Ex Parte York

Patent Trial and Appeal Board

Aug 5, 2016

11973949 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111973,949 10/11/2007 Diana L. York
22858 7590 08/05/2016
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
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.
JYORK.00002 3998
EXAMINER
ROSS, DANA
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
08/05/2016 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 DIANA L. YORK
Appeal2014-003679
Application 11/973,949
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Diana L. York (Appellant) 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision finally rejecting claims 1-20 and 23.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies the named inventor, Diana L. York, as the real
party in interest. Appeal Br. 2.
2 Claims 21 and 22 are objected to as being dependent on claims that stand
rejected, but are indicated as containing allowable subject matter. Ans. 10.
Appeal2014-003679
Application 11/973,949
CLAIMED SUBJECT MATTER
Appellant's invention "generally relates to cooking pots of various
types and more particularly to accessory devices for cooking a plurality of
foods in separate trays within one type of cooking pot called a slow cooker."
Spec. 1, 11. 3-5. Claims 1, 13, and 16 are independent. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. An adapter for a slow cooker, the slow cooker having a
bottom and walls defining an upper rim, and heating elements
embedded in the walls and bottom, comprising:
a single tray having one or more basins for food items
defined there within and further having a perimeter cross section
configured to fit the upper rim of the slow cooker when the tray
is placed thereon, and further configured to receive a cover
placed upon the tray;
wherein a tray closure seal is formed between the tray and
the upper rim of the slow cooker and wherein a cover closure seal
is formed between the cover and the tray.
Appeal Br. 21 (Claims App.).
REJECTIONS
I. Claims 1-12 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1, 3-8, 11, and 12 are rejected under 35 U.S.C. § 102(b)
as anticipated by Minamigawa (US 6,964,224 B2, issued Nov. 15, 2005).
III. Claims 1, 3-8, 11, and 12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Minamigawa and You (US 6,963,051 B2, issued Nov.
8, 2005).
IV. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Minamigawa and Li (US 6,884,971 B2, issued Apr. 26, 2005), or,
alternatively, over Minamigawa, You, and Li.
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V. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Minamigawa and Chen (US 5,092,229, issued Mar. 3,
1992), or, alternatively, over Minamigawa, You, and Chen.
VI. Claims 13, 19, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lederman (US 4,646,628, issued Mar. 3, 1987) and
Barrow (US 6,373,031 B2, issued Apr. 16, 2002).
VII. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lederman, Barrow, and Hlava (US 6,274,847 Bl, issued
Aug. 14, 2001 ).
VIII. Claims 16 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lederman, Barrow, and Chen.
IX. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lederman, Barrow, and Li.
ANALYSIS
Rejection I
Claim 1 recites "an adapter for a slow cooker." Appeal Br. 21
(Claims App.) (emphasis added). The Examiner finds that the term "for" is
indefinite, and that "the claim language ... 'for a slow cooker' ...
introduc[es] ambiguity as to the true meaning of the specific structural
limitations with respect to 'the slow cooker."' Final Act. 2. According to
the Examiner, one of ordinary skill in the art would be unable to understand
whether the claimed adapter includes the elements of the slow cooker in the
preamble, or whether claim 1 pertains to "a single tray" having the recited
"one or more basins for food items" and "'a perimeter cross section' that can
rest on 'the upper rim of the slow cooker' and is somehow 'configured to
receive a cover placed upon the tray'; the afore mentioned elements must
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Application 11/973,949
form, some sort of a seal between them where and/or when in contact." Ans.
11. The Examiner finds that the meets and bounds of the claimed invention
are not clear. Id.
Appellant responds that claim 1 defines the adapter with structural
features that reference structural features of the slow cooker. Appeal Br. 6-
7. Appellant states that its "claim strategy is no different than that used by
the patentee in Praxair, who defined the port body with reference to an
outlet of a pressurized tank that was never itself introduced as a claim
limitation."3 Id. at 6 (emphasis added).
We construe claim 1 as being directed to an adapter, not a
combination of an adapter and a slow cooker. Recitation of the term "for" in
the preamble does not make claim 1 indefinite. Rather, "for" signals an
intended use of the adapter, that is, "for [use with] a slow cooker." The
preamble further recites structural features of the slow cooker (i.e., "a
bottom and walls defining an upper rim, and heating elements embedded in
the walls and bottom") that the adapter is used with. We construe the
claimed adapter to not include any of the structural features of the slow
cooker recited in the preamble. We find that the meets and bounds of claim
1 are sufficiently clear and would be understood by one of ordinary skill in
the art. Accordingly, we do not sustain the rejection of claims 1-12 under
35 U.S.C. § 112, second paragraph.
Rejection II
Claim 1 recites that "a tray closure seal is formed between the tray
and the upper rim of the slow cooker and wherein a cover closure seal is
3 Praxair, Inc. v. ATML Inc., 543 F.3d 1306 (Fed. Cir. 2008).
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Application 11/973,949
formed between the cover and the tray." Appeal Br. 21 (Claims App.)
