prevent it from being wrapped around a sleeping bag. See Appeal Br. 12. In
this regard, the Examiner's proposed modification of Hering to include a
flexible wall that is able to form a coil when in an unassembled state, as
taught by Klarich, does not amount to more than the simple substitution of
one known knockdown/disassembly feature (i.e., Klarich's flexible wall that
forms a coil) for another (i.e., Hering's nesting wall pieces) or the mere
application of a knovvn technique to a piece of prior art ready for the
improvement See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007)
(noting that such modifications are obvious where they do no more than
yield a predictable result).
Appellant argues that Long is not combinable with Hering because
Long is non-analogous art. See Appeal Br. 7-8; Reply Br. 8-9. Appellant
13
Appeal2017-010736
Application 12/553,053
asserts that "[i]t is unclear why an LPG canister connector [of Long] would
be in the same field of endeavor or reasonably pertinent to the wood fuel
stove described in Hering." Appeal Br. 8; see also Reply Br 8-9 (asserting
that "[ fJuel sources are not interchangeable"). This argument is
unpersuasive. Appellant's Specification describes that "[t]he invention is a
small, lightweight, portable cooking stove that uses alcohol as fuel." Spec.
,r 2. Long "relates to an LPG canister connector for a combustion
appliance." Long, col. 1, 11. 11-12. In particular, Long discloses that the
invention is applicable "to a variety of combustion appliances such as blow
torches, heaters, soldering irons and lanterns with one especially
advantageous use being for a portable camp stove." Id., col. 1, 11. 15-18.
Long and Appellant's invention are both in the field of portable stoves, and
thus, we are not persuaded by Appellant's argument that Long is non-
analogous art. See Klein, 647 F.3d at 1348.
Appellant argues the Examiner "does not point out which part of the
Long device is even alleged to be the ... fuel vaporizer substantially axially
aligned within the defined interior shape of the assembled combustion
chamber and instead cited a passage that defines a benefit of the Long
device." Appeal Br. 13. We are not persuaded by this argument. The
Examiner clarifies in the Answer that Long "teaches the use[] of a gas
burner," and "the conduit (55, Fig. 1) would allow it to be used with a closed
combustion chamber such as Hering." Ans. 3. In other words, it is clear that
the Examiner relies on Long's gas burner as the fuel vaporizer, and
Appellant does not persuasively explain why this finding is in error.
Appellant asserts that it would not have been obvious to combine the
teachings of Hering and Long, as proposed by the Examiner, because "the
14
Appeal2017-010736
Application 12/553,053
addition of the fuel vaporizer of Long to the wood burning stove of Hering
does not make sense." Appeal Br. 14. According to Appellant, "since fuel
vaporizers relate to converting liquid fuel into a vapor for combustion (see
Specification p. 6, 17+ ), how a fuel vaporizer could be used with burning
solid twigs in Hering is not discussed by the [Final Action] nor does it seem
possible." Id. However, Appellant has not provided any factual evidence or
persuasive technical reasoning to explain why modifying Hering's stove to
include an operable fuel vaporizer, as taught by Long, in order to have
instant flame control and good simmer characteristics, as articulated by the
Examiner (Final Act. 7), would yield anything other than a predictable
result, or that doing so would be somehow beyond the level of ordinary skill
in the art. "A person of ordinary skill is also a person of ordinary creativity,
not an automaton." KSR, 550 U.S. at 421.
