Ex Parte Leikam et al

Patent Trial and Appeal Board

Aug 30, 2017

12937785 (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.
12/937,785 10/14/2010 Jurgen Leikam AEG-47104 5770
116 7590 09/01/2017
PFARNF fr GORDON T T P
EXAMINER
1801 EAST 9TH STREET LAU, JASON
SUITE 1200
CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER
3743
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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN LEIKAM, THEO HAUER, and
ALWIN NEUKAMM
Appeal 2015-006188
Application 12/937,785
Technology Center 3700
Before STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and
THOMAS F. SMEGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jurgen Leikam et al (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejections2 of claims 1—11.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART and enter a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Electrolux Home
Products Corporation N.V. Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated July 17, 2014 (“Final Act.”).
3 Claims 15 have been canceled.
Appeal 2015-006188
Application 12/937,785
CLAIMED SUBJECT MATTER
Claims 1 and 7 are independent. Claim 7, reproduced below,
illustrates the claimed subject matter, with disputed limitations emphasized.
7. A one-piece fastening element (20) for a cooking hob (10),
wherein: the fastening element (20) comprises a first portion (22)
being permanently connected to an upper part (12) of the cooking
hob (10), the fastening element (20) comprises a second portion
(24) being detachably connectable to a lower part (14) of the
cooking hob (10), so that the upper part (12) and the lower part
(14) form the cooking hob (10), and the second portion (24) of
the fastening element (20) comprises at least one spring element
(26) provided for a sidewall of the cooking hob (10) in order to
clamp the cooking hob (10) within a cutout (34) enclosing
circumferentially the cooking hob (10), wherein the first portion
of the fastening element and the second portion of the fastening
element together form the one-piece fastening element.
REJECTIONS
The following Examiner’s rejections are before us for review.
1. Claims 7—9 and 11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Scheidler (US 4,453,533, iss. June 12, 1984).
2. Claims 1—5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Straus (DE 198 35 140 Al, pub. Feb. 10, 2000) and Tinnerman
(US 2,328,757, iss. Sept. 7, 1943).
3. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gama (US 2005/0235982 Al, pub. Oct. 27, 2005) and Tinnerman.
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gama, Tinnerman, and Schilling (US 6,924,465 B2, iss. Aug. 2,
2005).
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Application 12/937,785
5. Claims 7 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Straus.
ANALYSIS
First Ground of Rejection: Anticipation of Claims 7—9 and 11 by
Scheidler
We are persuaded by Appellants’ arguments that the Examiner failed
to establish a prima facie showing of anticipation in rejecting claims 7—9 and
11 over Scheidler.
In rejecting claim 7, the Examiner finds that
Scheidler shows a one-piece fastening element (6k, 18, 2h) for a
cooking hob, wherein: the fastening element comprises a first
portion (6k and top of mounting frame 2h) being permanently
connected (via adhesive 3, 5) to an upper part (1) of the cooking
hob, the fastening element comprises a second portion (lower
portion of 2h) being detachably connectable to a lower part (10)
of the cooking hob, so that the upper part and the lower part form
the cooking hob, and the second portion of the fastening element
comprises at least one spring element (18) provided for a
sidewall of the cooking hob (FIG. 13) in order to clamp the
cooking hob within a cutout (19) enclosing circumferentially the
cooking hob (column 5, lines 14-17), wherein the first portion of
the fastening element and the second portion of the fastening
element together form the one-piece fastening element.
Final Act. 2
However, Appellants point out that “[njowhere does Scheidler
disclose that sealing frame 6k and mounting frame 2h are permanently
bonded to each other in such a way that would form a one-piece fastening
element as claimed.” Appeal Br. 7. Appellants reason that “Scheidler
independently describes that the sealing frame 6k is bonded to the hob plate
1 by adhesive 5 and that mounting frame 2h is bonded to hob plate 1 by
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Application 12/937,785
adhesive 3,” so that “by independently bonding the sealing frame 6k and
mounting frame 2h to the hob, Scheidler describes a two-piece fastening
element.” Id. In particular, in stating “that ‘the sealing frame f6] may
remain firmly fixed in the worktop cut-out while the hob plate, the mounting
frame and the base tray (10) are taken out,’” Appellants contend that
Scheidler “supports Appellants’ interpretation that Scheidler discloses a two-
piece fastening element.” Id. (citing Scheidler, col. 5,1. 21—col. 6,1. 1). We
agree.
