Ex Parte Haberkamm et al

Patent Trial and Appeal Board

Nov 8, 2012

11703557 (P.T.A.B. Nov. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAMONA HABERKAMM, AMANDA MEHRING, and KEVIN
W. SHERBERT
____________________

Appeal 2010-010614
Application 11/703,557
Technology Center 3700
____________________

Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ramona Haberkamm et al. (Appellants) appeal under 35 U.S.C. § 134
from a rejection of claims 1 and 4-15. We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2010-010614
Application 11/703,557

2
The Claimed Subject Matter
The claims are related to ovens and oven racks. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An oven rack comprising:
a front member, a rear member, and side
members extending between the front and rear
members;
a grid structure for supporting objects on the
oven rack and being connected to the front, rear
and side members, the rear member being
connected at a left rear corner with a side member
and being connected at a right rear corner with
another side member; and
two rear rails projecting rearwardly and
upwardly from the rear member and a free space
being defined between the rear rails providing
additional clearance for objects supported on the
oven rack, each rear rail being formed of an inner
bar connected to the rear member of the grid
structure, an outer bar connected to the rear
member of the grid structure, and a cross bar
extending to and between the inner and outer bars
and extending substantially parallel to the rear
member of the grid structure, the free space
defined between the rear rails spanning a center of
the rear member of the grid structure, a respective
one of the rear rails being more proximate to the
left rear corner of the grid structure than the other
rear rail and spaced inwardly toward the center of
the rear member of the grid structure from the left
rear corner and the other rear rail being more
proximate to the right rear corner of the grid
structure than the one rear rail and spaced inwardly
toward the center of the rear member of the grid
structure from the right rear corner, and the cross
bars of the two rear rails being rearward of the rear
member of the grid structure.

Appeal 2010-010614
Application 11/703,557

3
The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Chadwick
Hirsch
US 2,671,004
US 3,012,554
Mar. 2, 1954
Dec. 12, 1961

The Examiner made the following rejections:

Claims 1 and 4-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hirsch.
Claims 8-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hirsch and Chadwick.

ANALYSIS
Claim 1
The Examiner concedes that Hirsch fails to meet the following claim
limitations:
a respective one of the rear rails being more proximate to the
left rear corner of the grid structure than the other rear rail and
spaced inwardly toward the center of the rear member of the
grid structure from the left rear corner and the other rear rail
being more proximate to the right rear corner of the grid
structure than the one rear rail and spaced inwardly toward the
center of the rear member of the grid structure from the right
rear corner.
See Ans. 5.
The Examiner summarizes that “the difference between the
Appellant[s’] arrangement and Hirsch’s arrangement is that Appellant[s’]
outer bar 68 is close to the corner of the rack while in Hirsch’s arrangement
the corresponding bar is at the corner of the rack.” Ans. 9. The Examiner
Appeal 2010-010614
Application 11/703,557

4
deems this difference “a matter of obvious design choice.” Ans. 5. In
support of this conclusion, the Examiner finds that different applications of
the oven rack may warrant different amounts of free space between the rear
rails, asserting that this suggests an advantage for some applications to
“spac[e] the rails inwardly to minimize the size of the free space.” Ans. 5.
The Examiner also asserts that the noted difference between the claim and
Hirsch would have been obvious because Appellants’ Specification does not
disclose any advantage to the claimed arrangement of the rear rails spaced
inward of the rear corners. Ans. 9.
Appellants assert that the Examiner has not provided adequate
rationale for his conclusion of obviousness. Appellants suggest that
changing the magnitude of the free space between the inner portions of
Hirsch’s rear rails would not produce the claimed invention because this
would not require spacing the outer portion of Hirsch’s rails inward of the
rear corners. App. Br. 9-10. In response to the Examiner’s other assertion,
Appellants argue 1) that “the relevant tests for patentability do not require a
disclosure in a patent application or specification of a benefit or advantage
of a feature of a claimed invention” (Reply Br. 4) and 2) that locating the
rear rails inward of the rear corners does provide an advantage of clearance
that facilitates moving the oven rack (Id. at 4-6).
Appellants have the better position. As Appellants suggest, one could
decrease the free space between Hirsch’s rear rails by moving the inner edge
of each rear rail inward without moving the outer edges, i.e., by increasing
the distance that each rear rail extends inward from the rear corner. Thus,
the Examiner’s assertion regarding changing the free space between the rear
rails does not squarely address the question of whether it would have been
Appeal 2010-010614
Application 11/703,557

