Ex Parte Barber et al

Patent Trial and Appeal Board

Aug 30, 2017

13193891 (P.T.A.B. Aug. 30, 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.
13/193,891 07/29/2011 Judith Barber 2011P00875US 8841
46726 7590 09/01/2017
RS»H Home. Annlianrp.s Pomoratinn
EXAMINER
100 Bosch Boulevard
NEW BERN, NC 28562
SINGH, AMIT K
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUDITH BARBER, GEORGE MAY,
MICHAEL PENUEL, and KEVIN W. SHERBERT
Appeal 2016-003164
Application 13/193,891
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Judith Barber et al. (Appellants)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—18. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is identified as BSH Hausgerate GmbH. Appeal
Br. 3.
Appeal 2016-003164
Application 13/193,891
CLAIMED SUBJECT MATTER
Claims 1 and 15 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A broiler shield for a residential oven, the broiler shield
being configured to be mounted between an upper wall of a
heating cavity of the residential oven and a broiler heating
element located at the top of the heating cavity, and which when
so mounted in an oven, comprises:
a substantially flat central portion;
a front reflecting portion that extends downward from a
front edge of the central portion, the front reflecting portion
including:
a first section that extends downward from the front
edge of the central portion, and
a second section that extends upward and forward
from the first section;
a rear reflecting portion that extends downward from a rear
edge of the central portion, the rear reflecting portion including:
a first section that extends downward from the rear
edge of the central portion, and
a second section that extends upward and rearward
from the first section.
Appeal Br. 14 (Claims App.).
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Appeal 2016-003164
Application 13/193,891
REJECTIONS2’3
I. Claims 1, 10, and 15—17 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Fernandez (US 8,330,080 B2, issued Dec. 11, 2012).
II. Claims 2—9 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fernandez and DeLong (US 7,105,778 Bl, issued Sept.
12, 2006).
III. Claims 12—14 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fernandez and Kaplanis (US 2004/0151484 Al, published
Aug. 5, 2004).
ANALYSIS
Rejection I—Anticipation of Claims 1, 10, and 15—17 by Fernandez
The Examiner finds that Fernandez discloses each and every
limitation of claim 1. See Non-Final Act. 5—6. Particularly, referencing the
Examiner’s annotated version of Figure 3B of Fernandez, which also inverts
Figure 3B, the Examiner finds that Fernandez discloses a broiler shield
comprising a front reflecting portion (14) that extends downward from a
2 A rejection of claims 1—14 and 17 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. See Ans. 10.
3 In the Non-Final Office Action dated March 20, 2015 (hereinafter “Non-
Final Action” or “Non-Final Act.”), the drawings are objected to under 37
CFR § 1.83(a), the Specification is objected to under 37 CFR § 1.75, and
claim 17 is objected to for informalities. See Non-Final Act. 2-4. Claim 17
was amended subsequent to the Non-Final Action, the amendment was
entered, and, therefore, the claim objection is moot. See Adv. Act. dated
Sept. 30, 2015. The Examiner does not indicate the status of the objections
to the drawings and the Specification. However, these two objections are
not within the jurisdiction of the Board. See 37 C.F.R. § 1.181.
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Application 13/193,891
front edge (16) of a central portion (8), and a rear reflecting portion (6) that
extends downward from a rear edge of the central portion (8). Id.', see
Fernandez, Fig. 3B.4 The Examiner finds that the broiler shield of
Fernandez, when inverted, as shown, is capable of being mounted within an
oven with portions extending downward as claimed. Ans. 12. The
Examiner further indicates that the language “mounted in an oven” is found
only in the preamble, and, thus, appears to not give patentable weight to this
language. Id. Additionally, the Examiner asserts that claim 1 can be
interpreted broadly because it does not recite any coordinate system to
determine the direction of “downward,” and, thus, appears to indicate that
front reflecting portion (14) and rear reflecting portion (6) of Fernandez can
extend in any direction from the respective front edge (16) and rear edge of
central portion (8) and still meet the claim limitations. Id. at 12—13.
Appellants contend that because the Examiner rearranged the broiler
shield of Fernandez’s oven, claim 1 is not anticipated by Fernandez. Appeal
Br. 7. Appellants further contend that the Examiner has failed to provide
substantial evidence that Fernandez’s broiler shield could be mounted in the
manner suggested by the Examiner (i.e., inverted), or that Fernandez’s oven
would remain functional with a broiler plate modified to be inverted. Id. at
8. Appellants assert the preamble provides reference with respect to the
remaining features of the claim, i.e., for the claim terms “downward” and
“upward.” Id.
4 The reference numbers are enclosed by parentheses to indicate they are
shown in Fernandez annotated Fig. 3B. See Non-Final Act. 6.
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Application 13/193,891
Appellants’ arguments are persuasive. The Patent and Trademark
Office “determines the scope of claims . . . [by] giving claims their broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005). In this instance, the preamble of claim 1,
when read in light of the Specification, makes it clear which direction is
considered “downward” in the context of the claimed invention. See, e.g.,