[Ujnless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
See Net Money IN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008).
For the foregoing reason, we will not sustain the Examiner’s rejection
of claims 7—9 and 11 as anticipated by Scheidler.
Second Ground of Rejection: Obviousness of Claims 1—5 over Straus
and Tinnerman
Appellants argue claims 1—5 together in contesting the rejection of
these claims as obvious over Straus and Tinnerman. See Appeal Br. 9-14;
Reply Br. 3—5. We select claim 1 as the representative claim for this group,
and the remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
In rejecting claim 1, the Examiner finds Straus discloses a cooking
hob with an upper and lower part, and at least two one-piece fastening
elements each having a first and a second portion substantially as claimed,
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Application 12/937,785
but that Straus is silent as to whether “the first portion is permanently
connected to an upper part of the cooking hob.” Final Act. 3. However, the
Examiner reasons that “whether the first portion is permanently connected
(integral) or not would merely be a matter of obvious engineering choice,”
pointing out that “making the first portion integral with the upper part of the
cooking hob would provide the obvious result of reducing the assembly
time.”4 Id.
The Examiner looks to “Tinnerman, another cooking hob with at least
two one-piece fastening elements . . . arranged at opposite sidewalls of a
cooking hob,” in determining that it would have been obvious “to modify the
Straus cooking hob such that at least two fastening elements are arranged at
opposite sidewalls of the cooking hob, as taught by Tinnerman, in order to
evenly secure the cooking hob into the cutout.” Id. at 4.
In taking issue with the Examiner’s findings and conclusions,
Appellants first contend that “Strauss teaches that both the upper and lower
parts of the cooking hob should be detachable from the fastening element,”
so that “[integrating the hob and fastening element would thus contradict
the teachings of Strauss such that one of ordinary skill in the art would not
be motivated to modify Strauss as asserted by the Office action.” Appeal Br.
10—11, 17. From the foregoing, Appellants conclude that the Examiner
“failed to consider the prior art in its entirety, including disclosures that
teach away from the claims,” and “relied on impermissible hindsight or
personal knowledge to support the rejection that an upper part of a hob be
permanently connected to a first portion.” Id. at 11.
4 The Examiner also observes that Figure 13 of Schneider shows a first
portion integral with the upper part of a cooking hob. Id.
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Application 12/937,785
However, the Examiner first points out that “the only modification [of
Straus] is to permanently connect the first part of the fastening element with
the upper part of the cooking hob,” which “is not to permanently connect the
fastener with the whole hob,” because “[t]he lower part of the hob is still
releasable.” Ans. 9. The Examiner also explains that “Strauss does not state
that the fastener must be releasable or that it would be advantageous to make
the fastener releasable from the upper hob,” but that “Strauss merely states
that it can be released.” Id. (emphasis omitted). The Examiner also points
out “that there are benefits for making the fastener removable from the upper
part of the hob,” as well as “for permanently connecting the fastener with the
upper hob, as discussed in the rejection,” and “whether the fastener is
permanently connected or not is a matter of obvious design choice.” Id. at
9—10. We agree.5 See In re Larson, 340 F.2d 965, 968 (CCPA 1965),
holding that “the use of a one piece construction instead of the structure
5 Although not necessary to the resolution of this appeal, we note that
the word “it” (or “daB,” “this”) in the clause “so that it can be produced
without the use of auxiliary tools and loosed in case of need again,” in the
third paragraph of the machine translation of Straus of record in the
application (that is, the clause “so daB diese ohne Einsatz von
Hilfswerkzeugen hergestellt und im Bedarfsfalle auch wieder gelost werden
kann,” in lines 14—16 of the original), appears to refer back to “the
connection arrangement between the hob mounting frame and the tub” (“die
Verbindungsanordnung zwischen dem Kochfeld-Befestigungsrahmen und
der Wanne,” in lines 12—14 of the original). This “connection arrangement”
would have been releasable if the connection between the connection
elements (that is, the “Verbindungselemente” 9) and the lower part of the
hob (that is, the tub or pan (“Wanne”) 8) were releasable, even if the
“mounting frame” (that is, the “Befestigungsrahman” 2) was permanently
connected to the upper part of the hob (that is, to the “glass-ceramic cooking
surface” or “Glaskeramik-Kochflache” 1).