Appellant asserts that the cited references fail to disclose that "air
entering the at least one row of ports extending through the combustion
chamber mixes with vaporized fuel discharged from the fuel vaporizer to
form a combustible mixture of fuel and air thereby producing products of
combustion engaging the lower portion of the cooking pot located within the
combustion chamber," as recited in claim 1. See Appeal Br. 14--15; Reply
Br. 15-16. According to Appellant, "Hering and the other cited art fail to
teach this feature." Appeal Br. 15. This argument is unpersuasive because it
attacks the references individually, and is not responsive to the rejection
presented. "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). Ffere, as
15
Appeal2017-010736
Application 12/553,053
discussed above, the Examiner finds that Hering teaches a row of ports in
the combustion chamber (see Final Act 5\ but that Hering fails to disclose a
fuel vaporizer (see id. at 6). The Examiner relies on Long for teaching a fuel
vaporizer, and determines that it would have been obvious to modify
Hering' s stove to include a fuel vaporizer. See id. at 6-7. In other words,
the Examiner's rejection relies on a combination of prior art disclosures
rather than one reference alone. Appellant's argument that none of the cited
references teaches the disputed limitation (see Appeal Br. 14----15) does not
specifically address the Examiner's findings and reasoning for the
conclusion of obviousness presented in the rejection.
Appellant argues that Lindsly does not constitute prior art because
"[t]he present Application claims partial priority to U.S. Patent Application
No. 10/951,128 ('the '128 [A]pplication') filed on September 27, 2004, ...
which pre-dates Lindsly's earliest priority date, and every limitation of
rejected claim 1 is disclosed in the '128 [A]pplication." Id. at 9. According
to Appellant, the limitation that "the upper lip rests on the top edge of the
combustion chamber to allow at least a portion of the cooking pot to be
disposed in the combustion chamber, as recited in claim 1 [,] was disclosed
in the '128 Application." Id. at 10. We disagree.
Instead, we agree with the Examiner that the '128 Application fails to
provide sufficient written description support for the cooking pot being
supported by an upper lip that rests on the top edge of the combustion
chamber. As the Examiner explains, "nowhere in the '128 [ A Jpplication is
the 'upper lip' mentioned." Ans. 3. Rather, the '128 Application only
describes that the
16
Appeal2017-010736
Application 12/553,053
pot supporting device comprises two steel rods 3, each rod 3
being approximately five and one-half inches long and one-
eighth inch in diameter. Both ends of each rod 3 pass through
the combustion chamber cylindrical wall 1 and are supported by
the cylindrical wall 1. The rods 3 are arranged parallel and
coplanar, being spaced approximately three inches apart. Being
so arranged, the rods 3 form a rudimentary grillage upon which
a cooking pot 7 may be supported.
'128 Application, Spec. 10 (emphases added). The '128 Application also
depicts rods 3 supporting cooking pot 7. See id., Drawings, Figs. 1, 2, 4, 5.
In other words, the '128 Application discloses a pot support in the form of
steel rods supporting the cooking pot, but Appellant does not point to, nor do
we discern, any disclosure in the '128 Application regarding the cooking pot
having an upper lip that rests on the top edge of the combustion chamber.
The portions of the '128 Application cited by Appellant merely describe that
the cooking pot diameter is smaller than that of the combustion chamber so
that the cooking pot fits inside the combustion chamber. However, the fact
that the cooking pot may fit inside the combustion chamber does not
constitute a teaching of a cooking pot upper lip resting on the top edge of the
combustion chamber. Likewise, Appellant's reference to the disclosure in
the '128 Application that alternate forms of the pot supporting device may
be used (see Appeal Br. 10) does not constitute a teaching of an upper lip of
the cooking pot resting on the top edge of the combustion chamber.
Moreover, Appellant's position that the '128 Application "does not
exclude the same sentence from supporting other implementations such as
a[n] upper lip resting on a combustion chamber of the stove" (Reply Br. 12)
is unavailing. The fact that the '128 Application may not exclude the
claimed upper lip resting on the top edge of the combustion chamber does
not constitute a disclosure demonstrating that Appellant was in possession of
17
Appeal2017-010736
Application 12/553,053
the claimed subject matter at the time of filing the '128 Application. As
such, the disclosure of the '128 Application does not provide support for the
limitation in question sufficient to entitle the claim to the benefit of the
earlier September 27, 2004 filing date, and thus, Lindsly qualifies as prior
art.
