Ex Parte Neff et al

Patent Trial and Appeal Board

Aug 15, 2017

13425400 (P.T.A.B. Aug. 15, 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.
Neff_2012 1024
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
13/425,400 03/20/2012
7590
Sous Vide Cuisine
20705 SE 3rd Way
Sammamish, WA 98074
08/15/2017
Raymond L. Neff
08/15/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND L. NEFF and RICHARD P. MORAN
Appeal 2016-000641
Application 13/425,400
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Raymond L. Neff and Richard P. Moran (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 1—7 and 18—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Claims 1 and 18 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
Appeal 2016-000641
Application 13/425,400
1. A device for heating food comprising:
a removable fluid-holding carafe for holding the fluid in
contact with the food, the carafe having a carafe inlet and a carafe
outlet that are biased in a fluid-tight closed position; and
a self-contained base unit configured to receive the
removable fluid-holding carafe including:
first and second valve actuators respectively arranged to
mate with and open the carafe inlet and the carafe outlet when
the carafe is positioned in mating contact with the base unit, the
mating contact allowing fluid circulation between the base unit
and the carafe;
a pump with an inlet that has a fluid-flow connection to
the carafe outlet and an outlet that has a fluid-flow connection to
the carafe inlet when the fluid-holding carafe is positioned in
mating contact with the base unit, and wherein the pump
circulates fluid through the carafe by drawing fluid from the
carafe outlet into the base unit and pushing fluid back into the
carafe inlet when the pump is operating and the fluid-holding
carafe is positioned in mating contact with the base unit;
an electrically powered heating element positioned in
serial fluid-flow connection with the pump to selectively heat the
fluid circulating through the base unit and back into the carafe
inlet;
a first temperature sensor positioned for measuring a first
temperature of the fluid; and
a control system electrically connected to the pump, the
heating element, and the first temperature sensor, the control
system operating the pump during operation of the device when
the fluid-holding carafe is in mating contact with the base unit to
circulate the fluid from the carafe through the base unit and back
into the carafe, the control system selectively supplying electrical
power to the heating element to heat the fluid flowing through
the base unit to maintain the first temperature of the fluid near a
target temperature.
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Appeal 2016-000641
Application 13/425,400
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stiglich US 4,569,277 Feb. 11, 1986
REJECTIONS
I. Claims 1—7 and 18—20 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. Claims 1—7 and 18—20 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement
requirement.
III. Claims 1—7 and 18—20 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.1
IV. Claims 1—7 and 18—20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Stiglich.
1 The Examiner separately rejects claims 1—7 and 18—20 “for failing to
particularly point out and distinctly claim the subject matter which”
Appellants regard as the invention and “for omitting essential elements.”
Final Act. 4. These are not separate grounds of invention. See MPEP
§ 2172.01 (a claim which fails to interrelate essential elements of the
invention as defined by applicant(s) in the specification may be rejected
under ... 35 U.S.C. 112, second paragraph, for failure to point out and
distinctly claim the invention (citations omitted)). Accordingly, we address
these rejections together.
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Application 13/425,400
DISCUSSION
Rejection I
“[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (enbanc).
Regarding claims 1 and 18, the Examiner determines that the
limitation “the carafe having a carafe inlet and a carafe outlet that are biased
in a fluid-tight closed position” (Appeal Br. 26, 28, Claims App.) set forth in
both claims, was not “described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor or a
joint inventor, or for pre-AIA the inventor(s), at the time the application was
filed, had possession of the claimed invention.” Final Act. 3.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents ofUniv. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997) citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991). The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). The Examiner provides
no explanation as to why those skilled in the art would not recognize that
Appellants had possession of this subject matter as of the filing date of the
instant Application. See Final Act. 3.; see also Ans. 13 (merely stating that
“the precise claim language was not disclosed originally”). The fact that the
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Application 13/425,400
claim does not use the same language as the Specification is not dispositive
of this issue. Rather, by failing to provide evidence or reasoning that one
skilled in the art would not recognize a description of the invention in the
original disclosure, the Examiner fails to set forth a prima facie case of
failure to comply with the written description requirement.
Accordingly, we do not sustain the Examiner’s decision rejecting
claims 1 and 18, and claims 2—7, 19, and 20 which depend either from claim
1 or claim 18, as failing to comply with the written description requirement.
The Examiner’s further rejections of claims 3,5, and 7 are similarly
deficient as the Examiner fails to provide an explanation as to why one
skilled in the art would not understand that Appellants had possession of the
subject matter at issue in these claims. Accordingly, we do not sustain the
Examiner’s further rejections of these claims for failure to comply with the
written description requirement.
Rejection II