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Application 12/937,785
disclosed in [a prior art reference] would be merely a matter of obvious
engineering choice.” Cf Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”).
Appellants also contend that “Tinnerman fails to disclose a fastening
element where a second part thereof is detachably connectable to the lower
part of the cooking hob so that the upper and lower parts form the cooking
hob, as is claimed.” Appeal Br. 13. However, Appellants are simply
attacking Tinnerman for findings not relied upon by the Examiner rather
than addressing the Examiner’s combination of Straus and Tinnerman.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the
Examiner again explains, “Tinnerman was used as additional support to
teach fasteners arranged on opposite sidewalls of the hob” because Straus
“does not specifically state that fasteners are arranged on opposite
sidewalls.” Ans. 9.
Based on the foregoing, we sustain the Examiner’s rejection of claims
1—5 as obvious over Straus and Tinnerman.
Third Ground of Rejection: Obviousness of Claim 1 over Gama and
Tinnerman
In rejecting claim 1, the Examiner finds that “Gama discloses a
cooking stove with an upper portion and a lower portion . . . , but fails to
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Application 12/937,785
disclose fastening elements.” Final Act. 5. However, the Examiner
determines that “Tinnerman, another cooking device, teaches a cooking
hob (column 1, lines 1-5, 16, 17, P) with at least two one-piece fastening
elements (clips; FIG. 1, 3) arranged at outer portions of the cooking hob,”
with all the features recited by claim 1, and reasons that it would have been
obvious “to modify the Gama device to include at least two one-piece
fastening elements arranged at outer portions of the cooking hob . . , in order
to provide a way to secure the upper and lower portions of the cooking hob.”
Id.
In response, Appellants first observe that in Tinnerman, “the upper
part of the cooking hob is shown as angle bracket 1—3 and the lower part of
the cooking hob is shown as panel P, 15, 16.” Appeal Br. 15. While noting
that “spring element 25 is located between the panel P, 15, 16 and a side
panel 10 with flange 12,” Appellants also observe that “vertical flange 3 of
angle bracket 1—3 is outside of side panel flange 12,” thus causing “spring
element 25 [to be] located in a cutout between the lower part of the cooking
hob P, 15, 16 and the side panel and flange 10, 12 and upper part of the
cooking hob 1—3.” Id.', see also Reply Br. 6.
Based on these observations, Appellants contend that “Tinnerman
fails to disclose a first portion of the fastening element being permanently
connected to an upper part of the cooking hob,” or “where a second part
thereof is detachably connectable to the lower part of the cooking hob so that
the upper and lower parts form the cooking hob,” as recited by claim 1.
Appeal Br. 15—16. Appellants conclude that “the fastening element of
Tinnerman relies on a different mechanism and serves a different purpose
than the fastening element of Gama such that one of ordinary skill in the art
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Application 12/937,785
would not have been motivated to extrapolate the teachings therein to
Gama.” Id. at 16.
In response, the Examiner reasons while claim 1 “recites that a cutout
circumferentially surrounds the cooking hob,” that “[i]t does not state that
the cutout circumferentially surrounds the upper part of the cooking hob
and/or the lower part of the cooking hob,” explaining that “the cooking hob
(16+ 17, fig. 1) is circumferentially enclosed by the cutout (defined by
vertical walls 12) even though a portion (1-3, fig. 1) lay outside of the
cutout.” Ans. 11—12. Furthermore, the presence of additional structures in
the prior art, such as flange 3 of Tinnerman, does not undermine a rejection
where the claim defines the invention using the open-ended term
“comprises.” See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312,
1319 (Fed. Cir. 2009) (“The claim uses the term ‘comprising,’ which is well
understood in patent law to mean ‘including but not limited to.’” (quoting
CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)).
Based on the foregoing, we sustain the Examiner’s rejection of claim
1 as obvious over Gama and Tinnerman.
