Ex Parte Shulman et al

Board of Patent Appeals and Interferences

Jun 22, 2009

10838041 (B.P.A.I. Jun. 22, 2009)

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.
10/838,041 05/03/2004 Burt H. Shulman 1-16194 4288
1678 7590 06/22/2009
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604
EXAMINER
BASICHAS, ALFRED
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
06/22/2009 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 BURT H. SHULMAN and DAVID FREDERICK ERB
__________

Appeal 2009-001688
Application 10/838,041
Technology Center 3700
__________

Decided:1 June 22, 2009
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a burn-
preventing guard for an oven rack. The Examiner has rejected the claims as

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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anticipated by and obvious in view of the prior art. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse the rejection for anticipation and affirm-
in-part the rejection for obviousness.
STATEMENT OF THE CASE
“When the cook reaches into the oven to check on the cooking process
or to remove cooked foods, it is not uncommon for him/her to accidentally
brush an arm or hand against the upper rack” of the oven (Spec. 1: 17-19).
“At the high temperatures typically used to cook/bake the food, a burn –
often serious – may result” (id. at 1: 19-20).
The Specification discloses “a thermal oven rack guard that [is]
secured over the front rail of a metal oven rack to protect against . . .
accidental burns by virtue of using a material specially chosen to have a
lower rate of conductive heat transfer than that of the metal oven rack”
(Spec. 2: 10-13). Because of the lower rate of thermal conductivity, the
material’s heat “is only slowly transferred via conduction to another object”
(id. at 2: 15-16). As a result, “even though the thermal guard device reaches
a high temperature during use, upon touching it the cook will sense the
temperature of the guard and removes his/her hand long before any injury
can result” (id. at 2: 20-22).
Claims 1-5, 7-9, 11-13, 15, 16, and 18-28 are pending and on appeal.
Claims 1, 20, 27, and 28 are representative and read as follows:
1. A guard for protecting an oven user from burn injury from
accidentally touching a hot oven rack comprising a sleeve of material having
a thermal conductivity that is lower than the thermal conductivity of the
front rail of the metal oven rack, the sleeve being mounted on the front rail
in such a manner that the sleeve can be attached, detached, and reattached to
the front rail without causing damage to the guard.
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20. The guard of claim 28, wherein the cover mounts on the front rail
of a metal oven rack using a friction fit.

27. The guard [of claim 1, wherein the sleeve fastens to the front rail
of the oven rack using metal snaps], wherein, when the sleeve of material is
detachably mounted on the front rail, the metal snaps are covered by the
material so as not to be exposed to the touch of an oven user.

28. A guard for protecting an oven user from burn injury from
accidentally touching a hot oven rack comprising a cover formed of a
material having a thermal conductivity that is lower than the thermal
conductivity of the front rail of the metal oven rack and a means for
mounting the cover on a front rail of the oven rack so that the cover can be
detached and reattached without causing damage to the guard.

The claims stand rejected as follows:
• Claims 1, 2, 20, 24, 25, and 28 under 35 U.S.C. § 102(b) as
“anticipated by existing oven mitts or towels” (Ans. 3) and
• Claims 1-5, 7-9, 11-13, 15, 16, and 18-28 under 35 U.S.C. § 103(a)
as obvious in view of Davis2 (Ans. 4-6).
ANTICIPATION
The Examiner has rejected claims 1, 2, 20, 24, 25, and 28 as
“anticipated by existing oven mitts or towels” (Ans. 3). The Examiner
concludes that an oven mitt is “mounted” on an oven rack “in the form of the
user grasping the rack to pull it out” (id.) and that an oven mitt also meets