(emphases added).
The Examiner finds that Minamigawa discloses tray 7 having a
perimeter cross section configured to fit the upper rim of slow cooker 1
when tray 7 is placed thereon, and further configured to receive cover 3
"placed upon the tray" 7, wherein both the recited "tray closure seal" and
"cover closure seal" are formed. Final Act. 3 (citing Minamigawa, Fig. 2).
Figure 2 of Minamigawa depicts a double boiler including cooking
stove 4, outer pan 1, inner pan 2, and upper lid 3. See Minamigawa, col. 4,
11. 7-10. Flange 7 of inner pan 2 fits on outer pan 1, and lower end portion
12 of upper lid 3 is supported by peripheral edge portion of outer pan 1. See
id. at col. 4, 11. 50-55; Fig. 2.
Appellant contends, inter alia, that Minamigawa discloses that upper
lid 3 forms a closure seal with outer pan 1, not with inner pan 2. Appeal Br.
8-9 (citing Minamigawa, col. 4, 11. 50-58). Appellant contends that this
structure makes it impossible to form separate closure seals between the
inner pan and the outer pan, and between the inner pan and the cover. Id. at
9; see also Reply Br. 1-2. The Examiner responds that "[a]s shown in Fig. 2
[ofMinamigawa], the tray is sealed where the tray and the upper rim of the
outer body meet and between the cover and the tray; both of the 'closure
seals' have been disclosed by Minamigawa." Ans. 11.
The intended use of the adapter recited in claim 1 relates to its
function. In regard to the prior art, "the absence of a disclosure relating to
function does not defeat [a] finding of anticipation. It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable." See In re Schreiber, 128 F.3d 1473, 1477 (Fed.
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Cir. 1997) (emphasis added). However, it is incumbent upon the Examiner
to show "reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art," in order to shift the burden to
Appellant to show that the prior art does not possess that characteristic. Id.
(quoting Jn re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
We agree with Appellant that the Examiner has not established that
Minamigawa discloses the claimed "cover closure seal." Appellant's
Specification describes the meaning of a "closure seal," as follows:
The term "closure seal" is used to define the conformal contact
relationship between the cover 14 and the rim 18 of the slow
cooker 25 or the rim 28 of the adapter tray 22. This term may
also refer to the conformal contact relationship between the
adapter tray 22 and the rim 18 of the slow cooker. Thus, a
closure seal is formed by the lower and upper surfaces of the
perimeter of the tray respectively between the tray and the upper
rim of the slow cooker and between the cover and the tray. The
closure seal betv,reen the adapter tray 22 and the rim 18 of the
slow cooker 25 will be referred to as the tray closure seal 38.
Similarly, the closure seal between the cover 14 and the rim 18
of the slow cooker or the cover 14 and the rim 28 of the adapter
tray 22 will be referred to as the cover closure seal 3 6.
Spec. 12, 11. 13-21 (emphases added); see also id. at Fig. 3.
The Examiner does not identify a "conformal contact relationship"
between inner pan 2 and upper lid 3 in Minamigawa. Indeed, Figure 2 of
Minamigawa shows that upper lid 3 and inner pan 2 do not have a
"conformal contact relationship." Consequently, the Examiner does not
show Minamigawa discloses a "cover closure seal" between inner pan 2 and
upper lid 3, as this claim term is defined in Appellant's Specification.
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For these reasons, we do not sustain the rejection of claim 1, and
claims 2-12 depending therefrom, as anticipated by Minamigawa.
Rejection III
Appellant argues claims 1, 3-8, 11, and 12 as a group in contesting
this rejection. See Appeal Br. 10-14. We select claim 1 as representative of
the group, and claims 3-8, 11, and 12 stand or fall with claim 1. See 3 7
C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Minamigawa discloses the claimed adapter
except for not explicitly disclosing that the tray receives the cover to form a
tray closure seal. Final Act. 4. The Examiner finds that You discloses tray 2
that receives cover 1 to form a tray closure seal therebetween. Id. The
Examiner concludes that it would have been obvious to modify the tray of
Minamigawa to receive You' s cover as disclosed by You to form a tray
cover seal. Id.
Appellant contends that it would not have been obvious to modify
Minamigawa to result in the claimed invention. Appeal Br. 12. Appellant
acknowledges that "Minamigawa does disclose that after the lid is removed
from its double boiler, the position of the inner pan can be shifted to close
the vapor spouts and prevent the loss of moisture from the outer pan while
the tofu is removed from the inner pan." Appeal Br. 13 (emphasis added);
see Minamigawa, col. 6, 11. 49-53; Fig. 8. However, Appellant contends that
"Minamigawa never discloses that the inner pan is positioned such that the
vapor spouts are closed while the lid is also closed." Appeal Br. 13.