Fourth Ground of Rejection: Obviousness of Claim 6 over Gama,
Tinnerman, and Schilling
Other than observing that “[t]he addition of Schilling fails to correct
the above-noted deficiencies [of Gama and Tinnerman]” (Appeal Br. 17), we
understand Appellants’ appeal of the rejection of dependent claim 6 to rest
on the arguments presented against the rejection of claim 1, which we found
not demonstrative of error in the Examiner’s rejection of claim 1 over Gama
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Application 12/937,785
and Tinnerman, as set forth supra. Thus, we sustain the Examiner’s
unpatentability rejection of claim 6 over Gama, Tinnerman, and Schilling.
Fifth Ground of Rejection: Obviousness of Claims 7 and 10 over
Straus
Appellants argue claims 7 and 10 together in contesting the rejection
of these claims as obvious over Straus. See Appeal Br. 17—19. We select
claim 7 as the representative claim for this group, and claim 10 stands or
falls with claim 7. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner provides a similar description of Straus to that
previously set forth at page 3 of the Final Action, including that “fastening
element (9) comprises a first portion (14, 11) being connected to an upper
part (1) of the cooking hob (portions 14, 11 connect to mounting frame 2,
which is capable of being permanently connectable to cooking surface 1;
therefore, fastening element 9 is permanently connectable to cooking surface
1),” and again reasons that “whether the first portion is permanently
connected (integral) or not would merely be a matter of obvious engineering
choice.”6 Ans. 6. (emphasis added).
In response, Appellants merely contend that the Examiner “is relying
on impermissible hindsight or personal knowledge to support the rejection
that an upper part of a hob be permanently connected to a first portion.”
Appeal Br. 18. This is essentially the same argument raised against the
citation of Straus as applied to claims 1—5 on pages 10-11 of the Appeal
6 The Examiner also points to figure 13 of Schneider “showing the first
portion (6k and top of mounting frame 2h) permanently connected (via
adhesive 3, 5) to the upper part of the cooking hob 1.” Ans. 7.
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Brief. Those arguments are not persuasive, for the reasons discussed above
in connection with the Second Ground of Rejection. See Ans. 9—10.
For the foregoing reasons, we sustain the Examiner’s decision
rejecting claims 7 and 10 over Straus.
NEW GROUND OF REJECTION
Obviousness of Claim 7 over Scheidler
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Scheidler. We find that Scheidler discloses all the
limitations of claim 7 except for not expressly teaching that sealing frame 6k
and mounting frame 2h are permanently bonded to each other in such a way
that would form a one-piece fastening element as recited by claim 7.
However, we determine that forming in one piece an article which has
formerly been formed in two pieces and put together as one piece would
have been obvious to one of ordinary skill since it involves only routine skill
in the art. In re Larson, 340 F.2d at 968; See also Howard v. Detroit Stove
Works, 150 U.S. 164, 170 (1893), holding that “The prior art grate ‘is cast in
two pieces, while the [claimed invention] is cast in one piece. This does not
involve patentable invention.’”
Although we have exercised our discretion under 37 C.F.R. § 41.50(b)
in rejecting only claim 7 under this new ground, we leave dependent claims
8, 9, and 11 for the Examiner’s consideration in any further prosecution.
While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b),
no inference should be drawn when the Board elects not to do so. See
MPEP 1213.03.
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Application 12/937,785
DECISION
We REVERSE the Examiner’s rejection of claims 7—9 and 11 under
35 U.S.C. § 102(b) as anticipated by Scheidler.
We AFFIRM the Examiner’s rejection of claims 1—5 under 35 U.S.C.
§ 103(a) as unpatentable over Straus and Tinnerman.
We AFFIRM the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Gama and Tinnerman.
We AFFIRM the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Gama, Tinnerman, and Schilling.
We AFFIRM the Examiner’s rejection of claims 7 and 10 under 35
U.S.C. § 103(a) as unpatentable over Straus.
We enter a NEW GROUND OF REJECTION of claim 7 under 35
U.S.C. § 103(a) as unpatentable over Scheidler.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellants may file a single request for rehearing within two months of the
date of the original decision of the Board.”
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to 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
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Application 12/937,785
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
AFFIRMED-fN—PART; 37 C.F.R, $ 41.50(b).
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