Appellant argues that secondary considerations demonstrate non-
obviousness of the claimed invention. See Appeal Br. 15-16. In particular,
Appellant asserts that "[t]he claimed invention has had commercial success
and satisfies long-felt but unsolved needs of those that participate in outdoor
activities where a portable stove may be used." Id. at 15 (citing MPEP
§ 2143). In support of these assertions, Appellant cites to Exhibits 1-3
provided with the Appeal Brief. See id. at 15-16 ( explaining that the
Exhibits include "a review in Backpacking Light of the ThermoJet
Micro Lite Alcohol Stove[,] ... staff picks from December 2004 in
Backpacking Light reflecting the ThermoJet Micro[L ]ite Alcohol Stove is a
favorite piece of gear[,] ... and several user reviews"). According to
Appellant,
[t]he common theme expressed in these Exhibits is the
recognition of the claimed combustion chamber as a contributor
to the superior performance of the stove. The Exhibits also
reflect the value of the small packed size and lightweight nature
of the stove. In addition, the uniqueness of the simmer control is
reflected in these Exhibits.
Id. at 15.
As explained by our reviewing court:
Long-felt need is closely related to the failure of others.
Evidence is particularly probative of obviousness when it
demonstrates both that a demand existed for the patented
invention, and that others tried but failed to satisfy that demand.
18
Appeal2017-010736
Application 12/553,053
See, e.g., In re Piasecki, 745 F.2d 1468, 1475 (Fed.Cir.1984)
(finding nonobviousness where the evidence demonstrated a
failure of others to provide a feasible solution to a longstanding
problem); Alco Standard Corp. v. Tenn. Valley Auth., 808 F.2d
1490, 1500 (Fed. Cir.1986) ( affirming a nonobviousness finding
where the evidence showed that the relevant industry had
searched for more than a decade for a reliable solution and that
major manufacturers in the industry had tried but failed to
develop such a solution).
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
litigation, 676 F.3d 1063, 1082-83 (Fed. Cir. 2012); but see In re Depomed,
Inc., 680 Fed. App'x. 947, 952-53 (Fed. Cir. 2017) (non-precedential)
( stating, "While ' [ e ]vidence is particularly probative of obviousness when it
demonstrates both that a demand existed for the patented invention, and that
others tried but failed to satisfy that demand,' a patent owner may establish a
long-felt but unmet need without presenting evidence of failure of others.")
( quoting In re Cyclobenzaprine, 67 6 F .3d at 1082), petition for cert. filed,
No. 17-114 (U.S. July 21, 2017).
Here, Appellant fails to establish a long-felt need in the industry.
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 538 (CCPA 1967). Appellant's Exhibits 1-3 merely
provide evidence that the ThermoJet MicroLite Alcohol Stove performs well
and is rated highly by users. However, Exhibits 1-3 do not show that the
need for a portable outdoor cooking stove having the features or
performance of the claimed invention was a persistent one or that others
tried to meet the need and failed. "[L Jong-felt need is analyzed as of the
19
Appeal2017-010736
Application 12/553,053
date of an articulated identified problem and evidence of efforts to solve that
problem." Texas Instruments, Inc. v. US. Int 'l Trade Comm 'n, 988 F.2d
1165, 1178 (Fed. Cir. 1993). As such, we find that Appellant has failed to
set forth sufficient evidence to establish a long-felt need in the industry.
With respect to Appellant's assertion of commercial success,
Appellant has not provided any objective evidence to support this position.
As noted by the court in In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996),
"the PTO lacks the means or resources to gather evidence which supports or
refutes the applicant's assertion that the sales constitute commercial
success." Thus, the court noted that the PTO must rely upon the applicant to
provide hard evidence of commercial success. Id. at 140. Here, Exhibits 1-
3 provide subjective evidence in the form of user feedback and ratings, but
do not provide any hard evidence or objective data ( e.g., market share) to
support Appellant's assertion of commercial success. On the basis of the
limited information of commercial success provided in Exhibits 1-3, we find
that the Appellant has failed to prove meaningful commercial success of the
claimed invention.
