Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardOct 13, 201713391080 (P.T.A.B. Oct. 13, 2017) Copy Citation 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. 13/391,080 05/21/2012 Edward Lee 7137US01 8376 30173 7590 10/17/2017 Diederiks & Whitelaw, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 10/17/2017 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): gmi.mail@dwpatentlaw.com mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD LEE, MU AN ZHU, DERONG WANG, GREGORY C. VARGAS, MICHAEL P. WALDHERR, and CHRISTOPHER J. FIELD1 Appeal 2016-002051 Application 13/391,080 Technology Center 1700 Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and AVELYN M. ROSS, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 3, 4, 6—9, and 12—14.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is General Mills, Inc. App. Br. 3. 2 The “Office Action Summary” attached to the Final Action lists claim 11 as being subject to the Final Action. Claim 11, however, was previously withdrawn and is not the subject of the rejections maintained on Appeal. See, e.g., Claims dated January 2, 2014; Ans. 2—9. Appeal 2016-002051 Application 13/391,080 BACKGROUND The subject matter on appeal relates to a device for producing dumplings. E.g., Spec. 1:5—6; Claim 3. Claim 3 is reproduced below from page 25 (Claims Appendix) of the Appeal Brief: 3. A dumpling producing device comprising: a cutting mechanism that includes a cutting unit and a rotating unit, wherein the rotating unit is configured to rotate a dumpling wrapper cut by the cutting unit relative to a dumpling die. REJECTIONS ON APPEAL3 1. Claims 3, 4, 6, and 12 stand rejected under 35 U.S.C. § 102(b) as anticipated by Bortone (US 7,293,974 B2, issued Nov. 13, 2007). 2. Claims 3, 4, 6—9, and 12—14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Huang (US 4,160,634, issued July 10, 1979). ANALYSIS Rejection 1 Largely for reasons set forth by the Appellants, see App. Br. 6—9, we reverse the rejection. With respect to the limitation, “wherein the rotating unit is configured to rotate a dumpling wrapper cut by the cutting unit relative to a dumpling die,” the Examiner determines: The shaft, the motor and the positioning device [of Bortone] make up the rotating unit and is configured to rotate relative to a die. The dumpling die as claimed is just a die because there is 3 In the Examiner’s Answer, the Examiner withdraws rejections under 35 U.S.C. § 112,111 and 2. Ans. 4. 2 Appeal 2016-002051 Application 13/391,080 no limitation in the claim to define it as a dumpling die. The limitation of dumpling wrapper cut by the cutting unit and the angle formation are intended use of the device which does not determine its patentability. Ans. 2—3. The Examiner further explains: “The limitation on the function of ‘to rotate a dumpling wrapper’ is an intended use and a function based on the intended use does not determine the patentability of the apparatus. Furthermore, Bortone discloses the same structures; thus, it is inherent the structures can give the same function.” Id. at 5. That rationale is not persuasive. Although we agree with the Examiner that the disputed limitation is a functional limitation, to the extent that functional limitations imply structure, they cannot be ignored. See, e.g., Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x 23, 28 (Fed. Cir. 2012) (“In certain circumstances functional language may be used to add limitations to an apparatus claim.”) (citing K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (“[T]he functional language tells us something about the structural requirements . . . .”)). By its plain language, claim 3 requires a rotating unit that is structurally capable of “rotating] a dumpling wrapper cut by the cutting unit relative to a dumpling die,” such as the rotating unit described by the Appellants’ Specification. See, e.g., Spec. 10:5-11; Fig. 7. Although the Examiner finds that “Bortone discloses the same structures [as the claim]; thus, it is inherent the structures can give the same function,” Ans. 5, the Examiner identifies no structure in Bortone that might be capable of rotating a dumpling wrapper relative to a dumpling die. The Examiner correctly explains that Bortone’s nicking blade 40 and shaft 44 rotate relative to a die. See Bortone Fig. 5; Ans. 2, 5. But that does not 3 Appeal 2016-002051 Application 13/391,080 establish anticipation of claim 3, which requires a rotating unit that is structurally capable of rotating a wrapper—not a blade or a shaft—relative to a die. The Examiner states that, “if a sheet of dough is coming out of the die, it can be cut and rotated relative to the die.” Ans. 5. But the Examiner provides no citation to Bortone for support, see id., and it does not appear that any portion of Bortone’s cutting mechanism would be structurally capable of achieving the recited function. See Bortone Fig. 5. Accordingly, on this record, a preponderance of the evidence does not support the Examiner’s rejection of claim 3. We reverse the rejection. Because the other claims subject to Rejection 1 depend, directly or indirectly, from claim 3, and the Examiner’s rejection of those claims does not remedy the error identified above, we likewise reverse the Examiner’s rejection of those claims. Rejection 2 For similar reasons, we reverse the Examiner’s rejection of claim 3 under the rationale set forth in Rejection 2. The Examiner finds that Huang’s “upper die can rotate about axes” and that “Huang does disclose a cutting unit and a rotating unit relative to the die.” Ans. 6—7. That, however, is not enough to establish anticipation. Claim 3 requires a rotating unit that is structurally capable of rotating a wrapper relative to a die. The mere fact that a portion of Huang’s die itself is rotatable, see Huang at 3:28— 33, does not establish that Huang’s rotating die is capable of rotating a dumpling wrapper relative to the die. If the dumpling wrapper rotates at all in Huang, it would rotate with the die before it is cut; not relative to the die after it is cut. See, e.g., Huang Fig. 4. The Examiner acknowledges that the 4 Appeal 2016-002051 Application 13/391,080 rotation of Huang is different from the claimed rotation. See Ans. 7 (“the units of Huang may rotate about a different axis than appellant intends”). The Examiner has not carried the Examiner’s burden of proving by a preponderance of the evidence that Huang’s rotating unit is structurally capable of carrying out the claimed function. Accordingly, we reverse the Examiner’s rejection of claim 3. Because the other claims subject to Rejection 2 also require structure capable of rotating a dumpling wrapper relative to a dumpling die, either directly or through claim dependencies, and the Examiner’s rejection of those claims does not remedy the error identified above, we likewise reverse the Examiner’s rejection of those claims. CONCLUSION We REVERSE the Examiner’s rejections of claims 3, 4, 6—9, and 12— 14. REVERSED 5 Copy with citationCopy as parenthetical citation