Ex Parte Norwood

Board of Patent Appeals and Interferences

Jul 20, 2012

10375169 (B.P.A.I. Jul. 20, 2012)

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.
10/375,169 02/26/2003 Albert Duke Norwood 10.925.000 6154
7590 07/20/2012
Roy, Kiesel, Keegan & DeNicola, PLC
2355 Drusilla Lane
Baton Rouge, LA 70809
EXAMINER
VAN, QUANG T
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
07/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALBERT DUKE NORWOOD
____________________

Appeal 2010-007845
Application 10/375,169
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/375,169

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 2 and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The claimed subject matter relates to a grill rack that can be placed on
a cooking surface for cooking chicken wings. See Amended Substitute
Spec. filed Feb. 13, 2006, p. 6, ll. 6-7.
Claim 2 is the sole independent claim on appeal and is reproduced
below with the key disputed limitations emphasized:
2. A rack to be placed on a cooker surface for use in grilling
chicken wings comprising
(a) a frame constructed having a perimeter member
forming a closed perimeter having an interior opening there
through, and having leg members extending downward from
the frame, the leg members being of sufficient length to
position the frame above the cooker surface;
(b) a plurality of parallel bars attached to the perimeter
member; and
(c) at least one spear extending vertically from each of
the parallel bars to which a chicken wing can be attached, the
bars and spears positioned apart relative to one another to
provide sufficient separation to prevent any chicken wings
attached to the spears from contacting one another or folding
back on itself and to obtain more even heating over the surface
of the chicken wings affixed to the spears.

REJECTIONS
Appellant seeks review of the following rejections:
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(1) Claim 2 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. Ans. 3.1
(2) Claims 2 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Perez (US 3,379,118, iss. Apr. 23, 1968); Knauff (US 1,630,188, iss. May
24, 1927); and Kuroshima (JP H11-308962 A, pub. Nov. 9, 1999).2 Ans. 4.

ISSUES
Only issues and findings of fact contested by Appellant will be
addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010).
(1) Does the disclosure reasonably convey to a person of skill in
the art that Appellant possessed the subject matter of claim 2? Br. 4-5.
(2) Do the evidence and technical reasoning underlying the
rejection of claim 2 adequately support the conclusion that the apparatus of
claim 2 would have been obvious from the teachings of Perez, Knauff, and
Kuroshima? Br. 5.

ANALYSIS
First Issue
The Examiner finds that claim 2 fails to comply with the written
description requirement because “folding back on itself” lacks support in the

1 We note that claim 4 incorporates by reference the same recitation of
claim 2 cited by the Examiner as lacking written description under § 112,
first paragraph. See 35 U.S.C. § 112, fourth paragraph.
2 Unless otherwise noted, citations to “Kuroshima” in this opinion will be to
the English translation made of record February 17, 2010.
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Specification as originally filed, and as such, is improper new matter.3 Ans.
3. Appellant argues that the original Specification disclosed a grill for
cooking chicken wings and that a person of ordinary skill in the art would
recognize that a chicken wing would be placed as a whole wing in an open
position on the spear in at least some cooking methods. Br. 4. Appellant
further argues that the original Specification disclosed a device that
inherently performed the function of preventing a chicken wing from folding
back on itself, and it is proper to amend the application to recite the inherent
function without introducing new matter. Br. 4.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Compliance
with the written description requirement is a question of fact which must be
resolved on a case-by-case basis. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991). Written description support can be either
express or inherent, and is determined from the disclosure considered as a
whole. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000).
“In order for a disclosure to be inherent, the missing descriptive matter must
necessarily be present in the . . . specification such that one skilled in the art
would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154,
1159 (Fed. Cir. 1998).
Appellant’s disclosure does not expressly disclose that the spears are
positioned to prevent a chicken wing from folding back on itself.

3 The phrase “folding back on itself” was added as part of claim 2 during
prosecution and was not contained in any of the original claims. Final Rej.
4.
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Significantly, Appellant’s original Specification stated: “To use [the] grill
you must cut chickenwing in half at the joint[,] remove wingtip and place
each part on a spear.” See Spec. filed Feb. 26, 2003, p. 1, ll. 8-9. The
Specification does not show that the Appellant foresaw configuring the bars
and spears in a manner to prevent the chicken wing from folding back on
itself at the time of filing. Appellant first noted that a “spear having a length
of about two inches would . . . prevent the chicken wing from folding back
onto itself” in a subsequent response. Response to Office Action filed Feb.
21, 2007, p. 1, ll. 15-17.
Appellant argues that the suggested method of cutting the wing at the
joint in the original Specification did not exclude other methods for cooking
chicken wings. Br. 4. In order to find the disclosure of “folding back on
itself” to be inherent, we must find that such disclosure is necessarily
present. Since the Specification itself sets forth at least one method of
cooking chicken wings which would not necessarily require the bars and
spears to be positioned to prevent chicken wings from folding back on
themselves, we cannot find that the limitation of “the bars and spears
positioned apart relative to one another to provide sufficient separation to
prevent any chicken wings attached to the spears from contacting one
another or folding back on itself” necessarily must be present. For the
foregoing reasons, we agree with the Examiner that the claim term “folding
back on itself” lacks support in the Specification as originally filed. Ans. 3.
We sustain the rejection of claim 2 under § 112, first paragraph.