Having considered all the evidence presented by Appellant against
obviousness and weighing all the evidence, both of obviousness and of
nonobviousness, it is our conclusion that the evidence of obviousness
outweighs the evidence of nonobviousness of the subject matter of claim 1.
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (agreeing that "given the strength of the prima facie obviousness
showing, the evidence on secondary considerations was inadequate to
overcome a final conclusion that [the claimed subject matter] would have
been obvious"). Accordingly, we sustain the rejection of claim 1, and its
20
Appeal2017-010736
Application 12/553,053
dependent claims 2--4, 7-15, 17, 20, and 21, which Appellant does not
separately argue (see Appeal Br. 5-16), under 35 U.S.C. § 103(a) as
unpatentable over Hering, Klarich, Long, and Lindsly.
Rejection IV
Claim 9:
In this alternative 35 U.S.C. § 103(a) rejection of dependent claim 9,
the Examiner finds that "Kent teaches tabs (30) that are adjustable," and
determines that "[i]t would have been obvious to one with an ordinary skill
in the art at the time of invention to modify Hering with Kent in order to
have better control over air flow." Final Act. 10. Appellant argues that
Kent's "grates and pots are held above the body of Kent's device by the flap
not within a combustion chamber, as recited in claim 9." Appeal Br. 17
( citing Kent, Figs. 2---6).
Appellant's argument against Kent is unpersuasive because it attacks
the reference individually where the rejection is based on the combined
teachings of Hering, Klarich, Long, Lindsly, and Kent. See Merck, 800 F.2d
at 1097 (citing Keller, 642 F.2d at 425). As discussed above regarding
Rejection III, the Examiner relies on Lindsly for teaching a pot supported
within the combustion chamber by a lip that rests on the top edge of the
combustion chamber (see Final Act 6), and on Kent only for teaching
adjustable tabs (see id. at 10). In this regard, Appellant's argument is not
responsive to the combination of teachings proposed by the Examiner in the
rejection, and thus, does not apprise us of error in Rejection IV of claim 9.
Accordingly, we sustain the rejection of claim 9 as unpatentable over
Hering, Klarich, Long, Lindsly, and Kent.
21
Appeal2017-010736
Application 12/553,053
Claims 10, 11, and 13:
In contesting the alternative 35 U.S.C. § 103(a) rejection of dependent
claims 10, 11, and 13, Appellant recites elements of these claims and baldly
asserts either that Kent fails to disclose these features or that the Examiner's
rejection fails to explicitly support that this is the case. See Appeal Br. 17-
18. However, Appellant makes no attempt to point out where the
Examiner's findings relative to the presence of these elements in the prior art
or the rationale for combining the teachings of the prior art articulated by the
Examiner with regard to these limitations on pages 8 and 10 of the Final
Action and on page 5 of the Answer are deficient. Appellant's vague
statements do not constitute separate arguments for patentability of claims
10, 11, and 13 pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably
interpreted 37 C.F.R. § 4I.37(c)(l)(vii) (the predecessor to§ 4I.37(c)(l)(iv))
as requiring "more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art").
Accordingly, we sustain the rejection of claims 10, 11, and 13 as
unpatentable over Hering, Klarich, Long, Lindsly, and Kent.
Rejection V
In rejecting dependent claims 15 and 16, the Examiner finds that
"Hering in view of Klarich, Long, and Lindsly teaches all elements except
that the two ends are fastened together with a spring clip that supports the
cooking pot." Final Act. 10. However, the Examiner finds that "Varney
22
Appeal2017-010736
Application 12/553,053
teaches these spring clips," and determines that "[i]t would have been
obvious to one with an ordinary skill in the art at the time of invention to
modify Hering with the spring clips of Varney in order to simplify the
invention with fewer parts." Id. ( citing Varney, Figs. 6-7).