The standard for determining whether the specification meets the
enablement requirement was cast in the Supreme Court decision of Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question:
is the experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Determining enablement is a question of
law based on underlying factual findings. In re Vaeck, 947 F.2d 488, 495
(Fed. Cir. 1991). The determination that “undue experimentation” would
have been needed to make and use the claimed invention is not a single,
simple factual determination. Rather, it is a conclusion that may be reached
by weighing the following factual considerations: (1) the quantity of
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Application 13/425,400
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims. Wands at 737.
The Examiner determines that “[t]he carafe having a carafe inlet and a
carafe outlet that are biased in a fluid-tight closed position was not described
in the specification in such a way as to enable one skilled in the art to which
it pertains, or with which it is most nearly connected, to make and/or use the
invention.” Final Act. 4; See also Ans. 13—14. Appellants contend that “the
Examiner has similarly failed to provide any support for this rejection and
has, therefore, failed to meet the legal burden of making a prima facie case
for the rejection.” Appeal Br. 12. In support of this contention, Appellants
argue that “[t]he Examiner has failed to address any of the required factors.”
Id.
Appellants are correct. The rejection fails to address any of the
factors enumerated in Wands or provide any factual basis for the
determination that practicing the invention would require undue
experimentation. Thus, the Examiner fails to set forth a prima facie case of
non-enablement.
We do not sustain the Examiner’s decision rejecting claims 1—7 and
18—20 as failing to comply with the enablement requirement.
Rejection III
Claims 1—7 and 18—20
The Examiner determines that claims 1 and 18 are unclear because
they do not claim “elements to provide a fluid-tight closed position.” Final
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Application 13/425,400
Act. 4. The Examiner further determines that “[t]he recitations of, ‘fluid,’
and, ‘the fluid,’ are inconsistent throughout the claims, such that it is not
definite which fluid(s) the various recitations refer to.” Id.
Responding to these determinations, Appellants explain that the
claimed inlet and outlet provide the fluid-tight closed position. See Appeal
Br. 15. As noted by Appellants in response to the written description
rejection (Appeal Br. 8), the Specification states, “[i]n one embodiment the
cooking vessel has two self-sealing liquid-tight valves (one for the inlet and
one for the outlet) that allow the carafe to hold the liquid and food item(s)
while detached if desired.” Spec. 5:20-22. One skilled in the art reading the
claim language at issue in light of this description in the Specification would
understand that the claimed inlet and outlet provide a fluid-tight closed
position. Thus, claims 1 and 18, and their respective dependent claims, do
not omit essential elements.
Furthermore, throughout the claims, one fluid is claimed. See Appeal
Br. 26—29, Claims App. The use of the article “the” in combination with the
claim term “fluid” is proper English which does not render these claims
indefinite. Moreover, the Examiner does not explain why the use of the
article “the” renders claims 1 and 18 unclear. Thus, the Examiner fails to set
forth a prima facie case of indefmiteness.
For these reasons, we do not sustain the Examiner’s decision rejecting
claims 1 and 18, and claims 2—7, 19, and 20, which depend from either claim
1 or claim 18 as being indefinite.
Claims 3 and 5
Claims 3 and 5 depend from claim 1. The Examiner additionally
determines that “there are no antecedent bases for, ‘the control system
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electronics’” in these claims. Final Act. 4—5. The Examiner does not
explain why the use of the phrase “the control system electronics” renders
the claims unclear. Id. Thus, the Examiner fails to set forth a prima facie
case of indefiniteness. Moreover, claim 1 recites a control system including
a plurality of electronics such as a first temperature sensor. Thus, the
limitation at issue does have proper antecedent basis.
We do not sustain the Examiner’s additional decision rejecting claims
3 and 5 as indefinite.
Rejection IV
The Examiner finds that Stiglich discloses all of the limitations of
claims 1 and 18 except for
a removable fluid-holding carafe for holding the fluid in contact
with the food, the carafe having a carafe inlet and a carafe outlet
that are biased in a fluid-tight closed position, a removable fluid­
holding carafe for holding the fluid in contact with the food, the
carafe having a carafe inlet and a carafe outlet that are biased in
a fluid-tight closed position.
Final Act. 12 (emphasis omitted).
The Examiner reasons that it would have been obvious “to modify an
embodiment of the embodiments of Fig. 4—7 as suggested and taught by an
embodiment of the embodiments of Fig. 4—7 in order to accommodate
delicate pastas such as ravioli which require a gentle stirring action (col 6, In
42-55).” Id.
The Examiner’s reasoning lacks rational underpinning because it is
nonsensical and does not even attempt to identify what the proposed
modification(s) is, what evidence supports the unknown modification, or
why one skilled in the art would be prompted to make modifications to any
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Appeal 2016-000641
Application 13/425,400
of Stiglich’s embodiments illustrated in Figs. 4—7. Accordingly, the
Examiner fails to set forth a prima facie case of obviousness.
We do sustain the Examiner’s decision rejecting claims 1 and 18, and
claims 2—7, 19, and 20 which depend from either claim 1 or claim 18 as
unpatentable over Stiglich.
DECISION
The Examiner’s rejections of claims 1—7 and 18—20 are REVERSED.
REVERSED
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