Ex Parte Vinett

Patent Trials and Appeals Board

Mar 12, 2019

14214920 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/214,920 03/15/2014
104982 7590 03/14/2019
Waller Lansden Dortch & Davis, LLP
511 Union Street
Suite 2700
Nashville, TN 37219
FIRST NAMED INVENTOR
Kevin Vinett
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.
030157.51777 2235
EXAMINER
CHOU,JIMMY
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
patentdocket@wallerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN VINETT
Appeal2017-010406
Application 14/214,920
Technology Center 3700
Before JENNIFER D. BAHR, JEFFREY A. STEPHENS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Vinett ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-3, 5, 6, 8-11, 13, and 16-27. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the real party in interest. Appeal Br. 2.
2 Claim 4 is cancelled and claims 7, 12, 14, and 15 are withdrawn. Appeal
Br. 45--47 (Claims App.).
Appeal2017-010406
Application 14/214,920
THE CLAIMED SUBJECT MATTER
Appellant's invention is directed to "an apparatus for smoking food
and more particularly to an apparatus that provides a smoking apparatus for
positioning inside a cooking enclosure such as a grill." Spec. ,r 2. Claims 1,
16, 20, and 21 are independent. Claim 1, reproduced below, is illustrative of
the claimed subject matter.
1. A smoker apparatus for placement inside a grilling
enclosure, comprising:
a container;
a cover disposed on the container, the cover including a
cover vent operable to emit smoke from the cover;
a fuel carrier disposed in the container and enclosed
between the container and the cover, the fuel carrier having a
fuel carrier bottom and a fuel carrier side wall extending
upward from the fuel carrier bottom, the fuel carrier side wall
including a plurality of fuel carrier holes for allowing air
passage into the fuel carrier; and
a carrier gap defined between the container and the fuel
carrier side wall, the carrier gap configured to allow air to flow
between the container and the fuel carrier side wall;
wherein the container is dimensioned to be positioned
inside the grilling enclosure.
REJECTIONS
1) Claims 16-19 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
2) Claims 1, 16, and 20 are rejected under 35 U.S.C. § I02(e) as
anticipated by Wrasse (US 5,176,124, issued Jan. 5, 1993).
3) Claims 1-3, 16-18, and 20 are rejected under 35 U.S.C. § I02(e)
as anticipated by McLemore (US 2012/0107476 Al, published
May 3, 2012).
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4) Claims 1-3 and 21 are rejected under 35 U.S.C. § I02(b) as
anticipated by Hait '988 (US 5,359,988, issued Nov. 1, 1994).
5) Claims 5, 6, 8, and 9 are rejected under 35 U.S.C. § I03(a) as
unpatentable over McLemore and Tapia (US 6,103,291, issued
Aug. 15, 2000).
6) Claims 10, 11, and 13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over McLemore, Tapia, and Wang (US 7,337,712 Bl,
published Mar. 4, 2008).
7) Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable over
McLemore and Sizer (US 7,021,202 B2, issued April 4, 2006).
8) Claims 21-27 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Hait '950 (US 5,218,950, issued June 15, 1993)
and Novak (US 5,070,777 issued Dec. 10, 1991).
9) Claims 16, 20, and 21 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Hait '988.
10) Claims 5, 6, 8-10, and 17-19 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Hait '988 and Tapia.
11) Claims 1-3, 16-18, and 20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over McLemore.
12) Claims 16 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wrasse and Dodgen (US 5,097,817, issued Mar.
24, 1992).
13) Claims 16-18 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over McLemore and Dodgen.
14) Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable
over McLemore, Dodgen, and Sizer.
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15) Claims 21-27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hait '950, Dodgen, and Novak.
DISCUSSION
Rejection 1
Indefiniteness
The Examiner rejects claims 16-19 under 35 U.S.C. § 112, second
paragraph, as indefinite because the limitation "the grilling enclosure" lacks
antecedent basis rendering the claim unclear. Final Act. 2-3. Appellant
does not present any arguments in response to the rejection of claims 16-19
under 35 U.S.C. § 112, second paragraph. Appeal Br. 8-9. Consequently,
we summarily sustain the rejection of claims 16-19 under 35 U.S.C. § 112,
second paragraph. In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the applicant failed to contest the rejection
on appeal); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
( explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
Claims 1 and 20
Rejection 2
Anticipation by Wrasse
Appellant argues claims 1 and 20 as a group. Appeal Br. 20. 3 We
select claim 1 as representative and claim 20 stands or falls with claim 1. 37
C.F.R. § 4I.37(c)(l)(iv).
3 Appellant submits a separate argument directed only to claim 16 which we
address below. Appeal Br. 22.
