Ex Parte Metaxatos et al

Patent Trial and Appeal BoardSep 26, 2012

11391715 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL METAXATOS, BERNARD MAURER, ANDY PADAWER, and DUANE KUTSCH ____________ Appeal 2010-009452 Application 11/391,715 Technology Center 3700 ____________ Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge DECISION ON APPEAL Appeal 2010-009452 Application 11/391,715 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Pursuant to our authority under 37 C.F.R. § 41.50(b)(2009), we designate our affirmance of the rejection of claims 3- 20 as a NEW GROUND OF REJECTION. We also enter a NEW GROUND OF REJECTION against claims 1 and 2. CLAIMED SUBJECT MATTER The claimed subject matter relates to a handle for cookware, a cookware piece, and an arrangement of cookware pieces. The handle extends from a first end to a second end in a substantially horizontal orientation, and has a slot disposed on its bottom side that is configured to engage another cookware piece. Claims 1, 3, and 9 are the independent claims on appeal. Claim 3 is illustrative of the subject matter on appeal and is reproduced below with the key disputed limitations emphasized: 3. A first cookware piece, comprising: a fully closed lateral sidewall; an upper edge disposed along the sidewall; and a handle attached to the sidewall, wherein the handle comprises a body having a first end and a second end, and a support device for holding the first cookware piece in a substantially horizontal position within a second cookware piece during storage such that the upper edge of the cookware Appeal 2010-009452 Application 11/391,715 3 piece is at a height equal to or less than a height of an upper edge of the second cookware piece, wherein the first cookware piece is removed from within the second cookware piece during use, and wherein the body extends from the first end to the second end in a substantially horizontal orientation with respect to the first cookware piece. REJECTION Appellants seek review of the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Wang (US 5,784,953, iss. July 28, 1998), Ans. 3; and the Examiner’s rejection of claims 3-20 under 35 U.S.C. § 103(a) as unpatentable over Wang in view of Frank (US 2,404,130, iss. July 16, 1946), Ans. 4.1 ANALYSIS The Examiner’s Rejection of Claims 1 and 2 The Examiner finds that Wang discloses all of the elements of claims 1 and 2 including a handle having a body that extends substantially horizontally from a first end to a second end. The Examiner illustrates this 1 In the Final Rejection mailed February 17, 2009 (“Final Rejection”), the Examiner initially rejected claims 1-15, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Wang; and claims 16-18 under 35 U.S.C. § 103(a) as unpatentable over Wang. Final Rejection, p. 2. Although the Examiner did not expressly withdraw these rejections, we treat these rejections as having been withdrawn because the Examiner does not list them in the Answer. Ans. 3-7. Appeal 2010-009452 Application 11/391,715 4 with an annotated copy Figure 5 of Wang depicting a cross sectional view of Wang’s egg separator with lines pointing to what the Examiner considers to be the first end and the second end of the handle body. Ans. 5-6. Appellants argue that Wang does not disclose a handle having a body that extends substantially horizontally from a first end to a second end, and that Wang instead discloses a “downwardly curved handle 12.” App. Br. 13- 15 (emphasis in original). Neither the Examiner nor Appellants proffer a definition for the term “end,” and Appellants’ Specification does not provide a formal definition of the term “end.” In determining the ordinary and customary meaning of the term “end” as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary meaning of “end” includes: “the part of an area that lies at the boundary”; “a point that marks the extent of something”; “the point where something ceases to exist”; and “the extreme or last part lengthwise.” MERRIAM-WEBSTER DICTIONARY, found at http://www.merriam-webster.com/dictionary/end (last visited September 18, 2012). Nothing in the Specification is inconsistent with these usages of the term “end.” Because the Examiner’s identified second end is not an “end” within the ordinary and customary meaning of that term, the Examiner has not shown that Wang discloses a handle having a body that extends substantially horizontally from a first end to a second end. Appeal 2010-009452 Application 11/391,715 5 The Examiner also finds that Wang discloses the first cookware piece having a fully closed lateral sidewall 13. Ans. 3. The Examiner explains that Wang’s sidewall 13 anticipates this claim term because it is fully closed above apertures 17 and 18. Final Rejection, p. 3. Appellants argue that Wang clearly requires that the sidewall include a pair of circumferentially extending slots 17 and 18 in the cup 11, and that “fully closed” is not equivalent to “closed above the apertures.” App. Br. 16-17. Because the Examiner’s identified sidewall is not a fully closed lateral sidewall under an ordinary meaning of “fully closed” due to the presence of apertures 17 and 18, the Examiner has not shown that Wang discloses a fully closed lateral sidewall. Because the Examiner’s findings that Wang discloses a fully closed lateral sidewall and a handle having a body that extends substantially horizontally from a first end to a second end are in error, and these findings form the basis of all pending rejections, we do not sustain the rejection of claims 1 and 2 under 35 U.S.C. § 102(b). The Rejection of Claims 3-20 The Examiner’s rejection of claims 3-20 under 35 U.S.C. § 103(a) as obvious over Wang and Frank relies on the same erroneous findings as discussed hereinabove. Ans. 4. We nonetheless sustain the rejection of claims 3-20 as unpatentable over Wang and Frank on grounds different from those relied on by the Examiner as explained infra. Appeal 2010-009452 Application 11/391,715 6 Appellants argue all of the claims subject to this rejection as a group. Reply Br. 4-13. We select claim 3 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 4-20 stand or fall with claim 3. Frank discloses a handle 12, 23 for cookware comprising a body having a first end and a second end, the body configured to attach to a first cookware piece 10, 20 and having a bottom side. Frank, figs. 1 and 4; col. 1, ll. 34-42; col. 2, ll. 11-16. Frank also