Ex Parte Yingst et al

Board of Patent Appeals and Interferences

Sep 27, 2010

11013813 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS E. YINGST and FREDERICK A. DELUCA
____________

Appeal 2009-013440
Application 11/013,813
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-013440
Application 11/013,813

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 33 to 53. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b) (2002).
We AFFIRM-IN-PART.
BACKGROUND
Appellants’ invention is directed to a product server for holding and
displaying products (Spec., para. [0002]).
Claim 33 is illustrative:
33. A product server for holding and
displaying food products, the product server
comprising
a front customer side,
a rear employee side,
a cabinet having a food preparation surface
adjacent the employee side of the product server
for the preparation of food orders,
a breath guard pivotally attached to said
product server generally near said front customer
side of the product server for movement between a
lowered generally horizontal position covering
said food products held by the product server and a
raised position,
said breath guard having a breath guard
configuration such that when it is in said raised
position it provides a barrier to contamination of
the food products by customers on the customer
side of the product server while allowing access to
said food products by employees on the employee
side of the product server,
the breath guard being sufficiently
transparent to allow viewing of the food products
from the customer side of the product server, and
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wherein when the breath guard is pivoted
toward said raised position it extends from
generally near said front customer side of the
product server in an upward direction toward the
rear employee side of the product server for
allowing access to said food products from the
employee side of the product server.

Appellants appeal the following rejections:
Claims 33 to 40 and 42 to 53 under 35 U.S.C. § 103(a) as
unpatentable over Perzon (US 6,141,984, iss. Nov. 7, 2000) in view of
Rhoads (US Des. 188,719, iss. Aug. 30, 1960).
Claim 41 under 35 U.S.C. § 103(a) as unpatentable over Perzon in
view of Rhodes and Topper (US 6,547,346 B2, iss. Apr. 15, 2003).

ISSUES
Did the Examiner err in rejecting the claims because Perzon does not
disclose product server having a breath guard, an employee side, and a
customer side?
Did the Examiner err in rejecting the claims because there would have
been no reason to incorporate a food preparation surface in the Perzon
device?

PRINCIPLES OF LAW
The manner or method in which a machine is to be utilized is not
germane to the issue of patentability of the machine itself. In re Casey, 370
F.2d 576, 580 (CCPA 1967).