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Appellant's first contention is that Wrasse does not anticipate the
claims because the claims require "a 'smoker apparatus' including a fuel
carrier," however, Wrasse "repeatedly teaches that the barbecue cooker is a
smokeless cooker." Appeal Br. 20-21 (citing Wrasse Abstract, 1:34--35,
4:42--43). The Examiner responds that Wrasse uses "wood or charcoal as
fuel ... so that Wrasse device must generate smoke during cooking." Ans.
52 (citing Wrasse, 1:5-10). Appellant's first contention is not persuasive for
the following reasons.
As correctly noted by the Examiner, Wrasse discloses using wood or
charcoal as fuel and, as noted by Appellant (Appeal Br. 21 ), Wrasse
discloses that the fuel produces some smoke, albeit a "little." Wrasse 4:42-
43. Wrasse's reference to "smokeless" appears primarily directed to
preventing fats and juices from cooking meat from falling "directly upon the
coals," which produces "a significant amount of smoke." See id. at 2:41--48.
Thus, we are not persuaded by Appellant's argument that Wrasse does not
produce smoke.
More importantly, Appellant's Specification attributes the smoke
production to the components of the fuel to be combusted. See Spec. ,r 3
(referring to "[ s ]moke producing material such as charcoal or wood,"
including "often wood chips soaked in water to facilitate the creation of the
smoke, wood pellets designed to bum or smolder when a heat source is
applied to the pellets, or liquids that render a flavored smoke when heated").
Along these same lines, Appellant argues that "one of skill in the art would
not conclude that the firebox 19 in Wrasse is a fuel carrier for a smoker
apparatus, as the firebox 19 does not contain smoke producing items."
Appeal Br. 21. However, Appellant's argument in this regard is not
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commensurate with the scope of claim 1, which does not positively recite a
fuel source. Appellant does not present any evidence or persuasive technical
reasoning to show that combustion of the types of fuel sources identified in
Appellant's Specification as being smoke producing in Wrasse's device
would not produce significant amounts of smoke.
Appellant's second contention is that Wrasse does not anticipate the
claims because Wrasse does not disclose "that the barbecue cooker is
dimensioned or sized to be positioned within another grilling enclosure and
that it would be desirable to dimension the cooker of Wrasse to position the
barbecue cooker into another grilling enclosure or apparatus." Appeal Br.
22. In support of this contention, Appellant argues "that the limitation that
the container is dimensioned to be positioned inside the grilling enclosure is
a structural limitation as to the size of the container relative to the grilling
enclosure, and thus is not merely an intended use." Id. at 18. The Examiner
responds that "[t]he preamble does not positively recite the grilling
enclosure. Therefore, the grilling enclosure is treated as intended use." Ans.
51; see also Final Act. 7 ("The container can be placed inside the grilling
enclosure because it depends on the size of the grilling enclosure.").
Appellant's second contention is not persuasive for the following reasons.
The basis for the Examiner's rejection is that the preamble reference
to "a grilling enclosure" does not affirmatively claim the grilling enclosure.
Appellant's argument is directed to the effect of the wherein clause in claim
1 but does not address the assertion by the Examiner that the grilling
enclosure is not affirmatively claimed. See Appeal Br. 21-22, 18.
Therefore, Appellant's second contention is not persuasive because it is not
responsive to the rejection. In the absence of an affirmatively claimed
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grilling enclosure, or any definition in the claim as to the size of a grilling
enclosure in which the claimed container is dimensioned to be positioned,
the Examiner correctly finds that the limitation in the wherein clause
effectively amounts to an intended use of the container, which is
dimensioned to be positioned inside a grilling enclosure of unspecified
dimensions.
Appellant does not apprise us of error in the rejection of claim 1.
Accordingly, we sustain the rejection of claim 1 and claim 20, which falls
with claim 1, as anticipated by Wrasse.
Claim 16
In addition to the aforementioned contentions which we determine are
not persuasive, Appellant contends that Wrasse does not anticipate claim 16
because "Wrasse covers the hole in base plate 20 identified as the base vent
in the Office action" and, according to Appellant, "any air flow coming from
below the base vent flows directly into firebox 19, and does not first flow
into the air gap as required by Claim 16." Appeal Br. 22-23. The Examiner
responds that "Wrasse shows the air gap between container 18 and the
carrier wall 19 such that the air flow[ s] inside the container in any
direction," and according to the Examiner, claim 16 "only require[s] 'for
allowing air passage into the fuel carrier' such that the carrier holes formed
on side wall of fuel carrier allows the air into the fuel carrier via the fan 21."
Ans. 52. For the following reasons, Appellant's third contention is not
persuasive.
