Ex Parte SHIRALI et al

Patent Trial and Appeal Board

Nov 14, 2018

13326158 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/326, 158 12/14/2011
26875 7590 11/16/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Manouchehr SHIRALI
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.
HPEN-150US 8877
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANOUCHEHR SHIRALI, DAVID WINTER,
and TRENT ABNEY
Appeal 2017-011337
Application 13/326,158
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 11 and 13-18. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed December 14, 2011
("Spec."); the Final Office Action mailed August 26, 2016 ("Final Act.");
the Appeal Brief filed April 24, 2017 ("App. Br."); the Examiner's Answer
mailed June 30, 2017 ("Ans."); and the Reply Brief filed August 30, 2017
("Reply Br.").
2 Appellants identify Henny Penny Corporation as the real party in interest.
App. Br. 1.
3 Claims 1-10 are withdrawn from consideration. Final Act. 1.
Appeal2017-011337
Application 13/326,158
The invention is directed to systems and methods for monitoring the
level of a cooking medium in a fryer apparatus. Spec. ,r 1. Claim 11,
reproduced below from the Claims Appendix of the Appeal Brief, is
illustrative of the claimed subject matter:
11. A method for monitoring the level of cooking media held
in a cooking vessel, comprising:
receiving data from a plurality of temperature sensors,
the plurality of temperature sensors comprising: a first
temperature sensor disposed at a first level of the cooking
vessel, and a second temperature sensor disposed at a second
level of the cooking vessel above the first level of the cooking
vessel;
calculating a temperature differential between the first
temperature sensor and the second temperature sensor based on
the received data; and
switching from a first operation state to a second
operation state in response to the temperature differential being
calculated to be greater than or equal to a first temperature
differential threshold and less than a second temperature
differential threshold;
wherein a heating mechanism transmits heat to the
cooking media held in the cooking vessel in the first operation
state, and the heating mechanism is deactivated in the second
operation state;
switching to a third operation state in response to the
temperature differential being calculated to be greater than or
equal to the second temperature differential threshold; and
wherein the heating mechanism is in a deactivated state
and an alarm is activated in the third operation state.
2
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Application 13/326,158
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Davis et al.
("Davis")
Mercer et al.
("Mercer")
US 5,141,760 Aug. 25, 1992
US 2004/0112225 Al June 17, 2004
REJECTIONS
The Examiner maintains and Appellants seek review of the rejections
of claims 11 and 13-18 (1) under 35 U.S.C. § 112, second paragraph as
indefinite; and (2) under 35 U.S.C. § I03(a) as obvious over Mercer in view
of Davis. Final Act. 2-8; App. Br. 4--14.
OPINION
Rejection under 35 U.S.C. § 112
Section 112 requires that a patent's claims particularly point out and
distinctly claim the subject matter regarded as the invention. 4 "This
definiteness requirement 'secure[s] to the patentee all to which he is entitled'
and 'apprise[s] the public of what is still open to them."' Ex parte
McAward, 2017 WL 3669566, at* 2-3 (PTAB Aug. 25, 2017)
(precedential) (quoting Markman v. Westview Instruments, Inc., 517 U.S.
370, 373 (1996)); see also In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir.
2009) ( quoting MPEP § 2173 .02) ( claim is examined for compliance with
35 U.S.C. § 112 by determining whether claim meets threshold requirements
of clarity and precision). A claim is not indefinite merely because more
4 Both 35 U.S.C. § 112(b) and pre-AIA 35 U.S.C. § 112, second paragraph
contain this requirement.
3
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Application 13/326,158
suitable language or modes of expression are available. Skvorecz, 580 F.3d
at 1268.
During prosecution, claims are given their broadest reasonable scope
consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read
in light of the specification, as it would have been interpreted by one of
ordinary skill in the art at the time of the invention. Id. "Applying the
broadest reasonable interpretation of a claim, then, the Office establishes a
prima facie case of indefiniteness with a rejection explaining how the metes
and bounds of a pending claim are not clear because the claim contains
words or phrases whose meaning is unclear." McAward, 2017 WL 3669566,
at *2 (citing In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per
curiam)). An indefiniteness rejection begins what is intended to be an
interactive process in which the applicant has the opportunity to respond
to the examiner by amending the claims or by providing evidence or
explanation that shows why the claims are not indefinite. Packard, 751 F.3d
at 1311-12.
In the instant case, the Examiner finds the claim term "temperature
differential threshold" to be indefinite as failing to clearly establish the
metes and bounds of what is claimed as the invention. Final Act. 2.
