Ex Parte SYKES

Patent Trial and Appeal Board

Nov 14, 2017

14101581 (P.T.A.B. Nov. 14, 2017)

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.
285.9203USU 6350
EXAMINER
NORTON, JOHN J
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
14/101,581 12/10/2013 Michael Robin SYKES
27623 7590 11/15/2017
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
11/15/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ROBIN SYKES1
Appeal 2017-002552
Application 14/101,581
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 5, and 7—13 as unpatentable under 35 U.S.C. § 103
over Best (US 5,676,043, iss. Oct. 14, 1997), of claim 3 over Best and Storiz
(US 2010/0199857 Al, pub. Aug. 12, 2010), and of claims 4 and 6 over Best
and Schultheis (US 5,981,914, iss. Nov. 9, 1999).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Garland Commercial Industries, LLC is identified as the real-party-in-
interest. Appeal Br. 2.
2 In the Answer, the Examiner adds a rejection of claims 1, 2, and 8—13
under 35 U.S.C. § 102(a)(1) as anticipated by Best. Ans. 2.
Appeal 2017-002552
Application 14/101,581
THE INVENTION
Appellant’s invention relates to cooking grills. Spec. 2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A cooking apparatus, comprising:
a chassis;
a plurality of separate and structurally distinct planar grill
plates, wherein each of said grill plates has a bottom side and a
top side, wherein all of said plurality of said grill plates are
within said chassis, and each pair of adjacent grill plates has a
gap therebetween;
a plurality of heaters in said chassis, wherein each of said
grill plates has a heater associated therewith, wherein said
heater provides heat to said bottom side of said grill plate, to
directly heat food products on said top side; and
a thermally insulating bonding material disposed in each
gap, so that heat loss between adjacent plates is minimized.
OPINION
Unpatentability of Claims 1, 2, 5, and 7—13
over Best
Appellant argues claims 1, 2, 5, and 7—13 as a group. Appeal Br. 4—8.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Best discloses all of the elements of claim 1,
substantially as claimed, except that plates 30 are covered by a griddle
surface 20, which surface 20 is continuous and, therefore, not segmented
with gaps therebetween. Final Action 3. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to design a cooking apparatus with plates that are separated
with exposed thermal insulation gaps therebetween. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to render
the apparatus more easily constructible. Id.
2
Appeal 2017-002552
Application 14/101,581
Appellant traverses the Examiner’s rejection by first arguing that
Best’s grill plate 20 is a single, continuous surface, a point already conceded
by the Examiner. Appeal Br. 4. Appellant argues that the Examiner’s
proposed modification to remove grill plate 20 runs contrary to the teachings
of Best. Id. Appellant argues that continuous grill surface 20 is “desired
and needed.” Id. at 4—5. Appellant argues that, the “Examiner’s assertion
that one of ordinary skill in the art would be motivated to break up the
continuous griddle of Best into separate parts finds no basis in the art or
general knowledge, absent the teachings of the present invention.” Id. at 5.
Appellant characterizes this as a “teaching away” from using separate grill
plates. Id. at 5.3
We first address the “teaching away” argument. A reference does not
teach away if it merely discloses an alternative invention but does not
“criticize, discredit, or otherwise discourage” investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has
not directed us to any language in Best that criticizes, discredits, or
otherwise discourages investigation into using segmented grill surfaces.
With respect to arguments concerning the Examiner’s proposed
modification, the Examiner responds that it would have been obvious to
arrive at the claimed invention in view of Best, either by: (a) removing grill
plate 20; or by (b) segmenting grill surface 20 and placing insulated gaps
between the segments corresponding to the segmentation and insulation with
3 The Appeal Brief contains a photo and associated argument concerning an
alleged cooking apparatus. See Appeal Br. 6—8. This material is
inadmissible and is not considered in our decision. See 37 C.F.R.
§ 41.37(c)(2) (A brief shall not include any new or non-admitted affidavit or
other evidence).
3
Appeal 2017-002552
Application 14/101,581
Best’s plates 30. Ans. 7. The Examiner considers these modification to be
nothing more than combining prior art elements according to known
methods to yield predictable results, and/or merely a predictable variation of
the prior art. Id. The Examiner considers Best’s use of a continuous cover
plate as relating to the relative advantages and disadvantages of adding a
part to an apparatus. Id. at 8. The Examiner notes one advantage of using
continuous grill plate 20 is that it conceals the insulating layer. Id.4
In reply, Appellant argues that the Examiner’s reasons for modifying
Best as proposed “is based on a mistaken interpretation of Best.” Reply
Br. 3. We disagree.
Best discloses a griddle assembly having discrete cooking zones.
Best, Abstract. Best discloses a plurality of individual, spaced apart, heat