Wrasse discloses that firebox 19 "rest[s] atop ash grid 23." Wrasse,
3:5---6; see also Figs. 2, 3. The Examiner finds that ash grid 23, not item 20
as asserted by Appellant, corresponds to the base vent. Final Act. 4. Figure
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2 of Wrasse illustrates fan 21, which provides air into the gap between
container 18 and firebox 19. Wrasse at Fig. 2. Figure 2 further indicates
that the air flows into the apertures in firebox 19 and flows in both an
upward and downward direction, and in the latter case, into ash grid 23,
which the Examiner finds corresponds to the recited "base vent." Id.
Claim 16 does not require that air flow sequentially from the base vent
"first ... into the air gap" and then into the firebox as Appellant asserts.
Rather, claim 16 requires "wherein air flows into the base vent, into the air
gap, into the carrier, and out [ of] the cover vent when smoke is generated
inside the cooking enclosure." Appellant's argument that claim 16 requires
sequential flow from the air gap and then into the carrier is not persuasive
because it is not commensurate with the scope of claim 16.
We have considered all of the Appellant's contentions in connection
with the rejection of claim 16 as anticipated by Wrasse and are not apprised
of Examiner error. Therefore, we sustain the rejection of claim 16 as
anticipated by Wrasse.
Rejection 3
Anticipation by McLemore
Appellant argues claims 1-3, 16, 17, and 20 as a group. Appeal Br.
11-20. We select claim 1 as representative of the group, and claims 2, 3, 16,
17, and 20 stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
Appellant contends that item 122 of McLemore, which the Examiner
asserts corresponds to the recited "fuel carrier," is "a 'cooking basket' for
holding food items such as turkeys," and "nothing in McLemore indicates
that item 122 may be used as a 'fuel carrier' or any structure to hold fuel."
Appeal Br. 14 (citing McLemore ,r,r 73-74). In support of this contention,
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Appellant argues that the plain and ordinary meaning of "'fuel carrier' is 'a
structure that holds fuel,"' and that the plain and ordinary meaning is
supported by paragraph 49 of Appellant's Specification. Id. at 11-12.
Appellant further supports this argument with a Declaration of Ben Vaughn4
in which Mr. Vaughn opines that a person of ordinary skill in the art would
understand that a fuel carrier "could only be understood to mean a structure
configured to exclusively contain combustible, smoke producing items." Id.
at 12-13 (citing Vaughn Deel. ,r 24).
The Examiner responds that "claim 1 does not recite the function of 'a
fuel carrier"' and thus use of the word "fuel" is "a[n] intended use."
Ans. 49. The Examiner further explains that "nothing in the independent
claim require[ s] or recite[ s] 'fuel carrier to hold fuel to produce smoke."' Id.
at 50. For the following reasons, Appellant's contention is not persuasive.
The Examiner correctly notes that claim 1 does not contain any
functional limitation requiring the recited fuel carrier to either hold fuel or
produce smoke when the fuel is combusted. Further, Appellant does not
direct our attention to any structural differences between the recited fuel
carrier and item 124 ofMcLemore. See Appeal Br. 11-18. In the absence
of a structural distinction or functional limitation in claim 1, we are not
apprised of Examiner error because Appellant is attempting to claim a new
intended use of an old product. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)). We,
therefore, sustain the rejection of claim 1 as anticipated by McLemore.
Claims 2, 3, 16, 17, and 20 fall with claim 1.
4 Declaration of Ben Vaughn, dated Dec. 22, 2015.
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Claim 18
Claim 18 depends indirectly from claim 16 and recites "the container
having a container height above the base, and the fuel carrier having a fuel
carrier height above the base, wherein the fuel carrier height is greater than
the container height." Appeal Br. 48 (Claims App.). The Examiner relies on
Figure 8 of McLemore, which the Examiner asserts "shows the carrier
height is greater than the container height when lifted." Final Act. 9-10.
Appellant contends "that Claim 16, from which Claim 18 depends,
requires a container, a cover disposed on the container, and a fuel carrier
positioned inside the container" and "the further limitations recited in Claim
18 are applicable when the fuel carrier is positioned between the container
and the cover and the cover is disposed on the lid." Appeal Br. 19-20. In
support of this contention, Appellant notes that Figure 8 of McLemore
cannot establish the limitations of claim 18 because the container is lifted.
Id. at 20. For the following reasons, we do not sustain the rejection of claim
18.
The Examiner identifies McLemore' s item 25 as corresponding to the
base, item 34 as corresponding to the container, and item 122 as
corresponding to the fuel carrier in the rejection of independent claim 16.
Final Act. 8. Appellant correctly notes that Figure 8 of McLemore shows
item 122 lifted out of container 34. McLemore, Fig. 8. When item 122 is
inserted into item 34 as shown in Figure 12 ofMcLemore, the height of fuel
carrier 122 above base 25 is clearly less than the height of container 34
above base 25. We do not sustain the rejection of claim 18 because the
Examiner's finding that McLemore' s "fuel carrier height is greater than the
container height" is not supported by a preponderance of the evidence.