5
obvious to move the outer portions of Hirsch’s rear rails inward from the
rear corners to a position meeting the claim. Additionally, we agree with
Appellants that lack of an explicitly disclosed advantage associated with the
disputed claim limitation does not automatically render the claimed
invention unpatentable as obvious. For these reasons, we cannot sustain the
Examiner’s rejection of claim 1, or of claims 4-7, which depend therefrom.
Claim 8
Appellants argue independent claim 8 and dependent claims 9-14 as a
group. Accordingly, we select claim 8 as representative, and we treat
claims 9-14 as standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner finds that Hirsch discloses an oven rack meeting all of
the limitations of the oven rack recited in claim 8, and that Chadwick
discloses an oven meeting all of the limitations of the oven structure recited
in claim 8. Ans. 6-7. The Examiner further finds that a person of ordinary
skill in the art would have understood that “an oven rack is used in an oven
with a rack support” (Id. at 11), given that Hirsch discloses “it is an object of
the present invention to provide a rack for a kitchen range oven” (Hirsch,
col. 1, ll. 36-37 (emphasis added)). The examiner concludes that it would
have been obvious to combine the disclosures of Hirsch and Chadwick to
arrive at the claimed invention. Id. at 7.
Appellants argue that the Examiner has not articulated a rational
reason that a person of ordinary skill in the art would have combined the
teachings of Hirsch and Chadwick. App. Br. 11-12. Appellants suggest that
a person of ordinary skill in the art would not combine the teachings of the
references because of differences in their oven rack structures, particularly
Appeal 2010-010614
Application 11/703,557

6
differences in the provisions for sliding and stopping the oven racks. Id. at
11. Based on these assertions, Appellants argue that their application
provides the only reason to combine the teachings of the references, and that
the Examiner has resorted to improper hindsight reconstruction. Id. at 11-
12.
We disagree. Consistent with the Examiner’s finding, an oven rack
achieves its primary purpose only when combined with an oven, such that
accomplishing the advantages disclosed by Hirsch requires an oven rack and
an oven. This would have given a person of ordinary skill in the art ample
reason to combine the disclosures of the references in a manner to arrive at
the claimed invention.
Appellants’ statements regarding the differences in the details of
construction and operation of the two references do not persuade us of any
error in the rejection. Appellants characterize Hirsch and Chadwick as
disclosing “vastly different structures,” but Appellants do not explain why
any such differences would have deterred or prevented a person of ordinary
skill in the art from combining the references. To the extent that Appellants
mean to suggest that the differences would have prevented blindly
combining the exact structures disclosed by the references, this would not
establish error in the rejection. See In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (“Combining the teachings of references does not involve an ability to
combine their specific structures.”); In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference”); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
Appeal 2010-010614
Application 11/703,557

7
automaton.”). Accordingly, we sustain the Examiner’s rejection of claim 8,
and of claims 9-14 that fall therewith.
Claim 15
Appellants argue the rejection of claim 15, which depends from claim
1, by asserting that the combination of Hirsch’s oven rack with Chadwick’s
oven fails to meet the above-discussed disputed limitations of claim 1. See
App. Br. 11. With respect to these disputed claim limitations, the
Examiner’s discussion of claim 15 does not include any substantive
reasoning beyond that provided for claim 1. Accordingly, for substantially
the same reasons discussed in connection with the rejection of claim 1, we
cannot sustain the rejection of claim 15.
New Ground of Rejection for Claims 1 and 15
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Chadwick and
Hirsch.
Claim 1
Chadwick discloses an oven rack (25). Chadwick, col. 3, ll. 28-31;
and Fig. 1. The oven rack (25) has a rectangular frame (26) that includes the
claimed features of “a front member, a rear member, and side members
extending between the front and rear members.” Id. at col. 3, ll. 31-35; and
Fig. 1. The oven rack (25) also has elements (28) and a cross member (29)
that meet the claim limitations “a grid structure for supporting objects on the
oven rack and being connected to the front, rear and side members.” Id. at
col. 3, ll. 35-41; and Fig. 1. As Figure 1 shows, the configuration of the
rectangular frame (26) includes the claim limitations of “the rear member
Appeal 2010-010614
Application 11/703,557

