Ex Parte Lee et al

Patent Trial and Appeal Board

Oct 13, 2017

13391080 (P.T.A.B. Oct. 13, 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.
13/391,080 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withdrawn and is not the subject of the rejections maintained on Appeal.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