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Rejection 4
Anticipation by Hait '988
The Examiner finds that item 30 in Hait '988 corresponds to the "fuel
carrier" recited in independent claims 1 and 21. Final Act. 11, 13.
Appellant contends that "the appropriate analogous structure for the fuel
carrier recited in Claims 1-3 and 21 is actually the recessed annular body
35b of the grill adapter 35" disclosed in Hait '988. Appeal Br. 23.
According to Appellant, Hait '988 discloses "that hickory chips for adding a
barbecue smoking flavor are placed in recessed annular body 35b of the grill
adapter 35." Id. (citing Hait '988, 5:64---68, 7:61---64). Appellant further
argues that recessed body 35b "does not include any holes in the sidewall of
body 35b as required by Claims 1-3." Id. For the following reasons, we
sustain this rejection.
We note that Hait '988 discloses "an adjustable fuel holder 30 for
supporting thereon suitable fuel elements" and that fuel holder 30
"comprises a flat base 30a formed with suitable apertures." Hait '988, 5:8-
9, 14--15. Appellant's contention does not apprise of Examiner error in the
rejection of claims 1-3 and 21 because Appellant's contention is not
responsive to the rejection wherein the Examiner finds fuel holder 30 of Hait
'988 corresponds to the recited fuel carrier.
Claim 21
The Examiner finds that firebox 20 of Hait '988 corresponds to the
recited "container," and apertures 15c of Hait '988 correspond to the recited
"base vent." Final Act. 13; see Hait '988, Fig. 3. Appellant argues that once
base 15 and firebox 20 of Hait '988 "are connected together, there is no fluid
connection between base 15 and the interior of the firebox 20 or the interior
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of the container" and, therefore, "base vents 15c of Hait ['988] are not
positioned to allow air passage into the container through the base vent, as
recited in Claim 21." Appeal Br. 25. The Examiner responds that "base
vents 15c of Hait is capable of allowing air passage into the container."
Ans. 53. For the following reasons, we do not sustain the rejection of claim
21.
Hait '988 discloses that "apertures 15c are formed in the base 15 for
air to circulate into and out of a warming chamber 15d of the base 15." Hait
'988, 4:20-22. As shown in Figure 4 of Hait '988, fuel holder 30 is
"[d]isposed within firebox 20." Id. at 5:7-8, Fig. 4. The Examiner has not
directed us to any disclosure in Hait '988 to support a finding that apertures
15c are "positioned to allow passage of air into the container through the
base vent" as required by claim 21. Consequently, we determine that the
Examiner's finding that Hait '988 anticipates claim 21 is not supported by a
preponderance of the evidence.
In summary, we sustain the rejection of claims 1-3 as anticipated by
Hait '988, but do not sustain the rejection of claim 21.
Rejection 5
Obviousness over McLemore and Tapia
Claims 5, 6, 8, and 9 depend directly or indirectly from claim 1.
Appeal Br. 45--46 (Claims App.). Appellant relies on the same arguments
for claims 5, 6, 8, and 9 as discussed above in connection with the rejection
of claim 1 as anticipated by McLemore. Appeal Br. 29. We, therefore,
sustain the rejection of claims 5, 6, 8, and 9 for the same reasons discussed
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above in connection with the rejection of claim 1 as anticipated by
McLemore. 5
Rejection 6
Obviousness over McLemore, Tapia, and Wang
In rejecting claim 10, the Examiner finds that McLemore discloses all
the limitations of claim 10 "except for the base ramp has the shape of an
inverted funnel" and finds that Wang discloses these features. Final Act. 18.
The Examiner concludes that it would have been obvious to modify
McLemore with Wang "by substituting McLemore's base ramp with Wang's
base ramp, to accommodate different resting surface." Id.
Appellant contends that "the Examiner does not provide any support"
for modifying McLemore. Appeal Br. 30. Appellant further contends that
"the bottom base 25 of McLemore is designed to funnel or direct fluids and
other cooking debris toward the drip outlet 27" and modifying bottom base
25 to have an inverted funnel shape "would result in fluids being funneled or
directed away from drip outlet 27, thus rendering drip outlet unsuitable for
its intended purpose." Id. In response, the Examiner asserts that there is no
modification of McLemore because it "shows the inverted funnel shape."
Ans. 54. The Examiner, thus, does not address Appellant's argument that
the modification of McLemore to include an inverted funnel shape would
render McLemore unsuitable for its intended purpose. Id. We do not sustain
the rejection for the following reasons.
5 The Examiner objected to claim 5 because it depends from claim 4, which
has been cancelled. Final Act. 2; Appeal Br. 45 (Claims App.). For
purposes of this Decision, we assume that claim 5 depends from claim 1. If
prosecution continues subsequent to this appeal, Appellant should clarify the
base claim from which claim 5 depends.