discloses U-shaped members 13 and 21 disposed along the bottom side of the handle body 12, 23, and configured to engage a sidewall of a second cookware piece C to hold the first cookware piece 10, 20 within the second cookware piece C. Frank, figs. 1 and 4, col. 1, ll. 34-52, and col. 2, ll. 11-16. Frank further discloses that an upper edge of the first cookware piece 10, 20 does not extend substantially beyond an upper edge of the second cookware piece C. Frank, figs. 1 and 4. Frank discloses that the handle body 12, 23 is defined to extend from the first end to the second end in a substantially horizontal orientation with respect to the first cookware piece 10, 20. Frank, figs. 1 and 4. Frank also discloses a cookware piece 20 having a fully closed lateral sidewall. Frank, figs. 4 and 5. Frank further discloses the handle 12, 23 having a support device beneath U-shaped members 13 and 21 for holding the first cookware piece 10, 20 in a substantially horizontal position within the second cookware piece C. Frank, figs. 1 and 4, col. 1, ll. 34-42, and col. 2, ll. 11-16. Wang discloses a handle for cookware comprising a body 12 having a first end and a second end, the body configured to attach to a first cookware Appeal 2010-009452 Application 11/391,715 7 piece 11 and having a bottom side 14. Wang, figs. 2 - 3 and col. 2, ll. 42-51. Wang also discloses a slot/positioning device 29 disposed along the bottom side of the handle body 12, the slot/positioning device 29 being configured to engage a sidewall of a second cookware piece 32 to hold the first cookware piece 11 within the second cookware piece 32. Wang, fig. 1 and col. 3, ll. 39-59. Frank and Wang are silent regarding whether the first cookware piece is held within the second cookware piece during storage of the cookware. Frank and Wang are also silent regarding whether the first cookware piece is removed from within the second cookware piece during use. The limitations “wherein the first cookware piece is removed from the second cookware piece during use” and the first cookware piece being held within the second cookware piece during storage are functional. Functional recitations limit the structure defined by an apparatus claim. That is, the structure must be capable of performing the recited function in order to satisfy the functional limitation. However, where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Examiner correctly finds that first cookware piece of Frank or Wang is capable of holding the first cookware piece within the second cookware piece during storage, and is capable of allowing the first cookware piece to be removed from within the Appeal 2010-009452 Application 11/391,715 8 second cookware piece during use. Appellants have not met the burden of showing that these recited functions patentably distinguish the claimed structure from the prior art structure. Regarding a reason to combine the teachings of Frank and Wang, we conclude that it would have been obvious to employ the slot 29 of Wang in place of the U-shaped member 13 and corresponding lip 16 of Frank, or the U-shaped member 21 and corresponding lip 25 of Frank, because the illustrated combination would provide a more easily removable strainer/separator. One of ordinary skill in the art would have recognized as a matter of common sense that the strainer/separator would merely need to be lifted from the second piece of cookware rather than requiring a clip 14, 24 to be pinched toward a handle 12, 23 prior to removal. Regarding Appellants’ argument that Wang and Frank are non- analogous art (App. Br. 9-10), there is a two-fold test for determining whether art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in Appeal 2010-009452 Application 11/391,715 9 considering his problem. In re Clay, 966 F. 2d 656, 659 (Fed. Cir. 1992). One problem with which Appellants were involved is nesting cookware. Spec. 1, ll. 7-8. One of ordinary skill in the art seeking to nest cookware would have had reason to look to other cookware with nesting capabilities. Therefore, the teachings of Wang and Frank are reasonably pertinent to a particular problem with which the Appellants were involved. Regarding Appellants’ argument that impermissible hindsight was required for the Examiner to combine Wang and Frank, while an examiner must articulate a “reasoning with some rational underpinning to support the legal conclusion of obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006), the apparent reason need not appear in one or more of the references on which the examiner relies. Instead, an examiner when analyzing the evidence may employ common sense consistent with the ordinary level of knowledge and skill in the art at the time of the invention. Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009). Reliance on common sense in support of a rejection under § 103(a) does not imply the use of impermissible hindsight. For these reasons, we sustain the rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Wang and Frank. Claims 4-20 fall with claim 3. We designate our decision to sustain this rejection as a NEW GROUND OF REJECTION to afford Appellants a full and fair opportunity to react to the thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“the ultimate criterion of whether a rejection is considered ‘new’ in a Appeal 2010-009452 Application 11/391,715 10 decision by the board is whether appellants have had [a] fair opportunity to react to the thrust of the rejection.”). New Ground of Rejection against Claims 1 and 2 Further, we enter new grounds of rejection against claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Wang and Frank for the reasons set forth in our discussion of claims 3-20. DECISION We reverse the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Wang. We affirm the Examiner’s rejection of claims 3-20 under 35 U.S.C. § 103(a) as obvious over Wang and Frank, and designate the rejection a NEW GROUND OF REJECTION. We enter a NEW GROUND OF REJECTION of claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Wang and Frank. FINALITY OF THE DECISION 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." Appeal 2010-009452 Application 11/391,715 11 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS, must exercise one of the following two options with respect to the new grounds 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. . . . 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) mls