Ex Parte Smith

Patent Trial and Appeal Board

Jun 26, 2018

13742028 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/742,028 01115/2013 Alice Gail Smith
42922 7590 06/26/2018
WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
301 COMMERCE STREET
Suite 3500
FORT WORTH, TX 76102-4186
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
24801.002 1045
EXAMINER
COLLADO, CYNTHIA FRANCISCA
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
06/26/2018 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 ALICE GAIL SMITH
Appeal2017-009449
Application 13/742,028
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1, 2, 4, 7, 8, and 16. Br. 1. Claims 3
and 9 have been canceled while claims 5, 6, and 10-15 have been
withdrawn. Claims Appendix. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM and enter a NEW GROUND OF REJECTION with
respect to claim 16 pursuant to 37 C.F.R. § 41.50 (b).
1 We refer to the corrected set of claims submitted December 22, 2016 in
response to a Notice of Non-Compliant Appeal Brief dated December 15,
2016.
Appeal2017-009449
Application 13/742,028
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to cookware items and
particularly a container such as a pot, saucepan, skillet, frying pan or griddle
which provides a support upon which a cooking utensil may be rested during
use." Spec. 2:3-5. Apparatus claims 1 and 8 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A cookware item, comprising:
a cookware container having a given weight and having a
base and a surrounding vertically upstanding sidewall which
extends vertically upward from an outer periphery of the base to
define an initially open interior space and a top opening of the
container, the sidewall having an outer wall surface and an inner
wall surface;
a clasp handle permanently affixed to and extending
outwardly from the outer wall surface of the container adjacent
the top opening thereof which is configured to be held by a user
while supporting the weight of the container;
a utensil support handle permanently affixed to the
container outer wall surface and arranged generally opposite the
clasp handle which is configured to receive and support a
cooking utensil while also serving as a companion handle to the
clasp handle when being held by the user while supporting the
weight of the container while lifting the container;
wherein the utensil support handle has a length, an upper
support surface and an opposite lower surface, the length of the
utensil support handle being arranged in a lateral direction with
respect to the sidewall of the container, rather than at a right angle
thereto, the upper surface of the utensil support handle having a
utensil receiving recess formed therein, the utensil receiving
recess itself defining a flat, planar region with surrounding
peripheral sidewalls which enclose the flat planar region and
provide a solid recessed plane at a given depth with respect to the
peripheral sidewalls;
wherein the solid recessed plane of the utensil receiving
recess is located in a horizontal plane which is below the top
opening of the container; and
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Application 13/742,028
and wherein the cookware container is provided as a part
of a set of cookware, with various items in the cookware set all
having the utensil support handle permanently affixed thereto.
REFERENCES RELIED ON BY THE EXAMINER
Hemsteger
De Biasi
Duncan
us 269,054
us 1,928,995
US 6,948,626 B 1
Dec. 12, 1882
Oct. 3, 1933
Sept. 27, 2005
THE REJECTION ON APPEAL
Claims 1, 2, 4, 7, 8, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over De Biasi, Duncan, and Hemsteger. 2
ANALYSIS
Appellant argues independent claims 1 and 8 together. Br. 11-15.
However, Appellant also addresses claim language specific to claim 8. Br.
14--15. Appellant also presents arguments for dependent claim 16. Br. 15-
16. We address these argued claims as follows. The remaining non-argued
claims (i.e., claims 2, 4, and 7) stand or fall with parent claim 1. See 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
Claim 1
Appellant initially addresses De Biasi' s use of a removable clip holder
"rather than a permanent 'utensil support handle' as described by
Applicant." Br. 13. Appellant contends, "De Biasi nowhere suggests" the
idea of substituting a "permanent utensil support handle for the temporary
wire clip he illustrates." Br. 13. Appellant's contention is not persuasive.
2 The Examiner also listed claim 9, but claim 9 had previously been
cancelled. See Amendment dated August 4, 2015.
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Application 13/742,028
First, the Examiner relied on Hemsteger for such teaching, not De Biasi. See
Final Act. 4; see also Ans. 8. Hemsteger teaches both permanent and
temporary holders with each having the same utensil holding advantages.
See Hemsteger 1:31-38; 1 :42--49. Second, the suggestion of the idea need
not come from the references themselves. See KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007) ("The obviousness analysis cannot be confined by
a formalistic conception of the words teaching, suggestion, and motivation,
or by overemphasis on the importance of published articles and the explicit
content of issued patents."); see also Ans. 9-11. Hence, Appellant's
subsequent arguments that "[ t ]he De Biasi reference thus teaches away from
Applicant's intended design" or that the Examiner relied on "impermissible
hindsight" is not persuasive. Br. 14.
Appellant also contends, "Duncan nowhere hints that his stand or
support rod could somehow be adapted to become a permanently affixed
component." Br. 14. Again, Appellant's argument addressing Duncan is not
persuasive for the same reasons stated above.