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Second Issue
Appellant argues claims 2 and 4 as a group on the basis of claim 2.
Br. 11. We select independent claim 2 as the representative claim. See 37
C.F.R. § 41.37(c)(1)(vii). The Examiner found that Perez discloses all of the
limitations of claim 2 “except for the use of a plurality of parallel bars
attached to the perimeter member such that the bars and spears [are]
positioned relative to one another to provide sufficient separation to prevent
any potatoes attached to the spears from contacting one another.” Ans. 4.
The Examiner further found that “[i]t would have been obvious to one
having ordinary skill in the art . . . to modify Perez to use a plurality of bars
so that more spears can be attached to the frame for heating more food
articles at the same time, in view of the teaching of Knauff.” Ans. 4-5.
Appellant contends that there is no teaching or suggestion that Perez
be modified to include the crossbars of Knauff because Knauff and Perez
deal with the cooking of homogeneous foods (e.g., potatoes), not non-
homogeneous foods (e.g., chicken wings), and, furthermore, that Knauff
would not “enhance the internal baking of the potato that is the primary
focus of the Perez rack.” Br. 9. “Under the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). Perez’s, Knauff’s, and Appellant’s devices are in the same field of
endeavor, namely, grilling racks for food products. Knauff’s patent
recognized the problem of holding food products “properly spaced and in
[the] best positions for baking.” Knauff, p. 1, ll. 1-3. A similar problem is
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sought to be addressed by Appellant. See Amended Substitute Spec. filed
Feb. 13, 2006, p. 7, ll. 15-17.
In addition, Perez’s and Knauff’s patents recognized that the number
of pins and/or teeth for holding food products can vary. Perez, col. 1, ll. 47-
51; Knauff, p. 1, ll. 49-51. The Examiner provides a persuasive reason why
one of ordinary skill in the art would be motivated to vary the number of
spears, i.e., increase the number of spears to allow for heating an increased
number of food products. Ans. 7. The problems recognized in the art (i.e.,
proper spacing of food products and sufficient space for same) provide a
sufficient reason for modifying Perez to attach a plurality of parallel bars 8
as disclosed in Knauff to the perimeter members 20, 22 of Perez.
To the extent that Appellant contends that Perez and Knauff teach
away from the combination (Br. 8), we are not persuaded that the Examiner
erred. The fact that one reference is silent as to what another reference
teaches is not a “teaching away” within the meaning of § 103(a). See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any … alternatives because such disclosure does not criticize, discredit,
or otherwise discourage the solution claimed.…”). In the instant case, Perez
and Knauff do not discredit or discourage the use of their respective grill
racks for non-homogenous food, and thus, the cited references do not teach
away from the claimed subject matter.
Appellant argues that the limitation “the bars and spears positioned
apart relative to one another to provide sufficient separation to prevent any
chicken wings attached to the spears from contacting one another or folding
back on itself and to obtain more even heating over the surface of the
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chicken wings affixed to the spears” “reflect[s] the engineering performed
by the inventor to develop a rack that would meet the aforementioned
objectives for cooking chicken wings” and is not disclosed by Perez and
Knauff. Br. 7-8.
A patent applicant is free to recite features of an apparatus structurally
or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971).
However, where the Patent Office has reason to believe that a functional
limitation is an inherent characteristic of the prior art, it can require an
applicant to show that the prior art does not possess the claimed functional
features. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting
Swinehart, 439 F.2d at 213); see also In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (“when the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” (citations omitted)).
The Examiner had a sufficient basis for finding Perez’s and Knauff’s
spears are sufficiently positioned apart to prevent food from contacting since
potatoes are usually larger than chicken wings (Ans. 9) and Knauff discloses
potatoes as being “held upright, spaced from each other.” Knauff, p. 1, ll.
68-71. The Examiner also had a sufficient basis for finding that Perez’s and
Knauff’s spears are sufficiently positioned apart to obtain more even heating
over the surface since at least Perez is designed to “provide quicker baking
time.” Perez, col. 1, ll. 15-19. Appellant points to no structural differences
between the claimed subject matter and the prior art references with respect
to the limitations reproduced hereinabove that would persuasively rebut the
Examiner’s showing that Perez and Knauff inherently possessed the claimed
functional features. Neither has Appellant provided other evidence
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persuasive that Perez’s baking rack, modified in view of the teachings of
Knauff and Kuroshima, would not have been capable of performing the
functions recited in claim 2.
For the foregoing reasons, we find that the Examiner did not err in
concluding that claim 2 would have been obvious from the combination of
Perez and Knauff; and we sustain the rejection of claims 2 and 4 under §
103(a).

DECISION
The Examiner’s rejection of claims 2 and 4 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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