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The Final Action clearly articulates that McLemore does not disclose
a base ramp in the shape of an inverted funnel and that McLemore is being
modified by substituting Wang's base ramp in the shape of an inverted
funnel. Final Act. 18. As the Examiner has not adequately explained how
this modification would be consistent with the intended purpose of
McLemore, we do not sustain the rejection of Claim 10. Claims 11 and 13
depend from claim 10. Appeal Br. 46 (Claims App.). We do not sustain the
rejection of claims 11 and 13 for the same reasons. 6
Rejection 7
Obviousness over McLemore and Sizer
Claim 19 depends from claim 16. Appeal Br. 48 (Claims App.).
Appellant relies on the same arguments for claim 19 as discussed above in
connection with the rejection of claim 16 as anticipated by McLemore.
Appeal Br. 29. We, therefore, sustain the rejection of claim 19 for the same
reasons discussed above in connection with the rejection of claim 16 as
anticipated by McLemore.
Rejection 8
Obviousness over Hait '950 and Novak
Claims 21 and 22
In support of the rejection of independent claim 21, the Examiner
provides annotated versions of Figure 4 of Hait '950 in which the Examiner
identifies portions of the device of Hait '950 that the Examiner asserts
correspond to the recited base, base ramp, and base vent. Final Act. 20, 45-
46. Among the Examiner's findings, based on Hait '950, are that wall 17b
6 Claims 10, 11, and 13 depend indirectly from cancelled claim 4. Appeal
Br. 46-4 7. As noted above, Appellant should clarify the base claim from
which claim 5 depends.
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corresponds to the recited container and apertures 25 correspond to the base
vent. Id. at 20.
The primary thrust of Appellant's contention of error is that the
Examiner unreasonably construed the claim terms "base" and/or "base
ramp" so that apertures 25 of Hait '950 are "defined in the base ramp."
Appeal Br. 26-27, 40. Appellant contends that
Id.
[T]he Examiner on pages 44--45 of the Office action identifies
the container of the Claim 21 as pillar 17 of Hait ['950], and the
container wall of Claim 21 as the side panel 1 7b of support 1 7.
The Examiner then arbitrarily defines the base and the base
ramp of Hait ['950] on an annotated Fig. 3 of Hait ['950] ... as
a combination of the base 16 of Hait ['950] and a portion of the
side panel 1 7b of the pillar 17 to conclude that the "base"
includes base vents 25.
Appellant submits that the entirety of side panel 1 7b of
support 1 7 should be considered a side wall of the container of
Hait ['950] which extends upwardly from the base 16, as
recited in claim 21. Appellant notes that Claim 21 requires that
the base ramp has the shape of an inverted funnel. The only
structure in [Hait '950] that conforms to that description is base
16, as side panels 17b have the shape of a regular funnel. As
such side panels 1 7b simply cannot be a part of a base ramp as
defined in Claim 21. Therefore, based on a proper
interpretation of the side panels 17b of pillar 17 in [Hait '950],
it is clear that the vents 25 of [Hait '950] are not located in the
base ramp 16, as required by Claim 21, but instead are located
in the side wall of the pillar 17 of [Hait '950].
Hait '950 discloses "a hollow base 16" with "panels 16a-16d" that
"are hinged together along the sides thereof." Hait '950, 4:32-37. Mounted
on top of base 16 is "upstanding support 17" formed by "side panels 17a-
17 d." Id. at 4 :45--4 7, Fig. 1. In order to meet the limitation of claim 21 of
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"a base vent defined in the base ramp," the Examiner determines that Hait
'950 discloses a "base" that includes hollow base 16 and a portion of
upstanding support 17 so that "air vents 25" (id. at 5: 18) are part of the base
ramp. As Appellant correctly notes, item 16 of Hait '950 is generally in the
shape of an inverted funnel similar to the structure shown in Appellant's
Figure 10 (see Spec. Fig. 10), while item 17 extending upwardly from base
16 is generally in the shape of a funnel that is not inverted. Claim 21 recites
that "the base ramp including an angled region forming the shape of an
inverted funnel" ( emphasis added). Claim 21 does not require the base ramp
be limited to a structure in the shape of an inverted funnel only. Further,
claim 21 recites "a base vent defined in the base ramp," not that the base
vent is "defined in the angled region forming the shape of an inverted
funnel." Consequently, Appellant does not apprise us of Examiner error in
the findings illustrated in the annotated figures of Hait '950 provided in the
Final Action because the broadest reasonable interpretation of claim 21 does
not require the base ramp to be limited to the shape of an inverted funnel
only, nor does claim 21 require that the base vent be defined in the angled
region of the base ramp. We, therefore, sustain the rejection of claim 21.