8
being connected at a left rear corner with a side member and being
connected at a right rear corner with another side member.”
Chadwick also discloses structure for preventing objects from sliding
off the back of the oven rack 25, specifically a rear rail in the form of a
“cross bar 30.” Id. at col. 3, ll. 41-49; and Fig. 1. Chadwick’s rear rail 30
meets most of the limitations of the claimed “rear rails.” Chadwick’s rear
rail 30 “project[s] . . . upwardly from the rear member” like the claimed rear
rails. See id. at Fig. 1. Chadwick’s rear rail 30 contains two “outer bar[s]
connected to the rear member of the grid structure, and a cross bar
extending” between the two outer bars and “extending substantially parallel
to the rear member of the grid structure.”
Chadwick’s single rear rail 30 does not meet the claim’s recitation of
“two rear rails,” “free space defined between the rear rails providing
additional clearance for objects supported on the oven rack,” or the other
claim limitations attendant to these. But Hirsch’s disclosure would have
made it obvious to a person of ordinary skill in the art to modify Chadwick’s
oven rack to include these features. Hirsch illustrates that providing an open
space in the center rear of an oven rack between upstanding rear rails
provides clearance for objects in this area. See Hirsch, Fig. 1. Additionally,
a person of ordinary skill in the art would have recognized that such spaced
apart upstanding rear rails would serve to prevent objects from sliding off
the rear of the oven rack.
Accordingly, it would have been obvious to split Chadwick’s rear rail
30 into two spaced rear rails by removing a middle portion of the cross bar
and adding inner bars connected to the inner ends of the resulting two
separated cross bars, in order to provide clearance like Hirsch shows for
Appeal 2010-010614
Application 11/703,557

9
objects in the rear center portion of the oven rack. With the outer bars of
Chadwick’s rear rail 30 already disposed inward of the rear corners of the
grid structure, modifying Chadwick’s oven rack (25) in the foregoing
manner would result in an oven rack meeting the claim limitations of “a
respective one of the rear rails being more proximate to the left rear corner
of the grid structure than the other rear rail and spaced inwardly toward the
center of the rear member of the grid structure from the left rear corner and
the other rear rail being more proximate to the right rear corner of the grid
structure than the one rear rail and spaced inwardly toward the center of the
rear member of the grid structure from the right rear corner.”
Regarding the limitations in claim 1 related to the rear rails projecting
rearwardly, Chadwick does not explicitly disclose whether its rear rails
project rearwardly as they project upwardly. Hirsch demonstrates that it was
known in the art to configure an oven rack with “two rear rails projecting
rearwardly and upwardly from the rear member” with “the cross bars of the
two rear rails being rearward of the rear member of the grid structure,” as
recited in claim 1. See Hirsch, Figs. 1 and 3. Accordingly, a person of
ordinary skill in the art would have recognized this as an obvious choice for
the geometry of Chadwick’s oven rack when modified to include two rear
rails. Adopting these features of Hirsch in the modified Chadwick oven rack
would have involved no more than employing a known design with
predictable results. With these modifications, Chadwick’s oven rack would
meet all of the limitations of claim 1.
Claim 15
When modified in the manner discussed above, Chadwick’s oven rack
would also meet the limitations of claim 15. Chadwick’s oven rack is
Appeal 2010-010614
Application 11/703,557

10
“operable to be movably supported on side wall support rails of an oven,” as
recited in claim 1. Chadwick, col. 3, ll. 28-31; and Fig. 1. Additionally, as
generally discussed above, the modified Chadwick rack would have its “two
rear rails spaced inwardly from the respective right and left rear corners of
the grid structure” with the outer bars of the rear rails in the same locations
as shown in Figure 1 of Chadwick. Furthermore, Figure 1 of Chadwick
illustrates that this positioning of the rear rails would allow them “to clear
the side wall support rails of an oven during movement of the oven rack
outwardly of the oven or inwardly of the oven.”

DECISION
We affirm the Examiner’s decision regarding claims 8-14.
We reverse the Examiner’s decision regarding claims 1, 4-7, and 15.
We enter a new ground of rejection for claims 1 and 15.

FINALITY OF DECISION
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months of
the date of the original decision of the Board.” In addition to affirming the
Examiner's rejection of one or more claims, this decision contains new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
Appeal 2010-010614
Application 11/703,557

11
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

Klh