Appellant also contends that it would not have been obvious to
modify Minamigawa in view of You because this would render
Minamigawa inoperable for its intended purpose. Id. at 14. Appellant
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contends that steam vents between the upper compartment and lower
compartment are necessary to the functioning of Minamigawa. Id.
Appellant's contentions are not persuasive. Appellant acknowledges
that Minamigawa's inner pan can be used with the vapor spouts closed to
prevent the loss of the moisture from the outer pan. Id. at 13. In using the
inner pan this way, a seal would be formed between the inner pan and the
outer pan. This seal would be provided by having a "conformal contact
relationship" between the outer pan and inner pan, and would correspond to
a "tray closure seal," as claimed.
Also, Appellant acknowledges that Minamigawa's upper lid 3 forms a
closure seal with the outer pan 1. Appeal Br. 13-14. Although upper lid 3
does not form a closure seal with inner pan 2 in Figure 2, we agree with the
Examiner that it would have been obvious to modify inner pan 2 to receive
the cover as shown in You to form a tray cover seal between the tray and the
cover. Final Act. 4. Alternatively, it would have been obvious to modify
upper lid 3, or simply substitute an upper lid 3 having a smaller diameter
than shown in Figure 2, that forms a tray cover seal with inner pan 2 "to
form a tray closure seal between the tray and the cover," as shown in You.
Id.
Minamigawa discloses:
On the other hand, protrusions 17 capable of covering the
plurality of vapor spouts 16 are formed on the outer periphery of
the flange 7 of the inner pan 2, and by setting the inner pan 2 such
that the protrusions 17 meet the vapor spouts 16, the vapor spouts
16 may be closed. This operation can be safely performed also
during heating by slightly rotating the inner pan 2.
Minamigawa, col. 6, 11. 42--48 (emphasis added). Modifying Minamigawa
in view of You to provide a cover closure seal between upper lid 3 and outer
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pan 2 would not render Minamigawa inoperable for uses of Minamigawa's
double boiler where steam flow from within outer pan 1 to the upper space
of inner pan 2 is not needed or desired. Moreover, even if the benefit of
using steam flow from within outer pan 1 to the upper space of inner pan 2
for some uses of Minamigawa's double boiler is lost by the proposed
combination with You, we do not agree that this would render the
Examiner's rationale for modifying Minamigawa inadequate. In this regard,
claim 1 does not require the benefit of using steam flow taught by
Minamigawa. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016)
("As the Board properly found, one of ordinary skill would have been
motivated to pursue the desirable properties taught by Wong, even if that
meant foregoing the benefit taught by Gross. And Urbanski' s claims do not
require Gross's benefit that is arguably lost by combination with Wong.").
Weighing the benefits lost and gained, we agree with the Examiner that it
would have been obvious to modify Minamigawa to form a seal as proposed.
See Final Act. 4.
For the above reasons, we sustain the rejection of claim 1, and claims
3-8, 11, and 12, which fall with claim 1, as unpatentable over Minamigawa
and You.
Rejection IV
Minamigawa and Li
As discussed above, the Examiner rejects claim 1 as anticipated by
Minamigawa (Rejection II) and, additionally, as unpatentable over
Minamigawa and You (Rejection III). However, we do not sustain the
anticipation rejection of claim 1, and the Examiner does not reject claim 1 as
being obvious over Minamigawa alone. The Examiner's application of Li to
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claim 2 does not cure the deficiencies of the anticipation rejection of claim
1. Final Act. 5. Consequently, we do not sustain the rejection of claim 2 as
unpatentable over Minamigawa and Li.
Minamigawa, You, and Li
For the rejection of claim 2 as unpatentable over Minamigawa, You,
and Li, Appellant merely relies on the dependency of claim 2 from claim 1
for patentability. Appeal Br. 14. As Appellant does not apprise us of any
deficiency in the rejection of claim 1 over Minamigawa and You, we sustain
the rejection of claim 2 as unpatentable over Minamigawa, You, and Li for
the same reasons as for the rejection of claim 1 over Minamigawa and You.
Rejection V
Minamigawa and Chen
Claims 9 and 10 depend from claim 1. Similar to our analysis above
for Rejection IV, the Examiner's application of Chen to the rejection of
claims 9 and 10 does not address the deficiencies of the anticipation
rejection of claim 1 based on Minamigawa. Final Act. 5---6. Consequently,
we do not sustain the rejection of claims 9 and 10 as unpatentable over
Minamigawa and Chen.