transfer plates disposed beneath a large, unitary, upper cooking surface.
Best, col. 2,11. 45—52. Each heat transfer plate is separated from its adjacent
heat transfer plate by “air gaps or other forms of insulation.” Id. at col. 2,
11. 52—55. The gaps and/or insulation inhibit transfer of heat from one plate
to the next. Id. at col. 2,11. 55—56. The lower heat transfer plates are
aluminum, while the upper cooking surface is stainless steel. Id. at col. 3,
11. 7—26. The aluminum and stainless steel layers are “laminated” in a
manner that Best describes as a “bimetal combination of stainless steel and
aluminum.” Id. According to Best, such combination takes advantage of the
respective material properties of aluminum and stainless steel. Id. Radiant
heaters are employed beneath the heat transfer aluminum blocks. Id. at
4 “Best does not seem to explicitly state the reason for this additional
surface, but one of ordinary skill in the art could surmise that it is to provide
a continuous surface for the user’s benefit, e.g. to cover the gaps.” Ans. 4.
4
Appeal 2017-002552
Application 14/101,581
col. 3,11. 27—29. Separate heaters are used to heat the aluminum blocks
“individually.” Id. Cooking zones exhibit differential heating properties.
Id. at col. 6,11. 18—38. Differential heating is facilitated, in part, by
insulation strips inserted into the air gaps between the adjacent sides of
plates 30. Id. at col. 6,11. 47-49.
The primary difference between Best and Appellant’s invention,
which is the focus of the dispute between Appellant and the Examiner, is
Best’s stainless steel grill plate 20, which is interposed between aluminum
heat transfer blocks 30 and the food which is cooked on the cooking
apparatus. Appellant relies on the size and shape (i.e., not segmented) of
Best’s stainless steel grill plate 30, interposed between aluminum plates 30
and stainless steel plate 20, to argue that Best does not “directly” heat food
on the “top side of the grill plate.” Reply Br. 2. This implicates what it
means to “directly heat food products on said top side” within the meaning
of claim 1,5 Claims App. However, we need not resolve this issue here as
the Examiner’s proposed modification of Best would result in the claim
language being literally satisfied.
Ultimately, disposition of the case revolves around whether it would
have been obvious to a person of ordinary skill in the art to either remove
Best’s stainless steel plate or segment it corresponding to the dimensions of
the underlying aluminum blocks. Having weighed the competing positions
of Appellant and the Examiner, we are persuaded that the Examiner states
the better position. Basically, Appellant argues that an artisan would not
5 Query whether, under Appellant’s interpretation of “directly,” any surface
coating (e.g., Teflon™, paint, or aluminum foil) interposed between the grill
plate and the food would result in “indirectly” heating the food.
5
Appeal 2017-002552
Application 14/101,581
segment Best’s stainless steel plate, because such would not be seen as an
improvement. However, the Examiner adequately explained in the Answer
why a practitioner might choose to either segment the stainless steel plate or
install it as a larger, continuous sheet. Ans. 8. “A given course of action
often has simultaneous advantages and disadvantages.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Such does not
necessarily obviate a motivation to modify a reference. Id. “The fact that
the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.” Winner Int 7 Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
In the end, the issue is not whether Best is better if the stainless steel
surface is segmented or remains whole; the issue is whether segmenting it
would have been obvious to a person of ordinary skill in the art. See Par
Pharm., Inc. v. TWIPharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014)
(obviousness does not require that the motivation be the best option, only
that it be a suitable option from which the prior art did not teach away).
Given that Best already discloses separate heating zones separated by
insulation strips, segmenting the stainless steel upper surface strikes us as
merely a predictable variation of Best. As such, we agree with the Examiner
that it is unpatentable as obvious. See KSR Int 7 Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (predictable variations obvious)
We sustain the Examiner’s unpatentability rejection of claims 1, 2, 5,
and 7—13.
6
Appeal 2017-002552
Application 14/101,581
Unpatentability of Claims 3, 4, and 6
Claim 3, 4, and 6 are rejected over Best in combination with various
secondary references. Final Action 4—5. Appellant does not argue for the
separate patentability of claims 3, 4, and 6. Consequently, we sustain the
rejection of claims 3, 4, and 6. See 37 C.F.R. § 41.37(c)(l)(iv) (failure to
separately argue claims).
Anticipation by Best
In view of our decision to sustain the Examiner’s rejection of all
pending claims, we do not reach the Examiner’s additional anticipation
ground of rejection presented in the Answer.6 See 37 C.F.R. § 41.50(a)(1)
(The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed).
DECISION
The decision of the Examiner to reject claims 1—13 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)(l)(iv).
AFFIRMED
6 See supra note 2.
7