Appellants respond that paragraph 24 of the Specification "describe[ s] in
detail" the method of calculating temperature differential("~ T") thresholds
and the various factors that may be considered when calculating those
thresholds. App. Br. 12. We disagree. Regarding temperature differential
thresholds (" ~ T thresholds") T 1 and T 2, paragraph 24 of the Specification
states:
4
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Application 13/326,158
T 1 and T 2 may be determined by testing different operating
conditions of cooking medium level and temperature regulation
schemes. For example, the thresholds T 1 and T 2 may be
selected to allow the fryer apparatus to operate as desired
regardless of the cooking medium level and heat regulation
mode. The T 1 and T 2 thresholds also may depend on the
geometry of the cooking vessel, cooking medium volume,
sensor locations, and heating mechanism wattage. The T 1 and
T 2 thresholds may be selected to achieve reliable level detection
without false alarms under all operating conditions, normal and
abnormal. The T 1 and T 2 thresholds also may be adjusted by
criteria beyond the functional requirements described above.
For example, in a particular implementation, if it is more
desirable to prolong heating element life than to avoid false
alarms, the threshold T 2 then may be reduced to a lower value.
Thus, paragraph 24 would not have advised one of ordinary skill
in the art at the time of the invention of any methodology for calculating
temperature differential thresholds. Paragraph 23 of the Specification
discloses that temperature differential thresholds may be determined
empirically. Spec. ,r 23. Nothing in the claims or Specification provides
information that would have allowed a skilled artisan to determine with any
consistency the first or second ( or third or fourth) temperature differential
thresholds for any given cooking vessel. Numerous factors "may" be
considered by the skilled artisan. Spec. ,r 24. Insufficient information is
provided by the claims and Specification to convey the metes and bounds of
the claimed thresholds. For example, T1 and T2 could be any temperatures,
from zero to infinity, as long as T 2 is even a de minimis amount greater than
T1. Any arbitrary selection of two temperatures would fall within the
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Application 13/326,158
excessively broad reach of the claims. 5 Although broad claims are not
necessarily indefinite (see In re Gardner, 427 F .2d 786, 788 (CCP A 1970)
("Breadth is not indefiniteness.")), the claims at issue here place no limits at
all on the temperature differential thresholds. A claim is indefinite if one of
ordinary skill in the art cannot translate the claims into meaningfully precise
claim scope. Halliburton Energy Svcs., Inc. v. M-I LLC, 514 F.3d 1244,
1251 (Fed. Cir. 2008).
We sustain the Examiner's rejection of claims 11 and 13-18 as
indefinite.
Rejection under 35 U.S.C. § 103(a)
When the claims are held to be indefinite, we normally do not assess
the propriety of rejections under 35 U.S.C. §§ 102 or 103. In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious-the claim becomes indefinite."). In some instances, however, it is
possible to make a reasonable, conditional interpretation of claims adequate
for the purpose of resolving the patentability issues to avoid piecemeal
appellate review and in the interest of administrative and judicial economy.
See Ex parte Saceman, 27 USPQ2d 14 72, 14 7 4 (BP AI 1993); Ex parte
Ionescu, 222 USPQ 537, 540 (BPAI 1984). In this case, we exercise
our discretion to address the obviousness rejection of record based on the
conditional interpretation given in the interest of administrative and judicial
economy. See Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991)
5 Should there be further prosecution of this application, due to the claims'
breadth, the Examiner may wish to review the claims for compliance under
35 U.S.C. § 112 with the enablement requirement.
6
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( exercising discretion to reach art rejections despite indefiniteness where
nature of case permitted).
For the purpose of considering the rejection under§ 103, we interpret
"temperature differential threshold" to mean an amount of heat at, above, or
below which an operation state occurs, and a first temperature differential
threshold to be an amount of heat that is lower by any amount than a second
temperature differential threshold.
With respect to claim 11, the Examiner finds that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
combine the teachings of Mercer with the failsafe mechanism of Davis in
order to improve safety and prevent excessive temperatures. Final Act. 4--5;
Ans. 9.
Appellants argue that claim 11 requires comparison of a temperature
differential to two different thresholds and three different operating states,
but the combination of Mercer and Davis do not teach these elements. App.
Br. 4--5. Appellants' arguments are unpersuasive of reversible error for the
reasons below.
Appellants contend that Mercer does not teach a second temperature
differential threshold. Id. at 6. However, Mercer discloses "a predetermined
temperature" and "a further predetermined temperature" (see Mercer ,r,r 26
and 29, claim 2), which meet the limitations requiring first and second
temperature differential thresholds, as the pending claims and Specification
place no limits on the temperature differential thresholds, except that one is
not identical to the other. The word "further" implies that the two
predetermined temperatures in Mercer are not identical.
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Contrary to Appellants' argument, Mercer teaches at least two
operation states (heating unit on and heating unit deactivated), and Davis
teaches at least three states (heating unit on, heating unit deactivated, and
heating unit deactivated and alarm). See Mercer ,r 26; Davis col. 4, 11. 38-
58.