Minamigawa, You, and Chen
For the rejection of claims 9 and 10 as unpatentable over
Minamigawa, You, and Chen, Appellant merely relies on the dependency of
these claims from claim 1 for patentability. Appeal Br. 14. As Appellant
does not apprise us of any deficiency in the rejection of claim 1 over
Minamigawa and You, we sustain the rejection of claims 9 and 10 as
unpatentable over Minamigawa, You, and Chen for the same reasons as for
the rejection of claim 1 over Minamigawa and You.
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Re} ection VI
Independent claim 13 recites, inter alia, "each tray includes a ...
straight inside wall ... , the inside wall further including at a first location a
laterally extending lifting loop protruding therefrom and a laterally
extending indentation in the inside wall at a second location adjacent to the
loop." Appeal Br. 23 (Claims App.) (emphases added).
The Examiner finds that Lederman discloses first and second trays 14
each having an inside wall 40 including a laterally extending lifting loop 46
and/or 32 and a laterally extending indentation 50, such that the loop of one
tray is received within the indentation of a second tray when the first and
second trays are nested together. Final Act. 6.
Appellant contends that Lederman's "loop 46 does not extend
laterally, but instead extends upward[ly] or vertically," and that Lederman
does not disclose the claim limitations of "a laterally extending indentation
in the inside wall at a second location adjacent to the loop" and "the loop of
one tray is received within the indentation of a second tray when the first
and second trays are nested together." Appeal Br. 15-16.
Appellant's contentions are persuasive. Even assuming that
Lederman's ears 46 correspond to the claimed "laterally extending lifting
loop," and Lederman's holes 50 correspond to the claimed "laterally
extending indentation," it is not apparent how, in Lederman, "the loop of one
tray is received within the indentation of a second tray when the first and
second trays are nested together," as claimed. Lederman's Figure 3, for
example, shows that holes 50 are provided in ears 46. Figures 1 and 4 of
Lederman show that ears 46 extend parallel to each other when the cooking
utensil is assembled. Ears 46 are not received in holes 50.
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Application 11/973,949
The Examiner also has not explained how Lederman's radial arms 32
of wire rack 16 correspond to the claimed "laterally extending lifting loops."
We note, for example, that radial arms 32 are not part of "trays" 14, but
rather, are part of rack 16.
Accordingly, we do not sustain the rejection of claims 13, 19, and 23
as unpatentable over Lederman and Barrow.
Rejections VII and IX
Claims 14, 15, 17, and 18 depend, directly or indirectly, from claim
13. The Examiner's application of Hlava to Rejection VII and Li to
Rejection IX (see Final Act. 7-9) does not cure the deficiencies of the
rejection of claim 13 over Lederman and Barrow. Accordingly, we do not
sustain the rejection of claims 14 and 15 as unpatentable over Lederman,
Barrow, and Hlava, and the rejection of claims 17 and 18 as unpatentable
over Lederman, Barrow, and Li.
Rejection VIII
Claim 16
Appellant contends that claim 16 depends from claim 13, and thus, is
also patentable for this reason. Appeal Br. 19.
However, we construe claim 16 as an independent claim directed to a
handle. Appeal Br. 23 (Claims App.). Claim 16 recites the intended use of
the handle, that is, "for lifting a tray of the adapter assembly of claim 13" in
the preamble, but does not incorporate the limitations from claim 13 into the
body of the claim. Id. Appellant does not address the Examiner's
combination relied on in the rejection. Final Act. 7-8; see Appeal Br. 19.
Particularly, Appellant does not provide any argument as to why Chen does
not disclose the claimed V-shaped tong. Consequently, Appellant does not
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apprise us of any error in the rejection. Thus, we sustain the rejection of
claim 16 as unpatentable over Lederman, Barrow, and Chen.
Claim 20
Claim 20 depends from claim 13. The Examiner's application of
Chen (see Final Act. 7-8) does not cure the deficiencies of the rejection of
claim 13 over Lederman and Barrow. Accordingly, we do not sustain the
rejection of claim 20 as unpatentable over Lederman, Barrow, and Chen.
DECISION
We reverse the rejection of claims 1-12 under 35 U.S.C. § 112,
second paragraph.
We reverse the rejection of claims 1, 3-8, 11, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Minamigawa.
We affirm the rejection of claims 1, 3-8, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Minamigawa and You.
We reverse the rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Minamigawa and Li.
We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Minamigawa, You, and Li.
We reverse the rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Minamigawa and Chen.
We affirm the rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Minamigawa, You, and Chen.
We reverse the rejection of claims 13, 19, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Lederman and Barrow.
We reverse the rejection of claims 14 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Lederman, Barrow, and Hlava.
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We atlirm the rejection of claim 16, and reverse the rejection of claim
20, under 35 U.S.C. § 103(a) as unpatentable over Lederman, Barrow, and
Chen.
We reverse the rejection of claims 17 and 18 under 35 U.S.C. § 103(a)
as unpatentable over Lederman, Barrow, and Li.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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