Appellant does not separately argue for the patentability of claim 22, which
depends from claim 21. Appeal Br. 40. We, therefore, sustain the rejection
of claim 22 for the same reasons.
Claims 23 and 24
Claim 23 depends from claim 22, and recites "wherein the fuel carrier
rests against the ash blocker." Appeal Br. 50 (Claims App.). The Examiner
finds that Hait '950 discloses an "ash blocker assembly" consisting of items
21 and 34 in connection with the rejection of claim 22, and that fuel carrier 30
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"rests against the ash blocker 34" in connection with claim 23. Final Act. 21-
22 (emphasis omitted); see also Hait '950, Fig. 3. Appellant contends that in
Hait '950:
firebox 30 is suspended from inwardly slanting side panels 17b
of support pillar 1 7, and clamp plate 34 is used to secure cover
plate 33 to the firebox 30. Clamp plate 34 is suspended from
firebox 30, such that firebox 30 does not rest against or on the
clamp plate, as required by Claim 34.
Appeal Br. 40. For the following reasons, we sustain the rejection of claim
23.
Hait '950 discloses that:
[ d]isposed above the cover plate 33 within firebox 30 is a
clamping plate 34. The clamping plate 34 has a generally
quadrilateral perimeter with depending flanges 34a which are
respectively disposed outwardly of the upright flanges 33a of the
panels 30a-30d and in engagement with the panels 30a-30d,
respectively, of the firebox 30.
Hait '950, 5:51-57. Figure 4 of Hait '950 shows that clamping plate 34 is
above cover plate 33 and in engagement with the panels of firebox 30 from
below. See id. at Fig. 4. Consequently, the Examiner's finding that firebox
30 rests against clamping plate 34 is supported by a preponderance of the
evidence. Therefore, we sustain the rejection of claim 23. Appellant does
not separately argue for the patentability of claim 24 which depends from
claim 23. Appeal Br. 40. We, therefore, sustain the rejection of claim 24 for
the same reasons.
Claims 25 and 26
Claim 25 depends from claim 24 and recites "wherein the ash blocker
is attached to the base ramp." Appeal Br. 50 (Claims App.). The Examiner
finds that item 21 of Hait '950 "is attached to the base ramp." Final Act. 22
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( emphasis omitted). Appellant argues that claim 25 indirectly depends from
claim 23 and, thus, "requires that the ash blocker be attached to the base
ramp, and that the fuel carrier rests against the ash blocker." Appeal Br. 41.
According to Appellant, "neither clamp plate 21 nor clamp plate 34 can
satisfy both of these limitations" because "[ c ]lamp plate 34 is not attached to
the base ramp, and camp[ sic] plate 21 is in no way connected to the firebox
30 such that the firebox 30 rests against the clamp plate 21." Id. This
argument is not persuasive because Appellant does not dispute the
Examiner's finding in connection with claim 22 that clamp plate 21 and
clamp plate 34 together comprise the recited "ash blocker." We, therefore,
sustain the rejection of claim 25. Appellant does not separately argue for the
patentability of claim 26, which depends from claim 25. Appeal Br. 41.
We, therefore, sustain the rejection of claim 26 for the same reasons.
Claim 27
Claim 27 depends from claim 26 and recites "wherein the fuel carrier
height above the base is greater than the height of the container." Appeal
Br. 50 (Claim App.). The Examiner refers to the annotated versions of the
Figures of Hait '950 in the Final Action and asserts that Hait '950 discloses
the limitations of claim 27. Final Act. 22. Appellant asserts that "fire grate
45a and the firebox 30 of Hait ['950], cited by the Examiner in the Office
action at page 20 as the fuel carrier, are clearly shown having a height that is
equal to or less than the height of the side panels 1 7b of the pillar 17."
Appeal Br. 41--42. We agree with Appellant that firebox 30 does not extend
to a height greater than the height of side panel 17b. See Hait '950, Fig. 4.
Therefore, we do not sustain the rejection of claim 27.
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Rejection 9
Obviousness over Hait '988
The Examiner's findings in support of this rejection are substantially
similar to the findings set forth in Rejection 4. Appeal Br. 23-26. Appellant
argues Rejection 9 is in error for reasons discussed above for Rejection 4.
Appeal Br. 35. For the reasons discussed above, Appellant fails to apprise
us of error in Rejection 4 and, likewise, fails to apprise us of error in
Rejection 9. Thus, we sustain the rejection of claims 16, 20, and 21 as
unpatentable under 35 U.S.C. § 103(a) over Hait '988.