Spec. 2, 4, 8—12, Fig. 6. Thus, the Examiner’s determination that claim 1
lacks a reference point to understand the meaning of the claim term
“downward” is unreasonably broad and in error.
To the extent the Examiner is asserting that the recitation “mounted in
an oven” should be given no patentable weight because it appears in the
claim preamble, we note that “[wjhether to treat a preamble as a limitation is
a determination resolved only on review of the entire . . . patent to gain an
understanding of what the inventors actually invented and intended to
encompass by the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks, brackets,
and citation omitted). A preamble may be limiting if it “is essential to
understand limitations or terms in the claim body,” or it “recit[es] additional
structure or steps underscored as important by the specification.” Id. at 808.
Here, the preamble recites, “the broiler shield being configured to be
mounted between an upper wall of a heating cavity of the residential oven
and a broiler heating element located at the top of the heating cavity, and
which when so mounted in an oven,” and the Specification discloses that the
location and orientation of the broiler shield, when mounted in an oven, is an
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Application 13/193,891
essential feature of the operation of the invention (see, e.g., Spec. ]Hf 2, 4, 8—
12, Fig. 6).
Furthermore, the preamble is also essential to understanding the
“downward” direction recited in claim 1, because without understanding that
the broiler shield is configured to be mounted at the recited location, the
orientations of the substantially flat central portion, front reflecting portion,
rear reflecting portion, and their respective sections of the broiler shield, as
recited in the body of the claim, would be ambiguous. Accordingly, we
determine that the preamble of claim 1 must be given patentable weight.
Regarding the Examiner’s statement that the broiler shield of
Fernandez anticipates claim 1 because it is allegedly capable of being
mounted when inverted (Ans. 12), we disagree. “[PJrior art that ‘must be
distorted from its obvious design’ does not anticipate a new invention.” In
re Chudik, 851 F.3d 1365, 1374 (Fed. Cir. 2017) (citing In re Wells, 53 F.2d
537, 539 (CCPA 1931); accord Topliffv. Tofliff 145 U.S. 156, 161 (1892)
(“It is not sufficient to constitute an anticipation that the device relied upon
might, by modification, be made to accomplish the function performed by
the patent in question, if it were not designed by its maker, nor adapted, nor
actually used, for the performance of such functions.” (emphasis added)). In
other words, a prior art reference anticipates a claim only if it discloses all
the elements “in the same form and order as in the claim.” Abbott Labs v.
Sandoz, Inc., 544 F.3d 1341, 1345 (Fed. Cir. 2008).
Fernandez does not disclose or suggest inverting heat reflecting plate
700 in a conventional oven, as the Examiner proposes. See Fernandez,
passim. Indeed, Fernandez discloses that heat directing plate 700 has
associated attachment points 750 and mounting points 780 arranged for
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Application 13/193,891
mounting heat directing plate 700 at the proper location and in the proper
orientation within an oven. Fernandez, Figs. 3 A, 3B. Figure 3B depicts the
location and orientation of the heat directing plate with respect to upper
heating elements 190. The Examiner has not established that the heat
directing plate of Fernandez meets all the claim limitations without
unintended modification to Fernandez’s oven structure.
Further, the Examiner has not provided evidence that heat directing
plate 700 could physically be mounted in an inverted configuration without
negatively interfering with the oven’s function. As Appellants explain,
when the Figure 3B structure is rearranged as proposed by the Examiner,
heat directing plate 700 would block the heat generated by the heating
element from reaching the food under the heat directing plate, which is
opposite to magnifying and reflecting the heat towards food as heat directing
plate 700 is designed to do. See Appeal Br. 8; Fernandez, col. 6,11. 20—26.
Thus, the Examiner’s analysis lacks adequate evidence and reasoning to
establish that Fernandez discloses a broiler shield as required by claim 1.
For these reasons, we do not sustain the rejection of claim 1, and
claim 10 depending therefrom. Claim 15 recites a residential oven
comprising a broiler shield including features similar to the broiler shield in
claim 1. The Examiner’s findings and reasoning for claim 15 are similar to
those for claim 1. Non-Final Act. 7—8. Accordingly, we do not sustain the
rejection of claim 15, and claims 16 and 17 depending therefrom, for the
same reasons as those discussed for claim 1.
Rejection II—Obviousness of Claims 2—9 and 11 over Fernandez and
DeLong
The Examiner’s application of DeLong to the rejection of dependent
claims 2—9 and 11 (Non-Final Act. 10—11) does not cure the deficiencies in
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Application 13/193,891
the rejection of parent claim 1. Thus, we do not sustain the rejection of
claims 2—9 and 11 as unpatentable over Fernandez and DeLong.
Rejection III—Obviousness of Claims 12—14 and 18 over Fernandez and
Kaplanis
The Examiner’s application of Kaplanis to the rejection of dependent
claims 12—14 and 19 (Non-Final Act. 11—13) does not cure the deficiencies
in the rejection of parent claim 1 or 15. Thus, we do not sustain the rejection
of claims 12—14 and 19 as unpatentable over Fernandez and Kaplanis.
DECISION
We reverse the rejections of claims 1—18.
REVERSED
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