Appellant argues that "the clip in Varney does not secure first and
second ends as disclosed in the claims." Appeal Br. 18. This argument is
not convincing. Figures 6 and 7 of Varney depict unitary frictional
engagement means 60 (i.e., a spring clip). See Varney, col. 10, 11. 14--19;
see also id., col. 11, 11. 49--51 (boldface omitted) ( disclosing that "[ u ]nitary
frictional engagement means 60 incorporates two spring clamping
portions"). Varney discloses that shell element 12 "overlapping portions 44
and 44', respectively, may be readily clamped into intimate faying and fixed
relationship by employment of unitary frictional engagement means 60 best
seen in FIG. 6 and FIG. 7." Id., col. 11, 11. 45--49 (boldface omitted). In this
regard, Appellant's argument does not identify error in the Examiner's
finding that Varney teaches the disputed limitation, which is supported by a
preponderance of the evidence.
Accordingly, we sustain the rejection of claims 15 and 16 as
unpatentable over Hering, Klarich, Long, Lindsly, and Varney.
Re} ection VI
In rejecting dependent claim 18, the Examiner finds that "Hering in
view of Klarich, Long, and Lindsly teaches all elements except wherein the
combustion chamber further comprises an obturating device movably
supported on the combustion chamber wall for at least partially covering
either the first row or the second row of ports." Final Act. 11. However, the
23
Appeal2017-010736
Application 12/553,053
Examiner finds that "Ingalls is a pertinent device wherein an obturating
device ( damper 9) can slide circumferentially to make the holes close or
open in order to allow air flow within the combustion chamber." Id. The
Examiner determines that it would have been obvious "to modify Hering
with Ingalls in order to easily starve the combustion chamber of oxygen."
Id.
Appellant argues that "Ingalls does not teach, contemplate, or even
provide a motivation to alter controlling all the openings together to allow
precise controls of different rows of ports in a combustion chamber."
Appeal Br. 19; see also id. (asserting that "Ingalls teaches an old commonly
known damper that is rotated to close or partially close a set of openings 8
together" ( citing Ingalls 1, 11. 68-86) ). Appellant also asserts that the
Examiner did not provide a reason why the proposed modification would
have been obvious. See id. This argument is not persuasive.
To the extent that Appellant appears to insist on an explicit teaching,
suggestion, or motivation in Ingalls to establish obviousness, such an
argument has been foreclosed by the Supreme Court. KSR, 550 U.S. at 419
( stating that a rigid insistence on teaching, suggestion, or motivation is
incompatible with its precedent concerning obviousness). The Court noted
that an obviousness analysis "need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for [an examiner] can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ." Id. at 418. Instead, the relevant inquiry is
whether the Examiner has set forth "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
24
Appeal2017-010736
Application 12/553,053
U.S. at 418. Here, as discussed above, the Examiner articulates adequate
reasoning based on rational underpinnings as to why the combined teachings
of Hering, Klarich, Long, Lindsly, and Ingalls renders obvious the claimed
subject matter. See Final Act. 11. Appellant does not offer any factual
evidence or persuasive technical rationale to refute the Examiner's
articulated reasoning or explain why it is deficient.
For the above reasons, Appellant does not apprise us of error in the
Examiner's determination that the subject matter of claim 18 would have
been obvious. Accordingly, we sustain the rejection of claim 18 as
unpatentable over Hering, Klarich, Long, Lindsly, and Ingalls.
Re} ection VII
In contesting the rejection of dependent claim 19, which depends from
claim 1, Appellant relies on the arguments set forth with respect to claim 1,
adding only that Boetcker does not remedy the asserted deficiency in the
Examiner's combination of Hering, Klarich, Long, and Lindsly. See Appeal
Br. 19. For the above reasons, Appellant's arguments fail to apprise us of
error in the rejection of claim 1, and, likewise, do not apprise us of error in
the rejection of claim 19. Accordingly, we sustain the rejection of claim 19
as unpatentable over Hering, Klarich, Long, and Lindsly, and Boetcker.
DECISION
All of the rejections are sustained; the Examiner's decision rejecting
claims 1--4, 7-19, and 21 is affirmed.
25
Appeal2017-010736
Application 12/553,053
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).
AFFIRMED
26