Addressing Hemsteger, Appellant states, "[ w ]hile the Hemsteger
'spoon holder attachment' may be 'permanently affixed' to the" cookware,
Hemsteger' s "location and particular shape" does not "result in advantages
offered by Applicant's design." Br. 14. First, Hemsteger was not relied on
for disclosing any particular location or shape of the utensil retainer, only
permanency of attachment. Final Act. 4. Additionally, regarding any
advantages of Applicant's design, the Examiner finds advantages arising
from the combination of De Biasi, Duncan, and Hemsteger, and not just
from the teachings of Hemsteger alone. See, e.g., the Examiner's discussion
of the advantage taught by Duncan (Final Act. 4; Ans. 7, 8); see also the
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Application 13/742,028
Examiner's reference to MPEP § 2144 (IV) stating "[i]t is not necessary that
the prior art suggest the combination to achieve the same advantage or result
discovered by Applicant" (citation omitted) (Ans. 10).
Appellant next addresses the limitation of the utensil support handle
having a recess "defining a flat, planar region with surrounding peripheral
sidewalls which enclose the flat planar region." Br. 14. The Examiner relies
on Duncan for disclosing this limitation. See Final Act. 4; Ans. 7.
Appellant contends this limitation is "missing" and asks the Examiner where
such is shown. Br. 14--15. The Examiner responds by annotating Figure 3
of Duncan (see below) identifying where the above limitation can be found.
Ans. 8.
The above Figure 3 of Duncan has been annotated by the Examiner to
illustrate where the "flat, planar" limitation in question is located.
It is not altogether clear whether the Examiner is identifying the flat
top surface of the spoon rest or whether the Examiner is identifying recesses
26, 28 shown therein. However, it is an easy matter to address both. To the
extent the Examiner is referring to the flat top surface surrounding recesses
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Application 13/742,028
26, 28, the Examiner does not explain where this top surface has
"surrounding peripheral sidewalls which enclose the flat planar region" as
recited. Hence, should this flat top surface be what the Examiner identifies,
such identification does not meet the claim limitation and is faulty.
However, there is merit to the Examiner's identification of recesses 26, 28.
Despite the fact that these recesses are not illustrated as being "flat, planar,"
they are nevertheless surrounded by peripheral sidewalls which enclose
them. See Fig. 3 above. Further, regarding this "flat, planar" issue, the
Examiner paraphrases Duncan's express teaching which states "[t]he
depression 26 generally corresponds in shape to the contours of the various
utensils to be accommodated." Duncan 3:26-27; see also Final Act. 4, Ans.
7, 8. Based on Duncan's own "corresponds in shape to the utensil" teaching
(and the Examiner's references to it), Duncan further discloses that it is
known to use "spoons, forks and spatulas" during a cooking session.
Duncan 1 : 13-15. Appellant agrees stating, "kitchen utensils are used in
conjunction with" cookware and addresses such utensils as "spoons" and
"spatulas." Spec. 2: 12-19 ("Description of the Prior Art"). In Duncan, the
use of a curved spoon is already illustrated. See above. Spatulas, on the
other hand, are well-known as having a flat, planar shape. 3 Accordingly,
and based on the teachings of Duncan, although recesses 26, 28 in Figure 3
are illustrated as curved (for spoons), Duncan further teaches that such
recesses may also be "flat, planar" (with accompanying vertical sidewalls as
shown) so as to correspond in shape to the contours of a spatula.
3 "Spatula" is defined as "a flat thin implement used especially for spreading
or mixing soft substances, scooping, or lifting." Https://www.merriam-
webster.com/dictionary/spatula (last visited June 14, 2018); see also
WEBSTER'S NEW COLLEGIATE DICTIONARY 1107 (1979).
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Accordingly, we do not fault the Examiner's reliance on Duncan for
teaching this limitation. We sustain the Examiner's rejection of claims 1, 2,
4, and 7.
Claim 8
Independent claim 8 is similar to independent claim 1, but claim 8
further recites peripheral sidewalls "running generally perpendicular thereto"
(i.e., perpendicular to the "flat, planar" recess). See also Br. 14. Appellant
does not explain how Duncan's vertical sidewalls disclosed in Figure 3
above, and surrounding recesses 26, 28, fail to meet this limitation. Claim 8
further recites a "spoon shaped outline." See also Br. 15. Again, Appellant
does not explain how Figure 3 of Duncan fails to teach such an outline.
Appellant also addresses the claim 8 limitation of the "utensil support
handle being 'spaced apart from the container sidewall to define a finger
receiving opening with respect to the container sidewalls."' Br. 15. As
stated above, the Examiner's rejection encompasses making permanent a
utensil support holder. Final Act. 4; Ans. 8. De Biasi already discloses a
first clasp handle and Appellant does not explain how a permanently affixed
utensil support holder would fail as a companion handle to assist in
supporting the weight of the container. See Final Act. 3. Regarding any
disclosure of the utensil handle being "spaced" from the container (so as to
form a "finger receiving opening"), the Examiner explains, "rearranging
parts of an invention involves only routine skill in the art." Final Act. 5
(citation omitted). Appellants do not explain how any rearrangement of the
permanent utensil support holder, so as, for example, to be spaced from the
container, is critical or otherwise beyond the ability of one skilled in the art.