Appeal 2009-013440
Application 11/013,813

4
FACTUAL FINDINGS
We adopt all of the Examiner’s findings as our own. (Ans. 4 to 7).

ANALYSIS
The Appellants’ argument that Perzon does not disclose a breath
guard as claimed is unconvincing. Appellants are correct that Perzon does
not disclose that cover 2 is a breath guard, this is not determinative of
patentability as long as cover 2 can function as a breath guard. This cover 2
can clearly do.
We have considered the evidence filed by the Appellants and do not
find this evidence convincing of patentability.
Appellants have filed a declaration executed by Gregory K. Swanson
and a copy of Standard Number 2. The declaration of Gregory K. Swanson
states that a skilled person would understand that a breath guard must be
configured in a structural way to meet industry standards and Standard
Number 2 states that food shields shall effectively shield unpackaged food to
intercept the direct line between the customer’s mouth and the displayed
food. This evidence is not probative of the patentability of the appealed
claims because the claims do not recite the structural elements of the breath
guard or the industry standard for the breath guard.
We also note that the Appellants have not directed our attention to a
specific definition of a breath guard in Appellants’ disclosure. We are also
not convinced that the covers 2 could not function as a breath guard because
they rise to a height which is insufficient to intersect the line from the mouth
of an average customer because the Appellants have not directed our
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attention to anything in the Perzon disclosure that indicates that the height is
insufficient. In addition, Perzon’s invention is directed to counters with
goods therein to be sold which is easily accessible to the customer which
suggests that the counter is of the height sufficient to function as a breath
guard (col. 1, ll. 9 to 11).
In regard to Appellants’ argument that Perzon’s freezer does not have
an employee side and a customer side, we agree with the Examiner that
which side is the customer’s side and which side is the employee is not
pertinent to the patentability of the claims as this too relates to how the
device is used. In addition, a person of ordinary skill in the art could
designate the device as desired.
In addition, Appellants also argue there is no motivation or suggestion
to combine the references in the manner suggested. To the extent Appellants
are looking for an explicit motivation, suggestion, or teaching in the art, this
rigid test has been foreclosed by the Supreme Court's recent holding in KSR
Int'l Co. v. Teleflex Inc., 550 U.S 398 (2007). In KSR, the Court
characterized the teaching, suggestion, motivation test as a “helpful insight”
but found that when it is rigidly applied, it is incompatible with the Court’s
precedents. KSR, 550 U.S. at 418-19. The holding in KSR makes clear that
it is no longer absolutely necessary to find motivation in the references
themselves. See KSR, 550 U.S. at 418-19.
In any case, we agree with the Examiner that as Perzon’s freezer is
accessible to customers and Rhoads depicts a counter adjacent service
receptacles, a person of ordinary skill in the art would have been motivated
to include the Rhoads’s counter in the Perzon’s freezer so that there would
be a resting place for articles prior to being placed in the freezer or after the
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customer retrieves the articles from the freezer. In addition, the
incorporation of the Rhoads’s counter in the Perzon freezer is no more than
the predictable use of prior art elements according to their established
functions. KSR, 550 U.S. at 417.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 33. We will also sustain the rejection of claims 38 because the
Appellants have not argued the separate patentability of these claims.
In regard to Appellants’ argument directed to claim 34, we agree with
the Examiner that a person of ordinary skill in the art would have found it
obvious to use either a single cover or multiple partial covers as this would
have been no more than choosing from a finite number of identified
predictable solutions with a reasonable expectation of success. Id. at 421.
Therefore, we will sustain the Examiner’s rejection of claim 34
We agree with the Examiner that Rhoads discloses a plurality of food
pans and thus we will sustain the Examiner’s rejection of claim 35.
We agree with the Examiner that Rhoads discloses an upper frame
and upright side panels and thus we will sustain the rejection as it is directed
to claims 36.
We are not persuaded of error on the part of the Examiner in rejecting
claim 39 by Appellants’ argument that neither Perzon nor Rhoads discloses a
breath guard configured such that in its lowered position it overlies the food
pans but not the food preparation surface. Perzon discloses a breath guard
that overlies the food compartment when closed and Rhoads discloses a
surface that can be used for food preparation adjacent to but not overlying
food pans. We note that an applicant cannot show non-obviousness by
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attacking references individually where, as here, the rejections are based on
a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
We will sustain the Examiner’s rejection of claim 43 for the reasons
given in our discussion of claim 33. We additionally note that Perzon
discloses a refrigeration system housed in the cabinet (col. 1, ll. 1 to 8).
We will sustain the Examiner’s rejection of claim 48 for the same
reason as discussed above in regard to claim 43 and in addition because we
agree with the Examiner that Rhoads discloses a breath guard which in its
raised position is disposed below the top shelf.
The remaining claims, with the exception of claims 51 to 53, recite
various combinations of the features discussed above and we will therefore
sustain the Examiner as to these claims for the reasons discussed above.
We will not sustain the Examiner’s rejection of claims 51 to 53
because the Examiner has not found that either Perzon or Rhoads discloses
the steps of claim 51 from which claims 52 to 53 depend. Specifically, the
Examiner has made no finding of fact related to the steps of “preparing a
food order on the food preparation surface” and “moving the breath guard to
said lowered position after said food order has been prepared.”

DECISION
We AFFIRM the Examiner’s § 103(a) rejection of claims 33 to 50.
We REVERSE the Examiner’s § 103(a) rejection of claims 51 to 53.
Appeal 2009-013440
Application 11/013,813

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TIME PERIOD
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)(1) (2007).

AFFIRMED-IN-PART

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