Rejection 10
Obviousness over Hait '988 and Tapia
Appellant's argument for the patentability of claims 5, 6, 8-10, 17,
and 19 relies on the same argument raised in connection with Rejection 4
that Hait '988 does not disclose "a fuel carrier for a smoker apparatus
[having] a plurality of fuel carrier holes" Appeal Br. 36. Appellant also
argues that Tapia does not disclose a fuel carrier with a plurality of holes.
Id. We determined above in connection with Rejection 4 that a
preponderance of the evidence supports the Examiner's finding that Hait
'988 discloses a fuel carrier with a plurality of holes. Therefore, we sustain
the rejection of claims 5, 6, 8-10, 17, and 19.
Claim 18
The Examiner finds that Hait '988 does not disclose the limitation in
claim 18 that "the fuel carrier height is greater than the container height."
Final Act. 27. The Examiner asserts that Appellant "has not disclosed that
having the fuel carrier height ... solves any stated problem or is for any
particular purpose," and further that Hait '988 "would perform equally well
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[if] the fuel carrier height is greater [or] less [than] the container height." Id.
The Examiner concludes that "the fuel carrier height is greater than the
container height is deemed to be a design consideration which fails to
patentably distinguish over" Hait '988. Id. at 27-28.
Appellant contends that the Specification states a purpose for the
limitations of claim 18 because it "teaches that making the fuel carrier height
greater than the container height allows the intersection of the cover and the
container to occur at a lower position on the device ... to reduce the
likelihood of smoke escaping from the intersection instead of the cover
vent." Appeal Br. 39 (citing Spec. ,r 69). Appellant further contends that, in
order for the Examiner to state a prima facie case of obviousness based on
design choice, the Examiner must state that the prior art suggests the claimed
subject matter, which the Examiner has not done. Id. at 38. For the
following reason, we do not sustain the rejection of claim 18.
Appellant correctly notes that the Specification does in fact set forth
the advantages of having the fuel carrier height greater than the container
height namely "to reduce the likelihood of smoke escaping from the
intersection instead of the cover vent." Spec. ,r 69. Given the reason stated
for the claimed limitation in Appellant's Specification, the Examiner's
dismissal of this limitation a mere "design consideration" is inappropriate.
See In re Chu, 66 F.3d 292, 298-299 (Fed. Cir. 1995) (holding that
placement of catalyst within a bag retainer not merely "design choice" when
it overcomes a specific problem, and distinguishing prior cases in which
applicants "failed to set forth any reasons why the differences between the
claimed invention and the prior art would result in a different function or
give unexpected results"). The Examiner fails to present sufficient evidence
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or technical reasoning why one of ordinary skill in the art would have
chosen to make the choice recited in claim 18. We, therefore, do not sustain
the rejection of claim 18.
Rejection 11
Obviousness over McLemore
The Examiner rejects claims 1-3, 16-18, and 20 as unpatentable over
McLemore based on the same findings as stated in Rejection 3, without any
additional findings. Final Act. 28-32. Because we sustain the rejection of
these claims as anticipated by McLemore and the Examiner's findings are
duplicative of Rejection 3, we also sustain the rejection of these claims as
unpatentable over McLemore. It is well settled that "anticipation is the
epitome of obviousness." In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir.
2002) (quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
Rejection 12
Obviousness over Wrasse and Dodgen
Appellant's first contention is that because "Wrasse is intended to be a
smoke free device ... modifying Wrasse to become a smoker apparatus with
a suitable fuel carrier would render Wrasse unsatisfactory for its intended
purpose" and consequently, according to Appellant, "there is no motivation
for modifying Wrasse to become a smoker apparatus." Appeal Br. 34--35.
This contention is not persuasive because, as discussed above in connection
with Rejection 2, we do not agree with Appellant's contention that Wrasse
does not produce smoke. In addition, claim 16, like claim 1, does not
positively recite a fuel source. As discussed above in connection with
Rejection 2, Appellant does not present any evidence or persuasive technical
reasoning to show that combustion of the types of fuel sources identified in
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Appellant's Specification as being smoke producing in Wrasse's device
would not produce significant amounts of smoke.
Appellant's second contention is that "[t]he heat source taught in
Dodgen as being advantageous in a grilling enclosure is already being
provided to the grilling enclosure of Wrasse by firebox 19" and, according to
Appellant, "one of [ordinary] skill in the art upon reading Dodgen would not
be motivated to dimension the container or grilling enclosure of Wrasse to
be positioned inside of another grilling enclosure." Appeal Br. 35.
Appellant's second contention is not persuasive because we affirm the
rejection of claims 16 and 20 as anticipated by Wrasse. See Rejection 2,
supra. The Examiner's findings and analysis based on Dodgen are
superfluous because, as noted above, "anticipation is the epitome of
obviousness." In re McDaniel, 293 F3d. at 1385; In re Fracalossi, 681 F.2d
at 794. We thus sustain this rejection of claim 16, and we sustain the
rejection of claim 20 on the same ground.