2 Davis, U.S. Patent 2,186,857, issued Jan. 9, 1940. Although the Examiner
sets out separate § 103 rejections of various claims, the rejections are all
based on Davis alone and differ only in the Examiner’s explanation of why
different claim features would have been obvious. Since the claims are all
rejected as obvious based on the same evidence, we consider the
obviousness issue to be a single ground of rejection.
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the limitations of “attaching (grasping) and detaching (releasing) . . . without
causing damage to the device (mitt or towel)” (id.)
Appellants contend that “[g]rasping the front rail of an oven rack with
an oven mitt simply does not ‘attach’ the oven mitt to the front rail, nor does
it mount the oven mitt on the front rail, as those terms would be understood
from the specification and the supporting dictionary definition” (Appeal Br.
7).
We agree with Appellants that the Examiner’s rejection depends on an
unreasonably broad interpretation of the claim language. The ordinary
meaning of “attaching” two things, or “mounting” one thing on another,
requires that the things that are attached or mounted be fastened together in
some way, not simply that they be in contact with each other. The Examiner
has not shown an example of an oven mitt or towel fastened to an oven rack,
and therefore has not shown that the rejected claims are anticipated by the
well-known use of an oven mitt or towel to pull out an oven rack.
OBVIOUSNESS
Issue
The Examiner has rejected claims 1-5, 7-9, 11-13, 15, 16, and 18-28
as obvious in view of Davis. The Examiner finds that Davis discloses a
sleeve of material having a lower thermal conductivity than that of an oven
rack, mounted on the front rail of an oven rack, albeit not in a way that
allows detaching and reattaching without damage (Ans. 4). The Examiner
also finds that “[v]arious devices and methods are notoriously well known to
provide for removability, such as friction fit, hook and loop, snaps, buttons,
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zippers, etc.” (id.) and concludes that it would have been obvious to
incorporate such a device into Davis’ product (id.).
Appellants contend that, “[w]hile snaps and buttons, for example,
were obviously well known at the time of Davis, their use was not suggested
in Davis” (Br. 11) and “the only suggestion for mounting in such a manner
that the sleeve can be attached, detached, and reattached to the front rail
without causing damage to the guard is the applicants’ specification” (id. at
10).
The issue with respect to this rejection is: Did the Examiner err in
concluding that those of skill in the art would have considered it obvious to
modify Davis’ product by mounting it to an oven rack using, for example,
snaps or buttons?
Findings of Fact
1. Davis discloses that “the average housewife receives rather
frequent burns upon her forearms by reason of the fact that in reaching into a
hot stove oven the forearm is inadvertently touched against the forward edge
of one of the oven shelves” (Davis, col. 1, ll. 7-11).
2. Davis discloses that “these burns may be prevented by placing
along the forward edge of each of the oven shelves a strip of non-
inflammable material of a kind that will not transfer heat to other objects
rapidly even though the temperature of the material itself be relatively high”
(id. at col. 1, ll. 12-18).
3. Davis discloses that “[a]sbestos is such a material, particularly in
its more porous forms, for example asbestos cloth or loosely felted asbestos
sheet” (id. at col. 1, ll. 18-20).
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4. Davis discloses that a “person who touches one of these materials
when it is at the highest temperature ordinarily encountered in a domestic
oven will at once be aware of the fact that it is hot, but will have ample
opportunity to break the contact before any physical injury is sustained” (id.
at col. 1, ll. 24-30).
5. Davis discloses an embodiment in which a piece of asbestos cloth
is attached by a fireproof adhesive (id. at col. 2, ll. 5-6).
6. Davis discloses that “wire staples . . . may be used for attaching the
non-heat transferring material instead of adhesives. Still other means of
attaching may be provided.” (Id. at col. 2, ll. 9-11.)
7. Appellants admit that “snaps and buttons . . . were obviously well
known at the time of Davis” (Br. 11).
Principles of Law
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v.
Adams, 383 U.S. 39, 50-51 (1966). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” 550 U.S. at 416.
“When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
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product not of innovation but of ordinary skill and common sense.” Id. at
421.
Analysis
Appellants do not dispute that the asbestos cloth disclosed by Davis
has the thermal conductivity required by claims 1 and 28, but argue that
Davis teaches attaching the device to an oven rack permanently, such as with
adhesive or staples (Br. 10). Appellants argue that Davis lacks any
suggestion that the asbestos cloth could be mounted in such a way as to be
detached and reattached without damage (id.).
We are not persuaded. Davis discloses a guard made from asbestos
cloth that is attached to the front of an oven rack, so that a person touching
the asbestos guard will feel that it is hot but not be burned by the contact.
Davis discloses attaching the guard to the oven rack using adhesive or wire
staples, but also suggests that other means of attaching it can be used.
Appellants concede that snaps and buttons have been well-known means of
attaching things together since at least Davis’ time. We agree with the
Examiner that it would have been obvious to attach Davis’ guard to an oven
rack using snaps or buttons because doing so would only require using
known elements for their known function of attaching things together.
With respect to claim 27, the Examiner reasoned that covering snaps
is an old practice, used (most often for clothing) to enhance aesthetic appeal
and that using covered snaps in Davis’ device would have been obvious in
order to enhance its aesthetic appeal (Ans. 6-7).
Appellants argue that “[t]here is no indication, either in Davis or in
the present specification, that aesthetic appeal was of any significance with
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regard to an oven rack guard. . . . In fact, Davis fails to suggest any covering
for the wire staples described in the embodiment of Fig. 3.” (Br. 15.)
Common experience tells us that an aesthetically pleasing product is
generally more marketable than an ugly-looking product that does the same
thing. We therefore agree with the Examiner that modifying a prior art
product to enhance its aesthetic appeal would be obvious to the ordinary
skilled worker. See Dystar Textilfarben Gmbh & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006):
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical— . . . there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.
With respect to claim 20, Appellants argue that the “record is devoid
of any evidence that the fireproof adhesive of Davis results in a friction fit
(that is, one that relies only on friction between the contact surfaces) of the
cloth to the shelf” (Br. 13).
We agree with Appellants that the Examiner has not supported a
prima facie case of obviousness with respect to claim 20. The Examiner
takes the position that “the friction fit aspect of the claims is . . . an obvious
known equivalent to adhesive and staples” (Ans. 8). This may be true for
some materials, but the amount of friction between two contacting surfaces
will depend on what the surfaces are made of and their shapes, among other
things. Davis is specifically concerned with attaching an asbestos cloth to an
oven rack. The Examiner has not provided adequate evidence or scientific
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reasoning to support a conclusion that those of skill in the art would have
considered attaching Davis’ asbestos cloth to an oven rack via friction fit to
be an obvious equivalent to attaching it via adhesive or staples, as disclosed.
Conclusion of Law
The Examiner did not err in concluding that those of skill in the art
would have considered it obvious to modify Davis’ product by mounting it
to an oven rack using snaps or buttons, but did err in concluding that those
of skill in the art would have considered attaching it by friction fit to be
equivalent to attaching it by adhesive or staples.
SUMMARY
We reverse the rejection of claims 1, 2, 20, 24, 25, and 28 as
anticipated by existing oven mitts of towels, and the rejection of claim 20 as
obvious in view of Davis. We affirm the rejection of claims 1, 27, and 28 as
obvious in view of Davis. Claims 2-5, 7-9, 11-13, 15, 16, 18, 19, and 21-26
fall with claims 1, 27, and 28 because separate reasons for their patentability
were not provided. 37 C.F.R. § 41.37(c)(1)(vii).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

lp
Appeal 2009-001688
Application 10/838,041

10
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO OH 43604