Appellants argue that the Examiner's rationale for combining Mercer
and Davis is deficient because Davis adds nothing that is not already present
in Mercer. App. Br. 6; Reply Br. 2. According to Appellants, Mercer
already deactivates the heats at a lower threshold temperature differential,
therefore "making the apparatus safer" cannot be an objective reason to
combine Mercer and Davis. App. Br. 6; Reply Br. 2. Appellants rely on
Mercer's disclosure that "indication also is given to a user of the fryer that
the means for heating has been deactivated" as duplicating Davis's alarm.
See App. Br. 6; Reply Br. 2. Claim 11, however, recites the open
transitional language "comprising," therefore both an indication and an
alarm are encompassed by the claim. In re Crish, 393 F.3d 1253, 1257 (Fed.
Cir. 2004) ("comprising" means named elements are essential but other
elements may be added).
Moreover, Appellants' argument that Davis's failsafe mechanism
would not make Mercer safer is flawed. See App. Br. 6. Appellants contend
that, if the sensors of Mercer fails, then there will be no temperature
comparison for Davis's threshold to be compared to, and no consequent
improved safety. Id. The method resulting from the combination of
references is safer even if the sensors do not fail; a higher temperature may
set off an alarm and alert a user to action, whereas a lower, albeit too high,
temperature may only shut off the heating mechanism in order to avoid
8
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Application 13/326,158
degradation of the cooking medium. Thus, one of ordinary skill in the art
would have been motivated to combine the teachings of Mercer with those
of Davis when allowance is made for "the inferences and creative steps that
a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007).
We sustain the rejection of claim 11 over Mercer in view of Davis.
Appellants separately argue for patentability of claims 14 and 15.
App. Br. 9-12. Claim 14 depends from claim 11 and further recites
"switching ... to the first operation state in response to the temperature
differential being calculated to be less than a third temperature differential
threshold." App. Br. 19-20 (Claims App.). Claim 15 depends from claim
11 and further recites "switching from the third operation state to the second
operation state in response to the temperature differential being calculated to
be less than a fourth temperature differential threshold." Id. at 20.
Regarding claim 14, Appellants argue that calculating a difference
in oil temperature is not commensurate with calculating a temperature
differential between a first and second temperature sensor to be less than a
third temperature differential threshold. Id. at 10. Appellants contend that,
although Mercer may re-active the heater device at some point, there is
no teaching or suggestion to do so based on comparison of the same
temperature differential value used in the deactivation process to yet another
(third) different temperature differential threshold. Id. We note that the
third temperature differential threshold may any amount of heat that is any
amount less than the first temperature differential threshold. See claim 14
("wherein the third temperature differential threshold is less than the first
temperature differential threshold").
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Davis teaches that a proportional control band equal to ten degrees
below the set point temperature is provided and the power applied to the
heating elements is proportional by the duty cycle modulation to provide a
proportional relationship of maximum power to the difference in the actual
temperature and the set point temperature. Davis col. 5, 11. 43--49. Davis
seeks to achieve a rapid recovery to the desired set point temperature after a
heavy cooking load has been introduced and cooled the oil. Davis. col. 5, 11.
25-34. The "ten degrees below the set point temperature" qualifies as the
third temperature differential temperature threshold of claim 14, being an
amount of heat (ten degrees) less than the set point temperature. One of
ordinary skill in the art would have had no difficultly in calculating the
temperature differential, given that a first and a third temperature differential
thresholds would have been known.
Regarding claim 15, the Examiner finds that a fourth temperature
differential threshold can be considered to be a temperature difference
between the initial temperature and the temperature during heating but
before the operation is shut down due to the alarm. Final Act. 6; Ans. 10-
11. Appellants argue that the Examiner misunderstands the requirements of
the claim, in which the alarm is no longer activated, and the heater remains
deactivated, i.e., both the heater and the alarm are off. App. Br. 11.
The fourth temperature differential threshold could be the amount of
heat as described by the Examiner, but at a different point in the claimed
method. If the temperature exceeds the high limit temperature setting in
Davis, the heater is deactivated and the alarm turns on (third operation state),
and the temperature at the sensors will naturally decrease as the device
cools. Using nothing more than ordinary creativity, the skilled artisan would
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have set the alarm to discontinue sounding off after a user had been alerted
to the high limit temperature having been reached, so that it would not have
sounded off during the entire time that the heaters are deactivated. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,421 (2007) ("A person of ordinary skill is
also a person of ordinary creativity, not an automaton.").
We sustain the rejections of claim 14 and 15 as obvious over Mercer
in view of Davis.
DECISION
The rejections of claims 11 and 13-18 as ( 1) indefinite under
35 U.S.C. § 112; and (2) obvious under 35 U.S.C. § 103 are 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)(l )(iv).
AFFIRMED
11