Rejection 13
Obviousness over McLemore and Dodgen
The Examiner relies on the same findings based on McLemore as for
Rejection 3, with additional disclosure from Dodgen. Final Act. 36-40.
Because we sustain the rejection of claims 16, 17, and 20 as anticipated by
McLemore in Rejection 3 and as unpatenable over McLemore in Rejection
11, we do not reach this rejection as to these claims. See 37 C.F.R.
§ 4I.50(a)(l) ("The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed.").
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With respect to claim 18, the Examiner's reliance on additional
disclosure from Dodgen, see Final Act. 38, does not cure the deficiencies in
the rejection of claim 18 as anticipated by McLemore, discussed above in
connection with Rejection 3. We do not sustain the rejection of claim 18 as
unpatentable over McLemore and Dodgen for the same reasons.
Rejection 14
Obviousness over McLemore, Dodgen, and Sizer
Appellant relies on the same arguments raised in connection with
Rejection 7 and additionally argues that Dodgen does not cure the
deficiencies of McLemore and Sizer with respect to Claim 19. Appeal Br.
34. As discussed above, Appellant's arguments raised in connection with
Rejection 7 are not persuasive. The Examiner's findings and analysis based
on Dodgen are superfluous to the rejection of claim 19 as unpatentable over
McLemore and Sizer. Consequently, we sustain this rejection of claim 19
for the same reasons stated in Rejection 7.
Rejection 15
Obviousness over Hait '950, Dodgen, and Novak
Claims 21 and 22
Appellant relies on the arguments raised in connection with Rejection
8 that neither Hait '950 nor Novak disclose a base vent defined in a base
ramp of a container and additionally argues that Dodgen does not cure the
deficiencies of Hait '950 and Novak in connection with claim 21. Appeal
Br. 43. As discussed above, Appellant's arguments raised in connection
with claim 21 in Rejection 8 are not persuasive. Consequently, we sustain
this rejection of claim 21 and claim 22, which depends from claim 21 and
for which Appellant does not present any additional arguments, for the same
reasons.
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Claims 23-27
With respect to claims 23, 25, and 27, Appellant raises the same
arguments for patentability raised in connection with Rejection 8, and
additionally argues that Dodgen does not cure the deficiencies of Hait '950
and Novak in connection with these claims. Appeal Br. 43. For the same
reasons stated in connection with Rejection 8, we sustain the rejections of
claims 23 and 25, and we do not sustain the rejection of claim 27.
Appellant raises no other separate arguments for the patentability of
claims 24 and 26. Id. We, therefore, sustain this rejection of claims 24 and
26.
DECISION
The Examiner's decision rejecting claims 16-19 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner's decision rejecting claims 1, 16, and 20 as anticipated
by Wrasse is affirmed.
The Examiner's decision rejecting claims 1-3, 16-18, and 20 as
anticipated by McLemore is affirmed as to claims 1-3, 16, 17, and 20, and
reversed as to claim 18.
The Examiner's decision rejecting claims 1-3 and 21 as anticipated by
Hait '988 is affirmed as to claims 1-3 and reversed as to claim 21.
The Examiner's decision rejecting claims 5, 6, 8, and 9 as
unpatentable over McLemore and Tapia is affirmed.
The Examiner's decision rejecting claims 10, 11, and 13 as
unpatentable over McLemore, Tapia, and Wang is reversed.
The Examiner's decision rejecting claim 19 as unpatentable over
McLemore and Sizer is affirmed.
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The Examiner's decision rejecting claims 21-27 as unpatentable over
Hait '950 and Novak is affirmed as to claims 21-26 and reversed as to claim
27.
The Examiner's decision rejecting claims 16, 20, and 21 as
unpatentable over Hait '988 is affirmed.
The Examiner's decision rejecting claims 5, 6, 8-10, and 17-19 as
unpatentable over Hait '988 and Tapia is affirmed as to claims 5, 6, 8-10,
17, and 19, and reversed as to claim 18.
The Examiner's decision rejecting claims 1-3, 16-18, and 20 as
unpatentable over McLemore is affirmed.
The Examiner's decision rejecting claims 16 and 20 as unpatentable
over Wrasse and Dodgen is affirmed.
We do not reach the Examiner's rejection of claims 16, 17, and 20 as
unpatentable over McLemore and Dodgen.
The Examiner's decision rejecting claim 18 as unpatentable over
McLemore and Dodgen is reversed.
The Examiner's decision rejecting claim 19 as unpatentable over
McLemore, Dodgen, and Sizer is affirmed.
The Examiner's decision rejecting claims 21-27 as unpatentable over
Hait '950, Dodgen, and Novak is affirmed as to claims 21-26 and reversed
as to claim 2 7.
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-IN-PART
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