See Final Act. 5. Thus, Appellants question as to "[ w ]here does one find any
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Application 13/742,028
suggestion or motivation in any of these disparate references" is answered
by the Examiner, e.g., "implicit in the knowledge of one of ordinary skill in
the art." Ans. 9 (citation omitted); see also Ans. 10-11.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claim 8.
Claim 16
Claim 16 depends from claim 8 and further recites, "the container is a
selected one of a saucepan and a skilled" and further, "wherein the spoon-
shaped support member for the skillet is spaced apart a greater relative
distance from the outer sidewall thereof than the spoon shaped support
member for the saucepan." The Examiner relies on De Biasi for this
teaching while Appellant contends, "none of the cited references discuss the
different sizing of saucepans, skillets, etc." Final Act. 6-7; Br. 16.
De Biasi discusses how it is customary to cook "in pans, kettles and
the like." De Biasi 1 :3--4. However, regarding the difference in utensil
support spacing between a skillet and a saucepan (or between different
cookware for that matter), the Examiner simply recites the limitation in
question and states that it can be found in Figure 2 of De Biasi. Final Act. 7.
Figure 2 of De Biasi discloses only a single pan with a single utensil support
member. De Biasi 1 :75-76. This figure provides no indication of any
relative spacing of the utensil support member as between a skillet and a
saucepan (or any other such cookware). 4 Although it may be easy to
imagine the existence of a difference in spacing of a utensil support member
4 If anything, because De Biasi' utensil support member is removable, it's
placement on another pot, pan, skillet or the like would result in the same
spacing, not a different spacing as recited.
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Application 13/742,028
when found on different cookware, the Examiner's rejection is wholly
lacking on this point. In short, the Examiner fails to provide any explanation
or justification as to where De Biasi (or Duncan or Hemsteger or knowledge
in the art) might cause a skilled person to arrive at this limitation, other than
to say, "see fig above." Final Act. 7. The Examiner does not address claim
16 in the Examiner's Answer. See Ans. 11.
It is imperative for the Examiner to carry its procedural burden of
establishing a prima facie rejection so as to avoid a rejection that is so
"uninformative that it prevents the applicant from recognizing and seeking
to counter the grounds for rejection." In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011) citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In
other words, we are instructed that "we may not resolve doubts in favor of
the Patent Office determination when there are deficiencies in the record as
to the necessary factual bases supporting its legal conclusion of
obviousness." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, because it is not clear as to the grounds relied upon by
the Examiner in rejecting claim 16, we do not sustain this rejection by the
Examiner due to a lack of articulated reasoning with rational underpinning to
support the conclusion of obviousness. See KSR, 550 U.S. at 418.
However, after a review of the language of claim 16, this claim is
considered to be indefinite under 35 U.S.C. § 112, second paragraph. MPEP
§ 2173 states,
[t]he primary purpose of this requirement of definiteness of
claim language is to ensure that the scope of the claim[] is clear
so the public is informed of the boundaries of what constitutes
infringement of the patent. ... It is of utmost importance that
patents issue with definite claims that clearly and precisely
inform persons skilled in the art of the boundaries of protected
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Application 13/742,028
subject matter. Therefore, claims that do not meet this standard
must be rejected under 35 U.S.C. [§] 112(b) or pre-AIA 35
U.S.C. [§] 112, second paragraph as indefinite. Such a rejection
requires that the applicant respond by explaining why the
language is definite or by amending the claim, thus making the
record clear regarding the claim boundaries prior to issuance.
Claim 16 recites a container that "is a selected one of a saucepan and a
skillet." The "selected one" is then recited as having a utensil support
member spacing different from that of the other container. However, when
only a single such container is made/used/sold, it is not clear how one can be
expected to know beforehand the sizes of all other like containers to ensure
that the making/using/selling of this "selected one" container does not
infringe. Accordingly, we reject claim 16 as being indefinite under 35
U.S.C. § 112, second paragraph. However, because we rely on a rationale
not advanced by the Examiner, we designate our action a NEW GROUND
of rejection to provide Appellant a full and fair opportunity to respond.
DECISION
The Examiner's rejection of claims 1, 2, 4, 7, and 8 is affirmed.
The Examiner's rejection of claim 16 is reversed.
We enter a new ground of rejection of claim 16 as being indefinite
under 35 U.S.C. § 112, second paragraph.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
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Application 13/742,028
When the Board enters such a non-final decision, the
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 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 (see 37 C.F.R. § 1.136(a)(l)) may be extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED; 37 C.F.R. § 41.50(b)
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